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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
FilmNet Inc. v Onetz
Claim Number: FA0012000096196
PARTIES
The Complainant is FilmNet, Inc., Carson City, NV, USA ("Complainant") represented by David S. Safran, of Nixon Peabody LLP. The Respondent is Onetz, Kwangjin-gu, Seoul Korea ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "filmnet.com", registered with Hangang Systems, Inc. DBA doregi.com.
PANEL
Moon Sung Lee.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 4, 2000; the Forum received a hard copy of the Complaint on December 8, 2000.
On December 8, 2000, Hangang Systems, Inc. DBA doregi.com confirmed by e-mail to the Forum that the domain name "filmnet.com" is registered with Hangang Systems, Inc. DBA doregi.com and that the Respondent is the current registrant of the name. Hangang Systems, Inc. DBA doregi.com has verified that Respondent is bound by the Hangang Systems, Inc. DBA doregi.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Unifor m Domain Name Dispute Resolution Policy (the "Policy").
On January 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 31, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Resp ondent 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@filmnet.com by e-mail.
A timely response was received and determined to be complete on January 17, 2001.
Under Article 7 of the Supplemental Rule, Complainant submitted the additional written statements and documents on January 24, 2001 within five (5) business days of the Respondent’s submittal of its Response to the Complaint.
On January 29, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Moon Sung Lee as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
LANGUAGE OF PROCEEDINGS
The Registration Agreement between the Registrar and Respondent is in Korean, therefore, basically according to ICANN Rule 11(a), the proceedings must be in Korean, since another language was not specified by the parties or in the registration agre ement. Respondent, however, submitted its Response to the Complaint in the English language voluntarily after having read the Complaint submitted by the Complainant. In light of this fact, the Respondent would not be prejudiced even if the proceedings had started in the English language. Therefore, this Panel has decided in its discretion that the English language shall be used in the proceedings, having regard to the circumstances of this case.
PARTIES’ CONTENTIONS
A. Complainant
(1) The Complainant contends that the domain name is identical or confusingly similar to a trademark owned by the Complainant.
(2) In addition, the Complainant contends that the Respondent should be considered as having no rights or legitimate interests in respect of the domain name for the following reasons:
[i.] Respondent has made, as of the date of this Complaint, no 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. Resp ondent has no business relating to the film industry, the only use of the domain name URL is to refer persons a web site of Respondent which is directed to parties seeking to acquire domain names (See Complainant’s Appendix B).
[ii.] Respondent has not been commonly known by the domain name. No evidence even exists that Respondent has used the domain name in any manner other than as means to refer persons seeking Complainant or to acquire the domain name to its own web site.
[iii.] Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain. The sole use being made of the domain name is to refer persons seeking Complainant or to acquire the domai n name to its own web site.
And, furthermore, the Complainant contends in its additional statements and documents that the Respondent should be considered as having no rights or legitimate interests in respect of the domain name for the following reasons:
[i.] The proper registration of the domain name by the Respondent is not sufficient in and of itself to establish a legitimate interest in the domain name.
[ii.] There is no evidence whatsoever which demonstrate that Respondent has, in fact, taken any steps to plan or develop a movie-related site although it alleges that it is currently preparing to open "movie related Internet service site." In fact, the sites owned by Respondent clearly show that Respondent is in the business of collecting and selling domain names. In the email of December 17, 2000, Respondent expressed an intent to transfer the domain to the third party owner of the domain name "onlinephoto.co.kr" which is SongHwa Technology Co., Ltd.
[iii.] If the Respondent were to open a film related web site, Respondent should have sought a "co.kr" registration but the Respondent did not seek such web site although the Respondent’s web sites are in the Korean language and Resp ondent is Korean.
(3) The Complainant contends that the domain name should be considered having been registered and being used in bad faith for the following reasons:
[i.] Respondent has registered or 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 Respondent’s documented out-of-pocket costs directly related to the domain name as evidenced by Complainant’s Appendix B to this complaint which contains a web page of Respondent which is referred to by use of URL www.filmnet.com and is directed to parties seeking to acquire domain names, Respondent’s web page which is reachable from the referred page and contains a link to the enclosed under-construction www.bidsdomain.com site of Respondent, and Respondent has stockpiled more than fifty (50) domain names (see partial NSI WHOIS printout in Complainant’s Appendix B) all of which demonstrates that Respondent is planning to sell or auction domain names acquired solely for that purp ose.
