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Generic Top Level Domain Name (gTLD) Decisions |
Philatelic.Com v. Peter I. Jeong
Claim Number: FA0204000112547
PARTIES
Complainant
is Philatelic.Com, Houston, TX, USA
(“Complainant”) represented by Gregory K. Deeter. Respondent is Peter I.
Jeong, Osan-si Kyounggi-do, KOREA (“Respondent”) represented by Kijoong Kim.
The
domain name at issue is <sex.biz>,
registered with Gabia 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.
Tyrus
R. Atkinson, Jr., 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 April 28, 2002; the Forum
received a hard copy of the Complaint on
May 2, 2002.
On
May 16, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 5,
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 June 5, 2002.
Complainant
submitted an Additional Response on June 10, 2002. Respondent submitted an Additional Response on June 15, 2002.
Complainant
submitted an untimely second Additional Submission. Therefore, The Forum does not consider Complainant’s second
Additional Submission to be in compliance with STOP Supplemental Rule
#7.
On July 10, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Tyrus R. Atkinson, Jr., as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
is Gregory K. Deeter who contends that he does business as Philatelic.Com in
Houston, Texas.
Complainant
contends that SEX.BIZ has been used as a service/trademark since 1996 and is
now registered with the USPTO with serial
number 78/120634.
The
<sex.biz>domain name is exactly the same as the name Complainant
has been using in business since 1996.
Respondent
is not the owner or beneficiary of a trade or service mark that is identical to
the domain name.
Respondent
has shown no demonstrable preparations to use the domain name in connection
with a bona fide offering of goods or services.
Respondent
has not been commonly known by the domain name.
The
domain name was registered primarily for the purpose of selling, renting or
otherwise transferring the domain to a competitor
for valuable consideration in
excess of out of pocket costs.
Respondent
offers to sell the domain name.
Respondent
has registered the domain name for the purpose of disrupting the business of a
competitor by ignoring Complainant’s IP
claim with Neulevel.
Respondent
is creating the likelihood of confusion with Complainant’s mark.
B.
Respondent
Respondent
is “Personal” which is the name used by Peter I. Jeong of Osan-si, Kyounggi-do,
Korea, for the purpose of registering the
domain name, <sex.biz>with
Gabia.com.
Complainant
has no rights in SEX.BIZ. It is not identical to a trademark or service mark in
which Complainant has rights.
Complainant
seems to assert rights as holder of a common law trademark. But a trademark to a generic term like ‘sex’
is not allowed except in a special case when the generic term has got a
secondary meaning. No evidence is
presented by Complainant of what kind of business the mark has been used for or
any evidence of secondary meaning.
Respondent
has made demonstrable preparations to use the domain name.
Before
any notice to Respondent of this Complaint, Respondent knew nothing about the
Complainant or about the trademark alleged by
Complainant. Complainant is an unknown person in
Korea. Respondent registered the domain
name in good faith.
C.
Additional Submissions
Complainant,
in his Additional Response, states that he has hired an attorney to oversee
Complainant’s rights to the mark by monitoring
and handling all future filings
and responses with the United States Patent and Trademark Office. Complainant has on file with the County
Clerk of Harris County, Texas, a Certificate of Operation of Assumed Name for
SEX.BIZ showing
the owner as Complainant.
The remaining contentions refer to certain correspondence with
Respondent, which has no particular relevance to this dispute.
Respondent
in his Additional Response points out that Complainant did not in his
Additional Response present any evidence of trademark
registration or how and
when Complainant used SEX.BIZ in any manner at all. Respondent attempts to explain why he registered the domain name
under the registrant name, “personal” as opposed to his actual name. The remaining allegations are of little
relevance to this proceeding.
1. Complainant is an individual residing in
Houston, Texas, who does not reveal what business, if any, he conducts.
2. Respondent is an individual residing in
Korea, who does not reveal what business, if any, he conducts.
3. Respondent registered the domain name, <sex.biz>,
on March 27, 2002, under the Registrant Name of “Personal.”
4. Complainant has no rights in the name, <sex.biz>.
5. Respondent has no rights or legitimate
interests in the name, <sex.biz>.
6. Reverse Domain Name Hijacking has
occurred in this dispute.
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.
The
first determination to be made in a case of this kind is a comparison of the
domain name and the name in which Complainant contends
that he has rights.
The
purpose of the Start-up Trademark Opposition Policy and Rules for .biz is to
examine the .biz domain name “matching the exact
alphanumeric string contained
in the trade or service mark in which the Claimant has rights.” see
Paragraph (1). The domain name must “identically” match a trade or service
mark string. The Policy does not make
it clear whether the .biz domain name must be exactly the same as the trademark
or service mark, as opposed
to whether the .biz name is merely identical to
some part of a trademark or service mark in which Complainant has rights.
In
comparing the .biz and trademark or service marks alleged to be held by
Complainant in this case, the first consideration is to
ignore the generic top
level (“gTLD”) domain indicators. The
indicator, .biz, is irrelevant when determining whether a domain name and mark
are identical. see Princeton Linear Assoc., Inc. v. Copland o/b/o LAN
Solutions Inc. FA102811 (Nat. Arb.
