WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Softbank Corp. v Dong Hwan Ahn
Case No. DBIZ2002-00202
1. The Parties
The Complainant is Softbank Corp, a Japanese Corporation with its principal place of business in Tokyo, Japan. The Complainant is represented by Keith E Danish, of New York City, United States of America.
The Respondent is Dong Hwan Ahn, Seoul, Republic of Korea. The Respondent did not file any Response, and he is not represented in the proceeding.
2. The Domain Name and Registrar
The domain name at issue ("the domain name") is <softbank.biz>. The domain name is registered with Domain People, Inc., of Vancouver, British Colombia, Canada ("the Registrar").
3. Procedural History
The Complaint was submitted by the Complainant to the WIPO Arbitration and Mediation Center ("the Center") on April 28, 2002 (email), and May 3, 2002 (hard copy).
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"), the Rules for Start-Up Trademark Opposition Policy ("the STOP Rules"), and the WIPO Supplemental Rules for Start-Up Trademark Opposition Policy for .biz ("the WIPO Supplemental STOP Rules").
The STOP is incorporated into the Respondentís registration agreement with the Registrar, and the Respondent is therefore obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint being filed concerning the domain name.
The Center determined that the Complaint as submitted was deficient in that it did not clearly identify a Mutual Jurisdiction, as required by STOP Rule 3(c)(xii). A form of Complaint Deficiency Notification was sent to the Complainant on May 15, 2002. That deficiency was duly corrected by amendment made the same day.
On May 28, 2002, the Center emailed to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint. Copies of the Notification of Complaint and Commencement of Administrative Proceeding and the Complaint were also sent by courier to the Respondent at the address in Seoul, Korea notified in the WHOIS database. Copies of the Notification of Complaint and Commencement of Administrative Proceeding, and the Complaint itself, were also transmitted to ICANN and the Registrar.
The Notification of Complaint and Commencement of Administrative Proceeding, advised the Respondent that the last day for sending a Response to the Complaint, would be June 17, 2002.
No Response having been received, on June 24, 2002, the Center issued a Notification of Respondent Default.
The Center then invited Warwick Alexander Smith, of Auckland, New Zealand, to serve as Panelist in the case. Warwick Alexander Smith having duly completed a form of Statement of Acceptance and a Declaration of Impartiality and Independence, the Center on July 17, 2002, appointed him as the Administrative Panel in this administrative proceeding. The Panel considers that he has been properly appointed under the STOP Rules and the WIPO Supplemental STOP Rules.
The Center then forwarded to the Panel, by courier, the record in the case.
The Panel agrees with the assessment of the Center that the Complaint (as amended) meets the formal requirements of the STOP, the STOP Rules, and the WIPO Supplemental STOP Rules.
The language of the administrative proceeding is English, being the language of the Registration Agreement. The Complainant has paid the necessary fees to the Center.
No other legal proceedings relating to the domain name have been notified to the Panel.
The Complaint shows that the Complainant was provided by the Registry Operator with a ticket number. There are no other IP Claimants in the queue, so the Complainant has priority to commence this administrative proceeding.
In the absence of exceptional circumstances, the Panel is required to forward its decision to the Center by July 31, 2002, in accordance with the STOP Rules, paragraph 15.
4. Factual Background
The Complainantís business was founded in 1981. It originally specialized in software distribution and computer-related publications, but it has expanded its activities since 1981, and it is now involved in distribution, publishing, internet media platforms, broadband infrastructure services, and a broad range of e-commerce businesses. It is a participant in a number of joint venture enterprises, including joint ventures with Microsoft, Cisco, and Yahoo!. In the United States, the Complainant is the largest shareholder in Yahoo!, E*Trade and CNET. In the year ended March 2001, the Complainantís consolidated net sales totalled - 397,105 million.
The Softbank Group includes a number of subsidiary corporations which include the word "Softbank" in their trade names.
The Complainant operates a number of websites using "softbank" domain names, including the websites at <softbank.com> and <softbank.co.jp>. The website at <softbank.co.jp> indicates that, in addition to its numerous other activities, the Complainant has private equity funds in the United Kingdom, Europe, and numerous other markets, including Korea.
The Complainant has produced a schedule showing that it has registered the mark SOFTBANK as a trademark in many countries around the world, in respect of a wide range of goods and services. By way of example only, the Complainant is the registered proprietor of the mark SOFTBANK in Korea, in international class 35, pursuant to an application filed on June 2, 1998. The registration date for that particular mark, is October 26, 1999.
In the United States, the Complainant is the registered proprietor of the mark SOFTBANK in Class 36, in respect of financial investments in the field of businesses providing goods and services via the Internet (Registration No 2542547; application filed on July 28, 2000, and registered on 26 February 2002). The Complainant has also produced printouts from the website of the United States Patent and Trademark Office showing that companies which appear to be related to the Complainant, are the registered proprietors of the mark SOFTBANK in Class 35, and the mark SOFTBANK ON-HAND in Class 9.
