WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mohawk Brands, Inc. v. Jenny J. Ho
Case No. DBIZ2002-00194
1. The Parties
The Complainant in this administrative proceeding is Mohawk Brands, Inc., a Delaware corporation whose principal place of business is located at 160 South Industrial Boulevard, Calhoun, Georgia 30701, United States of America. The Respondents in this administrative proceeding are Jenny J. Ho and her husband, Yu-Chung Chu, whose address is 11526 Seneca Woods Court, Great Falls, Virginia 22066, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <galaxy.biz> which is registered with Registrar Intercosmos Media Group, Inc., doing business as Directnic.com.
3. Procedural History
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. Complainant initiated this proceeding under the STOP Policy by filing a Complaint which was received by the WIPO Arbitration and Mediation Center ("the Center") on April 27, 2002. The Center verified that the Complaint complied with the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules"). Complainant paid the requisite filing fees.
On June 5, 2002, the Center transmitted notification of the Complaint and commencement of the proceeding to Respondents. The Center received a response on June 19, 2002.
On July 9, 2002, the Center sent to the parties a Notification of Appointment of Administrative Panel in which Roderick M. Thompson was appointed to serve as Panelist. Mr. Thompson submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
After appointment of the Panel, the Panel was informed of the Centerís receipt of a supplemental filing by the Complainant. The Panel has discretion as to whether to consider the supplemental filing in rendering its decision. The Panel has elected to review Complainantís additional filing. As these materials directly respond to points raised by Respondents regarding their legitimate interest in the disputed domain name, the Panel has elected to admit and consider them.
On July 17, 2002, the Panel issued Procedural Order No. 1 pursuant to Rule 12 of the Rules in which it notified the parties that it had accepted the Complainantís supplemental filing and provided the Respondents the opportunity to submit additional materials to respond to Complainantís arguments regarding Respondentsí legitimate interest. Due to the time provided to Respondents to respond to Complainantís supplemental filing, the projected decision date was revised to July 27, 2002.
4. Factual Background
Complainant is a carpet and flooring manufacturer and has provided evidence of U.S. and foreign trademark registrations for the mark GALAXY in connection with carpet and flooring.
Respondents were notified of their opportunity to register the disputed domain name in March 2002. As of the commencement of this proceeding, Respondents had made no use of the disputed domain name in connection with an active website.
5. Partiesí Contentions
Complainant alleges that the disputed domain name is identical to the GALAXY trademark in which it has rights.
Complainant asserts that Respondents have no rights or legitimate interests in the disputed domain name. Complainant states that Respondents do not operate a business or other organization under the GALAXY mark. Further, Complainant claims that there are no records for corporations incorporated as or using the business or corporate name "Galaxy" owned by Jenny J. Ho, the Registrant, or listing Jenny J. Ho as an officer. Complainant asserts that Respondents have not acquired any trademark or service mark rights for the GALAXY mark. Additionally, Complainant claims that Respondents have not offered or sold any goods or services under the GALAXY mark, nor evidenced any bona fide objective intent to offer or sell any goods or services under the mark.
Complainant alleges that Respondents have registered and used the disputed domain name in bad faith. In support of this contention, Complainant alleges that: 1) Respondents do not conduct any legitimate commercial or non-commercial business under the GALAXY mark; 2) Respondentsí use of the disputed domain name will likely divert consumers away from Complainantís official "Galaxy" website; 3) if Respondents sell the domain name to a third party it will undoubtedly cause a likelihood of confusion among Complainantís customers; 4) Complainant has a strong reputation and is widely known and Complainantís GALAXY mark is famous; 5) it is inconceivable that Respondents registered the disputed domain name without knowledge of Complainantís mark; and 6) pursuant to U.S. trademark law Respondents are charged with constructive notice of Complainantís U.S. trademark.
