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Generic Top Level Domain Name (gTLD) Decisions |
Hollywood Management Company v. OX3
Corporation
Claim Number: FA0204000112529
Complainant
is Hollywood Management Company,
Wilsonville, OR (“Complainant”) represented by Alison L Davis, of Fulbright
& Jaworski L.L.P. Respondent is OX3 Corporation, Ayer, MA (“Respondent”)
represented by F. Andrew Anderson, of Palmer & Dodge LLP.
The
domain name at issue is <reel.biz>,
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 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 April 27, 2002; the Forum
received a hard copy of the Complaint on
April 30, 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 23, 2002.
Complainant’s
Additional Submission was timely received on May 29, 2002.
On June 4, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Tyrus R. Atkinson, Jr. as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
operates the second largest chain of video stores, numbering at least 1900, in
the United States.
Through
its web site, <REEL.COM>, Complainant offers on-line ordering of videos,
DVDs, computer games and related goods, as
well as information regarding the
entertainment industry, movies and computer games. Additionally, Complainant offers the promotion and advertising of
goods and services of third parties, via its <REEL.COM> web
site.
The
<reel.biz> domain name is the .biz counterpart to the
Complainant’s .com domain name.
Complainant’s
<REEL.COM> web site has been operated by Complainant or its affiliated
companies or predecessors in interest since
at least as early as September of
1998.
Complainant
owns United States Patent and Trademark Office registrations for “REEL” and
“REEL.COM”.
Respondent
does not have any legitimate rights or interests in the domain name that is the
subject to this Complaint. Respondent
does not own a registration for an identical trademark and does not use the
mark “reel” for any purpose. Respondent
is not commonly known by the domain name “reel”, but rather by OX3 Corporation.
Respondent
registered the domain name in bad faith.
Respondent had constructive notice of Complainant’s trademark rights as
result of Complainant’s trademark registrations.
The
popularity and value of the <reel.com> domain name is well known. <Reel.com> has earned awards from
several organizations for excellence.
B.
Respondent
Respondent
provides semiconductor reel products and services.
Respondent
owns registrations from the United States Patent and Trademark Office for
trademarks, REELQUICK and REELPAK registered
in 1992 and 1994.
Respondent
did business under the name Orion Tape & Reel from February 1991 to July
2000. Its customers have come to
associate the word REEL with the Respondent due to its past extensive use of
the word with its business
name.
Respondent
has a legitimate interest in the word “reel” by virtue of the fact that the
Respondent operates in the so-called “tape
and reel” business.
Respondent
acknowledges that Complainant owns right in the word REEL by virtue of its
federal trademark registration.
However, Complainant cannot show that it should be granted exclusive use
of the domain name <reel> or that the <reel.biz> domain
address is the “counterpart” of the Complainant’s <reel.com> domain name.
The
word REEL is used in many different industries.
Respondent
did not register or use the domain name in bad faith. Respondent’s good faith use of the word REEL within its
registered trademarks, within its prior company name, and standing alone as
a
relevant industry term, all of which commenced long-prior to the issuance of
the Complainant’s trademark registration, preclude
a finding of bad faith
registration of <reel.biz>
Respondent was under no obligation to conduct a trademark search in
connection with a word in which it already had rights.
Respondent
requests a finding of Reverse Domain Name Hijacking.
C.
Additional Submissions
Complainant
contends that ownership by Respondent of trademarks in REELPAK and REELQUICK
does not convey any rights to an individual
component of that trademark.
Complainant
contends that the use of the word “reel” as a component of a former company
name shows that Respondent does not currently
operate under the name of
“reel.” Complainant contends that it is
implausible that Respondent is known as “reel” in light of the fact that there
are numerous businesses
in the industry which incorporate the word “reel” (as
part of the phrase “tape and reel”) in their names, as evidenced by
Respondent’s
own exhibits. It is not
the word “reel” that accurately describes the services the Respondent offers,
but the phrase “tape and reel,” and while
Respondent may have legitimate
interests in the phrase “tape and reel,” it has not presented evidence of
legitimate interests in
the word “reel.”
