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Generic Top Level Domain Name (gTLD) Decisions |
Hachette Filipacchi Presse v. Lin Zan
Song
Claim Number: FA0204000110779
PARTIES
Complainant
is Hachette Filipacchi Presse,
Levallois Perret, FRANCE (“Complainant”),
of Hachette Filipacchi Presse. Respondent is Lin Zan Song, Wenzhou, Zhejiang, CHINA (“Respondent”).
The
domain name at issue is <photo.biz>,
registered with Xin Net Corp.
The
undersigned 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 23, 2002; the Forum
received a hard copy of the Complaint on
April 25, 2002.
On
May 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 21,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for the
Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 21, 2002.
On July 17, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
disputed domain name <photo.biz> is confusingly similar to the
registered PHOTO mark in which Complainant holds rights.
Respondent
has no rights or legitimate interests in respect of the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
contends that (1) PHOTO is a generic
word meaning “photograph”; (2) he
intends to use <photo.biz> as a website for a photograph business;
and (3) he did not register the domain name in bad faith.
Complainant, Hachette Filipacchi Presse,
is the owner of several French trademark registrations for the mark PHOTO. Complainant has continuously used the
trademark PHOTO since 1979.
Complainant’s magazine PHOTO is well known. Respondent, Lin Zan Song, has not used the domain name <photo.biz> in commerce whereas Complainant operates the
website <photo.fr.>. Furthermore,
Respondent is not known as PHOTO or <photo.biz>.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
The domain name <photo.biz>
is identical to Complainant’s Trademark PHOTO. See Little Six, Inc.,
v Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that
<mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE
trademark and service mark); see also American Golf Corp. v. Perfect
Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the domain
name <americangolf.net> is
identical and confusingly similar to Complainant’s AMERICAN GOLF marks).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
A
Respondent may demonstrate its rights/interests in a STOP proceeding by proving
that it is the owner or beneficiary of a trademark
or service mark that is
identical to the disputed domain name. See
High Speed Prods. v. Blanco, FA 102951 (Nat. Arb. Forum Mar. 6, 2002)
(noting that, although the result might have been different had the
Complainant’s case
been brought under the UDRP, the Respondent’s trademarks in
THRASHER MAGAZINE, registered in Spain, sufficiently demonstrate its
rights and
interests under STOP Policy ¶ 4(a)(ii) in the <thrashermagazine.biz>
domain name).
Respondent
has submitted no evidence of ownership of a trademark or service mark.
A
Respondent in a STOP proceeding may demonstrate its rights or interests in a
disputed domain name by proving its use of or demonstrable
preparations to use
the domain name for a bona fide offering of goods or services. STOP Policy ¶ 4(c)(ii). STOP Panels have found that a Respondent’s
“unsupported, self-serving allegations alone are insufficient to establish that
[the] Respondent
has rights or legitimate interests in respect to the domain
name at issue.” Twentieth Century
Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002)
(finding the Respondent’s assertion that she registered the domain name
<foxstudios.biz>
in order to get a website address for her planned dance
studios, without evidentiary support, was insufficient to establish that
she
had rights or interests in respect to the domain name at issue). Although Respondent contends that it plans
to use the <photobiz> domain name in connection with a photograph business,
it has not shown any preparations to use the domain name.
Even
when a Respondent represents that it intends to use a domain name for a
commercial purpose, its use under STOP Policy ¶ 4(c)(ii)
must be for a bona
fide offering of goods or services.
Registration of an infringing domain name in order to opportunistically
trade on the goodwill of the Complainant’s mark does not constitute
a bona fide
offering of goods or services. See
William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum
March 21, 2002) (finding the
Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by
attracting Internet users confused as to the
likely affiliation between
Complainant and Respondent’s website” indicated the Respondent had no rights or
legitimate interests pursuant
to STOP Policy ¶ 4(c)(ii)); see also Credit
Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb.
