Philatelic.Com v. Peter I. Jeong
Claim Number: FA0204000112547
Complainant is Philatelic.Com, Houston, TX, USA (“Complainant”) represented by Gregory K. Deeter. Respondent is Peter I. Jeong, Osan-si Kyounggi-do, KOREA (“Respondent”) represented by Kijoong Kim.
The domain name at issue is <sex.biz>, registered with Gabia 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.
Tyrus R. Atkinson, Jr., 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 2, 2002.
On May 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 5, 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 5, 2002.
Complainant submitted an Additional Response on June 10, 2002. Respondent submitted an Additional Response on June 15, 2002.
Complainant submitted an untimely second Additional Submission. Therefore, The Forum does not consider Complainant’s second Additional Submission to be in compliance with STOP Supplemental Rule #7.
On July 10, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, Jr., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant is Gregory K. Deeter who contends that he does business as Philatelic.Com in Houston, Texas.
Complainant contends that SEX.BIZ has been used as a service/trademark since 1996 and is now registered with the USPTO with serial number 78/120634.
The <sex.biz>domain name is exactly the same as the name Complainant has been using in business since 1996.
Respondent is not the owner or beneficiary of a trade or service mark that is identical to the domain name.
Respondent has shown no demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
Respondent has not been commonly known by the domain name.
The domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain to a competitor for valuable consideration in excess of out of pocket costs.
Respondent offers to sell the domain name.
Respondent has registered the domain name for the purpose of disrupting the business of a competitor by ignoring Complainant’s IP claim with Neulevel.
Respondent is creating the likelihood of confusion with Complainant’s mark.
Respondent is “Personal” which is the name used by Peter I. Jeong of Osan-si, Kyounggi-do, Korea, for the purpose of registering the domain name, <sex.biz>with Gabia.com.
Complainant has no rights in SEX.BIZ. It is not identical to a trademark or service mark in which Complainant has rights.
Complainant seems to assert rights as holder of a common law trademark. But a trademark to a generic term like ‘sex’ is not allowed except in a special case when the generic term has got a secondary meaning. No evidence is presented by Complainant of what kind of business the mark has been used for or any evidence of secondary meaning.
Respondent has made demonstrable preparations to use the domain name.
Before any notice to Respondent of this Complaint, Respondent knew nothing about the Complainant or about the trademark alleged by Complainant. Complainant is an unknown person in Korea. Respondent registered the domain name in good faith.
C. Additional Submissions
Complainant, in his Additional Response, states that he has hired an attorney to oversee Complainant’s rights to the mark by monitoring and handling all future filings and responses with the United States Patent and Trademark Office. Complainant has on file with the County Clerk of Harris County, Texas, a Certificate of Operation of Assumed Name for SEX.BIZ showing the owner as Complainant. The remaining contentions refer to certain correspondence with Respondent, which has no particular relevance to this dispute.
Respondent in his Additional Response points out that Complainant did not in his Additional Response present any evidence of trademark registration or how and when Complainant used SEX.BIZ in any manner at all. Respondent attempts to explain why he registered the domain name under the registrant name, “personal” as opposed to his actual name. The remaining allegations are of little relevance to this proceeding.
1. Complainant is an individual residing in Houston, Texas, who does not reveal what business, if any, he conducts.
2. Respondent is an individual residing in Korea, who does not reveal what business, if any, he conducts.
3. Respondent registered the domain name, <sex.biz>, on March 27, 2002, under the Registrant Name of “Personal.”
4. Complainant has no rights in the name, <sex.biz>.
5. Respondent has no rights or legitimate interests in the name, <sex.biz>.
6. Reverse Domain Name Hijacking has occurred in this dispute.
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.
The first determination to be made in a case of this kind is a comparison of the domain name and the name in which Complainant contends that he has rights.
The purpose of the Start-up Trademark Opposition Policy and Rules for .biz is to examine the .biz domain name “matching the exact alphanumeric string contained in the trade or service mark in which the Claimant has rights.” see Paragraph (1). The domain name must “identically” match a trade or service mark string. The Policy does not make it clear whether the .biz domain name must be exactly the same as the trademark or service mark, as opposed to whether the .biz name is merely identical to some part of a trademark or service mark in which Complainant has rights.
