WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hollywood Media Corp. v. Fu He
Case No. DBIZ2002-00192
1. The Parties
In this proceeding, Complainant is Hollywood Media Corp., a corporation with a principal place of business at 2255 Glades Road, Suite 237W, Boca Raton, Florida 33431, United States of America. Complainant is represented in this proceeding by Lorin Fine, Weil, Gotshal & Manges LLP, 767 Fifth Avenue, New York, New York 10153, United States of America.
Respondent is Fu He, whose address is 2000 Walnut Avenue no.H208, Fremont, California 94538, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <hollywood.biz>.
The registrar for the disputed domain name is Catalog.com, 6406 International Parkway, Suite 2200, Plano, Texas 75093, United States of America.
3. Procedural History
This Complaint will proceed under the provisions of the Start-up Trademark Opposition Policy for .BIZ (STOP) adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules), and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the Center, the Supplemental STOP Rules).
The Complaint was filed on April 27, 2002, by e-mail, and on May 6, 2002, in hard copy.
On June 4, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began.
Having received no response from Respondent, the Center sent Respondent a Notification of Respondent Default by e-mail on June 26, 2002.
The Administrative Panel submitted a Declaration of Impartiality and Independence on July 15, 2002, and the Center proceeded to appoint the Panel on July 17, 2002. The Panel finds the Center has adhered to STOP, the STOP Rules and the Supplemental STOP Rules in administering this Case.
The due date of this Decision is July 31, 2002.
4. Factual Background
Complainant is a United States company which provides entertainment information through its web site located at the domain name <hollywood.com>. Complainant owns a United States Supplemental Registry registration of the mark "Hollywood.com".
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on March 27, 2002.
5. The Partiesí Contentions (Summarized)
- Complainant is an American company which has provided entertainment information and services including movie trailers, showtime listings, movie soundtracks, entertainment industry news, etc., to internet users since January 31, 1995.
- Complainant registered the domain name <hollywood.com> on January 6, 1994. Complainant's web site at that domain name is used to deliver some of the information and services referred to above. The site is one of the leading movie-related sites on the internet, with approximately one billion user impressions per year.
- Complainant owns a United States registered trademark for the mark, "Hollywood.com", and has applied for several other United States registrations of that mark.
- The disputed domain name bears the identical trademark "Hollywood" contained in Complainant's registered domain name. This will lead to customer confusion.
- Respondent has no rights or legitimate interests in respect of the domain name.
- The disputed domain name was registered or is being used in bad faith. Due to the renown of Complainant's similar domain name, Respondent is well aware of it and seeks to illegally divert Complainant's customers to the disputed domain name.
- Respondent did not file a response to the Complaint.
--The record supplied to the Panel indicates that the Center forwarded a copy of the Complaint to Respondent by hard copy and e-mail and sent Respondent a Notification of Respondent Default by e-mail. As a result of the foregoing timely notifications, the Panel believes that Respondent's right to due process in connection with these proceedings has been satisfied.
6. Discussion and Findings
For Complainant to prevail and obtain a transfer of the disputed domain name, <hollywood.biz>, it is required that Complainant prove the following (STOP, ∂ 4(a)(i-iii):
- the domain name is identical to a trademark or service mark in which Complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered or is being used in bad faith.
Complainant has supplied the Panel with valid evidence that Complainant owns the registration of the trademark "Hollywood.com" in the United States (U.S. Supplemental Registration No. 2384272, dated September 5, 2000, for preparation and dissemination of advertising for others via a global computer network).
The disputed domain name, <hollywood.biz>, is very similar to Complainantís trademark, substituting the gTLD, ".biz", for the ending ".com". Because all disputes considered pursuant to STOP involve a domain name containing the gTLD, ".biz", STOP Panels have uniformly disregarded its inclusion in the consideration of identity between trade or services marks and disputed domain names.
However, STOP permits the transfer of a domain name not because it is "confusingly similar" to a valid trademark but because it is identical to that trademark. Previous STOP panels in ascertaining identity have ignored the absence of punctuation marks like the period preceding "com" in the instant case, but have held that if alphanumeric symbols, such as "com", are added to or deleted from the trade or service mark at issue a finding of identity is not permitted under STOP (see Commonwealth Bank v. Rauch, Nat. Arb. Forum FA 102729 [Feb. 23, 2002] [finding that the Complainant failed to establish rights in <cominvest.biz> pursuant to STOP, paragraph 4(a)(i), because its "COMMINVEST" mark was not identical to "cominvest" or <cominvest.biz>]). Thus, whereas the disputed domain name may be considered identical to the word "Hollywood", it cannot be considered identical to the trademark "Hollywood.com".
At this point, since many prior panels ruling under STOP have found that a complainant may establish rights in a mark at common law, the Panel finds it fair to consider whether Complainant's use of its registered domain name has created for Complainant common law rights in the unregistered trademark "Hollywood". Such a consideration requires that the Panel analyze the specific facts and record in this case.
The facts to be considered by the Panel are dominated by the reality that the location, "Hollywood", is one of the most famous in the world. In fact, that name has transcended the relatively small area it encompasses to become synonymous with an entire industry - the motion picture industry. Complainant's services under the mark "Hollywood.com" relate directly to that industry. However, Complainant did not create the identity between name and goods. That identity came into existence more that a half century before Complainant opened up shop using that name. Complainant merely capitalized on a pre-existing connection between a location name and a line of products. As such, while it may be commendable that Complainant has established a substantial business through exploitation of that unity, the Panel does not believe Complainant can use trademark claims to prevent other equally plucky entrepreneurs from doing the same.
Ultimately, the Panel finds it quite clear that Complainant and/or its services are not nearly the first image that comes to mind for people anywhere in the world when they see or hear the name "Hollywood." Accordingly, the Panel must conclude that Complainant has failed to establish common law trademark rights in that name.
Thus, the Panel finds that Complainant, in failing to show that the disputed domain name is identical to a trademark or service mark in which it has rights, has not carried its burden of proof as required under STOP, ∂ 4(a)(i),.
To obtain a transfer of the disputed domain name, Complainant must meet its burden under each portion of STOP, ∂ 4(a). Consequently, the Panel finds it unnecessary to consider whether (1) Respondent has rights or legitimate interests in the disputed domain name (∂ 4[a][ii]), or (2) Respondent registered or is using the disputed domain name in bad faith (∂ 4[a][iii]).
The Panel has found that Complainant failed to carry its burden of proof to show that the disputed domain name, <hollywood.biz>, is identical to a trademark or service mark in which Complainant has rights as required under STOP, ∂ 4(a)(i). As a result and in accordance with STOP, ∂ 4(i), and STOP Rule 15, the Panel orders that the disputed domain name, <hollywood.biz>, remain registered to Respondent, Fu He.
Since the Panel did not consider whether Respondent has rights or legitimate interests in the disputed domain name, <hollywood.biz>, further complaints regarding that domain name may be allowed under STOP Rule 15(e).
Dennis A. Foster
Dated: July 31, 2002