WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intermedia Film Equities USA Inc. and AGV Productions, Inc. v. Varietydomains.com
Case No. D2004-0065
1. The Parties
The Complainants are Intermedia Film Equities USA Inc., Beverly Hills, California, United States of America; and AGV Productions, Inc., Santa Monica, California, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Varietydomains.com, Los Angeles, California, United States of America, represented by Law Offices of Donald M. Gindy, United States of America.
2. The Domain Name and Registrar
The disputed domain name <terminator4.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2004. On January 26, 2004, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 3, 2004, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 February 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2004. The Response was filed with the Center on March 16, 2004.
The Center appointed Paul C. Van Slyke as the sole panelist in this matter on March 29, 2004. 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.
The Complainants sought leave to file a Supplemental Filing in order to clarify the issues of their standing to bring their Complaint and of whether the Respondent had previously admitted that the disputed domain name was confusingly similar to the trademark TERMINATOR. In its Order of April 14, 2004, the Panel granted the Complainants leave to file a Supplemental Filing limited to the single issue of the Complainants’ standing, and requested “a summary of each document and transaction in the chain of title, and a chart showing the transfer of title and [Complainants’] authority to initiate the administrative proceeding.” On April 21, 2004, the Complainants filed their Supplemental Filing, which included a Supplemental Declaration of Erick Feitshans, general counsel for Complainant AGV Productions, Inc. (Supplemental Declaration of Feitshans, paragraph 1.) The Supplemental Filing simply restated the Complainants’ position as asserted in the Complaint. The Supplemental Filing failed to adequately address the issue of the Complainants’ interest in the trademark, and failed to clarify sufficiently the relationship between the Complainants and the owner of the trademark registration.
Hoping to resolve these issues, the Panel issued Procedural Order No. 2, on May 27, 2004. Procedural Order No. 2 again sought clarification regarding the Complainants’ standing, and the relationship between the Complainants and the owner of record of the trademark registration. In response to Procedural Order No. 2, the Complainants submitted a Declaration of Robert Chamberlain, a representative of the company StudioCanal (US). Mr. Chamberlain stated that StudioCanal (US) is the “authorized US representative of StudioCanal SA,” which is the parent company of Canal+ DA. (Declaration of Chamberlain, paragraph 2.) Mr. Chamberlain stated that StudioCanal “hereby authorizes and endorses the transfer of the domain name <terminator4.com> to the Complainants as non-exclusive licensees.” (Id. at paragraph 5.) It is uncertain whether StudioCanal SA is the same entity as StudioCanal Image S.A., the current owner of record of the trademark registration. Even assuming that StudioCanal SA is the same as StudioCanal Image S.A., it remains unclear what authority StudioCanal (US) has as the “authorized US representative” of StudioCanal SA.
In a final attempt to clarify the issue of the Complainants’ standing and rights in the trademark, the Panel issued Procedural Order No. 3, on June 17, 2004. In response to Procedural Order No. 3, the Complainants submitted a Declaration of their attorney, Charles Menzies. Mr. Menzies again reiterated the Complainants’ position as stated in the Complaint. Mr. Menzies also stated that the trademark owner, StudioCanal Image, S.A., was presently unable to join the Complaint because an indemnity agreement had not yet been “formalized” between it and the Complainants. (Declaration of Menzies, paragraph 4.)
The Panel has considered all of the parties’ Supplemental Filings, along with the Complaint and the Response, in reaching its decision.
4. Factual Background
The Complainants are production companies involved with the production of motion pictures in the popular Terminator motion picture franchise. Specifically, the Complainants hold an option to produce Terminator 4, which is planned as a sequel to the motion picture Terminator 3. In connection with their activities related to the Terminator motion pictures, the Complainants possess certain rights in United States Registration No. 2,249,579 for the trademark TERMINATOR (“the TERMINATOR mark”). The TERMINATOR mark is currently assigned to StudioCanal Image S.A., a French corporation that is not a party to this proceeding. The extent of the trademark rights owned by the Complainants is disputed among the parties, and will be discussed in a later section of this Decision.
The Respondent registered the domain name <terminator4.com> on November 12, 1999. Upon discovering that the Respondent had registered the Domain Name, the Complainants made “a pretextual bid of $60,000,000” for the Domain Name. (Complaint, p.8.) A negotiation period followed, during which the Complainants and Respondent traded various offers and counteroffers. During this period, the Respondent’s asserted purchase price for the Domain Name increased from an initial figure of $3,200 to a final figure of $50,000. (Response, paragraph 3(c)(iv).) These negotiations were ultimately unsuccessful.
