Southern Exposure v. Southern Exposure, Inc.
Claim Number: FA0005000094864
The Complainant is Southern Exposure, Chapin, SC, USA ("Complainant"). The Respondent is Southern Exposure, Inc., Orlando, FL, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "SOUTHERNEXPOSURE.NET", registered with Network Solutions Inc ("NSI").
Honorable Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/19/2000; The Forum received a hard copy of the Complaint on 05/24/2000.
On 05/26/2000, NSI confirmed by e-mail to The Forum that the domain name "SOUTHERNEXPOSURE.NET" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On 06/12/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/05/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.
On 07/05/2000, 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 July 7, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Honorable Carolyn Marks Johnson as Panelist.
Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 the Respondent.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The Complainant contends that the Respondent registered a domain name that is identical to its trademark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name and is using the domain name in bad faith.
The Respondent’s submitted response failed to arrive by the default deadline established by the Rules for Uniform Domain Name Dispute Resolution Policy ¶ 5(a). The untimely response filed on behalf of Respondent offers no explanation for late filing nor is it accompanied by any motion that it be given consideration despite its late status. The assertions and attachments are not supported by affidavit and, accordingly, no factual claim of the Complainant is effectively controverted. The Respondent did not present an adequate timely filed Response and all reasonable inferences of fact in the allegations of the Complaint will be taken as true. See UFCW International Union v. Union Automation, FA94665 (Nat. Arb. Forum June 8, 2000) (holding that untimely Response without Motion or Affidavit does not controvert Complainant’s allegations and proof and all reasonable inferences of fact in the allegations of the Complaint will be taken as true).
The Complainant owns the U.S. trademark registration for the mark, SOUTHERN EXPOSURE (first in use 08/01/1978; registered 04/23/1996; No. 1,969,235), for the production of motion film and videotapes.
The Respondent consists of five companies that grouped together under the name Southern Exposure, Inc. Each of these companies, specialize in specific areas of the production and creation of motion pictures films and videotapes. The Respondent registered the domain name in question on 10/31/1998.
On 01/12/1999, the Complainant sent the Respondent a "cease and desist" letter. The Complainant then attempted to put the domain name on "hold" through NSI. Throughout the course of the next year, the Complainant sent the Respondent several emails and letters requesting that the Respondent cease using his mark and transfer the domain name in question.
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to support a claim 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 Complainant has rights in the registered trademark SOUTHERN EXPOSURE. The Respondent’s domain name is identical to the Complainant’s mark except for the addition of the domain name level designation "net".
Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name in question.
The Respondent is not commonly known by the name, Southern Exposure Inc. Policy ¶ 4(c)(ii). The Respondent filed for a State of Florida Service Mark on 07/27/1998 for the name Florida Film and Tape. The Respondent promotes its company as Florida Film and Tape. When the domain name <floridafilmandtape.com> is entered on the Internet, the user is transported to the domain name in question and the Respondent’s corresponding website.
The Respondent is not offering bona fide goods or services in connection with the domain name nor is Respondent using the domain name in a legitimate or fair manner. Policy ¶ 4(c)(i), (iii). The Respondent is using the domain name to market similar goods and services as those offered by Complainant and to profit from the Complainant’s established reputation. . See Hewlett-Packard v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the Respondent had no legitimate interest in the domain name, <openmail.com>, that was being used to compete with the Complainant’s e-mail services).
Based on the above argument, the panel finds that the Respondent has no rights or legitimate interests in the domain name at issue.
Registration and Use in Bad Faith
The Complainant asserts that the Respondent acted and is acting in bad faith.
The Respondent registered the domain name in question primarily for the purpose of disrupting the business of the Complainant, a competitor of the Respondent. Policy ¶ 4(b)(iii). Since the Respondent is in the motion picture and film industry, the Respondent knew or should have known of the Complainant’s business under its established and registered mark. See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum March 15, 2000) (finding that the Respondent knew or should have known of the Complainant’s registered mark). The Respondent used the Complainant’s established mark to divert Internet customers, disrupting the Complainant’s business. See Mariah Boats, Inc. v. Shoreline Marine, LLC, FA 94392 (Nat. Arb. Forum May 5, 2000) (finding bad faith where the Respondent misleadingly diverts customers from the Complainant’s website to its website).
The Respondent is using the domain name to attract Internet users to its website by creating confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Complainant’s website. Policy ¶ 4(b)(iv). The Respondent registered and used the domain name in question to profit from the Complainant’s mark by attracting Internet users to its competing website. This is evidence of bad faith. See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum April 25, 2000) (finding that the Respondent acted in bad faith when he used the Complainant’s marks to develop an Internet business in competition with the Complainant).
It is the panel’s view that the Respondent registered and used the domain name in bad faith.
Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "SOUTHERNEXPOSURE.NET" be transferred from the Respondent to the Complainant.
Honorable Carolyn Marks Johnson
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page