Complainant is Academy Ltd., Katy, TX, USA (“Complainant”) represented by Laura D. Robertson, of Fulbright & Jaworski LLP. Respondent is today, Seoul, SOUTH KOREA (“Respondent”).
The domain name at issue is <academy.biz>, registered with Yesnic Co.
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.
David A. Einhorn appointed 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 April 28, 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”).
A timely Response was received and determined to be complete on May 22, 2002.
Additional submissions were received from Complainant on May 29, 2002.
On June 6, 2002, pursuant to STOP Rule 6(b), the Forum appointed David A. Einhorn as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
[a.] Academy, Ltd. (hereinafter “Complainant”) owns the mark ACADEMY for use in connection with retail store services in the field of western wear; hunting, fishing and sporting equipment and outfitting; sporting and athletic equipment, gear and footwear; and outdoor and recreational equipment, outfitting and merchandise, as well as the U.S. Registration No. 1,922,968 corresponding thereto. Predecessors of Academy, Ltd. commenced use of the mark ACADEMY in 1951 and have used the mark in commerce to identify retail store services continuously since that time.
[b.] The domain name, <academy.biz>, is identical to Complainant’s mark.
[c.] Respondent has no rights or legitimate interest in the domain name, <academy.biz>. To the best of Complainant’s knowledge, Respondent does not own a trademark registration for the mark ACADEMY. Additionally, Respondent is not known by the name ACADEMY and it does not operate a business or other organization under the name ACADEMY. Instead, Respondent goes by the name “Today”. Further, Respondent has made no demonstrable preparation to use the domain name <academy.biz> in connection with a bona fide offering of goods or services.
[d.] Respondent registered the domain name <academy.biz> in bad faith. Complainant’s ACADEMY mark is well-known and Respondent either knew or should have known of its rights in this mark. Moreover, research into the ICANN-Accredited registrar for <academy.biz> has shown that the registrar is one of the top offenders of cybersquatting .biz domain names. Specifically, the registrar in question registers .biz domains by providing fake trademark registration numbers.
[a.] The word “academy” is a common noun that indicates a school for training in a specific art or skill. “Academy” is a generic term.
[b.] ACADEMY is not a famous trademark.
[c.] Respondent has never heard of Complainant or its goods and services.
Panelist has reviewed and considered the additional submission of Academy, Ltd. A synopsis of arguments in that submission is as follows:
[a-b] Jongchul Jeong filed a response to Academy, Ltd.’s Complaint. While Mr. Jeong is listed as an administrative assistant for registrant, there is no evidence that he is personally the current owner of the domain, <academy.biz>.
[c] Respondent did not dispute that the domain name, <academy.biz>, is identical to Complainant’s trademark.
[d] Respondent failed to submit any evidence that it owns or is a beneficiary to a trademark or service mark identical to the domain, <academy.biz>.
[e] Respondent failed to show that it has used or made demonstrable preparation to use the domain, <academy.biz> before receiving notice of this dispute.
[f] Respondent failed to prove that it, or an associated business or organization, has been commonly known by the domain, <academy.biz>.
[g] <academy.biz> is a well-known mark subject to an existing trademark registration and therefore, Respondent had constructive notice of Complainant’s rights when it sought registration of <academy.biz>.
The domain name <academy.biz> is identical to Complainant’s claimed registered trademark, ACADEMY.
Complainant alleges that it has rights in the mark deriving from the U.S. federal registration #1,922,968 for the mark, ACADEMY. Complainant does not submit a status copy or other evidence of this registration. The Panel notes that Complainant is probably intending to refer to trademark registration #1,911,968 for ACADEMY.
“Academy” is a common term in the English language.
Complainant’s bare allegation that the mark ACADEMY is well-known or famous, without any other explanation or evidence in support thereto, is insufficient to prove this contention.
Complainant’s argument that the Yesnic Co. registrar is in the business of registering .biz domains by providing fake trademark registration numbers is not accepted by this Panel as having been established. On the contrary, Complainant’s own Exhibit 5 consists of a document stating that “the large number of generic words applied for by this registry may turn out to have genuine trademark numbers”.
Respondent has not offered evidence that it has any right or other legitimate interests in the mark ACADEMY.
Complainant has failed to prove that the domain name <academy.biz> was registered or used by Respondent 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.
Complainant has rights in the mark ACADEMY by reason of its registration of the mark with the United States Patent and Trademark Office.
Accordingly, Paragraph 4(a)(i) of the STOP Policy has been satisfied by Complainant.
Respondent has not shown that it has any rights or legitimate interests in the mark ACADEMY. Respondent has not alleged that it owns a trademark identical to ACADEMY. Neither has Respondent alleged that it has made demonstrable preparation to use this domain, nor that it, or an associated business or organization, has been commonly known by the domain name, <academy.biz>.
Accordingly, Paragraph 4(a)(ii) of the STOP Policy has been satisfied by Complainant.
“Academy” is a common term in the English language. Respondent’s assertion that it has never heard of Complainant or of its goods or services is not rebutted by Complainant. Complainant alleges that Respondent had constructive knowledge of its mark because the mark is well-known. This argument is rejected in light of the fact that Complainant has provided no evidence to support its bare allegation that the mark is well-known or famous.
Accordingly, Paragraph 4(a)(iii) of the STOP Policy has not been satisfied by Complainant.
The Complaint of Academy, Ltd. with respect to the domain name <academy.biz> is hereby dismissed. Accordingly, this Panel orders that the domain name at issue not be transferred from the Respondent to the Complainant. As Respondent has not shown that it has any rights or legitimate interests in the <academy.biz> domain name, subsequent challenges under the STOP Policy against this domain name shall be permitted.
David A. Einhorn, Panelist
Dated: June 19, 2002
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