Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Cast & Crew Entertainment Services, Inc., Burbank, CA, USA ("Complainant") represented by Jeffrey T. Oberman, of Levin & Oberman. The Respondent is Cast Creative Ltd., Ealing, London, UK ("Respondent").

The domain name at issue is "castandcrew.net", registered with Network Solutions, Inc.

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

Panelist is Judge Karl V. Fink (Retired).

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 31, 2001; the Forum received a hard copy of the Complaint on February 1, 2001. Complainant also filed a First Amended Complaint which was served on Respondent.

On February 2, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "castandcrew.net" 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. 4.0 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 February 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of March 5, 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@castandcrew.net by e-mail.

A timely response was received on February 28, 2001.

On March 15, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.

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

A. Complainant

On October 6, 1992, Complainant registered with the United States Patent and Trademark Office a service mark for Cast & Crew and was issued certificate number 1,722,352. The trade or service marks are used in connection with payroll services rendered by Complainant to the Motion Picture, Television and Commercial Industries.

Founded in 1976, Cast & Crew has offices in Burbank, New York City, Orlando, Toronto, and Vancouver. Cast & Crew has grown into a leading and respected provider of payroll and talent payment services for the Motion Picture, Television and Commercial Industries. Cast & Crew provides these same industries with its highly regarded PSL family of production accounting software.

The domain name of castandcrew.net is identical to that of Complainant.

The name castandcrew.net is being used by Cast Creative Ltd since 1999. No use of the domain name of castandcrew.net could be found on the Internet.

Based upon the facts set forth in the Complaint the domain name should be considered as having been registered and being used in bad faith.

B. Respondent

The Respondent registered the domain name castandcrew.net on 16^th February 1999 and renewed it on 14^th February 2001. It expires on 16^th February 2003.

The domain name of castandcrew.net is in fact identical to that of the Respondent, not the Complainant. After Cast Creative Ltd bought the domain name castandcrew.net it formed the company Cast and Crew, Net Ltd., and subsequently Cast and Crew Ltd.

Respondent questions the relationship between Cast and Crew Payroll Inc. and Cast & Crew Entertainment Services Inc. Neither company name is the same as that of the disputed domain name and it seems that the Complainant trades under the name Cast and Crew Payroll. On this basis, Cast and Crew Ltd. has the right to the domain name CASTANDCREW.COM.

Cast and Crew Payroll Inc. does not trade in the UK and we do not have offices in the US. The trademark registration that was granted to Cast and Crew Payroll Inc. is valid in the States only and would not be granted in Europe as there are too many others within the industry who could have a legitimate right to use the name or words Cast and Crew.

Respondent is planning on a soft launch later this year for castandcrew.net which will be a directory, providing the entire TV, film, music and entertainment industry with profiles of all the people and companies that they might need, including related services. We are in collaboration with Sun Microsystems to provide a unique facility to users. As our company name and domain name are the same, it is vital that we keep the domain name.

Cast and Crew. Net Ltd. was incorporated on the 25th February, 2000 and, as the domain name was already ours, we immediately began work on the database for castandcrew.net. We did not immediately transfer the domain name castandcrew.net to the new company Cast and Crew, Net Ltd., as all three companies (Cast and Crew. Net Ltd.; Cast and Crew Ltd., and Cast Creative Ltd.) are owned by the same people and we did not realize this necessity.

The programming has taken longer than anticipated and is still being worked on, and is part of the reason why it looks as though we have not been using the name. In July 2000 a skeleton castandcrew.net database was lodged with Digital Forest in the States. We asked Digital Forest to have the names castandcrew.net and castandcrew.co.uk transferred to their server, where we have space. This has not been done and we cannot contact our original provider, or the company that has taken it over.

From the beginning we were aware of the need to protect our domain name from competitors and therefore considered carefully the activities of the company that owned the castandcrew.com name. We still do not view ourselves as competitors to Cast and Crew Payroll Inc., in fact, we had planned to contact Cast and Crew Payroll to ask if they want to set up a link, as the two sites could be complementary.

As part of our domain name protection plan we have purchased the Cast and Crew name in a few variations as well as in some countries that we view as potentially important to our future business.

For the reasons set forth below, the panel finds Complainant has proven the requested elements under the policy and is entitled to have the name transferred.

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.

The domain name is identical to and/or confusingly similar to Complainant’s CAST & CREW trademark registration. See McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from "McKinsey & Company" does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark "McKinsey & Company").

Respondent was aware of Complainant’s mark and ownership of castandcrew.com, but chose to disregard Complainant’s rights and used Complainant’s mark in a domain name with no authority.

For two years there has been no active use of the domain name. Complainant contends, and the panel agrees, that Respondent has no rights or legitimate interests in the domain name because the Respondent was making no use of the domain name before any notice of the dispute. Policy ¶ 4(c)(i). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).

Complainant has proven this element.

Complainant contends that Respondent registered and used the domain name in bad faith.

Passive holding of a domain name is evidence of bad faith registration and use of a domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith").

Respondent registered a name containing Complainant’s mark for the stated purpose of using it in a new business in the entertainment industry where Complainant has been doing business since 1976. Respondent’s action in preparing to use the name violates Section 4(b) of the Policy (intentionally attempting to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location.)

The panel directs that the domain name "castandcrew.net" be transferred to Complainant.