Arche
Nova Marvin Entholt Filmproduktion v. Beanmills, Inc.
Claim
Number: FA0204000112508
PARTIES
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 <film.biz>, 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 <film.biz> 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 <film.biz>
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.
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. Holiday-rentals.com 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.
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), http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm,
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).
DECISION
John
J. Upchurch, Panelist
Dated: August 20, 2002
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