17th Sep 2001
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Strongarm Designs, Inc. v. Arisu Tech
Case No. D2001-0776
1. The Parties
The Complainant: Strongarm Designs, Inc, 935-F Horsham Rd, Horsham, PA 19044, United States of America.
The Respondent: Arisu Tech, PO Box #5 Unpyong-Gu, Seoul, Seoul 122-600, South Korea.
2. The Domain Name and Registrar
The domain name in issue is <strongarm.com> (hereafter “the domain name”).
The domain name was registered with The Registry at Info Avenue, (“IARegistry.com”), P.O. Box 1897, Fort Mill, SC 29716, United States of America.
The domain name was registered on or about June 11, 2001.
3. Procedural History
(1) The Complaint in Case No. D2001-0776 was filed in electronic (web-based) form on June 12, 2001.
(2) The WIPO Arbitration and Mediation Center has found that:
– The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
– Payment for filing was properly made;
– The Complaint complies with the formal requirements;
– The Respondent was properly notified of the Complaint in accordance with the Rules, paragraph 2(a);
– The Respondent’s representative requested an extension of the deadline for filing a Response, based on the difficulty of communicating between South Korea and the United States. The Center granted this request and granted an additional five day period, as provided by paragraph 5(d) of the Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”). A Response was filed within the extended deadline.
– The Administrative Panel was properly constituted.
As Panelists, we accept these findings.
(3) All Panelists submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) There have been no further submissions from the Complainant or the Respondent, or their representatives, after the appointment of the Panel.
(5) No orders have been issued in advance of this decision.
(6) The anticipated date of decision in this proceeding was August 3, 2001. Due to difficulties in coordinating a telephone meeting to discuss the proceeding, and in accordance with paragraph 10(c) of the Rules, the decision due date was extended to September 17, 2001.
(7) The language of the proceedings is English.
4. Factual Background
A. The Complainant and its Marks
The Complainant has provided a very sparse Complaint which does not explain a great deal, and does not mention its character or the nature of its marks. However, from both the Complaint and the Response the following information about the Complainant may be gleaned: it is a manufacturer of engineering products, notably support brackets, mounts, and the like, for computer equipment. It has a registration for the typed drawing mark “STRONGARM” on the US Register of Trademarks, Registration No. 75578683, in International Class 9.
B. The Respondent
The Respondent is an Internet services firm that provides services such as web and server hosting, web design and web programming. The Respondent also develops its own web sites, and registers common word domain names for possible development. Among the domain names registered by the Respondent are: <applegreen.com>, <associator.com>, <gainful.com>, <glorification.com>, <haunter.com>, <limitations.com>, <modulations.com>, <proboscis.com>, <revolution.org>, and <terraces.com>. The Respondent also operates a web site called “ADOMAIN.com”, where it offers certain common word domain names for resale.
5. Parties’ Contentions
A. The Complainants’ Assertions
The Complainant submits that the Respondent’s domain name is identical to the Complainant’s mark.
The Complainant submits that the Respondent has no legitimate interest or rights in the domain name, on the basis that the Respondent appears to have acquired the name simply for resale as evidenced by the immediate “domain for sale” posting on the site <strongarm.com>. There is no evidence of the Respondent having any business purpose connection whatsoever with the mark “strongarm”.
The Complainant submits that the Respondent has registered and is using the domain name in bad faith, on the basis that the name was acquired by the Respondent solely for the purpose of reselling, “possibly in bad faith”.
Accordingly the Complainant requests that the Panel order that the domain name be transferred to the Complainant.
B. The Respondent’s Assertions
The Respondent submits that its domain name is not identical or confusingly similar to the Complainant’s mark, on the basis that the Complainant’s mark is used in a strictly descriptive sense to describe its computer and computer peripheral support “arms”. A descriptive mark does not provide its holder with enforceable rights under the Uniform Domain Name Dispute Resolution Policy (“UDRP”).
The Respondent submits that it has a legitimate interest or rights in the domain name, because the domain name incorporates a common term and, prior to the initiation of this dispute, Respondent has planned to use it for a web site related to healthy living.
The Respondent submits that it has not registered nor is using the domain name in bad faith, on the basis that there is no evidence of bad faith. The domain name incorporates the extremely common term in the English language STRONG ARM, and that is the only reason why it was registered. Under the UDRP, anyone is entitled to register a common term domain name. Complainant has not proffered evidence that the domain name was acquired primarily for the purpose of selling, renting or transferring it to Complainant; to prevent Complainant from reflecting its trademark in a domain name, together with a pattern of such conduct; or to disrupt Complainant’s business or attract customers seeking to purchase its products.
Accordingly the Respondent requests that the Panel not order that the domain name be transferred to the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to make out three elements:
a) The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (paragraph 4(a)(i)); and
b) The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii)); and
c) The Respondent registered and is using the domain name in bad faith (paragraph 4(a)(iii)).
A. The Complainant has Rights in a Trade or Service Mark, with which Respondent’s Domain Name is Identical or Confusingly Similar
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark.
