Kalmar Industries USA, Inc. v. Lee Yeongsuk
Claim Number: FA0204000112504
Complainant is Kalmar Industries USA Inc., Dallas, TX, USA (“Complainant”) represented by Russell Holloway, of Gardere Wynne Sewell. Respondent is Lee Yeongsuk, Kyungsangpuk-do, KOREA (“Respondent”).
The domain name at issue is <ottawa.biz>, registered with Yesnic Co. Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C. 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 27, 2002; the Forum received a hard copy of the Complaint on May 2, 2002.
On May 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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 23, 2002.
Complainant’s Additional Response was received June 10, 2002, after the deadline for submissions under the Policy. In that Response, Complainant claimed that Respondent’s Response was untimely and therefore did not comply with the STOP Procedure, and therefore should not be entered into the record. The submission also included a reply to Respondent’s Response to the domain name Complaint.
Complainant’s submission that Respondent’s Response was untimely is incorrect. Paragraph 5. a of the STOP Rules provides:
“Within twenty (20) calendar days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the provider.”
Paragraph 4. c states:
“The date of commencement of the administrative proceeding shall be the date the complaint is notified by the Provider to the Respondent.”
In this case, the date of commencement of the proceeding was May 8, 2002, the date on which the complaint was notified to the Respondent. At that time, in accordance with the Rules, Respondent was given twenty (20) days until May 28, 2002, in which to file a response. The Response was filed with the provider on May 23, 2002. Therefore the Response was timely.
In so far as the remainder of the Complainant’s Additional Response is concerned, while some of it is repetitive, Complainant raises important points in response to Respondent’s Response. Therefore, to ensure the fairness of the process to all parties as required by the Policy and Rules, the Panel will consider the Complainant’s arguments in the Additional Response to the extent those submissions are in reply to the Response.
On June 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed Anne M. Wallace, Q.C., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant owns a trademark for OTTAWA used in connection with truck tractors, and has used the mark in connection with that business since at least as early as 1958. There is no evidence of Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Respondent was not authorized to use Complainant’s marks. Respondent has never been commonly known by the domain name and has no legitimate non-commercial or fair use of the domain name. The domain name is not a nickname of Respondent or in any other way identified with or related to a legitimate interest of Respondent.
Complainant submits that the inference to be drawn from the evidence is that the name was registered by Respondent for the primary purpose of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site or other on-line locations. Respondent was on notice of the existence of Complainant’s OTTAWA mark when it registered <ottawa.biz>. This is evidence of bad faith.
Registration of the domain name prevents Complainant as owner of the trademark OTTAWA, from reflecting the mark in the domain name at issue. This type of behavior is bad faith.
Respondent submits that OTTAWA is a commonly known word, and while Complainant is the holder of a trademark for OTTAWA, because OTTAWA is a common word, Complainant cannot assert exclusive rights to the word. The common noun, OTTAWA is the capital of Canada and is a worldwide known name. It is also the name of a river flowing through the mid-eastern part of Canada.
Respondent claims that Respondent did not know that Complainant held a trademark in OTTAWA when Respondent applied for the <ottawa.biz> domain name. Searches of OTTAWA in Korea do not disclose any rights of Complainant in the mark.
Respondent merely applied to reserve the right to register a commonly known common noun and obtained that right. Therefore Respondent had a legitimate interest in possessing the domain name.
Respondent registered the domain name for the purpose of carrying out Internet related businesses, such as web hosting, e-mail services and others. Respondent applied for <ottawa.biz>, <4989.biz>, <cairo.biz>, and <bombay.biz>, and obtained them in order to “undertake the worldwide Internet business”. Respondent was preparing to provide web-hosting and e-mail services with <ottawa.biz> before being notified of the subject matter of the domain name dispute. <4989.biz>, which was registered the same day as ottawa.biz. <Ottawa.biz> would be operating as well were it not for this dispute. Therefore, Respondent has legitimate interests in the domain name.
Respondent submits that a common domain name cannot be registered in bad faith. Respondent repeats that it was not aware of Complainant’s trademark rights when it registered the domain name. Complainant is not well known in Korea and searches do not reflect Complainant’s business or its connection with the trademark OTTAWA.
Respondent cites several cases involving generic words where Respondents have been successful, and asserts that these cases support the contention that in this case the generic word OTTAWA should be treated in a similar fashion. These cases included the following:
<Craftwork.com> : Gen. Mach. Prods. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum March 16, 2000).
<Eradio.com> : Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., (WIPO May 26, 2000).
<Cartoys.net> : Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum March 20, 2000).
<Digitalcitymap.com> : Digital City, Inc. v. Smalldomain, D2000-1283 (WIPO Nov. 6, 2000).
<petwarehouse.com> : Pet Warehouse v. Pets.com, Inc., D2000-0105 (WIPO April 13, 2000).
