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Generic Top Level Domain Name (gTLD) Decisions |
China Lucky Film Group v. Hu Haobo
Claim Number: FA0204000109372
PARTIES
Complainant
is China Lucky Film Group, Hebei
Province (“Complainant”) represented by Zhu
Changyong, of HiChina Web Solutions
Limited. Respondent is Hu Haobo, Beijing (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <luckyfilm.com>,
registered with Neteka, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on April 9, 2002; the Forum received
a hard copy of the
Complaint on April 15, 2002.
On
April 9, 2002, Neteka, Inc. confirmed
by e-mail to the Forum that the domain name <luckyfilm.com> is registered with Neteka, Inc. and that the
Respondent is the current registrant of the name. Neteka, Inc. has verified that Respondent is bound by the Neteka,
Inc. 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
April 15, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 6, 2002
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@luckyfilm.com by e-mail.
A
timely Response was received and determined to be complete on May 1, 2002.
On May 15, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
Complainant
alleges that it has rights in the mark that is identical or confusingly similar
to the mark contained within the disputed
domain name, <luckyfilm.com>. Complainant urges that Respondent has no such rights to
or legitimate interests in the mark and domain name. Complainant further urges that the Respondent acted in bad faith
in registering and using the domain name.
B. Respondent made the following assertions
in Response:
Respondent
used a generic word, “Lucky,” in creating and registering the domain name in
issue. Further, Respondent urges that
“Film,” the other word in the domain name has a broader meaning than camera
film and can mean movies. Further Respondent
urges that he has been unable to develop the web site at the domain name due to
this proceeding and the hold on
the domain name. Lastly, Respondent urges that he has never advertised the domain
name for sale and that it is not up for resale.
FINDINGS
Complainant
first registered the LUCKY mark in June 1992 but has rights to the LUCKY mark
by virtue of its use of that mark in relation
to its film products since
1987. Furthermore, Complainant
registered the LUCKY mark in China as Reg. No. 597,407, in Australia as Reg.
No. 770,643, in New Zealand
as Reg. No. 600,084, and in the United States as
Reg. No. 2,206,287.
Complainant
further made prior use of the domain name found at <luckyfilm.com>
for a period of five years prior to the time that Respondent captured it.
Complainant registered the domain name in March 1997 and
used it as a corporate
website and email address until Respondent allegedly “grabbed” the name after
Complainant’s ISP failed to
renew the domain name in time. Complainant developed the site and it drew
broad response according to Complainant’s allegations.
Respondent
registered the domain name in issue February 27, 2002.
Respondent
has engaged in no legitimate or bona fide offer of goods and services at the
domain name, is not known by the domain name
or LUCKY mark, and has not
developed a business plan for the domain name.
Despite Respondent’s contentions to the contrary, Respondent’s current
site contains the notation: “back-order expiring domain names
you want.” This permits an inference that Respondent
registers domain names for some purpose other than making immediate use of them
for a bona
fide offer of goods and services.
Complainant
alleges that Respondent’s conduct constitutes “parking” at a domain site and
the Panel finds that the record supports
that allegation.
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 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 Respondent is identical or confusingly similar to
a trademark or service mark in which Complainant
has rights;
(2)
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 to or Confusingly Similar
Complainant
asserts that the disputed domain name <luckyfilm.com> is
confusingly similar to Complainant’s mark because it incorporates the entirety
of its mark and merely adds the descriptive
term “film” to the end. Addition to Complainant’s mark of a term,
“film,” that is descriptive of Complainant’s business, does not create a
distinctive mark
that is capable of overcoming a claim of confusing similarity. See Space
Imaging LLC v. Brownwell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain
name combines the Complainant’s
mark with a generic term that has an obvious
relationship to the Complainant’s business); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that the <hoylecasino.net> domain name is confusingly similar to
Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which Complainant is engaged, does
not take
the disputed domain name out of the realm of confusing similarity).
Respondent asserts in opposition that Complainant has rights in LUCKY but
that Complainant has no rights to LUCKY FILM.
