WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hollywood Foreign Press Association v. F.M.I. Case No. D2008-1610 1. The Parties
The Complainant is Hollywood Foreign Press Association of West Hollywood, California, United States of America, represented by Loeb & Loeb, LLP, United States of America.
The Respondent is F.M.I. of Scarborough, Canada. 2. The Domain Names and Registrar
The disputed domain names, and (the “Domain Names”), are registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2008. On October 23, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 October 31, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 21, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 4, 2008. The Panel finds that it was properly constituted. 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. 4. Factual Background
The Complainant's Golden Globe Award Ceremony is world famous. The unchallenged evidence of the Complainant is that it is this year celebrating its 65th Anniversary and the Panel accepts this as fact.
The Domain Names were registered on January 20, 1998.
The Complainant is the registered proprietor of three US trade mark registrations for the words, GOLDEN GLOBE, covering inter alia services associated with its award ceremony. The earliest of the Complainant's registered rights date back to 2000.
The Complainant's representative wrote to the Respondent on October 8, 2007 drawing the Respondent's attention to the Complainant's rights in respect of the trade mark, GOLDEN GLOBE, and seeking transfer of the Domain Names. The Complainant received no reply and sent a “chaser” on October 22, 2007. Again, the Complainant received no reply. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to the Complainant's registered trade mark, GOLDEN GLOBE, in respect of which it also claims unregistered rights.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant recites the examples of what shall constitute rights or legitimate interests for this purpose as set out in paragraph 4(c) of the Policy and contends that none of them is applicable.
Finally, the Complainant contends that the Domain Names were registered and are being used in bad faith. The Complainant asserts that the fact that the registrations prevent the Complainant from registering them is itself evidence of bad faith use. Additionally, the Complainant points to the fact that the Administrative Contact for the Domain Names is identified as FOR SALE (or rather SALE, FOR), which the Complainant contends is indicative of the fact that the Respondent registered the Domain Name with a view to selling it at a profit. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith. B. Identical or Confusingly Similar
The Domain Names feature the Complainant's registered trade mark, GOLDEN GLOBE; in the case of one of them in identical form and in the case of the other in the plural form (i.e. with the addition of the letter “ s”).
The Complainant's registered rights (2000/2001) post-date the registration of the Domain Names (1998), but it is well-established that for the purposes of this head of the Policy, the date of the Complainant's trade mark rights are not relevant. For the purposes of paragraph 4(a)(i) of the Policy the Complainant simply has to establish the existence of relevant rights as at the date of filing of the Complaint.
The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant contends that the Respondent registered the Domain Names knowing of the existence of the Complainant's trade mark, GOLDEN GLOBE, and with a view to exploiting the Complainant's trade mark rights, a primary claim being that the Respondent registered the Domain Names with a view to selling them at a profit. If the Complainant's allegations are made out, such a registration could not conceivably give rise to rights or legitimate interests in respect of the Domain Names.
The Complainant contends that in addition to its registered trade mark rights it is the proprietor of unregistered trade mark rights in respect of the GOLDEN GLOBE mark, which predate registration of the Domain Names. In support of that contention it has produced evidence to show that since its foundation over 60 years ago it has developed a substantial reputation and goodwill under and by reference to the GOLDEN GLOBE mark. None of the evidence has been challenged by the Respondent.
The Panel is satisfied that by the date of registration of the Domain Names in January 1998, the Complainant's GOLDEN GLOBE name and mark was internationally very well-known in the context of both the annual Golden Globe Awards ceremonies and the significant charitable endeavour of the Complainant conducted on the back of the success of those ceremonies.
The Panel accepts the Complainant's unchallenged contention that it is inconceivable that the Respondent was unaware of the Complainant's mark, GOLDEN GLOBE, when the Domain Names were registered.
The Complainant has undertaken various enquiries and has found no basis upon which the Respondent could be said to have rights or legitimate interests in respect of the Domain Names. The Domain Names do not appear to be in use. They are not connected to a website. Moreover, the Respondent's name has no obvious connection with the Domain Names and the Complainant has granted the Respondent no licence in respect of the GOLDEN GLOBE trade mark.
The Complainant has made out a prima facie case under this head, a case calling for an answer from the Respondent. The Respondent has not responded to the Complaint; nor did the Respondent respond to letters from the Complainant's representative.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. D. Registered and Used in Bad Faith
As noted above, the Complainant contends that the Respondent registered the Domain Names with the intention of selling them at a profit. The Complainant points out that the Registrar's Whois database identifies the Administrative Contact as ‘SALE, FOR' (i.e. FOR SALE).
The Panel believes that the Complainant's contention is a reasonable assumption and, again, it is noteworthy that the Respondent has not challenged the allegation. Indeed, the Panel can think of no other reason why anyone would want to so label an administrative contact for a domain name. Evidently, the Respondent had no active use planned for the Domain Names, they having remained unused for over 10 years, and the Panel accepts that, at date of registration of the Domain Names, their sale was the Respondent's objective.
The Panel also accepts that if one is acquiring a domain name for the purpose of onward sale, it would only be in exceptional circumstances that one would not seek to make a profit on the sale. The Respondent will also have known that the only entity likely to be able to make lawful use of the Domain Names in any meaningful sense would be the Complainant.
Registration of a domain name with knowledge that it reproduces the complainant's trade mark and with a view to profiting from the sale of it to the complainant is bad faith registration and use within the meaning of paragraph 4(b)(i) of the Policy. The fact that the Respondent has made no approach to the Complainant does not help the Respondent. Commonly, cybersquatters will simply sit on their portfolios of domain names until an approach is made by the would-be purchaser. In this case the approach was a lawyers' letter, which might well have deterred a money demand.
In the absence of an alternative explanation, the Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, and be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: December 12, 2008
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