Respondent has admitted that the domain name is identical to a trademark in which Complainant has rights. For purposes of the STOP procedure, it is irrelevant that Ottawa is the capital of Canada and also the name of a river.
The fact that the domain name may be used as a noun does not represent a legitimate interest in the domain name and does not give Respondent a right or interest in the domain name.
Respondent’s registration of the domain names for the purpose to “undertake the worldwide Internet business” is not a legitimate interest. It is unclear what businesses Respondent engages in. Respondent registered the four .biz names referred to in the Response. Respondent provided as evidence a copy of its web page <4989.biz>, which lists multiple domain names offered under a “web hosting” or “email-forwarding” service. Respondent does not provide information about its “services” or the domain names listed. From the web page provided, it appears that Respondent’s business consists of applying for various domain names and then subsequently offering them for sale to others in the form of a “web hosting” or “email forwarding” service through the website <4989.biz>.
Respondent says it acquired all four web sites to provide this “service”. However, Respondent’s evidence shows that the other three names, including the disputed name, are domain names being offered through the <4989.biz> web site. This is further evidence that Respondent has no particular interest in the domain name other than to turn around and sell it.
The STOP Policy requires that the Respondent have specific interest in the particular domain name at issue. Respondent has not shown any such particular interest. Respondent has merely asserted an interest in selling domain names. The interest of acquiring a domain name for the purpose of making money by selling the domain name is not a legitimate interest in the domain name. Respondent has presented no evidence of any legitimate interest in the domain name.
Respondent’s assertion that the name OTTAWA is generic and cannot be registered and used in bad faith is without merit. Complainant has a registered trademark for OTTAWA. The status was obtained either because the word is inherently distinctive or has acquired secondary meaning.
While Respondent claims it was not aware of Complainant’s rights, Respondent was on notice of Complainant’s rights via the IP Claim Notice. Therefore, proceeding to register the domain name despite knowledge of such rights is evidence of bad faith. Respondent admits having received the Notice; therefore Respondent had actual notice. The fact Respondent proceeded to register the domain name when it had notice of Complainant’s rights, is evidence of bad faith.
The Panel has found in this case that the domain name <ottawa.biz> is identical to Complainant’s trademark, that Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered and is being used in bad faith.
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.
There is no question that Complainant has rights in the trademark OTTAWA. Complainant filed evidence of its US trademark registration for the trademark. Complainant has been using the mark since at least 1958 and the trademark was registered December 13, 1994.
Respondent has provided no evidence of any right or legitimate interest in the domain name as is required by the STOP Policy. While OTTAWA may be used in different contexts, including the fact it is the capitol of Canada and the name of a river in Canada, it is a distinctive word which, as evidenced by Complainant’s registered trademark, is capable of distinctive meaning.
Applying the STOP Policy to this case, it is clear that Respondent is not the owner or beneficiary of any trade or service mark that is identical to the domain name. Respondent cannot claim that it did not have notice of a dispute with respect to the name, when it had notice through the IP Claim Notice. Furthermore, while Respondent asserts that it was intending to use the domain name for a similar business to that of <4989.biz>, Respondent has provided no evidence that it had used or was making demonstrable preparations to use the domain name before it had knowledge of Complainant’s claim. The fact Respondent placed the name for sale on the <4989.biz> web site also tends to demonstrate that Respondent’s intentions for the name were to sell it.
In addition, there is no credible evidence of Respondent having used or preparing to use the domain name in connection with a bona fide offering of goods or services. Lastly, there is no evidence that Respondent has been commonly known by the domain name.
On the evidence before me, the logical inference is that Respondent picked domain names, without regard to whether a third party had rights in the name, for purposes of re-selling the domain names. While this might, in certain circumstances amount to a legitimate business interest, in this case, where it flies in the face of Complainant’s rights of which Respondent had notice, it is not a legitimate business interest within the meaning of the Policy.
Respondent has failed to establish rights or a legitimate interest in the domain name.
Under the STOP Policy, the Complainant will be successful if the Panel finds that the name was registered or is being used in bad faith.
Respondent knew, through the IP Claim Notice that Complainant claimed rights in the OTTAWA trademark. Respondent, nevertheless, went ahead and registered the domain name. While this alone might not amount to bad faith, it is certainly cogent evidence of it. Furthermore, it is clear from Respondent’s own evidence that Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to a third party for valuable consideration. Respondent’s web site <4989.biz> offering the name in this fashion is clear evidence that Respondent intended to sell the domain name to someone willing to purchase it, whether that be the Complainant or a competitor. This being the case, the name is being used in bad faith within the meaning of the STOP Policy.
The Panel finds in favour of the Complainant and orders that the domain name <ottawa.biz> be transferred to Complainant.
Further challenges against this domain name under the STOP Policy shall not be permitted.
Anne M. Wallace, Q.C., Panelist
Dated: July 8, 2002
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