5. Parties’ Contentions
Complainant AGV claims to own an exclusive license in the TERMINATOR mark. AGV contends that the original trademark owner, Canal + D.A., first conveyed this exclusive license to Carolco Pictures Inc. in April 1996. AGV claims to have obtained this license from Carolco Pictures, Inc., through a purchase in bankruptcy of Carolco’s assets. Complainant Intermedia claims to have acquired from AGV an option to produce a fourth film in the Terminator motion pictures series. Intermedia claims that this fourth film will be called Terminator 4.
Complainants contend that the Domain Name is identical to the TERMINATOR mark, except for the number 4 that appears at the end of the domain name. Complainants claim that the TERMINATOR mark is a famous, strong mark, entitled to a broad range of protection. Complainants further assert that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. According to the Complainants, the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services, has not been commonly known by the name “Terminator4”, and has not made any noncommercial or fair use of the Domain Name during the time the Respondent has owned the Domain Name. The Complainants base the allegation of bad faith primarily on the fact that the Respondent ultimately refused to sell the Domain Name for any price less than $50,000.
The Complainants request that the Domain Name be transferred to Intermedia, the holder of the option to produce Terminator 4. In the alternative, the Complainants request that the Domain Name be transferred to AGV, allegedly the owner of the exclusive right to exploit the TERMINATOR mark.
The Respondent contends that the Domain Name is neither identical, nor confusingly similar, to the TERMINATOR mark. Furthermore, the Respondent asserts that the TERMINATOR mark is a weak mark, which has been diluted due to extensive third party use of similar marks on a wide variety of goods and services.
The Respondent also asserts that AGV possesses only a non-exclusive license to use the TERMINATOR mark. As a result, the Respondent contends that the Complainants lack standing to bring this claim.
Finally, the Respondent contends that it does possess a legitimate interest in the Domain Name. Namely, the Respondent asserts that its principal, Mr. Andrew Dorrani, intended to start a business in credit repair. The Domain Name was to be used in association with this credit repair business. The Panel takes notice that the Domain Name currently resolves to a web page that includes the slogan “Terminate all your debts 4 life and 4 ever.”
Accordingly, the Respondent seeks to retain ownership of the Domain Name.
6. Discussion and Findings
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 the 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.
The Panel finds that the Complainants have failed to prove that they possess rights in the TERMINATOR mark sufficient to warrant relief. Specifically, the Panel finds that AGV does not possess an exclusive license in the TERMINATOR mark, but possesses merely a non-exclusive license. This finding renders moot the questions of whether the TERMINATOR mark and the Domain Name are identical or confusingly similar, whether the Respondent has a legitimate interest in the Domain Name, and whether the Domain Name was registered or is being used in bad faith. Therefore, these questions were not considered by the Panel, and are not addressed in the remainder of the Decision.
The Panel has been able to locate only one WIPO decision in which the complainant was a non-exclusive licensee unrelated to the trademark owner. See NBA Props., Inc. v. Adirondack Software Corp., WIPO Case No. D2000-1211 (December 8, 2000) (refusing to transfer the domain name <knicks.com> to a licensing and merchandising agent for the National Basketball Association and its member teams, including the New York Knicks). In reaching its decision that the non-exclusive licensee complainant lacked standing to bring the complaint, the NBA Properties Panel reasoned that the Policy envisioned “a transfer of a disputed domain name to a complainant/trademark owner as a route to unification of control over the uses of the domain name and the trademark.” Transferring a domain name to an entity other than the trademark owner (or an entity with equivalent rights, such as an exclusive licensee or a parent or subsidiary company), would, therefore, be inconsistent with the goals of the Policy.
Other WIPO decisions are distinguishable from the present situation because they involve related corporate entities and/or exclusive licensees. A typical decision is Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., WIPO Case No. D2003-0624 (October 16, 2003). The Toyota complainant held a non-exclusive license to use the trademark LEXUS, which was owned by the complainant’s corporate parent, Toyota Motor Corporation. Because of this close relationship between the complainant and the trademark owner, the Toyota Panel held that the complainant had sufficient standing to bring the proceeding.
