WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Classic Media Inc. v. Satoshi Shimoshita
Case No. D2007-0086
1. The Parties
The Complainant is Classic Media Inc. of New York, United States of America, represented by Sonja Keith, internal representative, United States of America.
The Respondent is Satoshi Shimoshita, of Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on January 23, 2007, and in hard copy on January 27, 2007. The Center transmitted its standard request for registrar verification to the Registrar by email on January 25, 2007. The Registrar responded by email the same day, confirming that the Domain Name was registered with it, that the Domain Name had been locked in accordance with the Uniform Domain Name Dispute Resolution Policy (the “Policy”) to prevent transfers or changes during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction of the courts at the location of its principal office; and providing the contact details in respect of the Domain Name on its Whois database.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2007. The notification appears to have been delivered successfully be email and courier to the contact addresses provided on the Registrar’s Whois database. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 19, 2007. The Respondent replied to the Center by email on February 8, 2007, stating that he was not a native English speaker and needed time to read the documents. This email also made some basic points in response to the Complaint. The Respondent did not submit any further response in accordance with paragraph 5 of the Rules by the due date, and the Center notified the Respondent’s default on February 23, 2007.
The Center appointed Jonathan Turner as the sole panelist in this matter on March�8,�2007. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Having reviewed the file, the Panel is satisfied that the Complaint complied with formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Procedural Rulings
The email sent by the Respondent on February 8, 2007, does not comply with many of the requirements for responses laid down in paragraph 5(b) of the Rules, including in particular that in paragraph 5(b)(xiv) for a signed statement certifying that the information in the Response is to the best of the Respondent’s knowledge complete and accurate.
The Panel has nevertheless decided to admit the Respondent’s email as evidence under paragraph 10(d) of the Rules, while treating the absence of the certification required by paragraph 5(b)(xiv) as diminishing its weight. This approach does not prejudice the Complainant and accords with the requirements in paragraph 10(b) of the Rules to treat the parties with equality and afford each a fair opportunity to present its case.
5. Factual Background
The Complainant owns and manages rights relating to family entertainment, including popular characters such as Lassie, The Lone Ranger, Underdog, Casper the Friendly Ghost, Rudolph the Red-Nosed Reindeer, Richie Rich, and Godzilla. The Complainant uses the name “Classic Media” in the form of a logo.
The Respondent registered the Domain Name on October 14, 2001. The Domain Name is used for a website which lists various characters or other material in which the Complainant has rights and appears to provide links to access services and goods relating to this material, although clicking these links only accesses search results produced by the search engine . The website also provides a link enabling the user to make an offer to purchase the Domain Name.
6. Parties’ Contentions
A. Complainant
The Complainant contends that it has acquired a common law trademark in the term “Classic Media” by using it in association with goods or services demonstrated through its business history and market penetration. According to the Complainant, CLASSIC MEDIA is a distinctive mark of the goods and services offered by it and a descriptive mark put on all feature films, television programs, products, advertising, promotions, mailings and other correspondence. The Complainant further points out that it owns and manages some of the world’s most recognizable family entertainment properties. The Complainant alleges that the Domain Name is identical to this mark, and also, in view of the content of the Respondent’s website, confusingly similar to this mark.
The Complainant goes on to say that the Respondent has no rights or legitimate interests in respect of the Domain Name, since it has not used it connection with a bona fide offering of goods or services. Although the Respondent’s website contains links referring to some of the Complainant’s material, the links merely access search results produced by a search engine. According to the Complainant this misleads consumers and tarnishes the trademark. The Complainant points out that this is not a legitimate use giving rise to a legitimate interest within the meaning of the Policy. The Complainant also notes that the Respondent has not been commonly known by the Domain Name.
The Complainant alleges that the Domain Name is being used in bad faith to engage in passing off. According to the Complainant, by listing names of the Complainant’s properties on the Respondent’s website at the Domain Name, the Respondent is misleading consumers and there is a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Respondent’s website or the products and services promoted on it. The Complainant contends that use of the Domain Name to divert internet users to other sites is evidence that the Respondent is profiting from fees paid by advertisers.
Finally, the Complainant maintains that bad faith registration and use are evidenced by the link provided to enable a user to make an offer to purchase the Domain Name. The Complainant submits that since the website is not offering any legitimate goods or services, it can be inferred that the Respondent chose the Domain Name because of the fame of the mark primarily for the purpose of selling, renting or otherwise transferring the registration to the owner of the trademark or a competitor for valuable consideration in excess of its out-of-pocket costs directly related to the Domain Name.
The Complainant requests a decision that the Domain Name be transferred to it.
B. Respondent
The Respondent states that he intends to use the Domain Name in his future business, that he does not know the Complainant, that it is a generic word combination, and that he does not have bad faith for any person.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove on the balance of probabilities (A) that the Domain Name is identical or confusingly similar to a mark in which it has rights, (B) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (C) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.
In accordance with paragraph 15(a) of the Rules, the Panel must decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar to Mark in which Complainant has Rights
The Complainant does not claim to have any registered rights in the mark CLASSIC MEDIA. It is well established that under the Policy a complainant may rely on rights in unregistered marks, and that in this respect the Policy must be interpreted and applied having regard to the global nature of the internet. However, such rights cannot exist in the abstract; they can only exist under a particular legal system or systems if the relevant conditions for recognizing them are satisfied: see Vertical Computer Systems, Inc. v. Registrant of “”, WIPO Case No. D2001-0006. Furthermore, under paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of any rules and principles of law that it deems applicable.