In its supplemental filing, Complainant asserts that Respondents failed to provide any documentation showing a verifiable intention to use the term Galaxy in connection with a business. Further, Complainant asserts that Respondents have not filed any trademark applications demonstrating an intent to use the GALAXY mark in connection with any goods or services. Complainant also indicates that the Eposters business that Respondents claimed as an example of another legitimate business they had started is not operational. According to Complainant Respondents filed a trademark application but have not yet submitted any evidence of use in support of the application. Further, Complainantís claim that the <eposters.com> domain name does not yet link to a live website. Finally, Complainant concludes that Respondentsí failure to provide evidence regarding its legitimate interest in the domain name should be taken as evidence that Respondents have registered the disputed domain name for the purpose of selling or renting the domain name to Complainant.
Respondents claim that no one entity can claim an exclusive right to the term "Galaxy" which is a common word.
Respondents assert that they have rights or legitimate interests in the disputed domain name. According to Respondents, due to the difficulty of acquiring an appropriate domain name, they first develop a business concept and then attempt to register a domain name for the business and only determine the name of the business after acquiring the domain name. In this instance, Respondents claim that they have been planning an on-line game business for six months and waiting for the appropriate domain name to come up. Pursuant to a round-robin drawing, Respondents were assigned the <galaxy.biz> domain name in March 2002. After receiving notification of the domain name, Respondents determined that it would be appropriate for their on-line game business and claim to be in the process of preparing that business. Respondents indicate that they formed Galaxy World, Inc., a Delaware corporation, in connection with this business, but acknowledge that the corporation was formed as a consequence of the filing of the Complaint in this proceeding.
In support of their claims, Respondents provided evidence of a separate business, Eposters, that they had previously established in this manner. According to Respondents they applied for a service mark in connection with this business after acquiring the eposters.com domain name.
Respondents argue that they did not register the disputed domain name in bad faith since they intend to use it in connection with a business activity. Further, Respondents indicate that Complainant has not submitted any proof regarding bad faith. Respondents claim that they did not register the domain name for the purpose of selling, renting, or otherwise transferring the name. Additionally, Respondents assert that they did not register the domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name. Finally, Respondents state that they did not register the domain name for the purpose of disrupting the business of the Complainant or in order to attract users to their site by creating a likelihood of confusion.
Finally, Respondents claim that the STOP policy was not designed to block legitimate businesses from using an appropriate domain name to do business on the Internet. Further, Respondents assert that because GALAXY is a common word in the dictionary, the Complainant cannot claim an exclusive right to the domain name.
In their supplemental response, Respondents acknowledge that they have not yet used the <galaxy.biz> domain name but assert that it "is definitely my next agenda." They explain that they have been busy on another business and provide a link to an active website (<tekamp.com>). They reiterate that they have incorporated Galaxy World, Inc. and intend to operate an online game business using <galaxy.biz>. They assert that they have never and would never sell any domain name, and assert that Complainantís arguments are entirely speculative and are based on nothing more than the fact that Respondent was awarded the <galaxy.biz> domain name.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
The STOP Policy is the set of rules applying to the resolution of domain name disputes involving IP Claimants that have been notified by NeuLevel, the Registry Operator of the .biz generic top level domain (gTLD), of the registration of a .biz domain name that may be identical to a trademark or service mark in which the IP Claimant asserts rights. The STOP Policy is similar, but not identical to, to the Uniform Domain Name Dispute Resolution Policy (UDRP) that has been applied by Administrative Panels in determining numerous disputes.
Pursuant to paragraph 4 (a) of the STOP Policy, in order to establish the right to transfer of the disputed domain name from Respondents, Complainant must demonstrate each of the following:
(i) The disputed domain name is identical to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in the domain name; and
(iii) The disputed domain name has been registered or is being used in bad faith.
B. Application of Paragraph 4(a) to the Facts
I. Identical to Trademark
Complainant has submitted evidence of its rights in the mark GALAXY. Respondents do not dispute that the disputed domain name is identical to the Complainantís GALAXY mark. The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights.
