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Generic Top Level Domain Name (gTLD) Decisions |
Twentieth
Century Fox Film Corporation v. Leonard Rogan
Claim Number: FA0112000102952
PARTIES
The Complainant is Twentieth Century Fox Film Corporation, Beverly Hills, CA, USA (“Complainant”). The Respondent is Leonard Rogan, Chelsea, AUSTRALIA (“Respondent”).
The domain name at issue is <buffy.biz>, registered with Register.com,
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 Panelist in this proceeding.
Tyrus R. Atkinson, Jr., 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 December 14, 2001; the Forum received a hard copy of the Complaint on December 26, 2001.
On December 31, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 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 January 18, 2002.
Complainant’s Additional Response was timely filed on January 23, 2002. Respondent’s Additional Response was timely filed on January 28, 2002.
On February 6, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, Jr., as the single Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
A. Complainant
Complainant is Twentieth Century Fox Film Corporation of Beverly Hills, California.
Complainant owns the television Series BUFFY THE VAMPIRE SLAYER.
The Series has won numerous awards during the years 1998 through 2001.
Complainant, and/or its Licensees have expended considerable effort and resources to promote the Series in the United States as well as in the various prominent international television markets, including Australia.
Complainant owns 35 registrations and applications in 15 classes in 8 countries, including Australia, for the mark BUFFY THE VAMPIRE SLAYER.
The success of the Series has inspired licensed merchandise, such as videocassettes, videodiscs, audio tapes, compact discs and CD-ROMs, and other items.
Complainant owns the domain name <buffy.com> at which its licensee maintains a website for the Series.
Complainant has common law rights in the mark BUFFY.
Respondent cannot establish the requisite right or legitimate interest in the Infringing Domain Name, <buffy.biz>. Respondent is not a licensee of Complainant or affiliated with Complainant. Respondent has not been commonly known by the Infringing Domain Name. Respondent’s entire interest in the Infringing Domain Name is based upon his interest in the Series. This is evidenced by his ownership of the domain name <ilovebuffy.com> which resolves to <buffy.com.au> also owned by Respondent. The content at <buffy.com.au> is dedicated to the Series.
Respondent has registered the Infringing Domain Name in bad faith to intentionally attempt to attract, for commercial gain, Internet users to 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 Respondent’s web site or location or of a product or service on Respondent’s web site or location.
Respondent has exploited the BUFFY trademark in two ways. First, he has registered the Infringing Domain Name, which is identical to and confusingly similar to Complainant’s BUFFY trademark. By choosing to register <buffy.biz>, Respondent has appropriated Complainant’s distinctive trademark with the intent to trade off of the reputation of Complainant, the Series and trademark and to exploit for himself the legitimate authorized business opportunities which relate to Complainant. Secondly, Complainant has become aware that Respondent is operating an unauthorized commercial web site at the also infringing domain name <buffy.com.au>, and is infringing Complainant’s rights by making unauthorized use of images, logos, copyrighted audio and video clips and trademark designs from the Series.
Confusion will result from the Series-related contend the Respondent will likely place at the web site corresponding to the Infringing Domain Name. The initial interest confusion is sufficient to establish a likelihood of confusion under trademark law.
B. Respondent
Respondent is an individual residing in Chelsea, Victoria, Australia.
Respondent registered the domain name, <buffy.biz>.
While the main character in the Series is Buffy, it is not implicit that Buffy means BUFFY THE VAMPIRE SLAYER. There are other stars named Buffy, such as Buffy Tyler and Buffy Sainte-Marie, neither of whom are associated with the show BUFFY THE VAMPIRE SLAYER.
Respondent disputes Complainant’s claim to common law rights to the name, BUFFY.
Respondent has no intention whatsoever of having the domain name <buffy.biz> associated with the Complainant’s Series.
Respondent has setup a legitimate business name and number with the Australian Business Register with the business name of <buffy.biz>.
