START-UP TRADEMARK OPPOSITION POLICY

DECISION

High Speed Productions v. Fabio Blanco

Claim Number: FA0112000102951

PARTIES

The Complainant is High Speed Productions, San Francisco, CA, USA (“Complainant”) represented by Anne C Hiaring, of Law Office Of Anne Hiaring.  The Respondent is Fabio Blanco, Madrid, Spain (“Respondent”) represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon & Associates.

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <thrashermagazine.biz>, registered with Tucows, Inc.

PANEL

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.

 M. Scott Donahey, as Panelist.

PROCEDURAL HISTORY

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 17, 2001.

On December 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 17, 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 February 6, 2002.

On February 20, 2002 pursuant to STOP Rule 6(b), the Forum appointed M. Scott Donahey as the single Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the domain name at issue is identical to Complainant's registered trademark, that Respondent has not rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith.

B. Respondent

Respondent contends that the domain name is not identical to a trademark or service mark in which the Complainant has rights, that Complainant has failed to prove that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Complainant has failed to prove that Respondent has registered and is using the domain name at issue in bad faith.

FINDINGS

Complainant has, inter alia, the following trademark registrations in the following countries effective on the following dates in the mark THRASHER:

United States               July 14, 1987, May 1, 1990, February 7, 2001, September 11, 2001

Germany                     May 13, 1991

Japan                           October 31, 2000, March 31, 1994

Complainant has, inter alia, a trademark registration in Japan, effective June 2, 2000 in the mark THRASHER MAGAZINE.

Complainant began publishing "Thrasher Magazine," in 1981, and it has since become one of the leading publications in the field of skateboarding.

Complainant has brought a previous action under the UDRP against Thrasher Magazine, Ltd., an entity that Complainant alleges and Respondent effectively concedes is Respondent's alter ego, and  Complainant has recovered the domain names <thrashermagazine.org> and <thrashermagazine.net> in that action.  See, High Speed Productions, Inc. d/b/a/ Thrasher Magazine v. Thrasher Magazine, Ltd., FA 97008 (Nat. Arb. Forum June 20, 2001).

Complainant contends and Respondent denies that Respondent visited Complainant and purchased Respondent's merchandise prior to the registration in Spain of Respondent's business name or trademark.

Complainant has not licensed or otherwise authorized Respondent to use its marks.

Respondent has registered the trademark THRASHER MAGAZINE in Spain with the following effective dates: February 2, 1996, May 5, 1995, May 6, 1996, and June 7, 1997.  Respondent has registered the trademark THRASHER in Spain effective March 5, 2001.

The parties are also parties to legal proceedings in Spain and before the European Union regarding rights to the marks at issue.

DISCUSSION

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.  However, it must be emphasized that the STOP Policy is in certain ways significantly different from the UDRP.

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 whether a disputed domain name is identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

The Complainant has common law and registration rights in the trademark THRASHER MAGAZINE and <thrashermagazine.biz> is identical to that trademark.

 

Rights or Legitimate Interests

Both parties spend considerable time arguing whether Respondent has rights or legitimate interests in the domain name at issue in terms of the UDRP requirements.  However, the STOP Policy incorporates a significant change from the UDRP, and that change is dispositive.  Paragraph 4(c)(i) of the STOP Policy provides that if a party is the owner or beneficiary of a trademark or service mark that is identical to the domain name, then that party has demonstrated a right or legitimate interest in respect of the domain name.  The requirement is simple, straightforward, and without regard to time.

Complainant has argued and Respondent has agreed that Thrasher Magazine, Ltd. is merely the alter ego of Respondent.  Thrasher Magazine, Ltd. holds several trademarks in Spain for THRASHER MAGAZINE.  Accordingly, Respondent, as the owner or beneficiary of the trademark, has rights or legitimate interests in respect of the domain name at issue.

The result might well be different had this case proceeded under the UDRP, and Complainant has the ability to bring a claim under the UDRP in the .biz gTLD.

 

Registration or Use in Bad Faith

Because the Respondent has shown rights or legitimate interests under the STOP Policy, the Panel does not reach this issue.

DECISION

Because the Respondent has demonstrated rights and legitimate interests in respect of the domain name at issue under paragraph 4(c)(i) of the STOP Policy, the Complaint is dismissed.

M. Scott Donahey, Panelist
Dated: March 6, 2002

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