First Showing, LLC v. Localposts LLC
Claim Number: FA1101001366306
Complainant is First Showing, LLC (“Complainant”), represented by Sheri R. Hunter of Sedgwick, Detert, Moran & Arnold LLP, Texas, USA. Respondent is Localposts LLC (“Respondent”), represented by Brett E. Lewis, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firstshowing.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mr. Jeffrey M. Samuels and Ms. Diane Cabell as Panelists, and David S. Safran, Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2011; the National Arbitration Forum received payment on January 6, 2011.
On January, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <firstshowing.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@firstshowing.com. Also on January 11, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 31, 2011.
On February 9, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Mr. Jeffrey M. Samuels and Ms. Diane Cabell as Panelists, and David S. Safran as Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that it has acquired rights in the mark FIRSTSHOWING.NET through use since as early as May 2006 and that the mark has become associated with Complainant through continuous and prominent usage thereof since that date and Respondent’s domain <firstshowing.com> confusingly similar to Complainant’s mark differing only by the TLD. Complainant also contends that Respondent has no rights or legitimate interest in the domain <firstshowing.com> since it is not used in connection with a bona fide offering of goods or services, but rather is used solely to provide links to pornographic websites. Bad faith is contended by Complainant to be shown by Respondent having offered to sell the domain to Complainant for substantially in excess of its cost of acquisition and by Respondent having registered hundreds of domains that are not being used for legitimate business purposes.
B. Respondent
Respondent contends that Complainant acquired the domain <firstshowing.net> knowing that <firstshowing.com> was unavailable, and that Complainant has failed to demonstrate that it had acquired common law trademark rights in FIRSTSHOWING.NET as of the November 2009 date at which Respondent acquired the domain <firstshowing.com>. Furthermore, Respondent contends that that the term “first showing” is highly descriptive in connection with movies and that Complainant has failed to show that it had acquired distinctiveness as a mark of Complainant. Respondent also asserts that it could not have registered (acquired from the prior owner) the domain to target rights of Complainant since Respondent was unaware of the existence of Complainant at the time of its acquisition of the domain. Respondent also indicates that it did not acquire the domain to sell it and that it was only in response to a solicitation from Complainant that a sales price was offered.
The panel finds that Complainant has failed to provide evidence that rebuts Respondent's declaration that it never heard of Complainant or of its mark at the time that the domain name registration was acquired, nor has Respondent’s credible reason as to why the domain name was selected been countered by Complainant.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of the holding that Complainant has failed to establish that the domain name has been registered and is being used in bad faith, issuing of a holding on this point is unnecessary and the Panel elects not to do so.
In view of the holding that Complainant has failed to establish that the domain name has been registered and is being used in bad faith, issuing of a holding on this point is unnecessary and the Panel elects not to do so.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent states that an individual e-mailed Respondent about purchasing the disputed domain name. Respondent alleges this individual, Alex Billington, did not introduce himself as being connected to Complainant or any business that claimed trademark rights in the terms “First Showing.” The Panel finds that evidence does not indicate that Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant. Accordingly, the Panel holds that Respondent did not engage in registration or use in bad faith under Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors).
Finally, Respondent alleges that it was unaware of Complainant at the time that it acquired the disputed domain name. Thus, Respondent argues that it could not have registered the disputed domain name in bad faith. Complainant alleges common law rights, and for purposes of this proceeding, the Panel accepts the evidence that the mark has been in use long enough that such rights may have arisen; however, there is insufficient evidence to prove that the brand had become distinctive at the time the domain was registered. Therefore, the Panel accepts Respondent's declaration that it never heard of Complainant or of its mark at the time it acquired the domain name registration, and notes that the Respondent’s credible reason as to why the domain name was selected been countered, so that the Panel finds that Respondent has not engaged in bad faith under Policy ¶ 4(a)(iii). See The Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.”); see also Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30, 2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration and use, so where a respondent initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <firstshowing.com> domain name REMAIN WITH Respondent.
For the Panel, David S. Safran, Chair
Dated: February 18, 2011
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