Respondent admits owning the domain names <ilovebuffy.com> and <buffy.com.au>. Any accused infringing public information complained of by Complainant has been removed in an act of good faith. No infringement was intended or implied. Furthermore, these sites are non-commercial and non-profitable.
Since the domain name <buffy.biz> has not yet been used, it cannot be claimed that Respondent has no rights, given the content has not been revealed.
Respondent denies that he is going to intentionally attempt to attract Internet users for any reason that would cause any confusion with BUFFY THE VAMPIRE SLAYER. There can be no confusion since any Buffy The Vampire Slayer fan knows that the official website is at <buffy.com>. Any user wishing to seek access to an official website for the series will type in <buffy.com> not <buffy.biz>.
Respondent is
not stopping the Claimant from using the disputed domain name. Complainant is operating <buffy.com>. Complainant has no trademark rights in <buffy.biz>.
C. Additional Submissions
Complainant argues in its Complainant’s Additional Response that it is disingenuous for Respondent to allege, after a history of attempted affiliation with the Series, that he registered the <buffy.biz> domain name for some purpose unlike Respondent’s actions in registering the domain names <buffy.com.au> and <ilovebuffy.com>, that post infringing content, thus indicating Respondent’s intent to affiliate Respondent with Complainant’s Series, divert traffic to the Respondent’s web site, and cause confusion to consumers. Complainant sets out 17 “Buffy” related domain names that it registered or had a third party register on Complainant’s behalf. Complainant includes page printouts from <buffy.com.au> contending that the content shows infringing content.
Respondent argues in his Respondent’s Additional Response that Complainant’s argument that <buffy.biz> is to be used in the same manner, as are the domain sites at <buffy.com.au> and <ilovebuffy.com> is an insufficient argument. Respondent again argues that, if granted to operate the web site in his name, the site will not contain information about the television series. Respondent points out that Complainant failed to argue further Respondent’s contention that Complainant has no common law trademark rights to the word BUFFY. Complainant has so many domain names to promote its Series, Respondent contends, that it will suffer no harm by Respondent’s operation of <buffy.biz>.
1. Complainant is a business organization that owns the television Series, BUFFY THE VAMPIRE SLAYER.
2. Complainant owns trademark registrations in a number of countries, including Australia, for the mark, BUFFY THE VAMPIRE SLAYER.
3. Complainant does not own any trademark registrations in the word BUFFY, standing alone.
4. Complainant has promoted the Series by publicizing the word BUFFY. It operates a web site at <buffy.com>.
5. Complainant has common law rights to the word, BUFFY.
6. Respondent registered the domain name, <buffy.biz> on November 19, 2001.
7. Respondent’s entire interest in the domain name <buffy.biz> is because of his attraction to the Series, BUFFY THE VAMPIRE SLAYER, and the goods and services associated therewith.
8. Respondent has no rights or legitimate interests in the domain name <buffy.biz>.
9. Respondent registered the domain name in bad faith.
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.
Respondent contends that Complainant can have no rights in the word BUFFY, since it is a common name used by others. Complainant shows no trademark registration for the word BUFFY alone. The word BUFFY is not identical to the trademark, BUFFY THE VAMPIRE SLAYER, as it must be for purposes of this proceeding. see Paragraph 4(a)(i) of the Start-Up Trademark Opposition Policy and Rules for .BIZ.
Complainant does contend, however, that it owns common law rights in the name, BUFFY, on account of Complainant’s use of the term BUFFY in its promotion and identification of the series. A party can acquire common law rights to a term if it is legitimately using the term in commerce to identify its product as against another party who is misappropriating the efforts of the first user of term. Complainant has shown, by adequate proof, that it uses the name BUFFY extensively in association with the Series, including using <buffy.com> as the official web site for the Series. Complainant has rights in the name, BUFFY. see BroadcastAmerica.com, Inc. v. Quo, DVT2000-0001 (WIPO Oct. 4, 2000), which found that Complainant had common law rights in BROADCASTAMERICA.COM, given the extensive use of that mark to identify Complainant as the source of broadcast services, and there was wide recognition with the mark among user as to the source of broadcast services. Complainant prevails on this issue.
