Hachette Filipacchi Presse v. Lin Zan Song
Claim Number: FA0204000110779
Complainant is Hachette Filipacchi Presse, Levallois Perret, FRANCE (“Complainant”), of Hachette Filipacchi Presse. Respondent is Lin Zan Song, Wenzhou, Zhejiang, CHINA (“Respondent”).
The domain name at issue is <photo.biz>, registered with Xin Net Corp.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) 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 23, 2002; the Forum received a hard copy of the Complaint on April 25, 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 21, 2002.
On July 17, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
The disputed domain name <photo.biz> is confusingly similar to the registered PHOTO mark in which Complainant holds rights.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent contends that (1) PHOTO is a generic word meaning “photograph”; (2) he intends to use <photo.biz> as a website for a photograph business; and (3) he did not register the domain name in bad faith.
Complainant, Hachette Filipacchi Presse, is the owner of several French trademark registrations for the mark PHOTO. Complainant has continuously used the trademark PHOTO since 1979. Complainant’s magazine PHOTO is well known. Respondent, Lin Zan Song, has not used the domain name <photo.biz> in commerce whereas Complainant operates the website <photo.fr.>. Furthermore, Respondent is not known as PHOTO or <photo.biz>.
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.
The domain name <photo.biz> is identical to Complainant’s Trademark PHOTO. See Little Six, Inc., v Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark); see also American Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the domain name <americangolf.net> is identical and confusingly similar to Complainant’s AMERICAN GOLF marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
A Respondent may demonstrate its rights/interests in a STOP proceeding by proving that it is the owner or beneficiary of a trademark or service mark that is identical to the disputed domain name. See High Speed Prods. v. Blanco, FA 102951 (Nat. Arb. Forum Mar. 6, 2002) (noting that, although the result might have been different had the Complainant’s case been brought under the UDRP, the Respondent’s trademarks in THRASHER MAGAZINE, registered in Spain, sufficiently demonstrate its rights and interests under STOP Policy ¶ 4(a)(ii) in the <thrashermagazine.biz> domain name).
Respondent has submitted no evidence of ownership of a trademark or service mark.
A Respondent in a STOP proceeding may demonstrate its rights or interests in a disputed domain name by proving its use of or demonstrable preparations to use the domain name for a bona fide offering of goods or services. STOP Policy ¶ 4(c)(ii). STOP Panels have found that a Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue.” Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue). Although Respondent contends that it plans to use the <photobiz> domain name in connection with a photograph business, it has not shown any preparations to use the domain name.
Even when a Respondent represents that it intends to use a domain name for a commercial purpose, its use under STOP Policy ¶ 4(c)(ii) must be for a bona fide offering of goods or services. Registration of an infringing domain name in order to opportunistically trade on the goodwill of the Complainant’s mark does not constitute a bona fide offering of goods or services. 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 Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services 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).
Finally, a Respondent may demonstrate its rights or interests in a domain name by proving that it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights. STOP Policy ¶ 4(c)(iii). Additionally, it is not enough that a Respondent claim that it registered the disputed domain name in anticipation of being known by the name. It must provide some proof that it is commonly known by the domain name to establish rights under STOP Policy ¶ 4(c)(iii). See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (“[T]o establish rights or legitimate interests in a name or a mark, the Respondent must do more than state that he considered using it in the past, along with other names he actually used”) (emphasis in original). Indeed, while the burden is initially placed on the Complainant to show that a Respondent does not have rights or legitimate interests in a domain name, after such a showing is made, the burden then shifts to the Respondent “to explain by valid evidence a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict.” Gene Logic Inc., supra.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The criteria specified in ¶ 4(a)(iii) of the STOP Policy does not represent an exhaustive list of bad faith evidence. The Panel must take into consideration the totality of circumstances in order to determine if Respondent registered or used the domain name in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Due to the nature of NeuLevel’s STOP IP Claim registration procedure, Complainant’s continuous use of its mark in international commerce since 1979, and Complainant’s trademark registrations, Respondent had constructive and actual notice of Complainant’s rights in the PHOTO mark. Respondent’s subsequent registration of the infringing <photo.biz> domain name, despite knowledge of Complainant’s preexisting rights in the PHOTO mark, represents bad faith registration under STOP Policy ¶4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”).
STOP Policy ¶ 4(b)(iv) states that bad faith is established when a Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. The <photo.biz> domain name is identical to Complainant’s PHOTO trademark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that the Respondent could not make any active use of the disputed domain names without creating a false impression of association with the Complainant). Because many of the “.biz” domain names were very recently registered, Panels have previously held that, even when the domain name has not been used, bad faith under STOP Policy ¶ 4(b)(iv) can be demonstrated based on the confusion that will inevitably arise when the Respondent finally uses the name. 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).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <photo.biz> domain name be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
The Honorable Charles K. McCotter, Jr.
Dated: July 30, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page