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Generic Top Level Domain Name (gTLD) Decisions |
Steve Park v.
Domain Sales a/k/a ########## This Domain
Name is For Sale ##########
Claim
Number: FA0402000236363
Complainant is Steve Park (“Complainant”), represented
by Brad D. Rose, of Pryor Cashman Sherman & Flynn, LLP, 410 Park Avenue, 10th Floor, New York, NY 10022. Respondent is Domain Sales a/k/a ########## This Domain Name is For Sale
########## (“Respondent”), Wei 35-B, Da-dong, Jung-gu 100-180 Korea.
The
domain name at issue is <stevepark.com>, registered with iHoldings.com,
Inc. d/b/a DotRegistrar.com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Sandra
Franklin, Esq. as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 6, 2004; the
Forum received a hard copy of the
Complaint on February 6, 2004.
On
Feburary 6, 2004, iHoldings.com, Inc. d/b/a DotRegistrar.com confirmed by
e-mail to the Forum that the domain name <stevepark.com> is
registered with iHoldings.com, Inc. d/b/a DotRegistrar.com and that Respondent
is the current registrant of the name. iHoldings.com,
Inc. d/b/a
DotRegistrar.com has verified that Respondent is bound by the iHoldings.com,
Inc. d/b/a DotRegistrar.com 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, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of March 1, 2004 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@stevepark.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, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra
Franklin 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. Respondent’s <stevepark.com>
domain name is identical to Complainant’s STEVE PARK mark.
2. Respondent does not have any rights or
legitimate interests in the <stevepark.com> domain name.
3. Respondent registered and used the <stevepark.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Steve Park, is a renowned NASCAR driver.
Beginning his career as a teenager, his success has earned him accolades
and publicity in the NASCAR circuit, including the Most Popular
Driver Award in
1995, Rookie of the Year (in a different series) in 1997, and various
victories. Complainant filed a
registration with the U.S. Patent and Trademark Office (“USPTO”) on October 29,
1998. The USPTO granted the
registration of the STEVE PARK mark on February 13, 2001 (Reg. No. 2,427,858)
for clothing, claiming first use
back to 1986.
Complainant also holds the registration for <steve-park.com>
domain name.
Respondent
registered the <stevepark.com> domain name on March 6, 1999. The disputed domain name links to a
pornographic site that offers domain names for sale for up to $50,000. In the WHOIS information, “for sale” exists
in the name and address fields of the Registrant, Administrative Contact, and
Technical
Contact.
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
draw such inferences it 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
holds a registration for the STEVE PARK mark, the first use of which dates back
to 1996. The Panel concludes that
Complainant has rights in the STEVE PARK mark dating back to its filing date
with the USPTO. See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA
145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in
the FDNY mark relate back to the date that its successful
trademark
registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965)
(registration on the Principal Register is prima facie proof of continual use
of the mark, dating back to the filing
date of the application for
registration).
The disputed
domain name <stevepark.com> is identical to Complainant’s STEVE
PARK mark. The only difference is a
space between the Complainant’s first and last name which does not
significantly distinguish the domain name
from the mark under the Policy. See
Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb.
Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER
RE, “as spaces are impermissible
in domain names and a generic top-level domain
such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia
Airlines v. Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name
<croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES
trademark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations
and inferences in the Complaint as true.
See Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (failure to respond allows all reasonable inferences of fact in
the allegations of Complainant
to be deemed true); see also Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint”).
Respondent
is using the disputed domain name to display pornography and advertise for its
sale. Using Complainant’s mark for
pornography or offering it for sale is not a bona fide offering of goods or
services, pursuant to Policy
¶ 4(c)(i), or a legitimate noncommercial use,
pursuant to Policy ¶ 4(c)(iii). See Microsoft Corp. v. Horner,
D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s
mark to “define the location of Respondent’s website
on the Internet” and to
host a pornographic website was not a legitimate noncommercial or fair use of
the domain name); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where Respondent registered the domain name
with the
intention of selling its rights).
Additionally,
given Respondent’s domain name WHOIS information, the Panel infers that
Respondent is not commonly known by <stevepark.com>. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly
known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see
also 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).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
obviously attempting to sell the <stevepark.com> domain name. The solicitations for an offer to buy the
domain name exist not only in the text of the website, but also in the WHOIS
information,
where “for sale” exists in the name and address fields of the
Registrant, Administrative Contact, and Technical Contact. Because the solicitations for an offer exist
in the registration information, the Panel infers that Respondent registered
the domain
name primarily for the purpose of selling it. The pricing scheme on the website, where
domain names are offered for up to $50,000, indicates that Respondent intended
to sell the
domain name for valuable consideration in excess of out-of-pocket
costs. Thus the Panel finds that
Respondent registered and used the domain name in bad faith under Policy ¶
4(b)(i). See Am. Online,
Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar.
16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain
name, even if no certain price is demanded,
are evidence of bad faith”).
Respondent’s use
of the disputed domain name to display pornography also exhibits bad
faith. See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27,
2002) (holding that Respondent’s use of Complainant’s mark to post pornographic
photographs and to publicize
hyperlinks to additional pornographic websites evidenced
bad faith use and registration of the domain name); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022
(WIPO Mar. 4, 2003) (stating that “whatever the motivation of Respondent, the
diversion of the domain name to a pornographic
site is itself certainly
consistent with the finding that the [d]omain [n]ame was registered and is
being used in bad faith”).
Additionally,
Respondent intended to attract, for commercial gain, Internet users by creating
a likelihood of confusion with Complainant’s
mark. Consequently, the Panel finds that Respondent registered and used
the domain name in bad faith, pursuant to Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with Complainant’s
well-known marks,
thus creating a likelihood of confusion strictly for commercial gain); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe
on Complainant’s goodwill and attract Internet
users to Respondent’s website).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <stevepark.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 24, 2004
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