First Look Studios, Inc. v.
New.net Incorporated
Claim Number: FA0612000874264
PARTIES
Complainant is First Look Studios, Inc. (“Complainant”), represented by Paul
D. Supnik, 9601 Wilshire Boulevard, Suite 828, Beverly Hills, CA 90210-5210. Respondent is New.net Incorporated (“Respondent”), represented by Jeffrey
K. Riffer, of Jeffer Mangels Butler & Marmo LLP 1900
Avenue of the Stars, 7th Floor,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firstlook.com>, registered with Enom, Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
David A. Einhorn (Chairperson), Dennis A. Foster and Neil A. Brown
(Panelists).
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 20, 2006; the
National Arbitration Forum received a hard copy of the Complaint on December 21, 2006.
On December 26, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <firstlook.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 January 8, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 29, 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@firstlook.com by e-mail.
A timely Response was received and determined to be complete on January 29, 2007.
A timely Additional Submission was received from Complainant and deemed
to be complete on January 31, 2007.
A timely Additional Submission was received from Respondent and deemed
to be complete on February 5, 2007.
On February 7, 2007, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed David A. Einhorn (Chairperson), Dennis A.
Foster and Neil A. Brown as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant makes the following
assertions:
1.
Respondent’s
<firstlook.com> domain name is confusingly similar to Complainant’s FIRST LOOK mark.
2.
Respondent does not have any
rights or legitimate interests in the <firstlook.com>
domain name.
3.
Respondent registered and used
the <firstlook.com> domain
name in bad faith.
B. Respondent
Respondent
alleges rights and legitimate interests in the domain name based upon trademark
registrations which it owns in the European Community,
Moreover,
Respondent emphasizes that Complainant’s nine-year delay in filing this
arbitration action from the 1997 date of Respondent’s registration of the
domain name allowed Respondent to build up its rights in the domain name
through use and foreign registrations.
C. Additional Submissions
In
its Additional Submissions, Complainant argues that Respondent has no rights or
legitimate interests in the domain name since the domain name is not currently
in use and Respondent is merely “warehousing” the name.
Respondent,
in its Additional Submissions, denies that it has been warehousing the domain
name. Respondent states that it was
using the domain for an active Web site in 2006, but took the site down in
approximately September 2006 after receiving a demand letter from
Complainant. Furthermore, Respondent
states that it has invested significant time and expense since the summer of
2006 in developing a new “Firstlook.com” Internet Search Engine. Respondent states that if it prevails in this
arbitration that it is “ready, willing and able” to make this search engine
available to consumers via this site.
FINDINGS AND 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
has submitted evidence of ownership of several trademark registrations,
including two trademark registrations for FIRST LOOK, which are identical to
the domain name <firstlook.com> except for
the presence of the space between the two words. The elimination of the space between the
words, and the addition of the top-level domain “.com,” is insufficient to
establish distinctiveness with respect to Policy ¶ 4(a)(i). See
Hannover Ruckversicherungs AG v. Ryu,
FA 102724 (Nat. Arb. Forum January 7, 2001) (finding the domain
<hannoverre.com> to be identical to the mark HANNOVER RE “as spaces are
impermissible in domain names and a generic top-level domain such as “.com” or
“.net” is required in domain names”).
The Panel finds that Policy ¶ 4(a)(i) has therefore been
satisfied.
Respondent has indicated that its predecessor’s
corporate name, until the year 2000, was “Firstlook.com”. The factor set forth under Policy ¶ 4(c)(ii)
is whether “you … have been commonly known by the domain name …”, not whether
you are known by the domain name. Thus, this factor supports that Respondent has
rights or legitimate interests in the domain name.
Respondent also alleges that it has built up
rights in the domain name through consistent use of the domain for nine
years. While laches is not a defense under
the Policy, Respondent points out that Complainant’s delay allowed Respondent
to build up rights in the domain name through use and foreign
registrations. See Square Peg Interactive
Inc. v. Naim Interactive, Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003)
(“ … Complainant’s delay in seeking relief is relevant to a determination of
whether Respondent has been able to build up legitimate rights in the Domain
Name in the interim …”).
Respondent has further shown that over the
years it has acquired trademark registrations for FIRST LOOK in the European
Community,
Nor does this Panel find that Respondent has
been “warehousing” the domain name, as the site has apparently only been
recently taken down pending resolution of this dispute.
Because this Panel has found that Complainant
has failed to prove, under Policy ¶ 4(a)(ii), that Respondent has no rights or
legitimate interests in respect to the domain name at issue, there is no need
for the Panel to decide the issue of bad faith.
DECISION
Complainant having
failed to establish that Respondent lacks rights or legitimate interests, the
Panel concludes that relief shall be DENIED.
DAVID A. EINHORN, PANELIST (CHAIRPERSON)
Dennis A. Foster
Neil A. Brown
Dated: February 21, 2007
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