Prima Limited v. Sungjo Park
Claim Number: FA0209000124990
Complainant is Prima Limited, SINGAPORE (“Complainant”). Respondent is Sungjo Park, Songpa-ku Seoul, KOREA (“Respondent”).
The domain name at issue is <samson.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.
The Honorable Charles K. McCotter, Jr. (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 September 10, 2002; the Forum received a hard copy of the Complaint on September 12, 2002.
On September 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 2, 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 September 30, 2002.
On October 9, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Respondent’s <samson.biz> domain name is identical to Complainant’s SAMSON mark. Respondent does not have any rights or legitimate interests in respect of the <samson.biz> domain name. Respondent registered the <samson.biz> domain name in bad faith.
The Complaint is based on Complainant’s Singapore trademark application (T96/13045B) for SAMSON & DEVICE in the category of alarms; computer programs; computer software; door closers, electric; door openers, electric; remote control apparatus; sounding apparatus and machines. The application date is December 5, 1996. Complainant also uses the mark for electronic monitoring and security systems.
Complainant’s mark was designed by and for Complainant in 1996. The mark SAMSON represents the acronym for the phrase “Security Access Monitoring System On Network”. Complainant first publicly used the mark in 1996.
Complainant claims to have been testing and modifying the products covered by the mark over the past few years with the intention of eventually going commercial. Complainant claims to have recently secured a contract to provide a security monitoring system for a condominium project in Singapore.
Complainant claims to have expended considerable effort and financial resources in promoting the SAMSON mark and developing its product to its present day status. The product is currently still in the pilot test phase and classified as research and development by Complainant.
A search on the Internet conducted on 3 September 2002 for the search terms “samson”, “sungjo” and “park” returned zero results.
Respondent does not operate any business or offer any goods or services or otherwise use the domain name in commerce. Further, Respondent is not commonly known by the domain name. The domain name is not linked to an active Internet page.
Respondent does not own any trademark corresponding to the domain name. Complainant has not licensed the use of the mark to Respondent.
Due to the nature of the IP Claim notification procedure, Respondent would have received actual notice of Complainant’s rights in the domain name before Respondent proceeded to register the domain name. Despite this notice, Respondent persisted in the registration of the domain name. Respondent had thus registered the domain name with full knowledge that the domain name was in direct conflict with a trademark of Complainant.
Respondent registered the domain name for the purposes of selling the domain name. Respondent is the registrant of numerous domain name registrations.
Other registrants own domain names with SAMSON as the second-level gTLD.
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.
Although the disputed domain name is identical to the term SAMSON, Complainant has not shown protectable rights in the mark. Complainant has failed to show proof of a registered trademark. Nor has Complainant shown proof of common law trademark rights.
Complainant holds no trademark registration for SAMSON, and Complainant is not entitled to a presumption of rights in that term. Complainant’s application for trademark registration standing alone does not establish rights or presumptions. See Bar Code Discount Warehouse, Inc. v. Barcodes, Inc., D2001-0405, (WIPO, July 27, 2001) (finding that the terms Bar Code Discount Warehouse, in which Complainant claims service mark rights, are generic or commonly descriptive).
To the extent Complainant has any rights in the disputed domain name, those rights must arise from common law rights. Salem Five Cents Sav. Bank v. Direct Fed. Credit Union, FA 103058 (Nat. Arb. Forum, February 15, 2002). To acquire common law rights, the mark must be shown to have acquired distinctiveness. Id. The Panel concludes that Complainant has failed to show secondary meaning and, therefore, has not shown exclusive rights in the word SAMSON. The Panel finds that STOP Policy ¶ 4(a)(i) has not been satisfied.
As the Panel has determined that Complainant has failed to show protectable rights in respect to the mark SAMSON and there are no subsequent IP Claimants, it is unnecessary for the Panel to address the second issue of Respondent’s rights or legitimate interests or the third issue of bad faith.
Having failed to establish all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby DENIED and the Complaint is DISMISSED.
The Honorable Charles K. McCotter, Jr.
Dated: October 21, 2002
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