Forum Feb. 25, 2002) (“The use of another's trademark to attract users to
Respondent's domain is not considered
to be a bona fide offering of goods or
services pursuant to STOP Policy ¶ 4(c)(ii)”); see also Peachtree
Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002)
(finding that Respondent’s intended use of the <peachtree.biz> domain
name to provide
information and services related to Complainant’s PEACHTREE
product, but without Complainant’s authorization, would cause customer
confusion and was not a bona fide offering of goods or services).
Finally,
a Respondent may demonstrate its rights or interests in a domain name by
proving that it has been commonly known by the domain
name, even if it has
acquired no trademark or service mark rights.
STOP Policy ¶ 4(c)(iii). Additionally,
it is not enough that a Respondent claim that it registered the disputed domain
name in anticipation of being known
by the name. It must provide some proof that it is commonly known by the
domain name to establish rights under STOP Policy ¶ 4(c)(iii). See Gene Logic Inc. v. Bock, FA
103042 (Nat. Arb. Forum Mar. 4, 2002) (“[T]o establish rights or legitimate
interests in a name or a mark, the Respondent must
do more than state that he considered
using it in the past, along with other names he actually used”) (emphasis in
original). Indeed, while the burden is
initially placed on the Complainant to show that a Respondent does not have
rights or legitimate interests
in a domain name, after such a showing is made,
the burden then shifts to the Respondent “to explain by valid evidence a course
of
business under the name, or at least significant preparation for use of the
name prior to learning of the possibility of a conflict.” Gene Logic Inc., supra.
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The criteria specified in ¶ 4(a)(iii) of
the STOP Policy does not represent an exhaustive list of bad faith evidence.
The Panel must
take into consideration the totality of circumstances in order
to determine if Respondent registered or used the domain name in bad
faith. See
Twentieth Century Fox Film Corp. v.
Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in
determining if a domain name has been registered in bad faith, the Panel
must
look at the “totality of circumstances”).
Due to the nature of NeuLevel’s STOP IP Claim
registration procedure, Complainant’s continuous use of its mark in
international commerce
since 1979, and Complainant’s trademark registrations,
Respondent had constructive and actual notice of Complainant’s rights in the
PHOTO mark. Respondent’s subsequent
registration of the infringing <photo.biz> domain name, despite
knowledge of Complainant’s preexisting rights in the PHOTO mark, represents bad
faith registration under STOP
Policy ¶4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly
known mark at the time
of registration); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb.
Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the
notice given to Respondent regarding
existing IP Claims identical to its chosen
domain name precluded good faith registration of <genelogic.biz> when
Respondent
registered it with “full knowledge that his intended business use of
this domain name was in direct conflict with a registered trademark
of a known
competitor in exactly the same field of business”).
STOP
Policy ¶ 4(b)(iv) states that bad faith is established when a Respondent, by
using the domain name, has intentionally attempted
to attract, for commercial
gain, Internet users to its website 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 website or location or of a
product or service
on the website or location.
The <photo.biz> domain name is identical to Complainant’s
PHOTO trademark and the Internet user will likely believe that there is an
affiliation
between Respondent and Complainant. See Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that the
Respondent could not make any active use of the disputed domain names without
creating
a false impression of association with the Complainant). Because many of the “.biz” domain names were
very recently registered, Panels have previously held that, even when the
domain name
has not been used, bad faith under STOP Policy ¶ 4(b)(iv) can be
demonstrated based on the confusion that will inevitably arise when
the
Respondent finally uses the name. See
Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding
that, where the Respondent’s <fluor.biz> domain name was identical to the
Complainant’s FLUOR mark, Internet users would likely believe an affiliation
between the Respondent and Complainant); see also Pillsbury Co. v. Prebaked
Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding
registration of a domain name identical to Complainant’s mark to be in bad
faith
under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely
cause confusion as to the affiliation between Respondent and
Complainant).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be hereby
granted.
Accordingly, it is Ordered that the <photo.biz> domain name be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 30, 2002
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