A similar situation existed in Grupo Televisa, S.A. v. Party Night Inc., WIPO Case No. D2003-0796 (December 2, 2003). The four complainants in Grupo Televisa were an international group of companies including the entity that headed the group and three wholly owned subsidiaries of the head entity. The trademarks relied upon were owned by the subsidiary companies, not the head entity. As in the Toyota decision, the Panel found that the head entity had sufficient standing to remain a party to the proceeding, because it was so closely related to the entities that actually owned the trademark registrations.
In Telcel, C.A. v. jerm, WIPO Case No. D2002-0309 (June 5, 2002), the complainant was a non-exclusive licensee of the second word in a two-word domain name, but was the sole owner of a trademark registration covering the first, dominant word in the domain name. The domain name at issue in Telcel was <telcelbellsouth.com>. The complainant owned nearly thirty trademark registrations for the mark TELCEL, alone and in combination with other words, phrases, or numerals. In addition, the complainant was the exclusive Venezuelan licensee of the mark BELLSOUTH, and identified itself as TELCEL BELLSOUTH in Venezuela. The Panel decided that the complainant had standing to bring the complaint even without joining the owner of the BELLSOUTH mark, because of its status as an exclusive licensee of the BELLSOUTH mark, and because the domain name was confusingly similar to the TELCEL mark owned by the complainant.
Another noteworthy WIPO decision involved a complainant who was neither a trademark owner nor a licensee, but whose trademark rights derived from actual use in commerce of a mark identical to the domain name. See Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993 (October 18, 2000). The complainant had been doing business for fifteen years under the corporate name Smart Design. As a result of this longtime use of the mark, the Panel held that the complainant had sufficient common law trademark rights to bring a proceeding relating to the domain name <smartdesign.com>, although the Panel recognized that other Panels had held differently in similar circumstances.
The instant action is unlike any of the discussed decisions, because the Complainants here are not related entities to the trademark owner, are not the owners or exclusive licensees of any registered trademark that is confusingly similar to the domain name, and do not have common law rights to any mark that is confusingly similar to the domain name. The trademark owner, StudioCanal Image S.A., is a French company that is apparently unrelated to either Complainant. The Complainants are the exclusive licensees of the marks TERMINATRIX, T-X, and T3, but the Complainants have not asserted these marks in this proceeding, and none of these marks appears to be confusingly similar to the domain name <terminator4.com>.
Transferring a domain name to a non-exclusive licensee unrelated to the trademark owner would also be inconsistent with United States trademark law. The laws of the United States are relevant to this proceeding, because both the Complainants and the Respondent are citizens of the United States. Under United States trademark law, a trademark licensee generally has the right to sue for registered trademark infringement without joining the trademark owner only when it possesses an exclusive license, or other rights analogous to full ownership rights in the trademark. See Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154, 159-160 (1st Cir. 1977).
The Quabaug court held that licensee Quabaug did not have standing to sue for registered trademark infringement in its own name, even though it was the sole licensee of the mark in the United States, because the trademark owner retained the right to import goods bearing the mark into U.S. markets. When the license is non-exclusive, the trademark owner is an indispensable party; and the licensee has no standing to bring an infringement action on its own. See Association of Coop. Members v. Farmland Indus., 684 F.2d 1134 (5th Cir. 1982). Indeed, some United States courts have held that even an exclusive distributor does not have standing to sue for trademark infringement unless the trademark owner is joined as a party to the suit. See DEP Corp. v. Interstate Cigar Co., 622 F.2d 621 (2nd Cir. 1980).
The Quabaug court, however, held that a non-exclusive licensee of a trademark has the right to sue without joining the trademark owner for a claim analogous to infringement for “false designation of origin” or “false description” under 35 U.S.C. § 1125(a) even though the claim is not based on a registered trademark. (“[O]ne need not be the owner of a federally registered trademark to have standing in a federal court” under § 1125(a).) Quabaug at 160.
To support their claim of exclusive rights in the TERMINATOR mark, Complainants have provided the Panel with copies of the Trademark License Agreement between Canal + D.A. and Carolco Pictures Inc. dated April, 1996 (“License Agreement”) and the Amendment Agreement between StudioCanal Image, S.A. and AGV Productions dated April, 2003 (“Amendment Agreement”). These two Agreements, however, do not support the Complainants’ claim. Rather, the Agreements indicate that the Complainants possess merely a non-exclusive license. The License Agreement states, in pertinent part, as follows:
“2. Grant of Rights.
