WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hachette Filipacchi Media U.S., Inc. d/b/a ShowBoats International and Eyeball International, Inc.
v.
URTHERE Productions, Inc. and Brad Nolan
Case No. D2002-0143
1. The Parties
Complainants are Hachette Filipacchi Media, U.S. Inc., a Delaware Corporation located in Fort Lauderdale, Florida, United States of America and Eyeball International Inc, a North Carolina corporation located in Great Neck, New York, United States of America.
Respondents are U R There Productions, Inc., a Florida corporation located in Fort Lauderdale, Florida, United States of America and Brad Nolan, the Chief Executive Officer of URTHERE Productions, Inc.
2. The Domain Names and Registrar
The domain names at issue are and (the Domain Names).
The registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia, United States of America.
3. Procedural History
This administrative proceeding was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy"), and the ICANN Rules of Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
The Complaint was received on February 15, 2002.
The Response was submitted on March 28, 2002.
Jordan S. Weinstein, Alan L. Limbury and Mark V. B. Partridge (Presiding) were appointed Panelists on May 13, 2002.
4. Factual Background
Complainant Hachette Filipacchi through its division ShowBoats International, publishes a magazine entitled "Charter Fleet International" relating to charter yachts. According to Complainants, the magazine has been in circulation since 1992. The Charter Fleet International Magazine is associated with ShowBoats International Magazine, a publication appearing six times a year in 116 countries. Complainants claim trademark rights in the marks CHARTER FLEET and CHARTER FLEET INTERNATIONAL based on alleged use since 1992.
The only evidence submitted in support of Complainants� claim of trademark rights are pages from a publication entitled "Charter Fleet International: Your Guide to the World's Finest Charter Yachts" which bear a copyright date of 2000, and a claim that "Charter Fleet International is a trademark of Eyeball International, Inc." No claim is made in the publication of trademark rights in "Charter Fleet." See Complainants� Exhibit 5. In other published materials, Complainants use "Charter Fleet" in a merely descriptive or generic sense ("Camper & Nicholson International adds Tajin to its charter fleet.") See Exhibit 6.
Respondents have been engaged in the business of developing and operating web sites relating to yachts since 1996.
On February 12, 1997, Respondents entered into an agreement with Complainants to produce a CD ROM and web site relating to charter yachts. The agreement does not specifically address the domain names at issue.
It appears that the Domain Name was registered by Respondents on February 25, 1997. The web site was launched in February 1998.
During the parties� relationship, Brad Nolan was listed on the masthead of the ShowBoats International Magazine under the heading "New Media." He also had a ShowBoats International business card that identified him as "New Media Director."
On January 9, 2002, Complainants terminated their relationship with Respondents and requested that Respondents return all materials necessary for maintenance of the web site. Respondents did not comply with that request. Instead, Respondents asserted that "Ownership of the domain name 'Charter Fleet' has always been the property of UR There Productions and my staff has maintained administration of the site as directed by your staff members." Respondents also threatened to sell the domain name to others "so we might compensate for the loss of revenue from ShowBoats." Also after receiving the notice of termination from Complainants, Respondents registered the domain name on January 22, 2002.
The parties then engaged in correspondence exploring settlement of this dispute, but those efforts have been unsuccessful. This administrative proceeding follows.
5. Parties� Contentions
A. Complainants
Complainants contend that the Domain Names are confusingly similar to marks in which Complainants have rights; that the Respondents have no right or legitimate interest in the Domain Names; and that the Domain Names were registered and used in bad faith.
B. Respondents
Respondents deny that Complainants have trademark rights in the marks CHARTER FLEET or CHARTER FLEETS INTERNATIONAL. Respondents contend they independently developed the domain name and are its proper owner. Respondents deny that the Domain Names were registered and used in bad faith. Instead, they assert that their relationship with Complainants was a joint venture in which Respondents contributed the domain name , web site and maintenance, while Complainants provided the magazine content. Now that the relationship is concluded, Respondents believe they are entitled to own the Domain Names.
6. Discussion and Findings
Our substantive inquiry focuses on three issues: (1) are the Domain Names confusingly similar to a trademark or service mark in which either of the Complainants has rights; (2) do Respondents have a legitimate interest in the Domain Names; and (3) have the Domain Names been registered and used in bad faith? The Complainants have the burden of proof on each of these issues.
The facts presented lead to a different analysis of each of the domain names at issue, as discussed below.
A. Confusing Similarity
To establish common law rights, Complainants must show use in commerce and distinctiveness. Here, there is no evidence of any use of CHARTER FLEET as a trademark. It is alleged that the domain name was in use, but that on its own is not sufficient to create protectable rights in a descriptive mark. The only other use presented in the record is Complainants' use of the phrase "charter fleet" in a generic or descriptive manner in text. Such use is not sufficient to create rights. Accordingly, we find that Complainants have failed to prove protectable rights in the mark CHARTER FLEET.
The record does indicate, however, that Complainants have used the mark CHARTER FLEET INTERNATIONAL since at least February 1997, when they entered into their web site agreement. In the United States, where both parties are located, a descriptive mark may be presumed to be distinctive and entitled to protection after five years of continuous use. Here, the evidence of protectable rights is extremely thin and consists solely of whatever inferences can be drawn from the single issue of the magazine submitted by Complainants and from Respondents' conduct. Based on at least five years of use and Respondents' conduct after the conclusion of its relationship with Complainants, we find by a slim preponderance of the evidence that Complainants have shown trademark rights in the mark CHARTER FLEET INTERNATIONAL for a yacht publication. Nevertheless, given the descriptive nature of the mark, those rights are extremely weak.
