WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION IM Global LLC v. Intermedia Film Equities, Sterling Davis Case No. D2009-1690 1. The Parties
Complainant is IM Gobal LLC of Beverly Hills, California, United States of America, represented by Weissmann Wolff Bergman Coleman Grodin & Evall LLP, United States of America.
Respondent is Intermedia Film Equities, Sterling Davis of Century City, California United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2009. On December 10, 2009, the Center transmitted by email to R a request for registrar verification in connection with the disputed domain name. On December 16, 2009, R transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on December 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 12, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on January 15, 2010. 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
Complainant alleges common law trademark rights in IM GLOBAL. The sole evidence submitted by Complainant to support its allegation of common law trademark rights is the following statement:
Complainant is a major international sales and distribution company founded in March 2007. The company is one of the most active and high profile film and television sales operations in the worldwide entertainment community and is a prominent presence at the major international film festivals and markets.
Complainant has developed significant goodwill in connection with the mark throughout the world and its website is an important sales tool for its primary business of licensing film rights internationally.
Complainant has not alleged a geographical area in which it claims common law trademark rights, referring to “international film festivals and markets” and “goodwill … throughout the world”.
The Panel on its own initiative visited the website identified by the disputed domain name, which uses the term “IM GLOBAL” as a banner identifier. The home page of the website refers to the organization in approximately the same terms as the Complaint, stating “IM Global is a major international sales and distribution company founded in March 2007 by Chief Executive Officer Stuart Ford, with offices in Los Angeles and London.”
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on April 27, 2007.
Complainant has submitted a copy of a heavily redacted contract dated September 5, 2007, between three entities on one side, including Respondent, and an entity denominated “Ancramdale Inc.”, a New York corporation, which Complainant asserts is its “principal shareholder”, on the other side. A clause from that heavily redacted contract provided by Complainant states:
“IM shall also facilitate the immediate transfer of ownership and control of the website “www.” to Purchaser for no additional consideration and shall take all technical steps necessary to transfer to Purchaser (or its designee) ownership, control and usage of the ‘' email address currently used by IM Global's staff.”
Complainant has submitted its letter to Respondent dated October 26, 2009 in which Complainant indicates that it has been in contact with Respondent, and in which Complainant states that it is disappointed that Respondent has refused to transfer the disputed domain name. Complainant threatens to pursue all legal and equitable remedies available under California law.
There is no evidence on the record of this proceeding of correspondence from Respondent. 5. Parties' Contentions A. Complainant
Complainant alleges common law trademark rights in IM GLOBAL. Complainant argues that the disputed domain name is confusingly similar, if not identical, to its common law trademark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges Respondent was previously “part of the controlling entity which owned Complainant”, that Respondent and two other legal entities separated from Complainant, and that Respondent and those two other entities agreed to assign the disputed domain name to Complainant for no additional consideration. Complainant alleges that Respondent refuses to assign or transfer control of the disputed domain name to Complainant.
Complainant does not allege that Respondent registered the disputed domain name in bad faith. Complainant alleges that Respondent is presently acting in bad faith by refusing to transfer the disputed domain name to Complainant as agreed.
Complainant states that although Respondent has not unilaterally agreed to transfer the disputed domain name as a means to settle this dispute, the Panel may nonetheless elect to direct the Registrar to transfer the disputed domain name “on the basis of Respondents' previous consent without a review and analysis of the facts supporting the claim.”
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Courier delivery records indicate that the express courier was unable to make delivery of the Complaint to Respondent at the physical address provided in the record of registration. There is nothing in the record to suggest that Respondent failed to receive the e-mail messages and attachments transmitted to it by the Center. The Center took those steps set forth in the Policy and Rules for transmitting correspondence to Respondent, and that Respondent was given adequate opportunity to participate in these proceedings.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has alleged common law trademark rights in the term “IM GLOBAL”. Complainant has not indicated a specific jurisdiction in which such trademark rights are alleged to be established. It refers to the “worldwide entertainment community” and the internationally well-known character of its trademark based on participation in international film festivals.
In addition to failing to geographically situate its claimed common law trademark, Complainant did not submit evidence of usage of the trademark or evidence of knowledge of the mark among the relevant public so as to establish secondary meaning, nor did it alternatively provide a legal basis for the establishment of common law trademark rights in some jurisdiction. While the Panel on its own initiative viewed the website addressed by the disputed domain name, this did not provide sufficient evidentiary support for establishment of common law trademark rights, including in light of the lack of a jurisdictional nexus.
Complainant has failed to establish trademark rights in IM GLOBAL. For this reason, it cannot succeed to establish abusive domain name registration and use under the Policy.
This Panel typically does not address elements of the Policy that need not be addressed when a complainant fails to satisfy a predicate element. However, the Panel in this case will briefly address the other elements for the sake of completeness. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a [bona fide] offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant has conceded that Respondent was within its legal rights to register the disputed domain name, being part of a commonly controlled group of enterprises with Complainant. In that regard, registration and use of the disputed domain name by Respondent was for a bona fide offering of services prior to notice of the dispute. In addition, because Respondent was part of the commonly controlled group making use of the disputed domain name, it was commonly known by that name, even if it acquired no service mark rights.
Complainant has provided one clause of a heavily redacted contract in the apparent anticipation that the Panel will act as a civil court and enforce that clause as against Respondent. The Panel is not a civil court and, if it was a civil court, it would not enforce a single clause redacted from a contract as presented by Complainant here.
Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant has conceded that Respondent did not register the disputed domain name in bad faith. There is no evidence in this proceeding to establish that Complainant acquired trademark rights in the terms used in the disputed domain name prior to its registration by Respondent. Respondent could not have acted to abuse Complainant's rights when it registered the disputed domain name. This alone is sufficient to preclude a finding of bad faith in the context of this proceeding.
Complainant alleges a bad faith act comprised of refusal to comply with the terms of a contract, acknowledging that this does not fall within the express criteria of bad faith, but noting that the list of express criteria is non-exhaustive. Complainant has stated that it is “disappointed” that Respondent has not transferred the disputed domain name to it. It further suggests that Respondent has somehow transformed itself into a bad faith “passive holder” of the disputed domain name, even though the disputed domain name is being used in connection with an active website. Complainant has not persuaded the Panel to accept a new category of bad faith acts comprised of disappointing a contract buyer of a domain name registered in good faith, and passively holding while at the same time actively using a disputed domain name.
Complainant's final argument is that the Panel should ignore the requirements of findings under the Policy because a contract entered into prior to the dispute has not been carried out. This would transform the Panel into a civil court, and one that did not find it necessary to consider evidence sufficient to substantiate a claim. It is doubtful that there are many civil courts - in any jurisdiction - that would accept to enforce a single clause from a heavily redacted contract without more.
Complainant has failed to establish that Respondent registered or used the disputed domain name in bad faith. It has thus failed to satisfy any of the elements of the Policy for a finding of abusive domain name registration and use. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Dated: January 24, 2010
Full & Egal Universal Law Academy