[ii.] Appendix C is a copy of response from Respondent indicating a willingness to sell the domain name filmnet.com.
B. Respondent
(1) The Respondent contends that the domain name is not identical or confusingly similar to a trademark owned by the Complainant for the following reason:
The domain name "filmnet.com" consists of the terms film and net, along with it’s URL(.com). To many people, film is not known as a distinct trademark. Net is a common term that can be seen around network business. Filmnet.com is not a trademark, but a n internet related business or a private homepage address. In addition, the respndent was not even aware of the trademark(filmnet) before this case. In Korea’s search engines, it is not possible to find the trademark called filmnet. (See Respondent’s Appe ndix Data A.) This proves that the brand filmnet is not known globally.
(2) In addition, the Respondent contends that the Respondent should be considered as having rights or legitimate interests in respect of the domain name for the following reasons:
[i.] The domain name "filmnet.com" was legally registered on 31-Oct-2000 through HANGANG SYSTEM’S homepage(http://www.doregi .com) and it was certified at ICANN. Previous to this, a company named Filmnet Inc. registered as filmnet.net on 05-Jun-1996 .( See Respondent’s Appendix Data B)
[ii.] The Respondent went through all legal process when registering. HANGANG SYSTEM’S registration system is completely legal. The Respondent is currently preparing on opening a movie-related Internet service site. Thus, it was necessary to possess a movie-related domain. During this process, "filmnet.com" and "movie.com (multilingual domain)" was purchased. (See Respondent’s Appendix Data C) The Complainant’s claim that the registration’s purpose was for domain bargaining is totally unproven. It i s the Complainant who originally requested for domain bargaining. (See Respondent’s Appendix Data D) This was clearly an attempt at reverse domain-name hijacking.
[iii.] The Respondent did not use the Complainant’s web page trademark in any similar ways. Neither did the Respondent prey for business profits that was produced from similar services. Looking at the Complainant’s related sites can prove this. (See Respondent’s Appendix Data E: currently related sites) There are no worries of domain confusion for people that visit this site.
(3.) The Respondent contends that the domain name should not be considered having been registered and being used in bad faith for the following reasons:
[i.] The list of domains that the Complainant presented in order to prove the Respondent’s bad faith are all registered for plural members and they are currently deleted or operated. Most of these domains are English inscriptions of the Korean langu age and the meanings are simple. They are not related to existing trademarks. The Respondent is producing web pages for members and providing web hosting services. (See Respondent’s Appendix Data F)
[ii.] The Respondent reserves the right to expand and establish his business freely. His rights should be compensated in order to protect his privilege. For proper use on domains, negotiation with related companies is in process and this should be k ept a secret for business purposes.
[iii.] The Complainant intentionally tried to expose the Respondent’s will (See Respondent’s Appendix Data D) to bargain. This is clearly an act of reverse domain-name hijacking. The Respondent had no intentions whatsoever to bargain. The Respondent never contacted anyone before this case.
[iv.] Within the web page of filmnet.com, the Respondent did not provide any similar contents of FILMET Inc.’s operation signs, services, or products.
FINDINGS
Complainant has owned its registered trademark, "FILMNET," since September 9, 1997, which was registered in the U.S. for the purposes of storing and restoring films as well as computer information relating to movies in general. (See Complainant’s A ppendix A)
Complainant has registered "FILMNET.NET" on May 5, 1996, and is still the registered owner of "FILMNET.NET." (See Respondent’s Appendix Data B)
Respondent has registered "filmnet.com" on 31-Oct-2000 through HANGANG SYSTEM’S homepage (http://www.doregi .com) and it was certified at ICANN.