1. Complainant is a business organization
headquartered in Oregon that operates a number of video stores in the United
States.
2. Complainant operates a web site at
<REEL.COM> that offers on-line ordering of videos, DVDs, games and
related goods.
3. Complainant holds the Service Mark, REEL,
granted by the United States Patent and Trademark Office on July 20, 1999.
4. Complainant holds the Service Mark,
REEL.COM, granted by the United States Patent and Trademark Office on February
20, 2000.
5. Respondent is a corporation headquartered
in Maryland that provides semiconductor reel products and services.
6. Respondent holds the Trademark,
REELQUICK, granted by the United States Patent and Trademark Office on September
17, 1996, for carrier
tape used as a vehicle for semiconductor components
affixed to circuit boards.
7. Respondent holds the Trademark, REELPAK,
granted by the United States Patent and Trademark Office on May 11, 1999, as a
vehicle for
semiconductor components affixed to circuit boards.
8. Respondent registered the domain name <reel.biz>
on March 27, 2001.
9. Complainant has rights and legitimate
interests in the word, REEL.
10. Complainant fails to prove that
Respondent has no legitimate rights and interests in <reel.biz>.
11. Complainant fails to prove that
Respondent registered or used the domain name, <reel.biz> in bad
faith.
12. No evidence is presented to justify
finding Reverse Domain Name Hijacking.
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.
Complainant
has rights and legitimate interests in the word REEL, and REEL.BIZ by reason of
Complainant’s registrations of Service
Mark, REEL, with the United States
Patent and Trademark Office.
Complainant contends that Respondent
does not have any legitimate rights or interests in the domain name for the
following reasons: “Respondent does not
own a registration for an identical trademark and does not use the mark ‘reel’
for any purpose. The Respondent is not
commonly known by the domain name of ‘reel’, but rather by OX3 Corporation.”
Complainant contends that the burden must
shift to Respondent to provide “concrete evidence” to rebut Complainant’
allegation, citing
PRL USA Holdings, Inc. v. Search Hound,
DBIZ2001-00010 (WIPO Feb. 13, 2002).
Respondent acknowledges that the
Complainant owns rights and legitimate interests in the word REEL by virtue of
its federal trademark
registrations.
However, Respondent contends that Complainant cannot show that it should
be granted exclusive use of the domain name REEL or that
the <reel.biz> domain name address is the “counterpart” of
the Complainant’s <REEL.COM> domain address.
Respondent points out that the word REEL
is used in many industries. While
Complainant uses the word REEL to identify its videotape products, Respondent
uses the word REEL to identify its semiconductor
“tape and reel” business.
Respondent owns trademark rights in
REELPAK and REELQUICK. The goods and
services offered under the Trademarks have been offered in good faith.
Respondent argues that, at the very
least, it has a legitimate interest in the word REEL by virtue of the fact that
the Respondent
operates in the so-called “tape and reel” business. “Tape and reel” is a recognized phrase in
the semiconductor field that refers to a semiconductor packaging format,
Respondent states. Respondent argues
that since it provides semiconductor reel products and services, it has a
legitimate interest in obtaining rights
in a domain name that those seeking
information about such products and services might naturally key into their web
browsers.
Respondent supplies sufficient evidence
for the Panel to conclude that “tape and reel” is an industry term used not
only by Respondent
but also by Respondent’s competitors in the semiconductor
business.
The Start-up Trademark Opposition Policy
and Rules for .BIZ provides three methods for a Respondent to demonstrate its
rights and
legitimate interests in the domain name in responding to a
Complaint. See STOP Policy Paragraph 4(c).
The first is that Respondent is the
owner of a trade or service mark that is identical to the domain name. Respondent’s Trademarks, REELPAK and
REELQUICK are not identical to <reel.biz>.