Complainant shows that it has not authorized or licensed Respondent to use the BUFFY mark. No contention is made by either Complainant or Respondent that Respondent is the owner of any trade or service mark that is identical to the domain name. Neither party contends that Respondent has ever been known as BUFFY. Complainant contends that it has exclusive right to use the mark BUFFY. As result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain name, the burden must shift to Respondent to demonstrate rights and legitimate interests in the domain name. see Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent may demonstrate his rights and legitimate interests by any of the methods set out in Paragraph 4(c) of the Policy. Respondent advances none of the grounds set out in Paragraph 4(c). It does appear from the pleadings that Respondent is and has been operating web sites at <buffy.com.au> and <ilovebuffy.com> for some period of time prior to registration of <buffy.biz>. The question arises whether Respondent, as result of this, has been commonly known by the domain name, even if he has acquired no trademark rights. See Paragraph 4(c)(iii) of the Policy. The question also arises whether Respondent, because of operation of the these domain names which correspond to the domain name in question, have been used in connection with a bona fide offering of goods or services prior to registration of the <buffy.biz> domain name. see Paragraph 4(c)(ii) of the Policy. Complainant contends that the domain names <buffy.com.au> and <ilovebuffy.com> are themselves an infringement of Complainant’s common law rights to the use of the name BUFFY. The use of <buffy.com.au> and <ilovebuffy.com> are themselves an attempt to trade on the good will of the Complainant’s mark. Respondent does not deny this to be the truth. Such use cannot be found to constitute a bona fide offering of goods or services, and indicates that Respondent has no rights or legitimate interests in the domain names used. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000); Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000); Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan 15, 2001); Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar 9, 2000). Nor does unauthorized use of a domain name which infringes on the mark of another, constitute a proper factual situation to support a claim that a party has been known by that name. That is not the meaning to be placed upon Paragraph 4(c)(iii) of the Policy.
It is clear that Respondent’s entire interest in these domain names, including <buffy.biz> derives solely from Complainant’s Series, BUFFY THE VAMPIRE SLAYER. Respondent has no independent purpose not associated with the Series.
Respondent has no rights or legitimate interests in the domain name <buffy.biz>.
Complainant contends that Respondent by using the domain name will intentionally attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site. This is proved, Complainant contends, by Respondent’s past conduct regarding <buffy.com.au> and <ilovebuffy.com>. The illustrations submitted in evidence from Respondent’s web site at <buffy.com.au> by Complainant show items related to the series offered for sale. The commercial aspect is proved. Respondent admits the intentional element. He admits operating these web sites for the following purposes. “In Australia, we are often left out of the loop when it comes to US based TV shows, whether it be a season behind or localized activities like signings or a chance to see the stars, <buffy.com.au> was created to fill that void, also to highlight on the comic and book merchandise avenue not available on the official website.” Respondent knew of Complainant’s marks and opened the web sites to be associated with the Series. Though the web sites at <buffy.com.au> and <ilovebuffy.com> are not before this Panel for decision, the use to which they have been applied can be considered as evidence as to how <buffy.biz> will be used. Respondent’s explanation that <buffy.biz> will be used in a way completely separate and without mention of the series or Complainant’s mark or the rights associated therewith, without some explanation as to how the domain name will be used, cannot be accepted based upon all of the facts and circumstances of this case and the proper inferences that can be drawn from the factual situation.
The evidence shows Respondent has an intent to trade off of Complainant’s reputation. This indicates bad faith pursuant to STOP Policy 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept 12, 2000); AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000).
Respondent is found to have registered the domain name <buffy.biz> in bad faith.
It
is ordered that the domain name <buffy.biz>, now registered to
Respondent, be TRANSFERRED to Complainant. No Further Challenges to this domain name are Permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 15, 2002
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