DECISION

High Speed Productions, Inc. v. Thrasher Magazine, Ltd.

Claim Number: FA0011000096099

PARTIES

The Complainant is High Speed Productions, Inc., San Francisco, CA, USA ("Complainant") represented by Anne Hiaring. The Respondent is Thrasher Magazine, Ltd., Madrid, Spain ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is thrashermagazine.net, registered with Register.Com.

PANEL

The undersigned Daniel B. Banks, Jr., as panelist, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 20, 2000; The Forum received a hard copy of the Complaint on November 20, 2000.

On December 1, 2000, Register.Com confirmed by e-mail to The Forum that the domain name thrashermagazine.net is registered with Register.Com and that the Respondent is the current registrant of the name. Register.Com has verified that Respondent is bound by the Register.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 4, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to postmaster@thrashermagazine.net by e-mail.

On December 27, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Daniel B. Banks, Jr. as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIESí CONTENTIONS

    1. Complainant:

1 - Complainant has sold magazines under the name "Thrasher Magazine" since at least as early as 1981.

2 - Complainant is the owner of numerous U.S., German and Japanese Registrations for the Thrasher mark.

3 - Complainant obtained the domain name registration for THRASHERMAGAZINE.COM on May 25, 1997 and has maintained the domain name with timely renewals.

4 - Respondent's THRASHERMAGAZINE.NET domain name was created on February 7, 2000, a date subsequent to all of Complainant's legitimate business activities and it is identical and/or confusingly similar to Complainant's name.

5 - Respondent registered the business name "Thrasher Magazine, S.L." in Spain on December 29, 1994.

6 - Respondent has not been commonly known by the domain name and has no legitimate right or interest in said domain name.

7 - Respondent's intent in registration and use of the domain name in question is for commercial gain; to mislead and divert consumers to Respondent's business; and, to tarnish the rights in Complainant's Thrasher and Thrasher Magazine trademarks.

8 - Respondent registered and is using the disputed domain name in bad faith.

9 - Prior to Respondent's registration of the disputed domain name, Respondent was well aware of Complainant's rights to the names Thrasher and Thrasher Magazine because Respondent's representative visited Complainant's business location and purchased legitimate THRASHER -labeled product, which Respondent re-sold in Spain.

10 - Complainant's "Thrasher Magazine" had been distributed in Spain before Respondent registered its THRASHERMAGAZINE.NET domain name.

11 - Respondent registered the THRASHER MAGAZINE mark in Spain in identical stylized format that Complainant uses on its labels.

12 - Respondent has registered the domain name primarily for the purpose of disrupting Complainant's business and/or to intentionally attempt to attract, for commercial gain, Internet users to Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location.
    1. Respondent:
    1. Respondent is a Spanish company working in a Spanish market since October 25, 1994 with the company name "Thrasher Magazine, S.L."
    2. Respondent engages in the activities of publicity and business connected with the media, including education and leisure, broadcasting TV programs and magazines.
    3. Respondent is well known in Spain and has existed prior to the date the Complainant registered its two trademarks of Thrasher Magazine in Japan.
    4. The Complainant bases its Complaint on registered trademarks in the United States, Germany and Japan.
    5. Those trademarks are Thrasher, Thrasher Products and Thrasher Magazine.
    6. The trademark Thrasher was registered and used by Complainant in the United States in1987, prior to registration and use of the disputed domain name and Complainant has numerous pending United States Applications for additional registrations of the Thrasher mark.
    7. The trademark Thrasher Magazine was registered in Japan on February 10, 2000 and June 6, 2000 which is after the Respondent's registration of the disputed domain name on February 7, 2000.
    8. The trademark Thrasher Products was registered in Japan on June 16, 2000, which is after the registration of the disputed domain name by Respondent.
    9. Respondent admits that the disputed domain name is identical to Complainant's subsequent trademark registration of Thrasher Magazine but the disputed domain name isn't identical or confusingly similar to the prior registrations of the Thrasher mark.
    10. The word Thrasher has its own meaning and Complainant does not have the sole right to this word, as it is a concept which is generally used.
    11. The comparison of the disputed domain name to Complainant's mark "Thrasher" must be made as a whole and "Thrasher Magazine" is therefore not identical or confusingly similar.
    12. Respondent has rights or legitimate interests in respect of the domain name because Respondent is well known in Spain and has been conducting business under the name Thrasher Magazine since 1994, which is prior to Complainant's registration of that name in Japan.
    13. Respondent owns Spanish Registrations of the name Thrasher Magazine dating back to May 1995.
    14. Respondent is making a legitimate use of the domain name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark or service mark of Complainant.
    15. Respondent appears to deny that any representative of Respondent visited Complainant's business location and purchased legitimate Thrasher labeled products to re-sell in Spain.
    16. Respondent does not know of the use of Thrasher Magazine in Spain prior to the time that Respondent registered the disputed domain name.
    17. Respondent applied for and registered the disputed domain name because it coincides with the name of the society formed since 1994 and because it has its trademark registered in Spain.
    18. Complainant does not have any trademark registered in Spain.
    19. In the United States there are numerous other registered trademarks and domain names using the name Thrasher.

