STMicroelectronics,
Inc. v. Park Hyunsuk a/k/a STMicro.com
Claim
Number: FA0301000143711
Complainant is
STMicroelectronics, Inc., Carrollton, TX, USA (“Complainant”) represented
by Molly Buck Richard of Thompson & Knight LLP. Respondent is
Park Hyunsuk a/k/a STMicro.com, Seoul, Korea
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <stmicro.com>, registered with Onlinenic,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on January 31, 2003; the Forum received a hard copy of the
Complaint on February 3, 2003.
On
February 10, 2003, Onlinenic, Inc. confirmed by e-mail to the Forum that the
domain name <stmicro.com> is registered with Onlinenic, Inc. and
that Respondent is the current registrant of the name. Onlinenic, Inc. has
verified that Respondent is bound by the Onlinenic, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
February 10, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 3, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@stmicro.com by e-mail.
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
March 12, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
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 Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<stmicro.com>, is confusingly similar to Complainant’s
STMICROELECTRONICS mark.
2. Respondent does not have any rights or
legitimate interests in the <stmicro.com> domain name.
3. Respondent registered and used the <stmicro.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
established in this proceeding that it holds marks for STMICROELECTRONICS
registered with the United States Patent and Trademark Office (“USPTO”),
including Reg. Nos.1,526,566 (registered February 28, 1989), 2,356,498
(registered June 13, 2000) and 2,605,445 (registered August 6, 2002).
Complainant also holds numerous international marks, including trademark
registrations in South Korea where Respondent is located. Complainant
registered the <stmicroelectronics.com>, <st.com> and <stm.com>
domain names.
Respondent
registered the <stmicro.com> domain name August 5, 2001.
Respondent is using the disputed domain name to redirect Internet users to
<etour.com>, a portal to pornographic websites.
Paragraph 15(a)
of the 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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant
established in this proceeding that it has rights in the STMICROELECTRONICS
mark through registration with the USPTO and international trademark
registrations.
The domain name
registered by Respondent, <stmicro.com>, is confusingly similar to
Complainant’s STMICROELECTRONICS mark because the disputed domain name simply
deletes the word “electronics” from Complainant’s mark. A deletion of a word
from an identifiable mark that is owned by another makes the disputed domain
name confusingly similar. See Delta Corporate Identity, Inc. and Delta Air
Lines, Inc. v. Seventh Summit Ventures, FA 133621 (Nat. Arb. Forum
Dec. 31, 2002) (finding that the deletion of the word LINES from Complainant’s
mark does not prevent a finding of confusing similarity, as the dominant
feature of the domain name remains the relevant portion of Complainant’s DELTA
AIR LINES mark); see also WestJet
Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001)
(finding that the <westjets.com> domain name is confusingly similar to
Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent did
not submit a Response in this proceeding. Therefore, the Panel may accept all
reasonable inferences and allegations in the Complaint as true. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true); see also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence).
Furthermore,
Respondent failed to invoke any circumstances that could demonstrate rights and
legitimate interests in the domain name. When Complainant asserts a prima
facie case against Respondent, the burden of proof shifts to Respondent to
show that it has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent
has no rights or legitimate interests with respect to the domain, the burden
shifts to Respondent to provide credible evidence that substantiates its claim
of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because the Respondent never submitted a response
nor provided the Panel with evidence to suggest otherwise).
Respondent is
using the <stmicro.com> domain name to divert Internet traffic to
a portal that leads to pornographic websites, which is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and
is not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii). See Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001)
(finding that infringing on another's well-known mark to provide a link to a
pornographic site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11,
2000) (finding that it is not a bona fide offering of goods or services to use
a domain name for commercial gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material where such use is
calculated to mislead consumers and to tarnish the Complainant’s mark).
Respondent has
not come forward with any proof and no evidence in the record suggests any
facts to establish that Respondent is commonly known by STMICRO or <stmicro.com>.
The fact that Respondent registered the <stmicro.com> domain name
is not sufficient absent additional evidence that Respondent is commonly known
by STMICRO or <stmicro.com>. Therefore, Respondent has failed to
establish rights or legitimate interests in the diputed domain name pursuant to
Policy ¶ 4(c)(ii). See Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <stmicro.com> domain name to divert Internet users to a
portal that leads to pornographic websites. Panels have consistently held that
the use of a confusingly similar domain name in this manner is evidence of bad
faith use and registration pursuant to Policy ¶ 4(a)(iii). See MatchNet plc. v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly
similar domain name with a pornographic website can constitute bad faith); see
also Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's
well-known mark to provide a link to a pornographic site is evidence of bad
faith registration and use).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <stmicro.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 21, 2003.
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