Respondent further asserts that in addition, the term LUCKY is generic;
and that, therefore, Complainant cannot claim exclusive rights
to the
word. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO
May 12, 2000) (stating that "[c]ommon words and descriptive terms are
legitimately subject to registration
as domain names on a 'first-come,
first-served' basis"); see also Rollerblade, Inc. v. CBNO
and Redican, D2000-0427
(WIPO Aug. 24, 2000) (finding that “genericness, if established, will defeat a
claim of trademark rights, even in a mark
which is the subject of an
incontestable registration”). The
record shows that registration authorities recognized Complainant’s right to
register the mark LUCKY.
In addition,
Respondent asserts that both LUCKY and FILM are generic words and that,
therefore, Complainant has no rights over a combination
of the two. See PetWarehouse v. Pets.Com, Inc.,
D2000-0105 (WIPO Apr. 13, 2000) (finding that "pet" and
"warehouse" are generic terms and therefore not subject
to trademark
protection; although it is possible for two generic terms taken together to
achieve trademark or service mark status
by achieving a sufficient level of
secondary meaning in the relevant community, the burden is on the party making
a claim to show
distinctiveness or secondary meaning). While
Respondent’s position is persuasive that the terms “lucky” and “film,” standing
alone, could be generic terms of wide use, the
record in this case permits the
finding that Respondent knowingly filed a domain name incorporating
Complainant’s mark and adding
to it a word that is descriptive of Complainant’s
business operation for some purpose other than bona fide and legitimate
use. The notice at Respondent’s site
that reads: “back-order expiring domain names you want” permits an
inference that Respondent acted with knowledge that Complainant had prior
rights
to the mark and descriptive term used in the domain name at issue.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant
asserts that Respondent is not using the domain name and notes that the domain
has no active website but that it only
has a message that states: “back-order
expiring domain names you want.” Complainant asserts that this establishes that
Respondent
is not using the domain name in relation to a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i). See Vestel
Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov.
11, 2000) (finding that “…merely registering the domain name is not sufficient
to establish rights or legitimate
interests for purposes of paragraph 4(a)(ii)
of the Policy”); see also 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 also
asserts that Respondent is not commonly known as <luckyfilm.com>
because Complainant had been using the domain name for the past five years
before Respondent “grabbed” it in February.
Therefore, Complainant argues, it is impossible for Respondent to have
become commonly known by the domain name in such a short period
of time. Therefore, Respondent has no rights or
legitimate interest in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and
never applied
for a license or permission from Complainant to use the trademarked name).
Complainant
asserts that, because the Respondent is from Beijing, Respondent knew that registering
the disputed domain name would
cause a likelihood of confusion as to the
source, sponsorship and affiliation of <luckyfilm.com> because
that is where Complainant’s company is
based and the
domain name is one that Complainant had used for the five years before
Respondent “grabbed” it. Therefore,
Complainant asserts that Respondent is not making a fair use of the disputed
domain name pursuant to Policy ¶ 4(c)(iii).
See Caterpillar Inc. v.
Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not
have a legitimate interest in using the domain names
<caterpillarparts.com>
and <caterpillarspares.com> to suggest a
connection or relationship, which does not exist, with Complainant's mark
CATERPILLAR).
Respondent
maintains that the domain is one that is under construction and that since
Respondent only registered the domain name in
February, it is logical that the
domain name would still would be under construction as of the date of this
dispute. Respondent asserts that the
website that will exist in the future at this domain will be a free website
offering movies and movie
information to the general public and that therefore
Respondent does have rights and legitimate interests in the disputed domain
name because Respondent is preparing to use the disputed domain name in
connection with a bona fide offering of goods and services. See 3Z Prod. v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000)
(finding a legitimate interest in a domain name is shown by website
development); see also David J.
Joseph Co. v. Barry, D2000-1418 (WIPO Jan. 2, 2001) (finding Respondent
provided substantial evidence of his demonstrable preparations to use the
domain
name with a business involving the sale of scrap materials prior to
receiving notice of the present dispute).
However, in this case, Respondent has shown no efforts of preparation or
time and funds extended in preparation such as would permit
the panel to find
that Respondent has actually prepared to use the disputed domain name.