FINDINGS

It is the decision of the undersigned as follows:

1 - The disputed domain name is identical to the Japanese registered trademark of the Complainant, however, the Respondent registered this trademark in Spain prior to the time the Complainant registered in Japan.

2 - The Respondent has rights or legitimate interests in respect of the domain name.

3 - The disputed domain name was not registered nor is it being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "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 Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Respondent acknowledges the fact that the domain name is identical to the Complainantís THRASHER MAGAZINE trademark. However, the Respondent refutes the Complainant's rights in the mark by claiming that the THRASHER mark is a generic word with its own meaning. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-0427 (WIPO Aug. 24, 2000) (finding that "genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration"). Respondent also contends that Complainant did not register the Thrasher Magazine mark until after the Respondent had registered this mark in Spain.

Rights or Legitimate Interests

The Respondent contends that the domain name was registered in connection with its business in Spain under the THRASHER MAGAZINE name. Policy  4.c.(i). The Respondent contends that it is well known by this mark in Spain. Policy  4.c.(ii). See DFJ Associates, Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of dispute).

Registration and Use in Bad Faith

It appears that both parties in this case hold registered trademarks in separate countries for the THRASHER MAGAZINE mark. Each party claims rights in the mark based on its registered trademark. A few UDRP decisions have dealt with this issue. The cases seem to turn on the Respondentís knowledge of the Complainantís mark at the point of registration. If the Respondent knew of the Complainantís mark, the Panel is more likely to determine that the domain name was registered and used in bad faith. See Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (transferring the domain name where "The trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that Respondent Ö could have been unaware of the trademark rights vested therein when registering the domain name.") If it is unlikely that the Respondent knew of the Complainantís mark, the Panel is more inclined to allow the Respondent to maintain the domain name. See Marbil Co. Inc. "DBA" Insol v. Sangjun Choi, D2000-1275 (WIPO Nov. 23, 2000) (declining to transfer the domain name where "[I]t cannot be reasonably argued that the respondent could not have been unaware of the existence of sparse common law trademark rights of ëa very small computer company in Atlantaí, with only Atlanta-based customersÖwhen registering the domain name ëinsol.com.í")

The evidence in this case is not sufficient to support a finding that Respondent knew of the Complainant's mark prior to the registration of the disputed domain name. Also, there is no evidence to support a finding that Respondent registered or is using the disputed domain name for the purpose of disrupting Complainant's business or that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complaint's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location.

DECISION

It is the decision of the undersigned that the Complaint's request that the domain name "thrashermagazine.net" be transferred is denied.

 

Honorable Daniel Banks

Retired Circuit Judge

Arbitrator

Dated: January 8, 2001

 

 

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