Charles Nofal Inc. v. Kitak Cho
Claim Number: FA0205000114330
Complainant is Charles Nofal Inc., St. Augustine, FL, USA (“Complainant”). Respondent is Kitak Cho, Seoul, SOUTH KOREA (“Respondent”).
The domain name at issue is <america.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.
P. Jay Hines 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 May 19, 2002; the Forum received a hard copy of the Complaint on May 23, 2002.
On June 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 8, 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 July 8, 2002.
Complainant’s Additional Submission was received and determined to be complete on July 8, 2002. Respondent submitted a timely reply, which was received on July 15, 2002.
On July 19, 2002, pursuant to STOP Rule 6(b), the Forum appointed P. Jay Hines as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant contends that it has used the mark AMERICA in connection with software described as a universal application for use in connection with designing browsers for Internet start-ups. Complainant claims it is the holder of several trademarks for AMERICA and identifies two pending Federal applications, Serial Nos. 75/208,309 and 78/065,095. It claims the software was unveiled in 1996 and first distributed on the Internet in 1997.
Complainant contends that Respondent is a non-U.S. entity with no business activities in the U.S., is not commonly known by the word “America” and has not established any trademark or service mark rights in the term “America.” Complainant further contends that Respondent may offer competing services at a web site at <unitel.co.kr>. Complainant also claims that Respondent contacted Great Domains, Inc. to obtain an appraisal for the domain name <america.biz> and concludes that the assumption should be that Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring it.
Respondent claims that the word “America” cannot be protected as a mark because it is a generic word and is geographically descriptive. Respondent claims that any rights the Complainant may have in the mark are limited to its specific goods and services. Respondent claims that it has operated a private business under the name “America sangsa” since December 20, 1977 in connection with wholesale and retail trade of imports and exports of foods and miscellaneous goods. Respondent claims that it requested construction of a web site from DreamN Inc. in February 2002 with respect to the domain name <america.biz>. In support of these contentions, Respondent provides an undated investor list and a contract with DreamN Inc. dated April 10, 2002.
Respondent claims that it never sought a valuation for purposes of sale of the domain name. Respondent contends that it has no relationship with the web site at <unitel.co.kr>, a site that Respondent claims is somehow related to Yahoo.com.
C. Additional Submissions
Complainant correctly contends that it is possible to own and register generic words as marks, under certain circumstances. Complainant cites several pending applications as one example, a pending U.S. application for the mark KOREA and Design, Application Serial No. 78/023,055. However, a pending application in and of itself does not establish rights and, in fact, the cited example was abandoned for failure to respond to an Office Action on December 26, 2001.
Complaint contends that Respondent’s use of the business name America sangsa does not give it rights to use the word AMERICA alone. Complainant further points out that the business entity is not the domain name registrant.
Complainant claims that it has Federal and common law trademark rights to the word AMERICA, relying on its filings with the United States Patent and Trademark Office, and citing an additional pending application, Serial No. 78/137,502.
Complainant contends that Respondent’s failure to create a web site indicates that he is only interested in blocking others from registering it or in transferring it to the Complainant or a competitor. Complainant claims that Respondent has also registered the following domain names: <traffics.biz>, <thestates.biz> and <judicare.biz>. Complainant now also asserts that its primary business is food services, very similar to those of the Respondent.
With respect to valuation of Respondent’s domain name, Complainant provides a printout from the web site at Afternic.com with an entry for <america.biz>. Finally, Complainant asserts that Respondent’s Response was untimely, relying upon a facsimile transmission report.
In its additional submission, Respondent claims that Complainant has submitted false arguments and fabricated evidence. In this regard, Respondent demonstrates that anyone may reproduce the Afternic.com page merely by entering anyone’s domain name. Likewise, Respondent demonstrates that Complainant’s reliance upon its facsimile transmission verification report is misplaced as the fax number was incorrectly entered in the WhoIs database as strictly a local number in Seoul. Respondent also claims that Complainant purposely entered an incorrect street address and e-mail address in the Complaint to prevent Respondent from receiving documents and timely replying. Respondent claims it only received materials via e-mail from NAF.
