3rd Jul 2001

DECISION

 Boo Yl Park DADA Corp. v. Sobrino Juan-Carlos d/b/a Dada Inc.

Claim Number: FA0105000097299

 

PARTIES

The Complainant is Boo Yl Park (CEO), DADA Corp., Kangnam-Ku, Seoul, Korea (“Complainant”). The Respondent is Sobrino Juan-Carlos d/b/a Dada Inc., New York, NY, USA (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dada.com>, registered with Network Solutions, Inc.

 

PANELISTS

This is a domain name dispute proceeding pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”). A three-member arbitration panel was requested; this panel consists of Chairman, Judge Nelson A. Diaz (Retired) of Philadelphia, PA, Diane Cabell of Cambridge, MA and Young Kim of Kim & Chang of Seoul, Republic of Korea (the “Panelists” or the “Panel”). Each Panelist has confirmed to the National Arbitration Forum, (“the Forum”) that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelist in this proceeding.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 21, 2001; the Forum received a hard copy of the Complaint on May 21, 2001.

 

On May 25, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <dada.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5 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 May 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 14, 2001 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@dada.com by e-mail.

 

A timely response was received and determined to be complete on June 14, 2001.

 

An additional response was received from Complainant after the deadline, however, no consideration was given thereto. An additional response was received from Respondent before the deadline and, accordingly, was considered. Further additional responses received from both parties were not considered

 

On June 22, 2001, pursuant to Respondent’s request to have the dispute decided by a three-member panel, the Forum appointed the Panelists.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant. 

Respondent requests that the panel find that Complainant has engaged in reverse domain name hijacking in violation of the Policy. 

 

COMPLAINANT’S CONTENTIONS

  1. Complainant contends that the domain name <dada.com> is identical to its DADA mark.

 

  1. Complainant contends that Respondent’s use of the domain name is not connected with a bona fide offering of goods or services. Complainant further contends that Respondent links the domain name to a pornographic site.

 

  1. Complainant contends Respondent has not been commonly known by the domain name, and has not acquired any trademark or service mark rights relating to the domain at issue. Complainant alleges that Respondent’s corporation is dissolved. 

 

  1. Complainant further contends that Respondent is not making legitimate noncommercial or fair use of the domain name, because the domain name is operating for the commercial gain of Respondent by misleadingly diverting customers away from Complainant.

 

RESPONDENT’S CONTENTIONS

  1. Respondent contends that Complainant has no enforceable rights to the DADA mark for the purposes of challenging the <dada.com>domain name, because Complainant did not acquire its United States trademark registration until after Respondent registered the disputed domain. Respondent denies that the domain name is identical to the DADA mark.

 

  1. Respondent contends that prior to the initiation of this dispute, Respondent had been using <dada.com> to link to a website dedicated to the Dada form of art. Respondent also claims to have plans to use the domain name in connection in question for its website design and development business.

 

Respondent also contends that because DADA is a common word not solely associated with Complainant, Respondent is, in any event, entitled to a presumption of having a legitimate interest, regardless of the use to which the disputed domain name is put, absent evidence of bad faith use and registration.

 

  1. Respondent denies that he registered and used the domain name in bad faith.

 

FINDINGS

Complainant, trading under the name DADA Corporation, has been in the sportswear business for 26 years, manufacturing and exporting hats, as well as bags and toys, to overseas markets and buyers especially in the United States.   No information is provided with respect to precisely when Complainant first began to use the DADA trademark in commerce. The United States trademark registration certificate for DADA, Reg. No. 1,896,120, states that the application was filed on May 24, 1993 and the mark registered on May 30, 1995. This same certificate further states that Complainant is the owner of two Republic of Korea trademark registrations, dated July 16, 1985 and April 8, 1985, for which the Korean characters apparently transliterate to DADA. Complainant is also the owner of several trademark applications for the DADA mark in both the United States and Korea. 

 

Respondent registered the disputed domain name on March 4, 1995, two months before Complainant’s United States trademark registration issued. In the ensuing six years before this dispute, Complainant never objected to Respondent concerning its use of <dada.com>. 

 

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order canceling or transferring a disputed domain name:

 

  1. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
  2. The Respondent has no rights or legitimate interests in respect of the domain name; and

iii.                  The domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

While the Panel has considered Respondent’s argument about the “genericness” of the DADA mark, in particular that the term “dada” has been long associated with the dadaist art movement and that the word “dada” translates to “hobbyhorse” in the French language, there is no evidence whatsoever that the DADA is generic as to Complainant’s clothing and related products. The evidence plainly shows that the registered DADA mark has served to identify Complainant’s clothing and related products in Korea since at least as early as 1985 and in the United States since at least 1996. The Panel thus finds that Complainant has legitimate and protectible rights (registered and unregistered) in the DADA mark and a bona fide basis for making the Complaint. 

 

We now analyze whether the <dada.com> domain name registered by Respondent is identical to or confusingly similar to the DADA mark. First, it should be stated that addition of the “.com” TLD is not relevant to our findings, since the use of a TLD is required for the domain name to function as on the Internet. Moreover, to the average Internet user, the addition of TLD does not confer any distinctiveness to the dominant portion of the domain name, which is “dada.” Second, although the respondent asserted that the trademark includes some design, the trademark registered in US and Korea actually includes only the word “dada” in English, Chinese and Korea and nothing else. The Panel therefore finds that the disputed domain name is virtually identical to the DADA mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, the non-exclusive list of factors that may constitute evidence of a registrant’s rights to and legitimate interest in the disputed domain name include:

  1. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
  2. An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

iii.                  Legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

 

The Panel finds that Respondent has a sufficient interest in the domain name <dada.com> to avoid a transfer.

