WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bia NV v. BIA Global Co
Case No. DBIZ2001-00037
1. The Parties
The Complainant is Bia NV, a Belgian corporation with its principal place of business in Overijse, Belgium. The Complainant is represented by Mr. Vincent Bia of Overijse, Belgium.
The Respondent is BIA Global Co of Seoul, Republic of Korea. The Respondent is represented by Dasan Patent & Law Office of Seoul, Republic of Korea.
2. The Domain Names and Registrar
The domain name at issue is <bia.biz>. The domain name is registered with Yes NIC Co. Ltd. of Seoul, Republic of Korea ("the Registrar"). The domain name was registered on November 19, 2001.
3. Procedural History
The Complaint was received on December 14, 2001, by the World Intellectual Property Arbitration and Mediation Center ("the WIPO Center"). The Complaint was made pursuant to the Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel Inc. and approved by ICANN on May 11, 2001, ("the STOP") and the Rules under that Policy ("the STOP Rules").
The STOP is incorporated into the Respondentís registration agreement with the Registrar. Respondent is obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint concerning the domain name registered.
Having verified that the Complaint satisfied the formal requirements of the STOP Policy and the STOP Rules, the WIPO Center on December 28, 2001, transmitted by post-courier and by email a Notification of STOP Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was advised that any Response should be communicated, in accordance with the Rules, by hard copy and by email. A Response was filed by the Respondent on January 8, 2002.
The WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a Statement of Acceptance and requested a Declaration of Impartiality and Independence. The STOP requires that Complaint be determined by a sole Panelist.
The Honourable Sir Ian Barker QC advised his acceptance and forwarded to the Center his Statement of Impartiality and Independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the STOP Rules and the WIPO Supplemental STOP Rules.
On January 25, 2002, the WIPO Center forwarded to the Panel by courier the relevant submissions and the record.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
The Complainant has paid the necessary fees to the WIPO Center.
4. Factual Background
(A) The Complainant was founded as a company of the Bia family in Belgium in 1948, under the name Bureau Technique BIA. It has been operating under the name BIA since 1988. The Complaint states that the Complainantís business is done under that name (i.e. BIA): "Ö everywhere we are active in all world but mainly in Europe and Africa." Material provided by the Complainant indicates that the Complainantís main business is the distribution of equipment for mining, quarrying and construction. The same material shows much involvement in Africa but none in Asia. The Complainant does not allege a registered mark, only the fact that it registered the domain name <bia.be> on February 21, 1997.
(B) The Respondent was incorporated on June 1, 2001, as the successor of a business founded in 1996, by Mr. Woon Haeung Huh. Mr. Huh traded under the business name of Bia Information Assistance according to business registration certificates and tax statements exhibited to the Response. The Respondent has registered the domain name <bia.co.kr>. It applied for a trademark for the name Bia (in stylized form) to the Korean Industrial Property Office on December 18, 2001.
5. Partiesí Contentions
The disputed domain name is identical to the Complainantís mark and domain name. [Note: There is no evidence presented of any registered mark anywhere in the world owned by the Complainant.]
The Respondent has no right to use the name ĎBIAí and is illegitimately attracting visitors to its website in the hope that users of the Internet would see a connection with or an endorsement by the Complainant. Respondent is thus intentionally causing confusion and is acting in bad faith.
Respondent or its predecessor, its CEO Mr. Huh, has been trading under the Bia name since 1996, and has legitimate rights to that domain name. The business activities of the Parties are different. Respondent did not register the name in order to attract Internet users by creating a likelihood of confusion.
Respondent has undertaken IT consulting and web construction for major government and commercial entities in Republic of Korea since 1996. It applied on December 18, 2001, for a trademark for BIA in Republic of Korea. It is not a well-known mark in Republic of Korea and there is no evidence of the fame of the Complainantís mark outside of Belgium or Africa.
6. Discussion and Findings
Under STOP, a Complaint can only be filed by an "IP Claimant" who had filed an IP Claim for a particular alphanumeric string. If that string has been registered as a .BIZ domain name, NeuLevel, the Registry operator of the .BIZ gTLD notifies the IP Claimant and invites it to initiate a STOP proceeding within 20 days. NeuLevel determines priority orders if there are multiple claimants on a randomised basis (STOP Paragraph 4(2)(i)). Only the priority claimant will be invited to initiate a STOP complaint, which is allocated a "ticket number" which allows dispute resolution providers to verify whether a STOP Complaint is filed by the priority claimant. The service provider (in this case WIPO Center) is required to advise the Panelist if a given domain name in dispute is subject to more than one claim. In the present case, no such advice has been given to the Panel.
Under STOP, the Complainant must show:
(a) That the domain name is identical to the Complainantís trademark or service mark (Paragraph 4(a)(i)).
(b) That the Respondent has no rights or legitimate interests in the domain name.
(c) That the domain name was either registered or used in bad faith (Paragraph 4(a)(iii)).
A Respondent may demonstrate a right or legitimate interest in a domain name. Circumstances similar to those under the Uniform Domain Name Dispute Resolution Policy of ICANN (the UDRP) can be invoked by a Respondent.
Likewise, the instances of bad faith exemplified in UDRP can be invoked by a Complainant. However, because the STOP Policy and Rules come into play shortly after registration of a domain name, the focus of attention for this case will be on bad faith at the time of registration.
In the present case, the disputed domain name is identical with the Complainantís trading name and its country-specific domain name, <bia.be>. At best for the Complainant, the evidence points weakly towards a Ďcommon lawí mark as shown by its use of the domain name and its general trading activities. Whether the existence of a common law mark is sufficient under the STOP policy, as it has been held to be under the UDRP by many Panelists, will have to await determination in another case. Even if a common law mark were to be acceptable under STOP, the Panel would require greater evidence of the fame of the mark than is provided in the Complainantís spartan offering.
The case must fail because, in the Panelís view, the Complainant has not established the second and third criteria. Whilst the Complainant gave no right to the Respondent to use its mark, the Respondent has asserted a right or legitimate interests. It is clear that the Respondent, and before it Mr. Huh, have been using the mark since 1996. They carried on established business under the names "Bia Information Assistance" and "Bia Global Co Ltd." since then.
As to bad faith, there is no evidence that Respondent in the Republic of Korea should have known of the fame of the Complainantís marks (if any) and its reputation, which seems to be confined to Europe and Africa. There is no evidence of registration of Complainantís marks in the Republic of Korea, although the Complainant alleges vaguely that the fame of its mark extends beyond Europe and Africa but offers no proof.
In the absence of proof that the Respondent knew or ought to have known of the existence of the Complainant and its mark, the Panel is not prepared to infer bad faith registration. Rather, the evidence points to the Respondent having a genuine and well-established business using the name at the time it registered the disputed domain name.
For the foregoing reasons, the Panel declines to order the transfer of the domain name <bia.biz> to the Complainant.
Hon. Sir Ian Barker, Q.C.
Dated: February 14, 2002