The Complainant has not provided any evidence as to the geographical ambit of its activities, reputation or goodwill which might give rise to a common law right in the name “Classic Media” under an applicable system of law. In the absence of any evidence of commercial reach outside of New York, where the Complainant is based, the Panel considers that it is appropriate to assess the position under the laws applicable in New York, i.e. the federal law of the United States of America and the state law of New York.
Under these laws a person cannot acquire rights in a mark which is generic and can only acquire rights in a mark which is descriptive by showing secondary meaning: see, for example, Park n’ Fly v. Dollar Park & Fly 469 US 189 (1985), Two Pesos v. Taco Cabana 505 US 763 (1992). The Panel considers that “Classic Media” is descriptive, since it refers to communicated material such as films, television programs or publications which have remained popular over the years.
The Complainant has provided no evidence of the extent, nature or effects of its use of the name “Classic Media”, other than that it is used in the form of an exhibited logo. There is no indication in the Complaint or its annexes of when the Complainant started using the name, or its turnover under the name, or its expenditure on promoting the name, let alone any exhibited examples of products or promotional material bearing the name. There is no evidence that the name has acquired a distinctive character denoting the Complainant in the mind of the public in the New York or elsewhere, beyond generalized and unsubstantiated assertions. These assertions are disputed by the Respondent’s similarly general statement that the name is a generic word combination.
In these circumstances, the Panel is not satisfied on the balance of probabilities on the basis of the statements and documents submitted that “Classic Media” has acquired a secondary meaning denoting the Complainant. Accordingly, the Panel concludes that the Complainant has not established in this proceeding that it has rights in the mark “Classic Media” as required to satisfy the first element of the Policy.
The Complaint therefore fails. In the light of this finding, it is unnecessary to consider the other requirements of the Policy, but the Panel will briefly state its conclusions for the assistance of the parties.
B. Rights or Legitimate Interests
The Panel is satisfied that the Respondent does not have any rights or legitimate interests in the Domain Name. Although the Complainant has not exhibited any prints of the website to which the Domain Name is directed, the Panel is able to conclude that the Respondent’s use of the Domain Name described in the Complaint and verified by the Panel’s own examination is not in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use of the Domain Name. Nor is the Respondent commonly known by the Domain Name or a corresponding name.
The Respondent states that he intends to use the Domain Name in his future business, which corroborates the Complainant’s evidence that he has not used it for a bona fide offering of goods or services to date.
In all the circumstances, the Panel considers that the second requirement of the Policy has been sufficiently demonstrated.
C. Registered and Used in Bad Faith
The two parts of third requirement of the Policy are cumulative conditions: the Complainant must show that the Domain Name both was registered and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed in many decisions under it, e.g. Telstra�Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Teradyne, Inc. Teradyne, Inc. v. 4Tel Technology, Substance Abuse Management, WIPO Case No. D2000-0026, and Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782.
As described in the Complaint and verified by the Panel’s own examination, the website to which the Domain Name is directed contains links referring to characters in which the Complainant has rights according to the Complainant’s evidence (which is exiguous but not challenged on this point). It is reasonable to infer from the common practice on the internet that they are sponsored links whereby the Respondent derives click-through commissions. Accordingly, it can be concluded that the Respondent is currently using the Domain Name to attract internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant.
However, the Panel is not satisfied on the evidence that the Respondent’s intention to attract users in this way goes back to 2001, when the domain name was initially registered. There is no evidence as to the nature and scale of the Complainant’s activity at that time and thus whether the Respondent should have known of its existence. The Domain Name is not of such a nature that it might be expected to be the distinctive mark of a company, in contrast to the position in Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381.
The Complainant contends that evidence of bad faith registration is provided by the Respondent’s offering of the Domain Name for sale. Paragraph 4(b)(i) of the Policy provides that circumstances indicating that the Respondent registered or acquired the Domain Name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant at a profit shall be evidence of bad faith registration and use.
However, firstly the Respondent’s website merely provides a link enabling internet users to offer to purchase the Domain Name. There is no evidence that the Respondent has actually offered it for sale, still less at an elevated price to the Complainant or a competitor of the Complainant.
Secondly, it cannot be assumed that any willingness of the Respondent now to sell the Domain Name reflects its original intent in registering it, at any rate where the registration took place some six years ago and the Domain Name is descriptive and the Respondent may have had no reason to suppose that it might be the mark of a company.
As observed in Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782, “if a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”.
Furthermore, as noted in Vertical Computer Systems, Inc. v. Registrant of “”, WIPO Case No. D2001-0006, “the reference to registration or acquisition primarily for the purpose of sale is limited to sale to the Complainant or a competitor of the Complainant. The Policy appears to assume that profiting from trade in descriptive names is not in itself to be regarded as bad faith.”
In all the circumstances the Panel concludes that the third requirement of the Policy has not been established on the balance of probabilities on the basis of the statements and documents submitted in this proceeding. In accordance with paragraph 4(k) of the Policy, this conclusion does not prevent the parties submitting the dispute to a court of competent jurisdiction and deploying more substantial evidence in support of their contentions therein.
8. Decision
For all the foregoing reasons, the Complaint is denied
Jonathan Turner
Sole Panelist
Dated: March 22, 2007
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