Deluxe Corporation v. RGnames
Claim Number: FA0204000112601
Complainant is Deluxe Corporation, Shoreview, MN, USA (“Complainant”) represented by Linda M. Byrne, of Merchant & Gould P.C. Respondent is RGnames, Seoul, SOUTH KOREA (“Respondent”) represented by Choi Byeong-guk, of WangJin XinCheng Xi-yuan.
The domain name at issue is <deluxe.biz>, registered with Wooho T & C Co. d/b/a RGnames.
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.
G. Gervaise Davis III, Esq., is the single 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 25, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.
On May 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 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 15, 2002.
Complainant submitted additional submissions after the deadline on May 24, 2002. Respondent also submitted a late additional submission on May 24, 2002.
On June 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed G. Gervaise Davis III, Esq., as the single Panelist.
After submission of the case to the Panel and during consideration of it, the Panel issued an Order, dated August 5, 2002, directing the Respondent and RGNames to explain in writing, under oath, the apparent conflict created by the fact that RGNames appears as the registered owner of the domain name <deluxe.biz>, while Choi Byeongguk, who is listed as the contact person on the records, responded as the authorized representative of the owner of the domain, Ms. Youngmi Park. The Order asked for certain information, discussed below, and provided for time in which the parties could respond.
On August 14, 2002, RGNames responded that it was not the Registrant, and that Ms. Youngmi Park was, in fact, the owner, pursuant to a consignment agreement between RGNames and Park, a copy of which was furnished to the Forum, the Panel and the Complainant. Ms. Park also confirmed by email to the Forum that she was the registrant and Respondent in the case, per the email and fax from RGNames. Under the circumstances, the Panel has treated this as a Complaint against the true registrant Youngmi Park, even though RGNames is listed as the Respondent.
Transfer of the domain name from Respondent to Complainant.
The Complainant, Deluxe® Corporation (“Deluxe”), owns businesses that provide checks, business forms, labels, self-inking stamps, fraud prevention services, and customer retention programs. These products and services are provided to banks, credit unions, financial services companies, consumers, and small businesses. These businesses reach their respective customers through a number of distribution channels, including direct mail, the telephone, the Internet, and a nationwide sales force.
Deluxe® has been using the DELUXE® name in connection with its printed bank checks and related products since at least 1915. Deluxe has invested substantial sums of money in developing and marketing its business under the DELUXE® mark and has developed substantial goodwill and customer loyalty under this trademark. Deluxe enjoys a strong reputation among its customers for high quality products and services. Deluxe is the market leader in its industry for bank checks and business forms.
Deluxe owns several recent U.S. Federal Trademark Registrations for the word mark DELUXE® or containing the word DELUXE in a stylized mark, both of which are in International Class 16.
On March 27, 2002, the Respondent ("RGNames") registered the domain name <deluxe.biz>. Complainant alleges that this domain name is identical to the Deluxe marks owned by it, and that the Respondent has no statutory or common law trademark rights or any other right or legitimate interest to the mark DELUXE® or in the infringing domain name <deluxe.biz>. Complainant further asserts that the Respondent has registered and used the domain name in bad faith and that Respondent has registered the domain name primarily for the purpose of commercial gain by attracting traffic from potential on-line customers of Complainant. Complainant provides no evidence of either of the latter claims beyond its assertions that Respondent is not making a legitimate, non-commercial or fair use of the domain name. It argues that the website of the Registrar of the domain, at <www.wooho.com> does not show Respondent’s business listed.
Complainant’s entire evidence on the issue of bad faith registration appears limited to this undocumented and unsupported claim:
“It appears that Respondent’s primary purpose in registering and using the domain name is to mislead and divert web traffic intended for Deluxe Corporation. The only conceivable reason for Respondent to have registered the <deluxe.biz> domain name is to misappropriate Deluxe's goodwill or to sell the domain name to Deluxe Corporation.”
Although RGNames is listed as the Respondent, for the reasons explained in the introduction and history of this case, the Panel has accepted the fact that the true Respondent is Youngmi Park, and proceeded accordingly. Respondent is apparently a Korean woman who has recently moved to Beijing, China where she claims to operate, together with her husband, Byeong-guk Choi, a real estate sales and leasing business under the name “Deluxe.” As evidence of her right to use the name Deluxe, she submitted a certified Notarized Korean form showing the use of the business name Deluxe since 1993 in Korea, which lists her husband as the owner and proprietor of this business as of 2002. Although she has obvious difficulties with the English language, she makes a strong argument for her right to use this .biz domain, since it does not conflict with Complainant’s use and is a generic and descriptive word.