Forum Feb. 8, 2001). No characters and
symbols that are impermissible in domain names, such as apostrophes,
ampersands, and other punctuations are to be
considered. see Commercial
Investors Realty v. Bank of New York, FA103040 (Nat. Arb. Forum Feb. 18,
2002).
What
is left of the names involved in this case is the word, SEX.
Complainant
contends that he holds a trademark or service registration with the United
States Patent and Trademark Office for the
mark, SEX.BIZ. This bare allegation is not supported by
copies of a trademark registration or application for a trademark. Complainant
contends that
he has common law trademark rights in SEX.BIZ by reason of his
use of the mark since 1996. No evidence
is presented by Complainant that he has operated under the mark at any
time. Complainant’s terse and
incomplete Complaint contained absolutely no evidence of any kind to support
the bare contentions noted above.
In
a STOP proceeding the Complainant is required to “Specify the trademark(s) or
service mark(s) on which the complaint is based and,
for each mark, describe
the goods or services, if any, with which the mark is used (the Complainant may
also separately describe
other goods and services for which it intends, at the
time the complaint is submitted, to use the mark in the future).” See Rule
3(c)(viii), Rules For Start-Up Trademark Opposition Policy. Complainant makes no attempt to comply
with this Rule.
Recent
STOP Policy decisions insist that a party produce “concrete evidence” to support
the allegations contained in the pleadings.
See PRL USA Holdings, Inc. v. Search Hound, DBIZ2001-00010 (WIPO
Feb. 13, 2002). That case accepted the
reasoning set out in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000), which stated: “Concrete evidence constitutes more than mere
personal assertions. Just as a Panel
should require a complainant to establish by means other than mere bald
assertions that it is the owner of registered
marks, so should the Panel
require that a respondent come forward with concrete evidence that the
assertions made in the response
are true.
Evidence in the form of documents or third party declarations should be
furnished in support of such assertions.”
Under
the reasoning of these decisions, Complainant’s “mere personal assertions” that
he has a trademark registration and common law
rights, are insufficient to
prove Complainant’s rights to the mark, SEX.
Respondent
contends that the word, SEX, is a common, generic term. Respondent presents no evidence to support
this assertion. Complainant makes no
attempt to contest this contention either by argument or proof even in the
Additional Response when put upon
notice of Respondent’s position on this
point.
A
mark that is a common descriptive name of an article or thing is referred to as
a generic mark. A generic term is one
that refers to the genus of which a particular product is a species. See
Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., [1985] USSC 8; 469 U.S. 189 (1985). The word, SEX, appears to be a generic word.
In
theory, Complainant might establish that a commonly descriptive term has
acquired sufficient secondary meaning to be exclusively
associated with
Complainant and thereby serve as a trademark or service mark. However, where the mark alleged is a highly descriptive
term, a party seeking to establish exclusive rights carries a heavy burden
of
proof in removing the term from the public domain. see Bar Code Discount
Warehouse, Inc. v. Barcodes, Inc., D2001-0405 (WIPO July 27, 2001); Pet
Warehouse v. Pets.com, Inc. D2000-0105 (WIPO Apr. 13, 2000).
To
establish common law rights in a descriptive word, Complainant must prove
secondary meaning. Relevant evidence of
secondary meaning includes length and amount of sales under the mark, the
nature and extent of advertising, consumer
surveys and media recognition. See Amsec Enterprises, L.C. v. McCall, D2000-0083
(WIPO Apr. 3, 2000).
Complainant
makes no attempt to prove any of the methods that would entitle him to rights
in the word, SEX. A complete
examination of the pleadings and exhibits reveal no proof on this issue. A Panel is required to “decide a complaint
on the basis of the statements and documents submitted…” Rule 15. Where Complainant fails to submit
statements and documents sufficient to permit a decision in Complainant’s
favor, the Policy requires
the dismissal of the Complaint.
Thus,
under the reasoning of PRL USA Holdings, Inc. v. Search Hound, which the
Panel finds is the correct standard to be applied in this case, and the Rules,
Complainant must lose this domain name
dispute proceeding.
Findings under this section are
unnecessary because of Complainant’s failure to show rights in the word,
SEX. Respondent relies upon the
proposition that the domain name is a generic word in which no party has rights
or interests superior to
any other person or organization. By Respondent’s own admission, he has no
rights or interests in the word, SEX.
Findings under this section are
unnecessary.
Respondent demands a finding on this
issue. The Panel must conclude that the
insubstantial allegations of the Complaint and complete failure to produce
evidence, represents an
attempt at Reverse Domain Name Hijacking, and under the
requirement of Rule 15(d), the Panel states the finding in the decision.
DECISION
The Complaint of Gregory K. Deeter DBA
Philatelic.com is dismissed and the demand that the domain name, <sex.biz>,
be transferred is denied. It is
held that additional challenges will be permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 24, 2002.
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