Frank Russell Company v. Sungjo Park
Claim Number: FA0204000112476
Complainant is Frank Russell Co., Tacoma, WA, USA (“Complainant”), of Seed Intellectual Property Law Group PLLC. Respondent is Sungjo Park, Seoul, SOUTH KOREA (“Respondent”).
The domain name at issue is <russell.biz>, registered with Hangang Systems, Inc.
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.
John J. Upchurch 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 27, 2002.
On May 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 23, 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”).
A timely Response was received and determined to be complete on May 13, 2002.
Complainant filed an additional submission on May 15, 2002 in compliance with Forum Supplemental Rule 7.
On June 7, 2002, pursuant to STOP Rule 6(b), the Forum appointed John J. Upchurch as the single Panelist. On June 20, 2002, the Panel ordered that the deadline for rendering its decision be extended until July 11, 2002.
Transfer of the domain name from Respondent to Complainant.
1. Complainant is the owner of numerous registrations worldwide for the mark RUSSELL for use in connection with financial goods and services.
2. The disputed domain name <russell.biz>, uses the identical text string, “russell,” which is a valid and subsisting registered trademark of Complainant.
3. Respondent has no rights in the RUSSELL name.
4. Respondent registered the domain name <russell.biz> in bad faith.
1. The Respondent did not directly respond to Complainant’s allegations, and they are deemed to have been denied.
C. Additional Submissions
Complainant addressed Respondent’s request to conduct the proceedings in the Korean language. It was determined by the Forum that Respondent’s request should be denied, a procedural decision with which the Panel concurs.
The Panel finds that the relief requested by the Complainant should be granted.
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.”
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.
Upon evidence presented by Complainant, it appears Respondent is neither the owner or beneficiary of a trade or service mark containing the term “Russell.” “Russell” is not a Korean surname. Further, Respondent has been shown to have registered at least 32 additional domain names associated with famous trademarks around the world, none of which are linked to an active Internet page. Respondent has no rights or legitimate interests in the domain name <russell.biz>.
The circumstances indicate that Respondent registered the domain name <russell.biz> with the intent to traffic in the domain name. Respondent registered with a web site community for those interested in trafficking in Internet domain names. This, coupled with the registration of at least 32 additional names under the circumstances described above, constitutes bad faith. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Server (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use).
The Panel finds in favor of the Complainant, and the domain name <russell.biz> is hereby ordered to be transferred from Respondent to Complainant. Subsequent challenges under the Stop Policy against this domain name shall not be permitted.
John J. Upchurch, Panelist
Dated: July 10, 2002
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