She denies registering the domain name in bad faith and points out that she has not offered it for sale, does not in any way compete with Complainant’s check printing business, and alleges that she intends to continue to use it in the business she and her husband have owned since 1993. She states she has never heard of the Deluxe check company, and points out that there are over 2,460,000 references to the generic word “Deluxe” in the Yahoo search engine listings. She also references the fact that there are literally hundreds of other domains using the word “Deluxe,” and points out that the whole purpose of ICANN establishing and permitting additional TLD’s was to permit other businesses with the same name to have an Internet presence. She acknowledges that Complainant has registered and uses <deluxe.com> as its Internet business address, as well as other domains using that word.
Respondent cites, to support her case, the <internetnews.info> case, where another Panel denied a requested transfer because common words and marks are intended to be available under the new TLD’s for use by others as new domains and because the words or marks at issue there were “not considered unusual or to require imaginative capacity or special sophistication.” INT Media Group, Inc. v. Vergara, D2002- 0249, (WIPO May 16, 2002).
SUPPLEMENTAL PLEADINGS AND PANEL ORDER
Both the Complainant and the Respondent filed Supplemental Briefs, which, however, were both filed after the deadlines set by the STOP Policy. Because they seem to add little to the disposition of this case and because as a matter of policy encouraging such filings could lead to further delays in what is intended as a summary proceeding, the Panel declines to consider them, although they were carefully read in their entirety.
However, because of an apparent inconsistency as to whom the actual owner of the domain name at issue was, the Panel issued the August 5, 2002, Order seeking further information on this issue. While the responses by RGNames and Ms. Park did not fully comply with the request of the Panel, in that they were not under oath, the information provided on August 13 and 14, 2002, by RGNames and Ms. Park did clarify the situation. The essence of the response was that Ms. Park had asked RGNames to handle the registration of a group of names for her, and in the process, RGNames registered the domain <deluxe.biz> but inadvertently used its own name as the owner/registrant, and has been unable to correct the situation since once a STOP complaint is filed, the records cannot be changed until a decision by the Panel is rendered.
Under the circumstances, the Panel will accept this explanation, which understandably confused both the Complainant and the Panel at the outset of the case and caused the Respondent to be named as RGNames. The fact that Ms. Park was at the time apparently registering a whole series of .biz domain names raises some question in the mind of the Panel as to the bona fide nature of the whole process described in the consignment agreement, but since the Panel is not authorized to conduct a trial of collateral issues in this summary proceeding, this decision is limited to the facts at hand. This Panel decision is expressly made without prejudice to the right of Complainant to raise such issues in any subsequent court proceedings that may take place in the future.
A. The domain name <deluxe.biz> is substantially identical to the Complainant’s registered word mark “Deluxe,” although it is not identical to Complainant’s registered logo which actually consists of a stylized letter “D” and the word “Deluxe.”
B. Respondent has established that prior to registration of the domain name in question, she and her husband have been using the name Deluxe as a business name, which meets the minimal requirements of STOP Policy ¶ 4(c)(iii) that does not require it be a registered trademark, unlike some UDRP Policy cases have held concerning other TLD’s.
C. Complainant has produced no evidence that Respondent registered the domain in bad faith or for any illegal purposes under the STOP Rules.
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 substantially 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’s Rights in the Mark
Complainant clearly has rights to the mark “Deluxe” within its Class 16 field of use, based on its two recently registered U.S. trademarks. However, the Panel rejects Complainant’s argument that somehow these registrations preclude any other business or person from registering or using the generic and usually descriptive word “Deluxe” for another business name or domain name. The mark is neither distinctive nor famous, apart from its particular use in the check printing business, and Complainant surely has no exclusive rights in the word “Deluxe,” apart from its stylized logos in its line of business.
