Hachette Filipacchi Presse v. More
Virtual Agency
Claim Number: FA0204000109745
Complainant
is Hachette Filipacchi Presse,
Levallois Perret, FRANCE (“Complainant”).
Respondent is More Virtual Agency,
Bonn, GERMANY (“Respondent”).
The
domain name at issue is <premiere.biz>,
registered with Key-Systems GMBH.
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 18, 2002; the Forum
received a hard copy of the Complaint on April 23, 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”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On June 6, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Tyrus R. Atkinson, Jr., as
the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<premiere.biz> domain name is identical to Complainant's PREMIERE
mark.
Respondent
has no rights or legitimate interests in the <premiere.biz> domain
name.
Respondent
registered the <premiere.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant owns numerous trademarks for
the PREMIERE mark in France including Registration Numbers 1,218,629 and
1,714,081. Complainant is also the
owner of trademark registrations in the United States including Registration
Numbers 1,224,988 and 1,621,130.
Complainant produces a well-known magazine under the PREMIERE mark that
has been published since 1977 in France, United States, South Korea, Japan,
Czech Republic, and Russia. Complainant
also holds domain name registrations for <premiere.fr> and
<premiere.com>.
Respondent registered the disputed domain
name on March 27, 2002.
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
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 established that it has rights in the PREMIERE mark through registration in
the United States and France.
Respondent’s <premiere.biz> domain name is identical to
Complainant’s PREMIERE mark.
The Panel finds that STOP Policy ¶ 4(a)(i) has been
satisfied.
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
There is no evidence on record, and
Respondent has failed to come forward to prove that it has any trademark or
service mark rights in PREMIERE or <premiere.biz>. Therefore, Respondent has not established
that it has rights or legitimate interests in the disputed domain pursuant to
STOP Policy ¶ 4(c)(i). See Nat’l
Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb.
Forum Feb. 11, 2002) (finding that, because Respondent did not come forward
with a Response, the Panel could infer that it had no trademark or service
marks identical to <grammy.biz> and therefore had no rights or legitimate
interests in the domain name).
The disputed domain name is identical to
Complainant’s mark and any use of <premiere.biz> by Respondent
will cause Internet users to be confused as to the source, sponsorship and
affiliation of the domain name. This type of use is not considered to be a bona
fide offering of goods or services and therefore Respondent has no rights or
legitimate interests in the disputed domain name pursuant to STOP Policy ¶
4(c)(ii). See William L. Lyon &
Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21, 2002) (finding the Respondent’s “intent to
trade [on] the goodwill of Complainant’s mark, by attracting Internet users
confused as to the likely affiliation between Complainant and Respondent’s
website” indicated the Respondent had no rights or legitimate interests
pursuant to STOP Policy ¶ 4(c)(ii)); see also Peachtree Software v.
Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding that
Respondent’s intended use of the <peachtree.biz> domain name to provide
information and services related to Complainant’s PEACHTREE product, but
without Complainant’s authorization, would cause customer confusion and was not
a bona fide offering of goods or services).
Respondent is known to the Panel as “More
Virtual Agency,” and there is no evidence that Respondent is also commonly
known as PREMIERE or <premiere.biz>. Therefore Respondent has no rights or legitimate interests in the
disputed domain name pursuant to STOP Policy ¶ 4(c)(iii). See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June
19, 2000) (finding that Respondent has failed to demonstrate any rights or
legitimate interests in the <twilight-zone.net> domain name since
Complainant had been using the TWILIGHT ZONE mark since 1959); see also Nat’l Acad. Of Recording Arts
& Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002)
(finding that the famous nature of Complainant’s GRAMMY mark prevented
Respondent from being commonly known by <grammy.biz>).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Based on the fame of Complainant’s mark
it can be inferred that Respondent intends to use the domain name to attract
Complainant’s customers to Respondent’s website for Respondent’s commercial
gain. This type of use is evidence of
bad faith pursuant to STOP Policy ¶ 4(b)(iv).
See Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31,
2002) (finding that, where the Respondent’s <fluor.biz> domain name was
identical to the Complainant’s FLUOR mark, Internet users would likely believe
an affiliation between the Respondent and Complainant); see also Pillsbury
Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002)
(finding registration of a domain name identical to Complainant’s mark to be in
bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely
cause confusion as to the affiliation between Respondent and Complainant).
Furthermore, Respondent had knowledge of
Complainant’s rights in the PREMIERE mark when it registered the disputed
domain name. Registration of a domain
name identical to Complainant’s mark, despite this knowledge, is evidence of
bad faith registration. See Gehl Co.
v. Gehl, FA 102816 (Nat. Arb. Forum Jan. 30, 2002) (finding that the “long
standing use and historic nature” of the Complainant’s GEHL mark put the
Respondent on notice as to the existence of the mark, thereby making Respondent
aware that it was infringing upon Complainant’s rights); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the
domain name <premiere.biz> be transferred from Respondent
to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June20, 2002
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