A similar issue was addressed in Amsec Enterprises, L.C. Sharon McCall, WIPO Case No. D2001-0083, (April 3, 2001), concerning the mark AMERICAN BACKGROUND and the domain name . The Panel found no confusing similarity, stating:
"As noted above, AMERICAN BACKGROUND is highly descriptive of Complainant's background services. As such, it is deemed a weak mark and absent proof of fame or widespread recognition, it would be entitled to narrow protection at best. Generally, the scope of rights afforded to weak descriptive mark is limited to protection against identical marks. Here, the Domain Name and alleged trademark are not identical. The only similarity is the word "background", which appears to be generic of the parties' services of providing background searches."
Accordingly, with respect to the first element of Complainants' case, we find that the domain name is not identical or confusingly similar to a mark in which either Complainant has rights. Given the descriptive nature of the mark CHARTER FLEET INTERNATIONAL, the domain name is sufficiently distinguishable from that mark to avoid confusion, and Complainants have failed to prove rights in the mark CHARTER FLEET.
On the other hand, we find that the domain name is identical and confusingly similar to the mark CHARTER FLEET INTERNATIONAL in which Complainants have rights.
B. Legitimate Interest
Respondents contend that they are the rightful owners of the domain name which they contributed to the joint venture with Complainants. In support of this contention, they rely on the fact that they were involved in the yacht business before entering their agreement with Complainants, that the domain name was registered in their name, and that they maintained control of the domain name when the agreement with Complainants ended.
Complainants in contrast assert that the domain name was adopted for the benefit of Complainants as part of the agreement between the parties, and that Respondents lack any rights or legitimate interest in the name after termination of the agreement.
Regrettably, the evidence on this point is inconclusive. The agreement is silent on ownership or registration of the domain name, and Respondents have shown no prior use of the domain name. It seems probable that the agreement between the parties involved a typical web site development agreement in which it was the parties' intent that one of the Complainants would be the owner of the domain name, and not a joint venture arrangement as Respondents suggest.
In similar situations involving contractual disputes, other Panels have found the dispute to be outside the scope of the Policy. In Map Supply v. On-line Colour Graphics, FA0096332 (finding for the Complainant on other grounds), the Panel considered a dispute involving an unpaid web designer. Concluding that the law might recognize some sort of lien against the domain name, the Panel stated in dicta: "On that assumption, this could be a dispute to be decided by traditional means�as it would fall outside the scope of this tribunal" (emphasis added).
That principle was also applied in Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case No. D2001-0823 (August 28, 2001), in a similar dispute arising from web site development services. The Panel stated:
"To decide this issue would require additional evidence and an evaluation of the commercial law of liens. Accordingly, I agree with the Panelist in Map Supply that such a dispute is outside the scope of proceedings under the Policy and is properly decided by traditional means".
Another contractual dispute was also deemed outside the scope of the policy in Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thornton, WIPO Case No. D2000-0006, (February 28, 2000).
Applying those principles here, it appears that the dispute over the domain name involves contractual issues outside the scope of the Policy. However, because of our other conclusions regarding the domain name , it is unnecessary for us to reach a conclusion on this element with respect to that domain name.
The position is different with respect to the domain name . That domain name was not part of the agreement between the parties and was not registered until after the agreement was terminated. It appears from the submissions of Complainants that Respondents have no prior interest in the domain name and have not used the domain name for any bona fide purpose. Respondents have presented no evidence to rebut that conclusion. Respondents only use of the domain name seems to be for the purpose of increasing their leverage in negotiations with Complainants over lost revenue. We do not believe such use gives rise to any cognizable right or interest under the Policy. Therefore, we find that Respondents lack any right or legitimate interest in the domain name .
C. Bad Faith Registration and Use
As a final element of their case, Complainants must show that the domain names at issue were registered and used in bad faith. We find no evidence of bad faith registration by Respondents of the domain name . Rather, it appears that the domain name was registered in good faith pursuant to an agreement between the parties. We do not believe that the termination of the agreement changes the nature of the initial registration. Whether termination of the agreement ends Respondents entitlement to the domain name is a matter of contractual interpretation outside the scope of the Policy. Whether Respondents' subsequent bad faith use of the domain name changes the bona fides of the initial registration or otherwise justifies relief, is an issue we do not need to decide given our finding on the first element of the claim.
Again, our conclusions are different with respect to the domain name . Respondents registered this domain name only after the termination of their agreement with Complainants with full knowledge of Complainants' prior use of the same name as the title of a publication. This registration was made in an attempt to extract concessions from Complainants in Respondents' negotiations after the termination of the agreement. Respondents made use of the domain name by threatening to auction it off to the highest bidder unless Complainants agreed to Respondents' demands. We find this conduct to constitute bad faith registration and use of the domain name.
7. Decision
For the reasons stated above, Complainant's request for transfer of the domain name is denied, but the request for transfer of domain name is granted.
Mark V.B. Partridge
Presiding Panelist
Jordan S. Weinstein
Panelist
Alan L. Limbury
Panelist
Dated: May 30, 2002
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