Arche Nova Marvin Entholt Filmproduktion v. Beanmills, Inc.

Claim Number: FA0204000112508



Complainant is Marvin Entholt Arche Nova Marvin Entholt Filmproduktion, Munich, GERMANY (“Complainant”).  Respondent is Beanmills Inc., Carson City, NV, USA (“Respondent”) represented by Stephen L. Anderson, of Anderson & Shippey.



The domain name at issue is <>, registered with Registrars Asia Pty. Ltd.



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.


John J. Upchurch 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 May 6, 2002.


On May 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 10, 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 June 5, 2002.


Complainant’s Additional Submission was received after the deadline, without the required fee. Therefore, the Forum does not consider Complainant’s Submission to be in compliance with STOP Supp. Rule 7.


On July 19, 2002, pursuant to STOP Rule 6(b), the Forum appointed John J. Upchurch as the single Panelist.



Transfer of the domain name from Respondent to Complainant.



A. Complainant


1.                  Complainant has been active in the film business since 1990.


2.                  Respondent has no rights in the mark reflected in the <> domain name.


3.                  The domain name was registered in bad faith.


B. Respondent


1.                  The Complainant does not have a registered trademark in “FILM.”


2.                  The Complainant lacks common law rights in generic and descriptive term “FILM”.


3.                  Respondent has a legitimate interest in the domain name.


4.                  Respondent has the right to use a generic and descriptive term.


5.                  The Complainant has failed to show that <> was registered in bad faith.




The Panel has determined that Complainant does not have rights in the mark and that the Complaint should be dismissed.  The Panel further has determined that Respondent does have legitimate interests in the disputed domain name.




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’s Rights in the Mark


The Complainant has failed to show that it owns any pending and registered trademarks in the United States of America, Federal Republic of Germany, or elsewhere for the term “FILM”.  The Complainant lacks any common law right to the purported mark “FILM” since the term is both generic and descriptive term, with  substantial third party use.  The fair use doctrine provides that no one should be able to appropriate generic and descriptive language through trademark registration.  Sands v. Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 951 (7th Cir 1992).


Further, the Complainant has failed to provide any evidence that “FILM” has become identified in the minds of the public with the Complainant to a sufficient extent to confer on it any “rights” within the meaning of paragraph 4(a)(i) of the Policy. Ltd. v. Hall, D2002-0200 (WIPO May 14, 2002).  Accordingly, the Panel finds that Complainant does not have rights in the mark.  The Complaint is dismissed.  




Respondent’s Rights or Legitimate Interests


Respondent has a legitimate interest in the domain name.  The Respondent has a legitimate interest in using the name FILM because: (1) the name was registered in connection with the bona fide offering of goods and services; (2) it aptly describes Respondent’s intended offering of goods and services which reflect the term’s generic and descriptive meaning.  It is well established that the intent to use a descriptive domain name for a related web site constitutes use in connection with a bona fide offering of goods and services, pursuant to paragraph 4(c)(i).  CHF Industries, Inc. v. Domain Deluxe, FA 97532 (Nat. Arb. Forum July 26, 2001).  See also RDRP 4(c)(ii).


Respondent has the right to use a generic and descriptive term.  Generic names are regarded by the law as free for all to use as they are in the public domain.  McCarthy on Trademarks Sec. 12:2 (p. 12-5).  See Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 41 L.Ed. 118, 16 S.Ct. 1002 (1896).  A generic name is cannot be exclusively monopolized to the exclusion of another, rather a generic name is available for all to use. See FreedomCard, inc. v. Mr. Taeho Kim, Case No. D2001-1320 (WIPO Jan. 20, 2002) and the citations listed in Section A.  As early as 1872, the United States Supreme Court reiterated that public policy “forbid[s] the exclusive appropriation of generic names.”  See Canal Co. v. Clark, 80 U.S. 311 (1872), See also McCarthy on Trademarks § 12.1 (p. 14-3)


In Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (eResolution Mar. 20, 2000), the Panel held:


“Where the domain name and trademark in question are generic – and in particular where they comprise no more than a single, short, common word – the rights/interests inquiry is more likely to favor the domain name owner.  The ICANN Policy is very narrow in scope; it covers only clear cases of “cybersquatting” and “cyberpiracy,” not every dispute that might arise over a domain name.  See e.g., Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999),, para.4.1(c).”


See also Gen. Mach. Prods Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Jan. 26, 2000); Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000); CRS Tech. Corp. v. Condenet, Inc. FA 93547 (Nat. Arb. Forum Mar. 28, 2000); Perriocone v. Hirst, FA 95104 (Nat. Arb. Forum Sept. 1, 2000); Zero Int’l Holding GmbH v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000); Primedia Special Interest Pubs., Inc. v. Treadway, D2000-0752 (WIPO, Aug. 21, 2000);  First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001).




            Accordingly, the Complaint herein is dismissed.  Subsequent challenges to this domain name, as against the Respondent under the STOP Policy shall not be permitted against this domain name.




John J. Upchurch, Panelist

Dated:  August 20, 2002



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