The Panel notes that a quick search of the U.S. Trademark database indicates some 29 entries for the single word “Deluxe” and 553 entries with combinations of the word “Deluxe” and other words. Of these entries, only two relate to Complainant’s business. The mere fact that the domain at issue is similar to Complainant’s marks does not give exclusive rights to Complainant in any domain name with similar words, especially under these circumstances where the parties are in no way engaged in similar businesses and, at least at present, are doing business in totally different continents.
One of the primary reasons for the opening up of the .biz TLD was to provide other businesses, not in conflict with a trademark owner, with an opportunity to use the .biz and other new domains for businesses with names similar to other business owners. See, what is essentially the “legislative history” concerning the purpose of these new gTLD’s quoted in more detail in Newport Corp. v. Newport Electronics Inc., FA 114325 (Nat. Arb. Forum July 8, 2002), to the effect that “Addition of new gTLDs will allow different companies to have the same second-level domain name in different TLDs. Those businesses will have to compete based on price, quality and service, rather than the happenstance of which company locked up the most desirable domain name first.”
Based on this historical fact, alone, the Panel could decide this case in favor of the Respondent, but there are additional reasons that will be discussed for purposes of completeness.
The Panel is impressed with the arguments of Respondent, who has also presented formal documentation of prior use of the term “Deluxe” in her family business, even while struggling with a language not native to her. The STOP Policy provides that it is a defense to a domain name claim if the Respondent shows evidence of prior use of a business name with the mark, even if it is not a registered trademark, and Respondent’s documented evidence meets that requirement. STOP Policy ¶ 4(c)(iii).
Complainant, on the other hand, presents no evidence and merely makes the unsupported statement that Respondent has no rights to the name and may not be using it currently. Furthermore, Complainant’s argument that the Registrar’s website makes no mention of the mark is unavailing, since the Registrar merely registers the domain name – it does not operate the Respondent’s business and there is no reason whatsoever that its website would reference a domain owned by a Respondent. Complainant’s understandable confusion on this issue is the reason the Panel required the Respondent to explain this apparent inconsistency, which now appears to have been clarified. Prior to this clarification, Complainant initially equated the Registrar with the Respondent Youngmi Park, the billing contact and party that responded here through her authorized representative. Respondent Youngmi Park does not yet have a website since Respondent cannot use the new domain name while the STOP Policy case is pending and the Registrar cannot transfer the domain to Ms. Park until this decision clarifies the rights of the parties in the name.
The Panel believes the Complainant has failed to carry its burden of demonstrating that Respondent has no rights in the domain name.
As noted above, this Panel also agrees with Respondent that the whole purpose of the additional TLDs authorized by ICANN was to provide other businesses with an opportunity to use a domain name already in use at the .com, .org and .net TLD. This is obviously the reason that the STOP Policy makes prior use of the name in a business a defense to the charge of bad faith registration.
Because Complainant’s failure to carry the burden of proof on the second issue also dooms its case, the Panel could also stop here again, but to round out the case, we point out that Complainant has likewise failed to carry its burden of showing registration or use in bad faith by Respondent. Merely alleging bad faith from the simple fact of registration does not meet this burden. Some evidence is required. Cf., Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) “unsupported, self-serving allegations alone are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue.”
Here Complainant has provided no evidence of likely confusion, efforts to sell the domain name to Complainant or a competitor, inability of it to use the Internet because of Respondent’s registration of the domain at issue, or any other aspect that would show bad faith on the part of Respondent. Complainant seems to believe that merely asserting bad faith is sufficient to demonstrate bad faith. It is not. Respondent has illustrated many reasons for its registration of the domain and the valid public policies behind allowing additional TLD’s such as the .biz extension.
In the judgment of the Panel Respondent is not guilty of bad faith registration and there has been no use yet, so that cannot be shown either. Complainant’s case fails on this issue, as well.
Accordingly, the Complainant’s request that the domain name <deluxe.biz> be transferred to it is denied. For a similar result, based on similar facts involving another generic term used as a trademark, see Dial Corp. v. Swarthmore Assoc., LLC, DBIZ2002-0102, (WIPO, June 30, 2002).
However, in light of the issue, not resolved in this case, of why Respondent was registering a whole series of .biz names, in addition to <deluxe.biz>, the Panel rules that subsequent challenges to the use of the domain name by Respondent shall be permitted by other parties in the future.
G. Gervaise Davis III, Esq., Panelist
Dated: August 23, 2002
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