Respondent also
notes that the domain name <luckyfilm.com> is descriptive of the
content that Respondent will display on its forthcoming website. See Sweeps Vacuum & Repair Ctr., Inc. v. Nett Corp., D2001-0031
(WIPO Apr. 13, 2001) (finding bona fide use of a generic domain name,
<sweeps.com>, where Respondent used a legitimate
locator service
(goto.com) in connection with the domain name). The fact that Respondent’s subjective manifestations suggest
preparation to go into a business using Complainant’s name and described
by the
same words that Complainant currently operates under suggests that Respondent
has no present rights to or legitimate interests
in the domain name containing
in its entirety Complainant’s registered mark.
The Panel finds that Complainant has satisfied Policy
¶ 4(a)(ii).
Complainant
urges that Respondent acted in bad faith in registering and holding the domain
name that contains Complainant’s registered
mark. The Panel may find, based on the geographic location of
Respondent, that Respondent was on notice as to Complainant’s rights in the
LUCKY mark when it registered the disputed domain name containing that
mark. Complainant is based out of
Beijing and Respondent’s residence is in Beijing; therefore, there is a high
likelihood that Respondent
knew of Complainant’s film products and past use of
<luckyfilm.com>. Further,
given the well-known nature of Complainant’s business and the name under which
Complainant operates, Respondent’s registration
in the presence of this notice
is evidence of bad faith registration.
See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[ w]here an alleged infringer chooses a
mark he knows to be similar to another, one can
infer an intent to
confuse"); see also Albrecht
v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration
in bad faith based where there is no reasonable possibility, and
no evidence
from which to infer that the domain name was selected at random since it
entirely incorporated Complainant’s name).
Complainant
asserts that Respondent registered the domain name for the primary purpose of
selling, renting or transferring it.
Despite Respondent’s subjective manifestation that the domain name has
not been offered for sale and is not for sale, Respondent registered
the domain
name and proceeded to use it only to post this message: “back-order expiring
domain names you want.” This message
permits the inference that Respondent registered the domain name for some
purpose other than to make a bona fide and
legitimate use for it and it further
permits the inference that Respondent has many “expiring” domain names for sale
and that <luckyfilm.com> is one of them.
Registration
of a domain name primarily for the purpose of selling it is considered to be
evidence of bad faith pursuant to Policy
¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded,
are evidence of bad faith”).
Respondent’s
statement in his Response that Respondent did not know of Complainant’s rights
in the mark LUCKY or the domain name <luckyfilm.com> when
Respondent registered the domain name is not persuasive. Complainant has been engaged in business in
the same geographic region in which Respondent is located and Complainant
engaged in business
using the very same name that Respondent registered as a
domain name.
Respondent’s
semantic argument analyzing the associations one might make with the word lucky
also is not persuasive. Many cultures
view the term LUCKY in a positive light
and one can imagine that Complainant knew of that affirmative association when
Complainant
acquired prior rights to use the word.
Similarly, Respondent’s
denials of an intent to sell the domain name is not persuasive. Respondent
notes in its Response that it is
in the business of registering domain names
and providing services to host them for clients. Respondent states that this business does not involve the resale
of domain names. Furthermore, Respondent asserts that it registered
the domain
name to correspond with the services it will offer on its forthcoming website
and that the term “film” means “movies;”
and that, therefore, Respondent’s free
movie website is a “lucky film.”
Despite these subjective manifestations by Respondent, the Panel is more
greatly persuaded by the objective status of Complainant’s
prior use of the
name in a domain name, the Complainant’s legal right to the mark LUCKY, and the
Complainant’s prior operation selling
products as LUCKY film, all of which
occurred prior to the time Respondent registered the name.
The Panel finds that Complainant satisfied the
requirement of Policy ¶ 4(a)(iii).
DECISION
Having
determined that Complainant made all three of the required showings to be
entitled to the requested relief, it is accordingly
ORDERED that the domain
name <luckyfilm.com> be transferred
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: May 28, 2002.
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