Generic Top Level Domain Name (gTLD) Decisions

UNITED ARTISTS CORPORATION
COMPLAINANT,

vs.

UNITED ARTISTS CORP.
RESPONDENT.

DECISION
Forum File No.: FA94648

BEFORE:       Howard C. Buschman III, Arbitrator

Complainant seeks transfer of the domain name “unitedartists.net” pursuant to the Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as adopted and approved by the Internet Corporation for Assigned Names and Numbers (“ICANN”) as supplemented by the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy. “unitedartists.net” is registered with Network Solutions. By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy, pursuant to Network Solutions’ Service Agreement Version 4.0.

Respondent requested and received additional time to respond to the Complaint. No response, however, was received.

                                                                        FACTS

The domain name “unitedartists.net” was registered by Respondent on June 26, 1998. Complainant owns a trademark, United Artists. The mark was registered with the United States Patent Office on August 7, 1962 for use with respect to mechanically grooved photograph records. The twenty year period expired in 1982. On November 20, 1990, the Patent and Trademark Office issued a Certificate of Registration registering the mark for entertainment services, namely production and distribution of motion pictures. The registration lasts ten years. Complainant has actively used the mark since 1923. Prior to commencing the instant arbitration proceeding, Complainant, on several occasions, requested Respondent to transfer the domain name to it. Complainant asserts that Respondent has refused to do so unless paid “an exorbitant sum of money.”

A printout from Respondent’s web site states that Respondent provides a service entitled “Entertainment Bible” as an internet directory for use by persons seeking to produce motion pictures. Respondent also features movie videos produced by various producers.

                                                                  DISCUSSION

Section 4(a) of the ICANN Uniform Domain Name Dispute Policy (the “Rules”) requires the Complainant to prove each of the following three elements in order to sustain a claim that a domain name should be cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the registrant 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.

Section 4(b) provides:

Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.

The Complainant bears the burden of proof on these issues.

         Similarity Of Domain Name With Marks In Which Complainant Has Rights

With respect to the first of these issues, it is obvious that the domain name is identical to the mark.

                  Respondent’s Rights or Legitimate Interests in the Domain Name

In addition, a domain name registrant has no legitimate right or interest in a non-generic domain name that is identical to a mark, was registered after registration of the mark and is used for a purpose similar or related to the long standing use of the mark. That is the case here.

                                                                     Bad Faith

With respect to the third element of Section 4(a), bad faith registration and use, I do not agree that registration of a domain name replicating an existing trademark is conclusive evidence of bad faith. Were the Rules to be interpreted to permit an inference or presumption of wrongful motive from solely registration of a domain name that is similar or identical to a mark, such an interpretation would swallow up the non-exclusive instances of prima facie evidence of bad faith listed in Section 4(b).

Here, Complainant and Respondent are not competitors in the strictest sense. Complainant produces movies, Respondent claims that its web site seeks to enable others to make low budget films. It is not apparent, however, that the domain name was chosen to disrupt Complainant’s business. There also is no evidence of a pattern of registering domain names in order to prevent  an owner of a mark from reflecting the mark in a domain name. Thus, Sections 4(b)(ii) and (iii) of the Rules are inapplicable.

Section 4(b)(i) of the Rules addresses the so-called “classic cybersquatter” case where one registers a domain name with the intention to arbitrage it. See, Avery Dennison Corp. v. Sumpton, [1999] USCA9 436; 189 F.3d 868, 880 (9^th Cir. 1999). Proof of intention is almost always based on circumstantial evidence. Here, there is such evidence in exact replication of the Marks in the domain name. But Respondent has also developed the web site. That it responded to an offer to purchase the domain name after having developed the web site by agreeing to consider sale for a large sum does not indicate classic syber-squatting.

Section 4(b)(iv) of the Rules, however, is applicable. The domain name’s replication of a widely known mark used for 77 years in connection with film production service is an intentional attempt to attract, for commercial gain, internet users to the web site by creating a likelihood of confusion with the mark as to the source, sponsorship or affiliation with the web site or the services to be found thereon.

Remedy

Transfer of the domain name will not give Complainant a developed web site. Rather, the users entering the domain name will be directed to Complainant’s address as opposed to Respondent’s address. Such remedy is appropriate.

Accordingly, it is decided that Network Solutions shall transfer the domain name “unitedartists.net”.

Dated: June 15, 2000                                    Honorable Howard C. Bushman, III, Arbitrator