Generic Top Level Domain Name (gTLD) Decisions

The Complainant is High Speed Productions, Inc. d/b/a Thrasher Magazine, San Francisco, CA, USA ("Complainant") represented by Anne Hiaring. The Respondent is Thrasher Magazine, Ltd., Madrid, Spain ("Respondent") represented by Nuria Capitán García, of José Lázaro Galdiano, 2.

The domain names at issue are "thrashermagazine.net" and "thrashermagazine.org" registered with Register.com.

The undersigned Bruce E. Meyerson, as panelist, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 30, 2001; the Forum received a hard copy of the Complaint on April 2, 2001.

On April 2, 2001, Register.com confirmed by e-mail to the Forum that the domain names "thrashermagazine.net" and "thrashermagazine.org" are registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 April 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 30, 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@thrashermagazine.net, postmaster@thrashermagazine.org by e-mail.

A timely response was received via e-mail on April 27, 2001, although the appendices to the response were received after the deadline. Nevertheless, the response and appendices shall be considered.

On May 11, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

On May 23, 2001, the Panel directed the parties to submit supplemental information and a translation in accordance with Rules 12 and 11(b), respectively, ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. That information was submitted timely by the parties.

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

Respondent claims that the complaint is barred because it is the second time the Complainant has brought the same complaint against it. High Speed Productions, Inc. v. Thrasher Magazine, Ltd., FA 96099 (Nat. Arb. Forum Jan. 8, 2001) ("Thrasher I"). In Thrasher I, a panel denied the Complainant's attempt to transfer the domain names. Respondent also claims that its domain names which use the words "thrasher" and "magazine" are not confusingly similar to the word "thrasher," which, according to Respondent, is the only word Complainant obtained a trademark for prior to Respondent's registration of "Thrasher Magazine" in Spain in 1995. Respondent also claims that "thrasher" is a word used in numerous company names and other trademarks.

Complainant began publishing the skateboarding magazine, Thrasher Magazine, in 1981 and registered the mark "Thrasher" in the United States in 1990 for, among other things, "printed publications namely, magazines in the fields of skateboarding and other sports." Respondent does not deny that Complainant’s magazine is the leading skateboard magazine in the world and that Complainant sells internationally, related products bearing the Thrasher mark. Respondent’s domain names, "thrashermagazine.net" and "thrashermagazine.org," are identical to the full name of Complainant’s publication "Thrasher Magazine" as well as Complainant’s registered mark in Japan.

Respondent has advised the Panel that although its domain names incorporate the word "magazine" it does not publish a magazine and that its web site consists of links to other web sites. Where the Respondent uses the word "magazine" in its domain names, but publishes no magazine and links to no magazine, Respondent has not shown a legitimate interest in its domain names.

Complainant asserts that the web site offers links to other skateboarding companies and certain "action sport" affiliates. Under the circumstances, and based upon the record, Complainant has proven that Respondent registered the disputed domain names to intentionally attract Internet users to its web site, for commercial gain, with the likelihood that confusion has been created with Complainant’s mark

Before addressing the merits of the parties' contentions it is necessary to determine whether this Panel may even consider the Complaint. The domain names in dispute in this case were the subject of an identical dispute between the same parties. In a prior decision, earlier this year, a panel decided the dispute in favor of Respondent, refusing to transfer the domain names to the Complainant. Thasher I. Respondent asserts that the decision in Thrasher I should be considered as preclusive in this case. Although it is uncertain whether principles of claim or issue preclusion apply in these proceedings, generally speaking, arbitral decisions should promote efficiency and finality of decision making. Thus, other ICANN panels have applied these principles.

In some cases, panels have strictly applied principles of claim preclusion. Grove Broad. Co. v. Telesystems Communications Ltd., D2000-0158 (WIPO May 9, 2000); Grove Broad. Co. v. Telesystems Communications Ltd., D2000-0703 (WIPO Nov. 10, 2000).

The panel in the second case applied the broad principle found in many common law jurisdictions that once a party has been given a hearing and a tribunal has rendered a decision, a case cannot be re-litigated unless (a) the decision is overturned on appeal or (b) limited grounds for rehearing or reconsideration are met. According to the panel, such limited grounds include (1) serious misconduct on the part of a judge, juror, witness, or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; and (4) a breach of natural justice. Applying these broad res judicata principles, the panel determined that a case should not be re-heard by a subsequent panel unless the panel concludes that there has been a serious miscarriage of justice in the first proceeding.