In comparing the .biz and trademark or service marks alleged to be held by Complainant in this case, the first consideration is to ignore the generic top level (“gTLD”) domain indicators. The indicator, .biz, is irrelevant when determining whether a domain name and mark are identical. see Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA102811 (Nat. Arb. Forum Feb. 8, 2001). No characters and symbols that are impermissible in domain names, such as apostrophes, ampersands, and other punctuations are to be considered. see Commercial Investors Realty v. Bank of New York, FA103040 (Nat. Arb. Forum Feb. 18, 2002).
What is left of the names involved in this case is the word, SEX.
Complainant contends that he holds a trademark or service registration with the United States Patent and Trademark Office for the mark, SEX.BIZ. This bare allegation is not supported by copies of a trademark registration or application for a trademark. Complainant contends that he has common law trademark rights in SEX.BIZ by reason of his use of the mark since 1996. No evidence is presented by Complainant that he has operated under the mark at any time. Complainant’s terse and incomplete Complaint contained absolutely no evidence of any kind to support the bare contentions noted above.
In a STOP proceeding the Complainant is required to “Specify the trademark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used (the Complainant may also separately describe other goods and services for which it intends, at the time the complaint is submitted, to use the mark in the future).” See Rule 3(c)(viii), Rules For Start-Up Trademark Opposition Policy. Complainant makes no attempt to comply with this Rule.
Recent STOP Policy decisions insist that a party produce “concrete evidence” to support the allegations contained in the pleadings. See PRL USA Holdings, Inc. v. Search Hound, DBIZ2001-00010 (WIPO Feb. 13, 2002). That case accepted the reasoning set out in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), which stated: “Concrete evidence constitutes more than mere personal assertions. Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of registered marks, so should the Panel require that a respondent come forward with concrete evidence that the assertions made in the response are true. Evidence in the form of documents or third party declarations should be furnished in support of such assertions.”
Under the reasoning of these decisions, Complainant’s “mere personal assertions” that he has a trademark registration and common law rights, are insufficient to prove Complainant’s rights to the mark, SEX.
Respondent contends that the word, SEX, is a common, generic term. Respondent presents no evidence to support this assertion. Complainant makes no attempt to contest this contention either by argument or proof even in the Additional Response when put upon notice of Respondent’s position on this point.
A mark that is a common descriptive name of an article or thing is referred to as a generic mark. A generic term is one that refers to the genus of which a particular product is a species. See Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985). The word, SEX, appears to be a generic word.
In theory, Complainant might establish that a commonly descriptive term has acquired sufficient secondary meaning to be exclusively associated with Complainant and thereby serve as a trademark or service mark. However, where the mark alleged is a highly descriptive term, a party seeking to establish exclusive rights carries a heavy burden of proof in removing the term from the public domain. see Bar Code Discount Warehouse, Inc. v. Barcodes, Inc., D2001-0405 (WIPO July 27, 2001); Pet Warehouse v. Pets.com, Inc. D2000-0105 (WIPO Apr. 13, 2000).
To establish common law rights in a descriptive word, Complainant must prove secondary meaning. Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See Amsec Enterprises, L.C. v. McCall, D2000-0083 (WIPO Apr. 3, 2000).
Complainant makes no attempt to prove any of the methods that would entitle him to rights in the word, SEX. A complete examination of the pleadings and exhibits reveal no proof on this issue. A Panel is required to “decide a complaint on the basis of the statements and documents submitted…” Rule 15. Where Complainant fails to submit statements and documents sufficient to permit a decision in Complainant’s favor, the Policy requires the dismissal of the Complaint.
Thus, under the reasoning of PRL USA Holdings, Inc. v. Search Hound, which the Panel finds is the correct standard to be applied in this case, and the Rules, Complainant must lose this domain name dispute proceeding.
Findings under this section are unnecessary because of Complainant’s failure to show rights in the word, SEX. Respondent relies upon the proposition that the domain name is a generic word in which no party has rights or interests superior to any other person or organization. By Respondent’s own admission, he has no rights or interests in the word, SEX.
Findings under this section are unnecessary.
Respondent demands a finding on this issue. The Panel must conclude that the insubstantial allegations of the Complaint and complete failure to produce evidence, represents an attempt at Reverse Domain Name Hijacking, and under the requirement of Rule 15(d), the Panel states the finding in the decision.
The Complaint of Gregory K. Deeter DBA Philatelic.com is dismissed and the demand that the domain name, <sex.biz>, be transferred is denied. It is held that additional challenges will be permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 24, 2002.
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