WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Motley Fool, Inc. v. Dong Hwan Ahn
Case No. DBIZ2002-00195
1. The Parties
The Complainant in this administrative proceeding is The Motley Fool, Inc., a Delaware corporation, located at 123 North Pitt Street, Alexandria, Virginia 22314, United States of America. The Complainant is represented by Peter J. Willsey, Esq., Attorney, of Cooley Godward LLP, One Freedom Square, Reston Town Center, 11951 Freedom Drive, Reston, Virginia 20190-5601, United States of America.
The Respondent in this administrative proceeding is Dong Hwan Ahn, an individual with a listed address of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The Domain Name in this dispute is <fool.biz> ("the Domain Name").
The Registrar is DomainPeople, Inc., of Suite 1440, Harbour Center, 555 West Hastings Street, Vancouver, BC, Canada.
3. Procedural History
The Complaint was received by WIPO on April 27, 2002. WIPO has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("the STOP Policy"), as well as the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for ".BIZ" ("the WIPO Supplemental STOP Rules") relating thereto and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
On May 28, 2002, WIPO notified the Respondent of the Complaint by e-mail. No Response was received by WIPO and on June 24, 2002, Notification of Default was sent, also by e-mail (in each case notice was sent to the e-mail address registered by the Respondent with NeuLevel).
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, and is due to deliver his Decision by July 31, 2002.
4. Factual Background
(1) The Domain Name was registered by the Respondent on March 27, 2002.
(2) The trademark "FOOL" ("the Trademark") was registered by the Complainant in the United Kingdom on March 9, 2001, under No. 2242170 and in the EU on November 22, 2001, under No. 1773399 in respect of printed matter, and financial and computer services.
(3) The Complainant is also the registrant of the domain name <fool.com>, registered on June 26, 1995.
(4) The Respondent is an individual, about whose interests nothing is known.
5. Partiesí Contentions
The Complainant asserts, inter alia, as follows:-
(i) The Complainant provides information and guidance via the Internet, printed publications, and other media to consumers around the world on a wide array of topics within the fields of investment, personal finance, financial planning, financial services, real estate, insurance and credit. Since its inception in 1994, the Complainant has enjoyed wide success and recognition as one of the leading providers of consumer-oriented financial information. The Complainant consistently offers its products and services under a family of marks that feature the term FOOL, including FOOL and FOOL.COM. Complainant uses a variety of media to offer and promote its FOOL and FOOL.COM products and services, including websites located at "www.fool.com" and "www.fool.co.uk".
(ii) The Complainant has pending applications in the USA to register the Trademark. It also owns numerous United States trademark registrations for other marks incorporating the term FOOL, including the marks THE MOTLEY FOOL, Registration No. 1,953,034; THE MOTLEY FOOL, Registration No. 2,506,170; FOOLISH, Registration No. 2,384,981; FOOLISH FOUR, Registration No. 2,391,076; FOOLMART, Registration No. 2,384,979; FOOLíS SCHOOL, Registration No. 2,433,551; and FOOLíS SCHOOL, Registration No. 2,384,980.
(iii) The Complainant has established common law rights in the Trademark. Since at least as early as August 4, 1994, with respect to the Trademark, and September 1999, with respect to the mark FOOL.COM (collectively referred to as "the FOOL Marks"), well prior to the Respondentís registration of the Domain Name, the Complainant has continuously used the FOOL Marks extensively in the United States and throughout the world to identify and promote its consumer-oriented information and guidance in the fields of investment, personal finance, financial planning, financial services, real estate, insurance and credit. The Complainant has used the FOOL Marks on its website, e-mail and printed newsletters, signs, books, brochures and similar printed materials
(iv) On June 26, 1995, the Complainant registered the domain name <fool.com> with Network Solutions, Inc. Since that time, consumers around the world have been able to access the Complainantís website using the <fool.com> domain name. Over the past year, the Complainantís website at "www.fool.com" has received an average of 2 to 3 million visitors per month. The Complainant also promotes and provides its products and services by means of magazines, newsletters, books, radio and television broadcasts, seminars, and trade conferences. The Complainant reaches an average of 30 million consumers per month through its broad array of communications media, including its newspaper columns, radio and television broadcasts, electronic newsletters and websites.
(v) The Complainant has devoted substantial time, effort and resources to developing and promoting the FOOL Marks as well as the products and services sold under it. As a result of these efforts, the purchasing public throughout the world has come to associate, know, rely upon, and recognize the business, products and services of the Complainant by the FOOL Marks, and the Complainant has gained an exceedingly valuable reputation and a high degree of goodwill in the FOOL Marks as a result thereof. The FOOL Marks have acquired considerable fame and recognition worldwide.
