Charles Nofal Inc. v. Kitak Cho
Claim Number: FA0205000114330
PARTIES
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.
A.
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.
B.
Respondent
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).
DECISION
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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