Kalmar Industries USA, Inc. v. Lee
Yeongsuk
Claim Number: FA0204000112504
PARTIES
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.
DECISION
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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