(vi) In addition to numerous other countries, the Complainant has used the FOOL Marks in the Republic of Korea. The Complainantís websites at "www.fool.com" and "www.fool.co.uk" have been accessible to residents of the Republic of Korea since at least as early as 1994. The Complainant has over 2,000 registered <fool.com> users who have provided e-mail addresses which indicate residence in the Republic of Korea (e.g., they incorporate the country-specific top-level domain name ".co.kr," or obviously emanate from companies located in the Republic of Korea).
(vii) The Complainant has been featured prominently on many Korean language websites. Based on the widespread popularity of the Complainant in Korea, in December of 2001 the Complainantís website at <fool.com> was identified as the best financial website by the Korean Magazine HowPC. HowPC, a Korean language publication that focuses on the field of computers and technology and which is widely read in the Republic of Korea, based its rankings on reader feedback.
(viii) Respondent is neither the owner nor the beneficiary of any trademark applications or registrations for FOOL or any similar variations thereof.
(ix) Upon learning that the Respondent had registered the Domain Name, the Complainant instructed its Korean counsel to investigate the Respondent and his plans with respect to the Domain Name. On April 15, 2002, Si-Rang Sung, a paralegal with the Complainantís Korean law firm (Y.S. Chang & Associates in Seoul, Republic of Korea), telephoned the Respondent and discussed the Domain Name with him. During their telephone conference on April 15, 2002, (the "Telephone Conference"), Respondent stated that he was not using the Domain Name, nor did he have any plans to do so. Rather, the Respondent stated that he had registered the Domain Name and several unrelated domain names for the sole purpose of selling them. During the Telephone Conference, the Respondent offered to sell the Domain Name to Si-Rang Sung for a price yet to be determined. The Respondent further indicated that he wished to receive considerable compensation for the Domain Name, but declined to identify a specific price until he spoke with an unnamed agency that purportedly evaluates the value of domain names.
(x) A significant percentage of Internet users searching for the Complainantís website are likely to use the Domain Name. The Domain Name is identical to the Complainantís Trademark and <fool.com> domain name and therefore is likely to cause confusion, mistake, or deception as to the source or sponsorship of any products or services offered in connection with the Domain Name. Moreover, even if no products or services are offered in connection with the Domain Name, the simple fact that the Domain Name does not point to the Complainantís website will damage the Complainantís reputation as one of the premier consumer-focused media companies in the world. Unless the Domain Name is transferred to the Complainant and linked to the Complainantís website, the Complainant will suffer irreparable and extensive damage in terms of lost business and diminished reputation.
The Respondent has not filed a Response.
6. Discussion and Findings
According to paragraph 4(a) of the STOP Policy, the Complainant must prove that:
(i) The Domain Name is identical to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered or is being used in bad faith.
There is no doubt that the Domain Name is identical to the trademark "FOOL" in which the Complainant has rights, and that the Complainant has established (i).
As to element (ii) of paragraph 4(a) of the STOP Policy, the Respondent has done nothing to demonstrate that he has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the STOP Policy apply (i.e. being owner or beneficiary of a trade or service mark identical to the Domain Name, before notice of the dispute preparation to use the Domain Name in connection with a bona fide offering of goods or services, or being commonly known by the Domain Name). The facts put forward by the Complainant (see paragraph 5A (viii) and (ix) above), lead the Panelist to conclude that the Complainant has established element (ii).
Lastly, the Complainant must establish element (iii), i.e. that the Domain Name has been registered or is being used in bad faith. Paragraph 4(b)(i) of the STOP Policy indicates to a Respondent that the following circumstances shall be evidence of registration or use of a domain name in bad faith:
"Circumstances indicating that you have registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name,"
The offer to sell the Domain Name "for a considerable sum" (which in the Panelistís opinion can only mean a sum in excess of the Respondentís costs), satisfies the Panelist that the Complainant has established element (iii), i.e. that the Respondent registered the Domain Name in bad faith.
In the light of the findings in paragraph 7 above, the Panelist concludes that:-
● the domain name <fool.biz> is identical to the trademark FOOL of the Complainant;
● the Respondent has no rights or legitimate interests in the domain name;
● the domain name has been registered in bad faith.
Accordingly, the Panelist orders that the Domain Name <fool.biz> be transferred to the Complainant, The Motley Fool, Inc.
Dated: July 29, 2002