The Complainant is registered proprietor for the US mark, “STRONGARM”, Registration No. 75578683, in International Class 9. We conclude that the Complainant — as registered proprietor of the mark — has established the first requirement of this paragraph; that is, that it has rights in a relevant trademark.
The second requirement is that the domain name be identical or confusingly similar to the marks. We conclude that the domain name is identical to the Complainant’s mark.
The Respondent pleads that the word is a common one in English, that there are multiple registrations within the US trademark register, and that the Complainant uses the mark in a descriptive sense. However, these are not issues which are contemplated by, or relevant to, an assessment of the applicability of paragraph 4(a)(i) of the UDRP. Within the particular fact situation presented here, we do not consider it necessary to enter into an investigation of whether or not the trademark is generic, descriptive, or used in any particular sense.
The Complainant has shown that it has rights in a trademark, and that the domain name is identical to this mark. We conclude therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the UDRP.
B. The Respondent has no Rights or Legitimate Interest in Respect of the Domain Name
The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4(a)(ii) of the UDRP. Its basis for so arguing is that the Respondent appears to have acquired the name simply for resale as evidenced by the immediate “domain for sale” posting on the site <strongarm.com>. According to the Complainant there is no evidence of the Respondent having any business purpose connection whatsoever with the mark “strongarm”.
Against this the Respondent asserts that it has a legitimate interest in the name on the basis of Paragraph 4(c)(i) of the UDRP. It asserts that it registered the domain name because it is a common term in the English language, which it intended to use for a healthy living web site. However, apart from a self-serving affidavit, the Respondent provides no evidence of the establishment of this business. It does not provide examples of business plans, letterhead, memos, or any other type of evidence that would convince this Panel of the veracity of the claim. On this point, we conclude that there is no evidence of the Respondent’s preparation for the use of the name, such as would be covered by Paragraph 4(c)(i). The Panel concludes therefore, on this argument, that the Respondent has not established rights or a legitimate interest in the name.
Alternatively, the Respondent argues that, whatever its intention with the domain name, it has a legitimate interest in registering a descriptive name (Energy Source Inc. v. Your Energy Source, Case No. 96364 (NAF Feb. 19, 2001)). Though this principle may be correct, the application of the case cited does not assist the Respondent. In that case the domain name in issue was <yourenergysource.com>, which is clearly descriptive. Here we are faced with a domain name that is not wholly descriptive, and is likely to be the basis of a trademark claim. It is not correct in our view — and the precedent cited does not stand for the proposition — that any descriptive name carries with it a presumption of legitimate interest. There are many domain names which stem from a descriptive word, but which infringe registered trademarks and which have been held not to carry with them any legitimate interest of themselves (see eg Susan Miller v. John Zuccarini d/b/a Cupcake-Movie, WIPO Case No D2001-0064 (<astrologyzone.org>;Marine Toys for Tots Foundation v. Jim Gales, WIPO Case No D2001-0088 (<toysfortots.com>). Respondent does not claim to be in the business of domain name speculation, so it does not obtain a legitimate interest in a domain name based merely on its registration or acquisition. We conclude that the Respondent does not have any rights or legitimate interest in the domain name, based on the argument that any descriptive domain name establishes its own legitimate interest.
As a result we conclude that the Respondent, overall, has not established that it has rights or legitimate interest in the domain name. We conclude that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the UDRP.
C. The Respondent Registered and is using the Domain Name in Bad Faith
The final issue is that of bad faith registration and use by the Respondent. For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
On this point, the Complainant argues that the Respondent registered the domain name for the purposes of reselling, “possibly in bad faith”. Against this, the Respondent’s pleading is more voluminous, arguing that the Complainant cannot meet its burden of proving bad faith registration and use because:
“There simply is no evidence, whatsoever, that Respondent registered the Disputed Domain for the purpose of selling, renting or transferring it to Complainant; to prevent Complainant from reflecting its trademark in a domain name, together with a pattern of such conduct; or to disrupt Complainant’s business or attract customer’s [sic] seeking to purchase its products. Nor is there any evidence that Respondent even had knowledge of Complainant or its trademark when it registered STRONGARM.COM.” (Response, Part C.)
We agree with the Respondent. It is not enough to suggest that the registration of the domain name was “possibly in bad faith”. There must be evidence of bad faith, either by making out the exemplar requirements in paragraph 4(b) of the UDRP, or by some other showing of bad faith. The Complainant has not presented any evidence to show the necessary elements of bad faith registration and use on the part of the Respondent. No evidence is shown that the name was offered to the Complainant or a competitor. No evidence is presented that the name was registered to stop the Complainant from reflecting its name in the DNS. And so on. In short, no evidence is presented of bad faith at all.
We therefore conclude that the Complainant has not satisfied paragraph 4(a)(iii) of the UDRP.
The Complainant has not made out all of the elements of paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy.
Pursuant to paragraph 4(i) of the Uniform Domain Name Dispute Resolution Policy and paragraph 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is denied.
We hereby order that the domain name <strongarm.com> remain with the Respondent.
Clark W. Lackert
David E. Sorkin
Dated: September 17, 2001