Pioneer v. Kim Dong-Gum
Claim Number: FA0204000112486
Complainant is Pioneer, Long Beach, CA, USA (“Complainant”) represented by Robert J. Skousen, of Skousen & Skousen. Respondent is Kim Dong-Gum, Seoul, SOUTH KOREA (“Respondent”).
The domain name at issue is <elite.biz>, registered with EchoKorea, Inc. d/b/a DomainRG.
On July 8, 2002, pursuant to STOP Rule 6(b), the Forum appointed James P. Buchele as the single Panelist. 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.
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 May 2, 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 June 3, 2002, Complainant submitted an additional submission pursuant to Forum Supplemental Rule 7, which was received timely.
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.
1. Respondent’s <elite.biz> domain name is identical to Complainant’s ELITE mark.
2. Respondent has no rights or legitimate interests in the <elite.biz> domain name.
3. Respondent registered the <elite.biz> domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant is the owner of U.S. Trademark Reg. No. 1,591,868 for the ELITE mark denoting the following goods and services: audio and video products, amplifiers, video disc players, compact disc players and monitor televisions, among others. Complainant registered the ELITE mark on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) on April 17, 1990. Complainant’s registered mark has been continuously used since 1988.
Respondent registered the disputed <elite.biz> domain name on March 27, 2002. Complainant’s trademark search of Respondent revealed no pending or registered trademarks for the use of the ELITE mark. Respondent is not authorized or licensed to use Complainant’s ELITE mark.
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 established that it has rights in the ELITE mark through registration with the USPTO and subsequent continuous use since 1988.
Respondent’s <elite.biz> domain name incorporates Complainant’s mark in its entirety. Respondent’s disputed domain name emulates Complainant’s mark in form and spelling. Therefore, Respondent’s domain name is identical to Complainant’s ELITE mark.
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward with a Response. Therefore, it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent has not come forward to proffer any evidence that it has trademark rights in the ELITE mark anywhere in the world. As previously stated, Complainant’s online trademark investigation failed to yield any results indicating outstanding applications or registrations under Respondent’s name. Therefore, Respondent has no rights or legitimate interests in the <elite.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).
Eventual use of the disputed domain name will inevitably cause confusion among Internet users searching for Complainant. 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”).
Additionally, there is no evidence on the record and Respondent has not come forward to establish that it is commonly known by the <elite.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Due to the nature of NeuLevel’s STOP registration procedure and Complainant’s listing on the Principal Register of the USPTO, Respondent is thought to have been on notice of Complainant’s rights in the ELITE mark. Respondent’s registration of the disputed domain name while lacking rights or interests in the domain name, and despite being placed on notice, evidences bad faith under STOP Policy ¶ 4(a)(iii). 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>”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the STOP Policy, the Panel concludes that the requested relief should be hereby GRANTED.
Accordingly, it is Ordered that the <elite.biz> domain name be TRANSFERRED from Respondent to Complainant. NO FURTHER CHALLENGES against this domain name shall be permitted under the STOP Policy.
James P. Buchele, Panelist
Dated: July 11, 2002
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