II. Respondentsí Rights and Legitimate Interests in the Domain Name
Paragraph 4(c) of the STOP Policy sets out without limitation examples of circumstances that demonstrate the Registrantsí rights or legitimate interests in the name. One such circumstance is "demonstrable preparations to use" the disputed domain name in connection with a bona fide offering of services prior to notice of a dispute. Respondentsí claim that they have been planning an on-line game business for six months, thus possibly fitting the above example which is set forth in Paragraph 4(c)(ii) of the STOP Policy. Respondents have not provided concrete evidence to support their claim but instead merely assert their intention to create an on-line game business. In response to the Panelís request for additional support, Respondents noted their incorporation of Galaxy World, Inc. after receipt of the Complaint in this proceeding and reiterated their intention to start their on-line game business. The example in paragraph 4(c)(ii) specifically references demonstrable preparations taken before notice of dispute. Respondents also pointed to their prior businesses (Scanvec Amiable, Inc., Eposters and Tekcamp) as evidence of their entrepreneurial history. No web site has been posted at <eposters.com> which was registered in 1999 and the web site reached by entering <tekcamp.com> does not appear to be fully functional. This leaves the Panel with the task of assessing the credibility of Respondentsí assertions that (1) they have been planning a business (but had taken no demonstrable steps before the dispute) and (2) they intend in the near future to use the disputed domain name in connection the on-line game business.
Complainant argues that Respondentsí failure to use the disputed domain name promptly following registration evidences lack of rights or legitimate interests, as well as bad faith. Domain name registrants are not required to make immediate use of those names to establish rights or interests. Yet Respondentsí mere assertion after the fact of an undocumented earlier business idea is not enough. Respondents have not provided sufficient evidence for this Panel to make an affirmative finding as to their legitimate interests in the name. Thus, pursuant to Paragraph 4(l)(ii)(3), the disputed domain name will be subject to additional challenges by different IP claimants.
III. Registration or use in bad faith
Complainant argues that the Panel should find that Respondents registered or used the disputed domain name in bad faith. Complainant does not provide any evidence of bad faith, however, but merely relies on unsupported speculation and inferences. There is no evidence that Respondents have registered the disputed domain name to prevent Complainant from registering it. There is no suggestion that Respondents compete with Complainant, or are attempting to disrupt its business. Respondents have not offered to sell the name to Complainant or any other party. Finally, Respondents offer a reasonable explanation for their decision to register the disputed domain name.
The extent to which a mark is famous may influence whether a domain name registrant evidences bad faith by its registration. Here, however, Complainant has merely asserted, but not established, fame in a common term. Complainantís assertion of fame under these circumstances is not sufficient to impute bad faith on the part of the Respondents.
Complainant alleges that the Respondents had constructive knowledge of Complainantís registered U.S. trademark and that this constructive knowledge is sufficient to support a finding of bad faith. In this case, however, Respondents should have received actual knowledge, not merely constructive knowledge, of Complainantís mark. It is the policy of NeuLevel that a domain name applicant receive a conflict notice in any situation where there is an IP claimant as part of the "Round Robin" process. After receiving such notice, the domain name registrant (Respondent here) must decide whether to proceed with the application despite having been notified of a third partyís intellectual property rights. If the applicant does nothing, the application is deemed cancelled. Thus, Respondents presumably had actual notice of Complainantís trademark rights prior to electing to proceed with the domain name registration. However, notification to Respondents that Complainant asserted trademark rights in the GALAXY mark in connection with flooring and carpet products does not automatically result in a conclusion that Respondentsí registration of the <galaxy.biz> domain name was in bad faith. Trademark rights and domain name rights are not coextensive. One may register a domain name for a legitimate purpose even if another party has trademark rights in a corresponding mark. Mere knowledge that another party claims such trademark rights in the same name, by itself, is not sufficient to constitute a bad faith registration, particularly where the name involved is a common term such as galaxy and where there are multiple IP Claimants asserting rights to the name. A contrary rule would dictate a bad faith finding in every BIZ STOP proceeding because, by definition, every registrant will necessarily have received notice of the existence of at least one IP Claimant.
The Panel finds that Complainant has not established that Respondents registered or used the disputed domain name in bad faith.
Based on its determination that Complainant has failed to establish that Respondents registered or used the disputed domain name <galaxy.biz> in bad faith, the Panel declines to direct Respondent to transfer the disputed domain name to Complainant.
The Panel further permits a subsequent challenge to the domain name <galaxy.biz>.
Roderick M. Thompson
Dated: July 27, 2002