EASY-FLO VACUUM SYSTEM LTD. v. Kim Seung-nam
Claim Number: FA0204000112531
PARTIES
Complainant is
EASY-FLO VACUUM SYSTEM LTD., Chilliwack, BC, CANADA (“Complainant”)
represented by Bert Brunia.
Respondent is Kim Seung-nam, Nam-ku Pohang, SOUTH KOREA
(“Respondent”).
The domain name at issue
is <vacuum.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.
Honorable Paul A. Dorf
(Ret.) 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 14, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of June 3, 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 June 3, 2002.
On July 1, 2002 pursuant
to STOP Rule 6(b), the Forum appointed Honorable Paul A. Dorf (Ret.) as the
single Panelist.
Transfer of the domain
name from Respondent to Complainant.
A. Complainant
The Complainant contends
that the domain name at issue is confusingly similar to its <vacuum.ca>
website and common law mark; that the Respondent has no rights or legitimate
interests in the domain name at issue; and that the domain name at issue was
registered in bad faith.
B. Respondent
The Respondent contends
that the domain name at issue was registered for the purpose of providing free
information, as he has done with other websites. The Respondent also contends that the word vacuum is being widely
used, and that he did not register the domain name at issue in bad faith.
The Complainant has not
presented any evidence to support its position for use of the mark
"vacuum." The Complainant
states that it has used "vacuum" as well as "vacuum
systems" and "Easy-Flo Central Vacuum Systems" in commerce as
common law marks since 1977. In 1998,
the Complainant started a internet based vacuum system information and parts
directory at <Vacuum.ca>.
The Complainant offers
no evidence to show that the Respondent has no rights in the mark or registered
the domain name at issue in bad faith.
It is this Panel’s
finding that "vacuum" is a generic term; therefore the Complainant
has no protectable rights in the mark.
As this is the case, it is unnecessary to determine whether the
Respondent has rights or legitimate interests in the domain name at issue, or
if the domain name at issue was registered in bad faith. Vietnam Venture Group v. cosmos
consulting gmbh, FA 102601 (Nat. Arb. Forum Feb. 6, 2002) (dismissing the
Complaint because (1) the Complainant did not hold a registered trademark in
VVG, and (2) the Complainant did not demonstrate sufficiently strong
identification of its mark such that there would be recognition among Internet
users that the VVG mark identified goods or services unique to the
Complainant).
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.
As "vacuum" is
a generic term, neither party has demonstrated protectable rights in the mark;
therefore, Paragraph 4(a)(i) of the STOP Policy has not been satisfied.
As stated above,
Respondent has not demonstrated protectable rights in the mark and does not
have the right to exclude others from use of such a mark, be it in a domain
name or otherwise.
It is
not necessary to determine if the domain name at issue was registered in bad
faith, as the Complainant has failed to demonstrate protectable rights in the
mark "vacuum."
DECISION
The Complaint is dismissed. No further challenges are pending against
this domain name under the STOP Policy.
Honorable Paul A. Dorf
(Ret.) Panelist
Dated: June 16, 2002
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