The Filmlot, LLC v. Material Insight c/o Shelley Kuipers
Claim Number: FA0707001036138
Complainant is The Filmlot, LLC (“Complainant”), represented by Deborah
Shinbein, of Faegre & Benson, LLP, 1700 Lincoln
St., Suite 3200, Denver, CO 80203-4532.
Respondent is Material Insight c/o Shelley Kuipers (“Respondent”), represented by Brandon K. Potter,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <filmlot.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 16, 2007.
On July 13, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <filmlot.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 July 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 7, 2007 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on August 7, 2007.
A timely Additional submission for Complainant was received on August 13, 2007.
On August 15, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
1. The <filmlot.com> domain name is identical or confusingly similar to Complainant's mark.
2. Respondent has no rights or legitimate interest in the <filmlot.com> domain name.
3. Respondent has registered and used the <filmlot.com> domain name in bad faith.
Respondent requests the Panel to deny Complainant’s request on the grounds that the <filmlot.com> domain name is not identical, that he has a legitimate interest in the domain name and that Respondent did not act in bad faith.
Complainant has common law rights in the FILMLOT Marks dating back to Complainant's first use in commerce thereof, on August 2, 2005, and Complainant has continuously and extensively offered its informational website, and the products and services thereon, under the FILMLOT Marks since August of 2005.
Complainant claims common law rights in the trademark without registration at the United States Patent and Trademark Office.
Complainant argues that its FILMLOT mark has become a distinctive identifier associated with its goods or services.
addition, Complainant has two trademark registrations pending, for THE FILMLOT
word mark and logo design, in the
Complainant also owns the registration for the domain name <thefilmlot.com>. Since August, 2005, Complainant has been operating an Internet website identified by the domain name <thefilmlot.com>. This website provides information, products and services for new and independent filmmakers, as well as an application by which filmmakers can network with others in the industry and locate others providing specific film services.
The Respondent argues that it operates an Internet based business which uses its membership to help develop and select new business concepts and ideas. One way in which this is accomplished is through the holding of "Idea Tournaments" in which members get to vote on which new business concepts or ideas should be further funded and developed by the Respondent. This idea of utilizing the power of an online community in this fashion is referred to as "crowd sourcing".
Respondent registered the disputed domain name on May 22, 2004. Respondent argues that the Complaint does not deal with an "abusive registration", but rather with a dispute between good faith competing rights holders and that, as such, the UDRP is not the proper forum for the dispute.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant asserts common law
rights in THE FILMLOT mark through continuous use since as early as August 8,
2005. Complainant provides information,
products, and services for new and independent filmmakers, as wells as an
application by which filmmakers can network with others in the industry and
identify individuals providing specific film services. Complainant has marketed its services and
products at thirteen film festivals and over sixty film schools in the
Panel finds that Complainant has established secondary meaning in THE FILMLOT mark in its various commercial capacities since August 2005. The Panel further finds that Complainant’s secondary meaning in THE FILMLOT mark is sufficient to confer rights in the mark for purposes of Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant contends that Respondent’s <filmlot.com> domain name is confusingly similar to Complainant’s THE FILMLOT mark.
The Panel finds that the omission of the article
“the” and the addition of the generic top-level domain (gTLD) “.com” fails to
sufficiently distinguish Respondent’s disputed domain name from Complainant’s
mark for purposes of Policy ¶ 4(a)(i). See Mega Soc. v. LoSasso,
FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the
<megasociety.net> and <megasociety.com>
domain names were
identical or confusingly similar to Complainant's THE MEGA SOCIETY mark); see also
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is neither commonly known by the <filmlot.com> domain name nor licensed to register names featuring Complainant’s THE FILMLOT mark or any derivation thereof.
The Panel finds that Respondent has failed to establish that it is commonly known by the <filmlot.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant contends that upon registration, Respondent failed to make use of the <filmlot.com> domain name until Complainant contacted Respondent regarding the registration of this domain name. After the initial contact, Respondent redirected Internet users connecting to the <filmlot.com> domain name to Respondent’s <filmchamp.com> domain name and resulting website. Complainant alleges that it contacted Respondent a second time concerning Respondent’s use of the <filmlot.com> domain name, at which time Respondent again changed the resulting content of the disputed domain name and replaced the content with a “work-in-progress site.”
The Panel finds that Respondent has failed to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).
Furthermore, Complainant contends that Respondent attempted to sell the disputed domain to Complainant for $6,000. Complainant has submitted evidence that Respondent purchased the <filmlot.com> domain name for $2,288.
The Panel finds that Respondent’s willingness to sell the disputed domain name to Complainant is evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Policy requires a showing of both bad-faith registration and bad-faith use.
The <filmlot.com> domain name was registered prior to Complainant’s alleged first use of THE FILMLOT mark. The <filmlot.com> domain name was registered on May 22, 2004, over one year prior to Complainant’s alleged first use of THE FILMLOT mark.
Respondent has admitted that it purchased the disputed domain name on May 16, 2007 (section III. C. 4. of the Response).
Quite evidently, Respondent did not register the Domain Name.
However, for the purposes of the Policy, the purchase of the disputed domain name constitutes registration.
The Panel finds that Respondent did purchase the <filmlot.com> domain name in bad faith so that the condition under Policy ¶ 4(a)(iii) is met.
Respondent attempted to sell the <filmlot.com> domain name for $6,000 and turned down all offers to purchase the domain name for $2,288, the price at which Respondent purchased the disputed domain name.
The Panel finds that Respondent’s efforts to sell
the domain name for an amount in excess of its out-of-pocket costs is evidence
of Respondent’s bad faith registration and use of the <filmlot.com>
domain name under Policy ¶ 4(b)(i). See Neiman
Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to
sell the domain name for $2,000 sufficient evidence of bad faith registration
and use under Policy ¶ 4(b)(i)); see also
Moreover, Complainant has demonstrated that Respondent has not made a use of the disputed domain name which resolved to a “work-in-progress site.”
The Panel find this to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that such inactive use of a domain name permits an inference of registration and use in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <filmlot.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: August 30, 2007
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