The second is that before any notice to
Respondent, its use, or demonstrable preparations to use, the domain name, or a
name corresponding
to the domain name in connection with a bona fide offering
of goods or services can be shown to demonstrate rights and interests. The Panel finds that Respondent gives a
reasonable explanation for its preparations to use the domain name, <reel.biz>
in connection with a bona fide offering of goods and services. Respondent contends that it is making
preparations to use the domain name for offering “tape and reel” products in
the same manner
as now offered at its web site located at <ox3.com>.
Respondent provides the web pages and offerings at <ox3.com> in
evidence
and that web site does offer “tape and reel” products and has done so for a
period of time. The Panel finds that as
a factual matter, Respondent has shown the elements of Paragraph 4(c)(ii).
Respondent attempts to show that it has
been commonly known as REEL, but clearly Respondent has never been known as
REEL.
Respondent’s citation of Woodworker’s
Supply Inc. v. Roloff Marketing, Inc. for the reason set out by Respondent
is of little use to the Panel in this dispute.
But the facts of the Woodworker’s case closely resemble the facts
of this dispute on the preparation for use issue, and that Panel’s reasoning in
deciding the issue
is useful to the Panel. The citations of Phillippe
Tenenhaus v. Telepathy, Inc. is of no assistance to the Panel on the issue
of legitimate rights and interests in a .biz dispute. Respondent’s citation of Asphalt Research Tech., Inc. v.
Anything.com on the rights and legitimate interests issue is inappropriate,
as it relates to the issue bad faith registration and use. See FA 103055
(Nat. Arb. Forum Jan. 30, 2002); FA 94355 (Nat. Arb. Forum May 17, 2000);
D2000-0967 (WIPO Oct. 2, 2000).
Respondent has demonstrated its rights
to and legitimate interests in the domain name, <reel.biz>. Complainant fails to prove a lack of rights
to and legitimate interests on the part of Respondent as required in Paragraph
4 (a)(ii)
of the STOP Policy.
Complainant’s sole contention for showing
Respondent’s registration or use of <reel.biz> in bad faith is
that Complainant owns a trademark to REEL, and the trademark is popular and
well known. A showing of such facts,
standing alone, is insufficient to prove bad faith. If the possession of a trademark alone were sufficient to show
bad faith on the part of another registering a domain name containing
the
trademark, that is what the Start-up Trademark Opposition Policy and Rules for
.BIZ would state. The STOP Policy requires proof
of bad faith. The methods of illustrating bad faith are
set out in Paragraph 4(b) of the Policy.
Each circumstance, which, if proved, can be considered evidence of the
registration or use of the domain name in bad faith, suggests
a knowing intent
on the part of a Respondent to commit improper conduct towards others. The purpose of the Start-up Trademark
Opposition Policy and Rules for .BIZ anticipates “the .BIZ domain name matching
the exact alphanumeric
string contained in the trade or service mark in which
the Claimant has rights.” If that circumstance, standing alone, constituted
bad
faith, then the remainder of the Policy and Rules would be unnecessary.
Complainant has proved no bad faith
registration or use by Respondent of the domain name, <reel.biz>. Compare Domain Bank, Inc. v. Sonic Co,
Ltd, DBIZ2001-00014 (WIPO Feb. 13, 2002).
Reverse Domain Name Hijacking.
Respondent’s request for a finding of
Reverse Domain Name Hijacking without setting out any specific grounds to
justify such a finding
is well rebutted by Complainant in its Additional
Response. The Complaint appears to have been brought in good faith. See
Woodworker’s Supply Inc. v. Roloff Marketing, Inc. FA103055 (Nat. Arb.
Forum Jan. 30, 2002). Respondent’s
request is denied.
DECISION
IT IS THE DECISION OF THE PANEL THAT THE
COMPLAINT OF HOLLYWOOD MANAGEMENT COMPANY BE DISMISSED AND THE REQUEST TO
TRANSFER THE DOMAIN
NAME, <REEL.BIZ> IS DENIED. FURTHER CHALLENGES AGAINST THE <REEL.BIZ> DOMAIN NAME SHALL
NOT BE PERMITTED UNDER THE STOP POLICY.
Tyrus R. Atkinson, Jr,, Panelist
Dated: June 18, 2002.
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