Hollywood Management Company v. OX3 Corporation
Claim Number: FA0204000112529
Complainant is Hollywood Management Company, Wilsonville, OR (“Complainant”) represented by Alison L Davis, of Fulbright & Jaworski L.L.P. Respondent is OX3 Corporation, Ayer, MA (“Respondent”) represented by F. Andrew Anderson, of Palmer & Dodge LLP.
The domain name at issue is <reel.biz>, registered with Network Solutions, Inc.
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 27, 2002; the Forum received a hard copy of the Complaint on April 30, 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 23, 2002.
Complainant’s Additional Submission was timely received on May 29, 2002.
On June 4, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, Jr. as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant operates the second largest chain of video stores, numbering at least 1900, in the United States.
Through its web site, <REEL.COM>, Complainant offers on-line ordering of videos, DVDs, computer games and related goods, as well as information regarding the entertainment industry, movies and computer games. Additionally, Complainant offers the promotion and advertising of goods and services of third parties, via its <REEL.COM> web site.
The <reel.biz> domain name is the .biz counterpart to the Complainant’s .com domain name.
Complainant’s <REEL.COM> web site has been operated by Complainant or its affiliated companies or predecessors in interest since at least as early as September of 1998.
Complainant owns United States Patent and Trademark Office registrations for “REEL” and “REEL.COM”.
Respondent does not have any legitimate rights or interests in the domain name that is the subject to this Complaint. Respondent does not own a registration for an identical trademark and does not use the mark “reel” for any purpose. Respondent is not commonly known by the domain name “reel”, but rather by OX3 Corporation.
Respondent registered the domain name in bad faith. Respondent had constructive notice of Complainant’s trademark rights as result of Complainant’s trademark registrations.
The popularity and value of the <reel.com> domain name is well known. <Reel.com> has earned awards from several organizations for excellence.
Respondent provides semiconductor reel products and services.
Respondent owns registrations from the United States Patent and Trademark Office for trademarks, REELQUICK and REELPAK registered in 1992 and 1994.
Respondent did business under the name Orion Tape & Reel from February 1991 to July 2000. Its customers have come to associate the word REEL with the Respondent due to its past extensive use of the word with its business name.
Respondent has a legitimate interest in the word “reel” by virtue of the fact that the Respondent operates in the so-called “tape and reel” business.
Respondent acknowledges that Complainant owns right in the word REEL by virtue of its federal trademark registration. However, Complainant cannot show that it should be granted exclusive use of the domain name <reel> or that the <reel.biz> domain address is the “counterpart” of the Complainant’s <reel.com> domain name.
The word REEL is used in many different industries.
Respondent did not register or use the domain name in bad faith. Respondent’s good faith use of the word REEL within its registered trademarks, within its prior company name, and standing alone as a relevant industry term, all of which commenced long-prior to the issuance of the Complainant’s trademark registration, preclude a finding of bad faith registration of <reel.biz> Respondent was under no obligation to conduct a trademark search in connection with a word in which it already had rights.
Respondent requests a finding of Reverse Domain Name Hijacking.
C. Additional Submissions
Complainant contends that ownership by Respondent of trademarks in REELPAK and REELQUICK does not convey any rights to an individual component of that trademark.
Complainant contends that the use of the word “reel” as a component of a former company name shows that Respondent does not currently operate under the name of “reel.” Complainant contends that it is implausible that Respondent is known as “reel” in light of the fact that there are numerous businesses in the industry which incorporate the word “reel” (as part of the phrase “tape and reel”) in their names, as evidenced by Respondent’s own exhibits. It is not the word “reel” that accurately describes the services the Respondent offers, but the phrase “tape and reel,” and while Respondent may have legitimate interests in the phrase “tape and reel,” it has not presented evidence of legitimate interests in the word “reel.”
1. Complainant is a business organization headquartered in Oregon that operates a number of video stores in the United States.
2. Complainant operates a web site at <REEL.COM> that offers on-line ordering of videos, DVDs, games and related goods.
3. Complainant holds the Service Mark, REEL, granted by the United States Patent and Trademark Office on July 20, 1999.
4. Complainant holds the Service Mark, REEL.COM, granted by the United States Patent and Trademark Office on February 20, 2000.
5. Respondent is a corporation headquartered in Maryland that provides semiconductor reel products and services.
6. Respondent holds the Trademark, REELQUICK, granted by the United States Patent and Trademark Office on September 17, 1996, for carrier tape used as a vehicle for semiconductor components affixed to circuit boards.
7. Respondent holds the Trademark, REELPAK, granted by the United States Patent and Trademark Office on May 11, 1999, as a vehicle for semiconductor components affixed to circuit boards.
8. Respondent registered the domain name <reel.biz> on March 27, 2001.
9. Complainant has rights and legitimate interests in the word, REEL.
10. Complainant fails to prove that Respondent has no legitimate rights and interests in <reel.biz>.
11. Complainant fails to prove that Respondent registered or used the domain name, <reel.biz> in bad faith.
12. No evidence is presented to justify finding Reverse Domain Name Hijacking.
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 has rights and legitimate interests in the word REEL, and REEL.BIZ by reason of Complainant’s registrations of Service Mark, REEL, with the United States Patent and Trademark Office.
Complainant contends that Respondent does not have any legitimate rights or interests in the domain name for the following reasons: “Respondent does not own a registration for an identical trademark and does not use the mark ‘reel’ for any purpose. The Respondent is not commonly known by the domain name of ‘reel’, but rather by OX3 Corporation.”
Complainant contends that the burden must shift to Respondent to provide “concrete evidence” to rebut Complainant’ allegation, citing PRL USA Holdings, Inc. v. Search Hound, DBIZ2001-00010 (WIPO Feb. 13, 2002).