In Japan, the Complainant is the proprietor of the mark SOFTBANK in Classes 9, 16, and 35, in respect of computer programs for use with personal computers, computer books and magazines, and the promoting and conducting of trade shows.
Examples of articles in various newspapers or periodicals were produced by the Complainant, and they are sufficient to demonstrate that the Complainant and its marks are very well-known not only in Japan, but throughout the world.
The Respondent registered the domain name on March 27, 2002. By then, the mark SOFTBANK had been registered as a trademark in the United States, Japan, and Korea, as well as in many other countries. The Complainant had also by then commenced using the domain names <softbank.com> and <softbank.co.jp>.
5. The Partiesí Contentions
The Complainant contends:
1. The domain name is identical to the Complainantís SOFTBANK trademark and service mark.
2. "Softbank" is a coined term, and is not the personal name of the Respondent.
3. The Respondent has never used the expression "Softbank" as, or as part of, any trademark, trade name, or other trade symbol, or in a descriptive or informative manner to describe goods or services.
4. The Respondent is believed not to have made any preparations to use the domain name or a name corresponding to the domain name, in connection with any bona fide offering of goods or services, before notice of the dispute.
5. The Respondent has never had any business relations with the Complainant. The Respondent registered the domain name without the consent, licence, or authorization of the Complainant, and the Complainant has not acquiesced in the use of the domain name by the Respondent.
6. The Respondent owns no United States or Korean trademark or service mark registrations for SOFTBANK or any similar term.
7. The Respondent had constructive notice of the Complainantís United States trademark registrations of SOFTBANK, and it is highly unlikely that he had no actual knowledge of the Complainantís SOFTBANK marks.
8. A United States business person must be presumed to have knowledge of the existence of the trademark register of his own country, and, as a prudent businessman, should make a search of such register before embarking on a business endeavour involving a domain name. By analogy, a Korean business person should have made a search of the Korean trademark register for marks similar to his proposed domain name, before registering the name. Bad faith has been found where a respondent "knew or should have known" of the registration and use of a copied trademark prior to registering the domain name (citing SportSoft Golf Inc v Hale Irwinís Golfersí Passport, NAF Case No FA94956).
9. The Respondent was notified that an IP claim relating to the mark SOFTBANK had been filed by the Complainant, but the Respondent failed to relinquish its demand for the domain name. The Respondent therefore intended to prevent the Complainant from using its SOFTBANK trademark in the .BIZ domain.
10. The Respondentís actions are intended to disrupt the Complainantís business activities on the worldwide web.
11. Considering the fame of the Complainantís SOFTBANK marks, the Respondent could not make any use of the domain name without creating a false impression of association with the Complainant and its business. Any such use of the domain name would necessarily involve a trading on the goodwill of an established and widely known trademark, and would constitute bad faith.
12. "Upon information and belief", the Respondent already offers numerous domain names for sale to the public. The Respondent can be expected to offer the domain name for sale as well.
13. The Respondentís conduct with respect to the domain name violates section 43(d) of the United States Trademark Act, in that the Respondent has a bad faith intent to profit from the Complainantís trademark SOFTBANK and the Respondent registers, traffics in, or uses a domain name that is identical or confusingly similar to the Complainantís trademark and that is dilutive of the Complainantís famous mark.
The Respondent has not filed any submissions.
6. Discussion and Findings
Under the STOP, a Complaint can only be filed by an "IP Claimant" who has 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. If there are multiple claimants, NeuLevel determines priority orders on a randomized basis (STOP Paragraph 4(l)(i)). Only the priority claimant is 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 the 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, there is no other IP claim.
Under the STOP, the Complainant must show:
(a) That the domain name is identical to a trademark or service mark in which the Complainant has rights (Paragraph 4(a)(i)).
(b) That the Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii).
(c) That the domain name has been registered or is being 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. The specific circumstances available to a Respondent to demonstrate a "right or legitimate interest" are:
(i) [The Respondent is] the owner or beneficiary of a trade or service mark that is identical to the domain name; or
(ii) Before any notice to [the Respondent] of the dispute, [the Respondentís] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) [The Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights. (STOP, Paragraph 4(c)).
It is to be noted that this is not an exhaustive description of the circumstances which might constitute rights or legitimate interests in a domain name.
Likewise, the examples of bad faith set out in Paragraph 4(b) of the UDRP can be invoked by a Complainant, although there are some differences under the corresponding Paragraph 4(b) of the STOP (the most important of which is that, under the STOP, it is not necessary for a Panel to find that the Respondent has engaged in a pattern of such behaviour before the Panel can find that a domain name was registered in order to prevent a Complainant from reflecting its mark in a corresponding domain name).
