Newspaper Association of America v. Choi
Goeng-Seok
Claim Number: FA0204000112459
Complainant
is Newspaper Association of America,
Vienna, VA, USA (“Complainant”) represented by Gary D Peifer. Respondent
is Choi Goeng-Seok, Taegu, SOUTH
KOREA (“Respondent”).
The
domain name at issue is <athena.biz>,
registered with Yesnic, Co., LTD.
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on April 26, 2002.
On
May 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 29,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the
Start-up Trademark Opposition Policy (the “STOP Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On July 1, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. as the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<athena.biz> domain name is identical to Complainant's ATHENA
mark.
Respondent
has no rights or legitimate interests in the <athena.biz> domain
name.
Respondent
registered the <athena.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant registered its ATHENA mark
with the United States Patent and Trademark Office as Registration Number
2,289,690 in relation to newspaper merit and advertising awards. Complainant uses the mark to promote the
merit of newspapers by providing awards to those newspapers that exhibit
excellence.
Respondent registered the disputed domain
name on March 27, 2002. Respondent is
not a licensee of Complainant.
Complainant’s investigation has found no evidence that Respondent owns a
trademark or service mark for the ATHENA anywhere in the world.
Paragraph 15(a) of the STOP Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the disputed
domain name is not a factor for purposes of determining that a disputed domain
name is not identical to the mark in which the Complainant asserts rights.
Complainant
has demonstrated that it has rights to the ATHENA mark through registration
with the United States Patent and Trademark Office. Respondent’s <athena.biz> domain name is identical
to Complainant’s ATHENA mark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Respondent does not do business under the
ATHENA mark and does not own a trademark or service mark for ATHENA anywhere in
the world. Therefore, Respondent does
not have rights or legitimate interests in the disputed domain name pursuant to
STOP Policy ¶ 4(c)(i). See Nat’l
Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb.
Forum Feb. 11, 2002) (finding that, because Respondent did not come forward
with a Response, the Panel could infer that it had no trademark or service
marks identical to <grammy.biz> and therefore had no rights or legitimate
interests in the domain name).
If Respondent were to use the disputed
domain name it could not do so without creating an impression that it was
associated with Complainant, because the <athena.biz> domain name
is identical to Complainant's ATHENA mark.
The intended use of a domain name identical to Complainant's mark to
mislead or confuse Internet users is not considered a bona fide offering of
goods or services pursuant to STOP Policy ¶ 4(c)(ii). See Household Int’l,
Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring
that Respondent registered the domain name <householdbank.com>, which
incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting
Complainant’s customers and thus finding no rights or legitimate interests); see
also State Farm Mut. Auto. Ins. Co.
v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that
“unauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona fide offering of goods or services”).
Respondent is not commonly known by the
<athena.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). See Great S. Wood Pres., Inc. v. TFA
Assocs., FA 95169 (Nat. Arb.
Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the
domain name <greatsouthernwood.com> where Respondent linked the domain
name to <bestoftheweb.com>); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June
19, 2000) (finding that Respondent has failed to demonstrate any rights or
legitimate interests in the <twilight-zone.net> domain name since
Complainant had been using the TWILIGHT ZONE mark since 1959).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Based on the STOP Policy’s IP Claim
procedure Respondent was on notice of Complainant’s rights to the <athena.biz>
domain name when it registered the disputed domain name. Therefore, Respondent’s registration of <athena.biz>
despite this notice, is evidence of bad faith registration. See Valspar
Sourcing, Inc. v. TIGRE, FA 112596 (Nat.
Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in
PAINT.BIZ when it registered the disputed domain name, because Respondent
received notice of Complainant’s IP Claim.
Respondent’s registration of the disputed domain name despite this
notice when Respondent had no right or legitimate interest in the domain name
is evidence of bad faith”); see also Gene Logic Inc. v. Bock,
FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the
STOP Policy and the notice given to Respondent regarding existing IP Claims
identical to its chosen domain name precluded good faith registration of
<genelogic.biz> when Respondent registered it with “full knowledge that
his intended business use of this domain name was in direct conflict with a
registered trademark of a known competitor in exactly the same field of
business”).
The Panel finds STOP Policy ¶ 4(a)(iii)
has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the
domain name <athena.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
The Honorable Charles K. McCotter, Jr.,
Panelist
Dated: July 9, 2002
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