Respondent acknowledges that the Complainant owns rights and legitimate interests in the word REEL by virtue of its federal trademark registrations. However, Respondent contends that Complainant cannot show that it should be granted exclusive use of the domain name REEL or that the <reel.biz> domain name address is the “counterpart” of the Complainant’s <REEL.COM> domain address.
Respondent points out that the word REEL is used in many industries. While Complainant uses the word REEL to identify its videotape products, Respondent uses the word REEL to identify its semiconductor “tape and reel” business.
Respondent owns trademark rights in REELPAK and REELQUICK. The goods and services offered under the Trademarks have been offered in good faith.
Respondent argues that, at the very least, it has a legitimate interest in the word REEL by virtue of the fact that the Respondent operates in the so-called “tape and reel” business. “Tape and reel” is a recognized phrase in the semiconductor field that refers to a semiconductor packaging format, Respondent states. Respondent argues that since it provides semiconductor reel products and services, it has a legitimate interest in obtaining rights in a domain name that those seeking information about such products and services might naturally key into their web browsers.
Respondent supplies sufficient evidence for the Panel to conclude that “tape and reel” is an industry term used not only by Respondent but also by Respondent’s competitors in the semiconductor business.
The Start-up Trademark Opposition Policy and Rules for .BIZ provides three methods for a Respondent to demonstrate its rights and legitimate interests in the domain name in responding to a Complaint. See STOP Policy Paragraph 4(c).
The first is that Respondent is the owner of a trade or service mark that is identical to the domain name. Respondent’s Trademarks, REELPAK and REELQUICK are not identical to <reel.biz>.
The second is that before any notice to Respondent, its use, or demonstrable preparations to use, the domain name, or a name corresponding to the domain name in connection with a bona fide offering of goods or services can be shown to demonstrate rights and interests. The Panel finds that Respondent gives a reasonable explanation for its preparations to use the domain name, <reel.biz> in connection with a bona fide offering of goods and services. Respondent contends that it is making preparations to use the domain name for offering “tape and reel” products in the same manner as now offered at its web site located at <ox3.com>. Respondent provides the web pages and offerings at <ox3.com> in evidence and that web site does offer “tape and reel” products and has done so for a period of time. The Panel finds that as a factual matter, Respondent has shown the elements of Paragraph 4(c)(ii).
Respondent attempts to show that it has been commonly known as REEL, but clearly Respondent has never been known as REEL.
Respondent’s citation of Woodworker’s Supply Inc. v. Roloff Marketing, Inc. for the reason set out by Respondent is of little use to the Panel in this dispute. But the facts of the Woodworker’s case closely resemble the facts of this dispute on the preparation for use issue, and that Panel’s reasoning in deciding the issue is useful to the Panel. The citations of Phillippe Tenenhaus v. Telepathy, Inc. is of no assistance to the Panel on the issue of legitimate rights and interests in a .biz dispute. Respondent’s citation of Asphalt Research Tech., Inc. v. Anything.com on the rights and legitimate interests issue is inappropriate, as it relates to the issue bad faith registration and use. See FA 103055 (Nat. Arb. Forum Jan. 30, 2002); FA 94355 (Nat. Arb. Forum May 17, 2000); D2000-0967 (WIPO Oct. 2, 2000).
Respondent has demonstrated its rights to and legitimate interests in the domain name, <reel.biz>. Complainant fails to prove a lack of rights to and legitimate interests on the part of Respondent as required in Paragraph 4 (a)(ii) of the STOP Policy.
Complainant’s sole contention for showing Respondent’s registration or use of <reel.biz> in bad faith is that Complainant owns a trademark to REEL, and the trademark is popular and well known. A showing of such facts, standing alone, is insufficient to prove bad faith. If the possession of a trademark alone were sufficient to show bad faith on the part of another registering a domain name containing the trademark, that is what the Start-up Trademark Opposition Policy and Rules for .BIZ would state. The STOP Policy requires proof of bad faith. The methods of illustrating bad faith are set out in Paragraph 4(b) of the Policy. Each circumstance, which, if proved, can be considered evidence of the registration or use of the domain name in bad faith, suggests a knowing intent on the part of a Respondent to commit improper conduct towards others. The purpose of the Start-up Trademark Opposition Policy and Rules for .BIZ anticipates “the .BIZ domain name matching the exact alphanumeric string contained in the trade or service mark in which the Claimant has rights.” If that circumstance, standing alone, constituted bad faith, then the remainder of the Policy and Rules would be unnecessary.
Complainant has proved no bad faith registration or use by Respondent of the domain name, <reel.biz>. Compare Domain Bank, Inc. v. Sonic Co, Ltd, DBIZ2001-00014 (WIPO Feb. 13, 2002).
Reverse Domain Name Hijacking.
Respondent’s request for a finding of Reverse Domain Name Hijacking without setting out any specific grounds to justify such a finding is well rebutted by Complainant in its Additional Response. The Complaint appears to have been brought in good faith. See Woodworker’s Supply Inc. v. Roloff Marketing, Inc. FA103055 (Nat. Arb. Forum Jan. 30, 2002). Respondent’s request is denied.
IT IS THE DECISION OF THE PANEL THAT THE COMPLAINT OF HOLLYWOOD MANAGEMENT COMPANY BE DISMISSED AND THE REQUEST TO TRANSFER THE DOMAIN NAME, <REEL.BIZ> IS DENIED. FURTHER CHALLENGES AGAINST THE <REEL.BIZ> DOMAIN NAME SHALL NOT BE PERMITTED UNDER THE STOP POLICY.
Tyrus R. Atkinson, Jr,, Panelist
Dated: June 18, 2002.
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