The Filmlot, LLC v. Material
Insight c/o Shelley Kuipers
Claim Number: FA0707001036138
PARTIES
Complainant is The Filmlot, LLC (“Complainant”), represented by Deborah
Shinbein, of Faegre & Benson, LLP, 1700 Lincoln
St., Suite 3200, Denver, CO 80203-4532.
Respondent is Material Insight c/o Shelley Kuipers (“Respondent”), represented by Brandon K. Potter,
of Macleod
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <filmlot.com>, registered with Godaddy.com,
Inc.
PANEL
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.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 13, 2007; the
National Arbitration Forum received a hard copy of the Complaint on July 16, 2007.
On July 13, 2007, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <filmlot.com> domain name is
registered with Godaddy.com, Inc. and
that the 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-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On July 18, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 7, 2007 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@filmlot.com by e-mail.
A timely Response was received and determined to be complete on August 7, 2007.
A timely Additional submission for Complainant was received on August
13, 2007.
On August 15, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
makes the following assertions:
1. The <filmlot.com> domain name is identical or confusingly similar to Complainant's mark.
2. Respondent has no rights or legitimate interest
in the <filmlot.com> domain name.
3. Respondent has registered and used the <filmlot.com> domain name in bad faith.
B. Respondent
Respondent requests the Panel to deny Complainant’s request on the
grounds that the <filmlot.com> domain name is not identical, that he has
a legitimate interest in the domain name and that Respondent did not act in bad
faith.
FINDINGS
Complainant
has common law rights in the FILMLOT Marks dating back to Complainant's first
use in commerce thereof, on August 2, 2005, and Complainant has continuously
and extensively offered its informational website, and the products and
services thereon, under the FILMLOT Marks since August of 2005.
Complainant claims common law rights in the trademark without registration at the
United States Patent and Trademark Office.
Complainant argues that its FILMLOT mark has
become a distinctive identifier associated with its goods or services.
In
addition, Complainant has two trademark registrations pending, for THE FILMLOT
word mark and logo design, in the
Complainant also owns the registration for the domain name <thefilmlot.com>. Since August, 2005, Complainant has
been operating an Internet website identified by the domain name <thefilmlot.com>. This website provides
information, products and services for new and independent filmmakers, as well
as an application by which filmmakers can network with others in the industry
and locate others providing specific film services.
The Respondent argues that it operates an
Internet based business which uses its membership to help develop and select
new business concepts and ideas. One way
in which this is accomplished is through the holding of "Idea
Tournaments" in which members get to vote on which new business concepts
or ideas should be further funded and developed by the Respondent. This idea of utilizing the power of an online
community in this fashion is referred to as "crowd sourcing".
Respondent registered the disputed domain name on May 22, 2004. Respondent
argues that the Complaint does not deal with an "abusive registration",
but rather with a dispute between good faith competing rights holders and that,
as such, the UDRP is not the proper forum for the dispute.
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.
Complainant asserts common law
rights in THE FILMLOT mark through continuous use since as early as August 8,
2005. Complainant provides information,
products, and services for new and independent filmmakers, as wells as an
application by which filmmakers can network with others in the industry and
identify individuals providing specific film services. Complainant has marketed its services and
products at thirteen film festivals and over sixty film schools in the
Panel finds that Complainant has established secondary meaning in THE FILMLOT mark in its various commercial capacities since August 2005. The Panel further finds that Complainant’s secondary meaning in THE FILMLOT mark is sufficient to confer rights in the mark for purposes of Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also 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 was established).
Complainant contends that
Respondent’s <filmlot.com> domain name is
confusingly similar to Complainant’s THE FILMLOT mark.
The Panel finds that the omission of the article
“the” and the addition of the generic top-level domain (gTLD) “.com” fails to
sufficiently distinguish Respondent’s disputed domain name from Complainant’s
mark for purposes of Policy ¶ 4(a)(i). See Mega Soc. v. LoSasso,
FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the
<megasociety.net> and <megasociety.com>
domain names were
identical or confusingly similar to Complainant's THE MEGA SOCIETY mark); see also
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is neither commonly known by the <filmlot.com> domain name nor
licensed to register names featuring Complainant’s THE FILMLOT mark or any
derivation thereof.
The Panel finds that Respondent has failed to establish that it is commonly known by the <filmlot.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant contends that upon registration,
Respondent failed to make use of the <filmlot.com> domain name until Complainant contacted Respondent
regarding the registration of this domain name.
After the initial contact, Respondent redirected Internet users
connecting to the <filmlot.com> domain name to Respondent’s
<filmchamp.com> domain name and resulting website. Complainant alleges that it contacted
Respondent a second time concerning Respondent’s use of the <filmlot.com>
domain name, at which time Respondent again changed the resulting content of
the disputed domain name and replaced the content with a “work-in-progress
site.”
The Panel finds that Respondent has failed to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).
Furthermore, Complainant
contends that Respondent attempted to sell the disputed domain to Complainant
for $6,000. Complainant has submitted
evidence that Respondent purchased the <filmlot.com> domain name for $2,288.
The Panel finds that
Respondent’s willingness to sell the disputed domain name to Complainant is
evidence that Respondent lacks rights and legitimate interests under Policy ¶
4(a)(ii). See Mothers Against Drunk
Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding
that under the circumstances, the respondent’s apparent willingness to dispose
of its rights in the disputed domain name suggested that it lacked
rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11,
2000) (finding the respondent’s conduct purporting to sell the domain name
suggests it has no legitimate use).
The
Policy requires a showing of both bad-faith registration and bad-faith use.
The <filmlot.com> domain name was registered prior to Complainant’s
alleged first use of THE FILMLOT mark.
The <filmlot.com> domain name was registered on May 22,
2004, over one year prior to Complainant’s alleged first use of THE FILMLOT
mark.
Respondent has admitted that it purchased the disputed domain name on May 16, 2007 (section III. C. 4. of the Response).
Quite
evidently, Respondent did not register the Domain Name.
However, for the purposes of the Policy, the purchase of the disputed domain name constitutes registration.
The Panel finds that Respondent did
purchase the <filmlot.com> domain name in
bad faith so that the condition under Policy ¶ 4(a)(iii)
is met.
Respondent attempted to sell the <filmlot.com> domain name for $6,000
and turned down all offers to purchase the domain name for $2,288, the price at
which Respondent purchased the disputed domain name.
The Panel finds that Respondent’s efforts to sell
the domain name for an amount in excess of its out-of-pocket costs is evidence
of Respondent’s bad faith registration and use of the <filmlot.com>
domain name under Policy ¶ 4(b)(i). See Neiman
Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to
sell the domain name for $2,000 sufficient evidence of bad faith registration
and use under Policy ¶ 4(b)(i)); see also
Moreover,
Complainant has demonstrated that Respondent has not made a use of the disputed
domain name which resolved to a “work-in-progress site.”
The Panel find this to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that such inactive use of a domain name permits an inference of registration and use in bad faith).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <filmlot.com> domain name be TRANSFERRED
from Respondent to Complainant.
Flip Petillion, Panelist
Dated: August 30, 2007
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