Respondent reiterates its claim to a legitimate right and interest to the domain name on the basis of its prior existing firm America sangsa since the firm is wholly owned by Respondent and only Respondent’s individual name is used in Korea in connection with business and legal transactions.
Respondent asserts that Complainant has produced no evidence of its rights in the word mark AMERICA. Neither the Complainant’s company name nor the identified Internet startup web sites that allegedly use the software, it asserts, have been shown to be connected with the claimed mark.
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 not supported its claim of rights to an identical mark with any evidence. It has not produced printouts from the United States Patent and Trademark Office database showing a registered identical mark. It has not produced samples of use of the mark. As noted above, a pending application in and of itself does not establish rights. In fact, the United States Patent and Trademark Office database, on July 24, 2002, indicates that pending application Serial No. 78/065,095, which stands in the name of Christopher Nofel, is under final refusal. Pending Application Serial No. 75/208,309, which was in the name of America Presents, Ltd., was abandoned as of May 11, 1998 for failure to respond to an Office Action. Finally, there is no U.S. Patent and Trademark Office record for an application with the serial number 78/137,502.
The one active pending application, Application Serial No. 78/065,095, is for a stylized or design mark with the subscript words EXPLORE NEW WAYS TO SHARE. The mark is described as follows: “The mark consists of the word ‘AMERICA.’ In the stylized logo, four line segments form a hollow ‘A,’ the ‘A’ is sometimes shaded, there is an accent on the ‘E’ and the final ‘A’ is replaced by the ‘@’.” Further, the record includes a disclaimer of exclusive rights to use of the term “America” apart from the mark as shown. Under the circumstances, the Panel finds that the Complainant has mischaracterized its rights in a mark comprising the word “AMERICA” for computer software. While it is possible that there are some errors in the U.S. Patent and Trademark Office record, the pending status of the application, combined with an entry of a disclaimer, leaves little or nothing for the Complainant to rely upon in terms of Federal rights.
With respect to common law rights, although the Complainant has claimed rights in an identical mark since as early as 1996, Complainant has not supported that claim with any evidence of use. Under the circumstances, the Panel need not reach a legal analysis of Complainant’s claimed rights in a geographically descriptive term, as done in Am. Airlines Inc. v. WebWide Internet Communication GmbH, FA 112518 (Nat. Arb. Forum June 13, 2002). Based on the record before it, the Panel finds that the Complainant has not met its burden of establishing rights in an identical mark.
Before notice of the dispute, Respondent invited investors to establish a corporation participating in import and export trade and tourism in connection with the domain name <america.biz>, this being a natural extension of Respondent’s claimed existing business under the name America sangsa. Respondent also, prior to notice of the dispute, contracted with a firm for the construction of a web site under the disputed domain name. Accordingly, the Panel finds that Respondent’s activities amount to showing demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services under STOP Policy Paragraph 4(c)(ii).
Because the Complainant has not established that the Respondent has no rights or legitimate interests in respect of the domain name, the Panel does not need to make any findings with respect to the issue of registration or use in bad faith. However, on the basis of the record, the Panel does not find any factor proving either registration or use of the domain name in bad faith. For example, Complainant’s claim that the parties are competitors due to its activities related to food service is unavailing as there was no demonstration of any connection to the claimed mark AMERICA. Likewise, in a STOP proceeding, the Panel cannot draw any adverse inferences from the domain name Registrant’s lack of use of the domain name.
Due to the lack of evidence, the Panel makes no finding with respect to the Respondent’s claim that the Complainant abused the administrative proceeding. See, Credit Suisse Group o/b/o Bank Leu AG v. Leu Enters, Unlimited, FA 102972 (Nat. Arb. Forum Feb. 23, 2002).
As the Panel finds that the Complainant has failed to satisfy the requirements of STOP Policy Paragraph 4(a)(i) with respect to rights in an identical mark, and that Respondent has demonstrated its rights or legitimate interests in the domain name under STOP Policy Paragraph 4(a)(ii), the Complaint is dismissed and no subsequent challenges to this domain under the STOP policy shall be permitted.
P. Jay Hines, Panelist
Dated: August 2, 2002
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