In other cases, the initial panel left open the possibility that subsequent proof might change the outcome and either implicitly or explicitly invited the complaining party to refile the complaint. Cluett, Peabody & Co. v. Sanford Bus. Writing Serv., FA 94723 (Nat. Arb. Forum June 15, 2000); Cluett, Peabody & Co. v. Sanford Bus. Writing Serv., FA 95842 (Nat. Arb. Forum Dec. 12, 2000). In the initial case, the panel refused to transfer the domain name finding that the complainant failed to prove bad faith registration and use. However, in a footnote, the panel noted "on the record before" it, bad faith could not be found. Upon considering the subsequent complaint, the second panel determined that the footnote language "expressly reserved the right of Complainant to reassert bad faith registration and use of the domain name in issue. See also, Parker Hannifin Corp. v. East Bay Website Co., AF-0287 (eResolution Sept. 13, 2000); Parker Hannifin Corp. v. East Bay Website Co., AF-0587 (eResolution Dec. 22, 2000) (first decision made "without prejudice" to re-filing); Creo Products Inc. v. Website in Dev., D2000-0160 (WIPO May 1, 2000).; Creo Products Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) (subsequent complaint concerned acts which arose after the original decision).

I have a slightly different perspective than has been set forth in these cases. In an area of law that is so new, and is evolving daily, the application of principles of claim and issue preclusion must be applied cautiously. The legal issues and proofs relating to domain name disputes were virtually unknown several years ago, and continue to change rapidly. The ICANN rules are less than two years old and the principles that form the basis of the decisions made pursuant to the rules have barely been enunciated or established. Thus, stated simply, Internet law in general, and the resolution of domain name disputes in particular, is so new, that in the opinion of the undersigned, the strict application of principles of claim and issue preclusion could work an injustice. According, I believe that these principles should not be rigidly applied at this time and certainly where those principles would work a substantial injustice. For these reasons, I decline to apply them in this case.

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 that a domain name should be cancelled or transferred:

(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

(3) the domain name has been registered and is being used in bad faith.

Complainant owns the registered Thrasher mark--a name that it has used since 1981 in connection with its skateboard magazine, Thrasher Magazine. Respondent does not deny that Complainant’s magazine is the leading skateboard magazine in the world and that Complaint sells internationally, related products bearing the Thrasher mark

Respondent argues that although its domain names incorporate Complainant's mark, "Thrasher," that mark, according to Respondent, is a common, generic word. Although the Thrasher I Panel accepted this position, I respectfully disagree. Complainant has an established mark for the word Thrasher and it has been registered in the United States since 1990 for, among other things, "printed publications namely, magazines in the fields of skateboarding." A domain name has been found to be confusingly similar where it fully incorporates another's registered mark. See The Prudential Ins. Co. of America v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding the domain name in its entirety is confusingly similar to the Complainant’s family of marks); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the domain name ‘myniit.com’ is confusingly similar to the Complainant’s trade name and trademark NIIT). Complainant has met its burden of proving that the domain names are identical or confusingly similar to a trademark in which it has rights.

In a Supplemental Order, the undersigned requested the Respondent to advise the Panel whether or not it is, indeed, publishing a magazine in Spain. Respondent has advised the Panel that although its domain names incorporate the word "magazine" it does not publish a magazine and that its web site consists of links to other web sites. To show a legitimate interest in a domain name, the Respondent must use the domain name in connection with a bona fide offering of goods or services. Policy 4(c)(i). Where the Respondent uses the word "magazine" in its domain names, but publishes no magazine or links to no magazine, Respondent has not shown a legitimate interest in its domain names. World Wrestling Fed. Entertainment, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (no legitimate interest shown where respondent used the word "auction" in its domain name but provided no auction services).

Respondent's web site offers links to such diverse goods and services as computer equipment, currency exchange, information about the Spanish Constitution, and e-mail services. Complainant asserts that the web site offers links to other skateboading companies and certain "action sport" affiliates. Respondent does not actually sell Thrasher magazines or authorized Thrasher products.

According to the affidavit of Luis Matesanz de las Heras, the president of North-Cal Distribution, the authorized distributor of Thrasher products in Spain, his company actively promotes the sale of Thrasher products in Spain, and sponsors a Spanish skateboard team to generate interest in Thrasher products.

Under the circumstances, and based upon the record, Complainant has proven that Respondent registered the disputed domain names to intentionally attract Internet users to its web site, for commercial gain, with the likelihood that confusion has been created with Complainant’s mark. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a web site sponsored by the respondent and created confusion with the complainant’s mark as to the source, sponsorship, or affiliation of that web site).

In accordance with the foregoing, the domain names "thrashermagazine.org" and "thrashermagazine.net." are transferred to the Complainant.