Because the STOP and the STOP Rules come into play shortly after registration of a domain name, the "bad faith" issue is normally judged as at the time of registration. Because of the "lock" placed on the use of the domain name under the STOP, there is normally no scope under the STOP for drawing inferences from a Respondentís failure to develop a website linked to the domain name.
The Panel now addresses the three matters the Complainant must establish under Paragraph 4(a) of the STOP. In the absence of any Response from the Respondent (and in the absence of exceptional circumstances), the Panel is required to decide the dispute based upon the Complaint (Rule 5(e) of the STOP Rules).
Paragraph 4(a)(i) of the STOP Ė Domain Name Identical to Trademark or Service Mark in which Complainant has rights
The Complainant has proved that it is the registered proprietor of the mark SOFTBANK in numerous countries, including Japan, the United States, and the Republic of Korea. That trademark is identical to the domain name. The Complainant has therefore proved this part of the Complaint.
Paragraph 4(a)(ii) of the STOP Ė Whether the Respondent has a right or legitimate interest in the domain name
The Panel accepts the Complainantís contention that the Respondent has no right or legitimate interest in the domain name. The Panelís reasons for that finding are as follows:
1. The Complainant has not conferred any rights to the use of its SOFTBANK mark, on the Respondent.
2. There is no evidence of the Respondent being the owner or beneficiary of any SOFTBANK trade or service mark.
3. There is no suggestion of the Respondent having used (or made demonstrable preparations to use) the domain name or a name corresponding to it, in connection with any bona fide offering of goods or services.
4. The Respondent has not been commonly known by the domain name.
5. The Panel accepts the Complainantís submission that it is highly unlikely that the Respondent would not have been aware of the Complainant and its well-known mark before he made his application to register the domain name In the Panelís view, it is highly improbable that the Respondent would not have checked the ownership of the domain name <softbank.com> before making application to register the same domain name in the .BIZ gTLD.
6. In the unlikely event that the Respondent was not aware of the Complainant and its SOFTBANK mark before he made application to register the domain name, the .BIZ Registry procedures make it plain that the Complainantís IP claim (and therefore its SOFTBANK mark) must have been drawn to the Respondentís attention before he elected to proceed with his application to register the domain name. Under the procedures adopted by the .biz Registry Operator, the applicant for registration of a domain name is notified if an IP claim based on an identical trade or service mark is filed. The applicant may then elect to cancel the application for registration, or continue with it. If the applicant does nothing, the application is not processed. The Panel finds that, even if the Respondent was unaware of the Complainant and its SOFTBANK marks before his initial application to register the domain name, he had full knowledge of the Complainantís claim before he completed the registration of the domain name.
7. "Softbank" is a coined word, and, in the absence of a Response, the Panel regards it as unlikely that the Respondentís choice of that word for the domain name was made otherwise than by copying the Complainantís well-known mark (reflected also in its domain name <softbank.com>).
Paragraph 4(a)(iii) of the STOP Ė Domain name registered or being used in bad faith
The Panel also finds this part of the Complaint proved.
For the reasons set out above, the Panel is satisfied that the Respondent himself has no right or legitimate interest in the domain name. The Panel has also found that the Respondent was aware of the Complainant and its SOFTBANK marks, before he proceeded with the application to register the domain name.
The Panel accepts that there would be likely to be significant confusion as to the source, affiliation, or endorsement of any website or other on-line location which the Respondent might establish at the domain name, if he were permitted to retain the domain name. The word "Softbank" is a coined word, and on the basis of the material produced by the Complainant, it seems inevitable that many Internet browsers looking for sites associated with the Complainant would assume that any website at <softbank.biz> was associated with the Complainant.
In these circumstances, and in the absence of any Response, the Panel is prepared to infer that the Respondent did not innocently adopt the domain name, but chose it intentionally with a view to trading on the established goodwill of the Complainantís SOFTBANK marks. The Respondentís intention was to profit from the registration of the domain name, either by selling the domain name to the Complainant or to a third party (who would seek to profit from the fact that the domain name is identical to the Complainantís marks), or by attracting Internet users to a website of his own by creating the likely confusion referred to above. In the meantime, the Respondentís intention was to prevent the Complainant from reflecting its SOFTBANK mark in a corresponding domain name (in itself evidence of bad faith Ė see Paragraph 4(b)(ii) of the STOP).
Considered with the matters listed 1 Ė 7 above in the Panelís discussion relating to paragraph 4(a)(ii) of the STOP, these findings are sufficient to satisfy the Panel that the domain name has been registered in bad faith.
For all the foregoing reasons, the Panel decides that the domain name <softbank.biz> registered by the Respondent is identical to the SOFTBANK trademark and service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent has registered the domain name in bad faith. Accordingly, pursuant to paragraph 4(i) of the STOP, the Panel requires that the registration of the domain name <softbank.biz> be transferred to the Complainant.
Warwick Alexander Smith
Dated: July 30, 2002