Under the domain name of "filmnet.com," Respondent is operating "domainqna" in which it is being used exclusively as evaluating domain names, providing certain information relating to missing domain names, registering domain names for a third party, et c. (See Respondent’s Appendix Data E).
Currently, Respondent has registered more than 50 domain names under its own name. (See Complainant’s Appendix B).
Respondent has registered "movie.com" (multilingual domain) on January 4, 2000. (See Respondent’s Appendix Data C).
Complainant through its agent on November 6, 2000, anonymously, contacted Respondent to inquire about whether this domain name could be sold or transferred to Complainant. (See Respondent’s Appendix Data D).
In response to this inquiry, Respondent has indicated to Complainant that Respondent might sell this domain name at a reasonable price. (See Complainant’s Appendix B)
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 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.
Identical and/or Confusingly Similar
There should be little question that the domain name is confusingly similar to Complainant’s claimed trademark. Filmnet.com is identical to Complainant’s claimed trademark.
Accordingly, this panel finds that the domain name at issue meets the I
dentical and/or Confusingly Similar requirement.Rights or Legitimate Interests
Complainant contends that Respondent does not have any rights or legitimate interests in this domain name.
On the other hand, Respondent contends the domain name is comprised of two generic terms that have no secondary meaning sufficient to distinguish the Complainant’s services from others. "filmnet.com" consists of the terms film and net. Film is not know n as a distinct trademark and Net is a common term that can be seen around network business. Complainant’s trademark is not fanciful or arbitrary, and Complainant has submitted no evidence to establish either fame or strong secondary meaning in its mark s uch that consumers are likely to associate filmnet.com only with Complainant. The Panel finds therefore that Prime Domains has rebutted Complainant’s arguments. (See Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-0427 (WIPO Aug. 24, 2000) (fi nding that "genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration").
Furthermore, even if it is found that Respondent’s registration of this descriptive, non-source identifying domain name for the purpose of selling or transferring such domain name, it would not make its interest illegitimate because the registration of such descriptive, non-source identifying domain name for the purpose of selling it constitutes a legitimate interest in the domain name. See General Machine Products Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Jan. 26, 2000).
As such, Respondent’s operation of "domainqna" under the domain name of "film.net" may be seen as a bona fide offering of good or service under Article 4(c)(i) of the Policy.
As explained above, this Panel is of the view that Complainant has not sufficiently established that Respondent does not have any right or legitimate interest in this domain name in dispute.
Registration and Use in Bad Faith
Complainant contends that Respondent had registered the domain name at issue primarily for the purpose of selling it when it indicated its intent to sell the domain name at a reasonable price to Complainant (See Complainant’s Appendix B). But, the evidence shows Complainant initially contacted Respondent with an offer to purchase the domain name at issue. It is significant that the Complainant, and not the Respondent had initiated contact, inquiring about purchasing the domain name, and that this f act tended to weigh against a finding of bad faith. See General Machine Products Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Jan. 26, 2000) Moreover, Respondent’s intention of selling the domain name at issue at a reasonable price would not be sufficient to establish a finding of bad faith.
Respondent contends that the "fifty (50)" domain names that Complainant presented to show Respondent’s bad faith are in no way related to existing trademarks and are: 1) registered for plural members; 2) comprised of simple terms; 3) currently deleted, or operational. After review, it has been determined that most of these domains are English inscriptions of the Korean language and the meanings are simple and they are not related to existing trademarks. Respondent states that Respondent was not aware o f Complainant ‘s (or any other party's) trademark rights at the time it registered the domain name filmnet.com. In light of the fact that most of the fifty (50) domain names are descriptive words as opposed to bearing any renowned trademarks, this Panel i s of the view that Respondent chose to register this domain name at issue because, like its other domain name registrations, it was descriptive, non-source identifying domain name.
As explained above, Complainant has not sufficiently proven that Respondent registered the domain name at issue in bad faith.
DECISION
Accordingly, for all the foregoing reasons, it is the decision of this Panel that the domain name "filmnet.com" should not be transferred from the Respondent to the Complainant.
Moon Sung Lee, Arbitrator
Dated: February 12, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/291.html