 

First, Respondent has provided evidence that he uses the <dada.com> domain name in association with the operation of a website “exhibiting his own interpretation of the Dada art form,” an important literary and artistic movement of the early twentieth century. While Complainant avers that the “meaning and purpose of the [] interior web pages are difficult to grasp,” this hardly proves that Respondent’s use is not legitimate. To the contrary, it suggests that the website is indeed displaying dadaist art. As Respondent states in his response, Dada artists “flouted conventional asthestics and cultural values by producing works marked by nonsense, travesty, and incongruity.” Based on the evidence, the Panel finds that Respondent is making a legitimate, fair use of the domain name without intent for commercial gain. Moreover, there is no evidence that Respondent ever sought to misleadingly divert consumers or to tarnish the trademark at issue.

 

Second, Respondent contends that Complainant’s claims are barred by the doctrine of laches, since more than six years passed from the time he first registered the domain name to the filing of the complaint. See DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent had acquired rights and legitimate interests in the <teleconfusionremoval.com> domain name because of its continued use of the domain name three years before the Complaint was filed). Given the limited facts before the Panel, we cannot find that Complainant has committed laches. Nonetheless, we do find that the passage of six years further tilts the balance in favor of finding that Respondent has a legitimate interest in the <dada.com> domain name. 

 

In conclusion, although the Respondent did not demonstrate significant legitimate use, considering that the name is not unique and the Respondent showed and explained possible legitimate uses as discussed above, we find that the Respondent has a legitimate interest in the domain name at issue. 

 

Registration and Use in Bad Faith

Under Paragraph 4(b) of the Policy, evidence of bad faith registration and use includes:

 

  1. Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;
  2. A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;

iii.                  Registration of the domain name for the purpose of disrupting the business of competitor; or

  1. Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the associated web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark.

 

The Panel finds that Complainant has not met its burden of proof on the issue of bad faith registration and use.

 

First, while there is a dispute over whether Respondent may have attempted to sell the domain name, there is no evidence that the domain name was registered “for the purpose” of selling the domain name to the trademark owner or others for profit. The fact that Respondent still owns the domain name after six years strongly negates any inference in that regard.

 

Second, there is no evidence that Respondent engages in a pattern of registering the trademarks of others as domain names.

 

Third, it does not appear from the evidence submitted that Respondent registered the domain name for the purpose of disrupting the business of a competitor. 

 

Finally, the record contains insufficient evidence to establish that Respondent intentionally attempted to create a likelihood of confusion with Complainant’s mark. Rather, based on the record before us, it appears that Respondent uses <dada.com> for a bona fide website displaying dada art. Such a use is not directly competitive with Complainant’s business and should engender no consumer confusion. The website did not sell clothes or otherwise attempt to disguise Respondent as the mark owner. Because the term or name “dada” has a well-known meaning in western culture, we do not find that the mere selection of that particular word is convincing proof that there was any attempt to trade on the name of the Korean mark owner. 

 

While it is clear that Respondent’s domain name is virtually identical to Complainant’s mark, the Panel finds that Complainant has not proven that Respondent registered the contested domain name in bad faith. This is not a case where Respondent registered a domain name incorporating a famous or distinctive mark that he should have known he was not entitled to use. Rather, he selected what may be objectively viewed as but a generic or descriptive word or term. The first to register such domain names, even if done with the intent to profit from the registration, should prevail absent bad faith in the registration. See Cello Holdings LLC v. Lawrence-Dahl Companies, 2000 U.S. Dist. Lexis 3936 (S.D.N.Y. 2000) (denying cross-motions for summary judgment because plaintiff could not prove bad faith registration under the Anti-Cybersquatting Consumer Protection Act given the generic nature of the domain name in question <cello.com>). Respondent is legally entitled to register and use such apparently generic or merely descriptive domain names, provided that they are registered in good faith.

 

The scope of the Policy is narrow — it reaches only those disputes involving bad faith or abusive domain name registrations and leaves the resolution of ordinary trademark disputes to the courts. While it is possible that a court of competent jurisdiction might ultimately find, on a more fully developed factual record, that Respondent’s use of the domain names violates Complainant’s intellectual property rights, such a dispute is beyond the scope of the Policy.

 

The final issue before the Panel is “reverse domain name hijacking” pursuant to Paragraph 15(e) of the Policy. On the record before us, the Panel cannot find that the Complaint was brought in bad faith. The Complainant owns a trademark registration and is pursuing a dispute resolution proceeding against an identical domain name. Although the Panel finds that Complainant has not proven its case, it does not find reverse domain name hijacking on the evidence and pleadings submitted.

 


DECISION

In light of the Panel’s findings, we find in favor of Respondent. Complainant’s request to transfer the domain name <dada.com> is hereby DENIED.

Honorable Nelson A. Diaz, Chief Panelist

 Dated: July 3, 2001