Gracie Films,
Inc. v. BAL c/o Krystina Puzluska
Claim Number: FA0107000098214
PARTIES
Complainant is Gracie Films, Inc., Los Angeles, CA (“Complainant”) represented by Evan N. Spiegel, of Lavely & Singer. Respondent is BAL c/o Krystina Puzluska, Berlin, Germany (“Respondent).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <graciefilms.com>, registered with Tucows, Inc.
PANEL
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.
Hon. James A. Carmody, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 19, 2001; the Forum received a hard copy of the Complaint on July 23, 2001.
On July 26, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <graciefilms.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 15, 2001 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@graciefilms.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On August 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
1.
the <graciefilms.com>
domain name is identical to its GRACIE FILMS mark;
2. Respondent has no rights nor legitimate interests in the <graciefilms.com> domain name; and
3. Respondent registered and uses the <graciefilms.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a response.
FINDINGS
1. Complainant is a world renowned production company in both the television and motion picture industries.
2.
Complainant is incorporated under the GRACIE FILMS mark and
has used the mark continuously since as early as 1984 in connection with its
entertainment creations and productions.
3.
The <graciefilms.com>
domain name was registered on December 26, 1999.
4.
Respondent acquired the <graciefilms.com> domain name sometime between September 2000 and
July 2001.
5. Respondent is not using the <graciefilms.com> domain name in any manner.
DISCUSSION
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.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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
Complainant has established its rights to the GRACIE FILMS mark through the continuous extensive use and the international fame the GRACIE FILMS mark has achieved. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning is established).
The <graciefilms.com> domain name is identical to Complainant's GRACIE FILMS mark; the domain name contains Complainant's entire mark and the common ".com" TLD. It is well established that domain names based entirely on another's mark with only the addition of a gTLD are nonetheless identical for the purposes of Policy ¶ 4(a)(i). E.g., Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Complainant asserts, and Respondent fails to dispute that Respondent has no rights or legitimate interests in the <graciefilms.com> domain name. Furthermore, Respondent is not making any use of the <graciefilms.com> domain name to demonstrate it has rights or legitimate interests in the disputed domain name. Passive holding of a domain name is evidence that a Respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). E.g., Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).
Additionally, failing to respond to Complainant's allegations creates further evidence that Respondent lacks rights or legitimate interests. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Given the widespread fame of Complainant's GRACIE FILMS mark, the <graciefilms.com> domain name was registered in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration). The use of the words "registered" and "acquired" in Policy ¶ 4(b)(i), clearly demonstrate an intention to allow a Panel to find bad faith even if a particular respondent was not the first to register the domain name but subsequently acquired the name with the intent of selling, renting, or otherwise transferring the domain name for valuable consideration in excess of out-of-pocket expenses. The circumstances as alleged by Complainant in the instance before this Panel fit within the plain meaning of Policy ¶ 4(b)(i): another party registered <graciefilms.com> domain name and subsequently transferred the domain name to Respondent, who according to Complainant intends to profit from the sale of the <graciefilms.com> domain name.
Respondent's subsequent acquisition of the <graciefilms.com> domain name in the light of the widespread fame of Complainant's mark, coupled with Respondent's failure to respond to Complainant's allegations create a strong inference of bad faith. This Panel is convinced that this chain of events satisfies the requirements of bad faith registration set forth in Policy ¶ 4(a)(iii). Compare Cruzeiro Licenciamentos Ltda v. Sallen & Sallen Enter., D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale), and CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide any evidence to controvert Complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present), with Cellular One Group v. Brien, D2000-28 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name), and Banco Mercantil del Norte, S.A., v. Servicios de Comunicación En Linea, D2000-1215 (WIPO Nov. 23, 2000) (transferring the domain name where the constant change of parties having ownership of the domain name evidences bad faith registration and use).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted.
Accordingly, it is Ordered that the <graciefilms.com> domain name be transferred from Respondent to Complainant.
Hon. James A. Carmody, Panelist
Dated :August 24, 2001
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