Key 3 Media Events Inc. v. Park Sungjo
Claim Number: FA0204000112540
Complainant
is Key 3 Media Events Inc., Chicago,
IL, USA (“Complainant”) represented by Mark
Partridge, of Pattishall McAuliffe
Newbury Hilliard & Geraldson.
Respondent is Park Sungjo,
Seoul, SOUTH KOREA(“Respondent”).
The
domain name at issue is <comdex.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.
Judge
Harold Kalina (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 28, 2002; the Forum
received a hard copy of the Complaint on May 1, 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”).
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 30, 2001, pursuant to STOP Rule 6(b), the Forum
appointed Judge Harold Kalina (Ret.)
as the single Panelist.
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.
A.
Complainant
The
<comdex.biz> domain name is
identical to Complainant's COMDEX mark.
Respondent
has no rights or legitimate interests in the <comdex.biz> domain name.
Respondent
registered the <comdex.biz>
domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant operates a technology
tradeshow under the name COMDEX. On May
5, 1981 Complainant registered the mark
with the United States Patent and Trademark Office as Registration Number
1,153,368. Complainant’s tradeshow is
known as the global information technology marketplace where buyers, sellers
and influencers do business and make technology decisions. Complainant and its predecessors have spent
millions of dollars in advertising and promoting the COMDEX mark in connection
with their products and services throughout the United States and the rest of
the world.
Respondent registered the disputed domain
name on March 27, 2002. There is
evidence that Respondent has registered thirty-nine domain names other than
<comdex.biz>.
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 to the COMDEX mark through continuous use
and registration with the United States Patent and Trademark Office. Respondent’s <comdex.biz> domain name is identical to Complainant’s COMDEX
mark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore, when Respondent fails to
submit a Response, the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In
the absence of a response, it is appropriate to accept as true all allegations
of the Complaint”).
There is no evidence on record and
Respondent has failed to come forward to present any evidence that it owns a
trademark or service mark for COMDEX or <comdex.biz>. Therefore
Respondent has not established that it has rights or legitimate interests in
the disputed domain name pursuant to STOP Policy ¶ 4(c)(i). See
Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat.
Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come
forward with a Response, the Panel could infer that it had no trademark or
service marks identical to <grammy.biz> and therefore had no rights or
legitimate interests in the domain name).
Respondent registered a domain name that
is identical to Complainant’s well-known mark.
As a result, Internet users looking for Complainant will be led to
Respondent’s website. Creating a
likelihood of confusion as to the source, sponsorship or affiliation of a
website in order to attract Complainant’s customers to Respondent’s website is
not considered to be a bona fide offering of goods or services pursuant to STOP
Policy ¶ 4(c)(ii). See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat.
Arb. Forum March 21, 2002) (finding the Respondent’s “intent to
trade [on] the goodwill of Complainant’s mark, by attracting Internet users
confused as to the likely affiliation between Complainant and Respondent’s
website” indicated the Respondent had no rights or legitimate interests
pursuant to STOP Policy ¶ 4(c)(ii)).
Respondent is known to the Panel as Park
Sungjo, and there is no evidence on the record that establishes that Respondent
is commonly known by any other name.
Because there is no evidence that Respondent is commonly known as COMDEX
or <comdex.biz> Respondent has
no rights or legitimate interests in <comdex.biz>
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 Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in domain name when Respondent is not known by the mark).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Due to the nature of the STOP IP
notification procedure Respondent received actual notice of Complainant’s
rights in the <comdex.biz>
domain name before Respondent registered the disputed domain name. Despite this notice, Respondent proceeded to
register the <comdex.biz>
domain name. Because Respondent has no rights in the disputed domain name this
is evidence of bad faith registration. See 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> when Respondent registered it with “full knowledge that
his intended business use of this domain name was in direct conflict with a
registered trademark of a known competitor in exactly the same field of
business”); see also 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”).
It can be inferred based on the nature of
Complainant’s mark and the longstanding use of the COMDEX mark in the computer
industry that Respondent intended to use the domain name to attract Internet
users to its own website for its own commercial gain. This type of use is considered to be evidence of bad faith
pursuant to STOP Policy ¶ 4(b)(iv). See Pillsbury Co. v. Prebaked Scandinavia ab,
FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain
name identical to Complainant’s mark to be in bad faith under STOP Policy ¶
4(b)(iv) when use of the domain name would likely cause confusion as to the
affiliation between Respondent and Complainant); see also Fluor Corp. v. Song,
FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s
<fluor.biz> domain name was identical to the Complainant’s FLUOR mark,
Internet users would likely believe an affiliation between the Respondent and
Complainant).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the
domain name <comdex.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
Judge
Harold Kalina (Ret.), Panelist
Dated: July 8, 2002
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