China Lucky Film Group v. Hu Haobo
Claim Number: FA0204000109372
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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, 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).
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
Dated: May 28, 2002.
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