High Speed Productions v. Fabio Blanco
Claim Number: FA0112000102951
PARTIES
The
Complainant is High Speed Productions,
San Francisco, CA, USA (“Complainant”) represented by Anne C Hiaring, of Law
Office Of Anne Hiaring. The
Respondent is Fabio Blanco, Madrid,
Spain (“Respondent”) represented by Stephen
H. Sturgeon, of Law Offices of
Stephen H. Sturgeon & Associates.
The
domain name at issue is <thrashermagazine.biz>,
registered with Tucows, 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.
M. Scott Donahey, 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 December 14, 2001; the
Forum received a hard copy of the Complaint on December 17, 2001.
On
December 28, 2001, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 17, 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 February 6, 2002.
On February 20, 2002 pursuant to STOP Rule 6(b), the
Forum appointed M. Scott Donahey
as the single Panelist.
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
A.
Complainant
Complainant
contends that the domain name at issue is identical to Complainant's registered
trademark, that Respondent has not rights or legitimate interests in respect of
the domain name, and that the domain name was registered in bad faith.
B.
Respondent
Respondent
contends that the domain name is not identical to a trademark or service mark
in which the Complainant has rights, that Complainant has failed to prove that
Respondent has no rights or legitimate interests in respect of the domain name
at issue, and that Complainant has failed to prove that Respondent has
registered and is using the domain name at issue in bad faith.
Complainant has, inter alia, the
following trademark registrations in the following countries effective on the
following dates in the mark THRASHER:
United States July 14, 1987, May 1, 1990, February 7, 2001,
September 11, 2001
Germany May
13, 1991
Japan October
31, 2000, March 31, 1994
Complainant has, inter alia, a trademark
registration in Japan, effective June 2, 2000 in the mark THRASHER MAGAZINE.
Complainant began publishing
"Thrasher Magazine," in 1981, and it has since become one of the
leading publications in the field of skateboarding.
Complainant has brought a previous action
under the UDRP against Thrasher Magazine, Ltd., an entity that Complainant
alleges and Respondent effectively concedes is Respondent's alter ego, and Complainant has recovered the domain names
<thrashermagazine.org> and <thrashermagazine.net> in that
action. See, High Speed Productions, Inc. d/b/a/ Thrasher Magazine v. Thrasher
Magazine, Ltd., FA 97008 (Nat. Arb. Forum June 20, 2001).
Complainant contends and Respondent
denies that Respondent visited Complainant and purchased Respondent's
merchandise prior to the registration in Spain of Respondent's business name or
trademark.
Complainant has not licensed or otherwise
authorized Respondent to use its marks.
Respondent has registered the trademark
THRASHER MAGAZINE in Spain with the following effective dates: February 2,
1996, May 5, 1995, May 6, 1996, and June 7, 1997. Respondent has registered the trademark THRASHER in Spain
effective March 5, 2001.
The parties are also parties to legal
proceedings in Spain and before the European Union regarding rights to the
marks at issue.
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. However, it must be
emphasized that the STOP Policy is in certain ways significantly different from
the UDRP.
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 whether a
disputed domain name is identical to the mark in which the Complainant asserts
rights.
The
Complainant has common law and registration rights in the trademark THRASHER
MAGAZINE and <thrashermagazine.biz> is identical to that
trademark.
Both parties spend considerable time
arguing whether Respondent has rights or legitimate interests in the domain
name at issue in terms of the UDRP requirements. However, the STOP Policy incorporates a significant change from
the UDRP, and that change is dispositive.
Paragraph 4(c)(i) of the STOP Policy provides that if a party is the
owner or beneficiary of a trademark or service mark that is identical to the
domain name, then that party has demonstrated a right or legitimate interest in
respect of the domain name. The
requirement is simple, straightforward, and without regard to time.
Complainant has argued and Respondent has
agreed that Thrasher Magazine, Ltd. is merely the alter ego of Respondent. Thrasher Magazine, Ltd. holds several
trademarks in Spain for THRASHER MAGAZINE.
Accordingly, Respondent, as the owner or beneficiary of the trademark,
has rights or legitimate interests in respect of the domain name at issue.
The result might well be different had
this case proceeded under the UDRP, and Complainant has the ability to bring a
claim under the UDRP in the .biz
gTLD.
Because the Respondent has shown
rights or legitimate interests under the STOP Policy, the Panel does not reach
this issue.
DECISION
Because the Respondent has demonstrated
rights and legitimate interests in respect of the domain name at issue under
paragraph 4(c)(i) of the STOP Policy, the Complaint is dismissed.
M. Scott Donahey, Panelist
Dated: March 6, 2002