2.1. Subject to the terms and provisions of this Agreement, Licensor [Canal + D.A.] hereby grants to Licensee [Carolco Pictures Inc.], in perpetuity, a non-exclusive license to use (i) the title of each Picture to the extent acquired by Licensor from the parties to the Sale Agreement, (ii) all trademarks, trademark rights, service marks, service mark rights contained in or otherwise related to each Picture to the extent acquired by Licensor from the parties to the Sale Agreement, and (iii) any and all logos or other indicia related to such trademarks and service marks to the extent acquired by Licensor from the parties to the Sale Agreement in each of the Carolco Pictures and the Additional Pictures as set forth on Schedule A hereto, including without limitation, the applications and registrations listed thereon (collectively, the ‘Property’), in connection with the production and exploitation of the Remake and Sequel Pictures (including in connection with advertising, publicizing or otherwise exploiting the Remake and Sequel Pictures in any medium), and the exploitation of all rights ancillary to the Remake and Sequel Pictures, including, without limitation, all merchandising, music publishing and soundtrack recording rights. The rights granted to Licensee pursuant to this paragraph are referred to herein as the ‘Licensed Rights.’“”
Likewise, the Amendment Agreement also indicates that AGV is merely a non-exclusive licensee of the TERMINATOR mark. The Amendment Agreement states, in pertinent parts, as follows:
“WHEREAS, the Licensor (successor in interest to Canal + D.A.) entered into a Trademark License Agreement dated as of April 29, 1996 with Carolco Pictures Inc. and its successors and assigns (‘Licensee’) pertaining to the grant by Licensor to Licensee in perpetuity of a non-exclusive license to use the titles of certain motion pictures, all trademarks, trademark rights, service marks, service mark rights contained in or otherwise related to each such motion pictures and all logos or other indicia related to such trademarks and service marks in connection with the production and exploitation of certain remake and sequel pictures, all as set forth in that certain Trademark License Agreement (the ‘Trademark License Agreement’)”
“1. The term ‘Licensed Rights’ as set forth in the Trademark License Agreement is hereby amended to include the marks TERMINATRIX, T-X and T3 and any and all logos or other indicia related to such trademark and service mark as used, applied for and as registered anywhere in the world at any time and from time to time effective from and after April 29, 1996 except that the license with respect to TERMINATRIX, T3 and T-X shall be exclusive.”
The Panel finds that the License Agreement conveyed from Canal + D.A. to Carolco a non-exclusive license in the TERMINATOR mark. Complainant AGV subsequently acquired these trademark rights from Carolco by way of purchase of rights in bankruptcy. After AGV acquired these trademark rights from Carolco, AGV and StudioCanal Image (successor in interest to Canal + D.A.) executed the Amendment Agreement. Notably, the Amendment Agreement characterized AGV’s rights in the TERMINATOR mark as “a non-exclusive license.”
The Amendment Agreement did not alter AGV’s rights in the TERMINATOR mark, but did grant AGV an exclusive license with respect to the related marks TERMINATRIX, T3, and T-X. The Complainants have not asserted any of these three marks in this proceeding, and the Panel does not consider these three marks to be relevant here. The Panel notes that it is doubtful whether the domain name <terminator4.com> could be considered identical or confusingly similar to any of these three marks.
The Panel finds that the License Agreement together with the Amendment Agreement show that the Complainants possess a non-exclusive license in the TERMINATOR mark. This finding is consistent with the License Agreement, the Amendment Agreement, and the Declaration of Robert Chamberlain, the representative of StudioCanal (US), a U.S. company that is apparently related to the trademark owner. Mr. Chamberlain states that StudioCanal “hereby authorizes and endorses the transfer of the domain name ‘Terminator4.com’ to the Complainants as non-exclusive licensees.” (Declaration of Chamberlain, paragraph 5, emphasis added.)
This Panel agrees with the reasoning of the Panel in NBA, supra, that the Policy envisioned “a unification of control over the domain name and trademark.” This Panel finds that transferring a domain name to an entity other than the trademark owner (or an entity with equivalent rights, such as an exclusive licensee or a parent or subsidiary company) would be inconsistent with the goals of the Policy. Since the Complainants have only a non-exclusive license in the mark TERMINATOR, neither of them has the power or authority for unification of control over the domain name <terminator4.com> and the trademark TERMINATOR.
Therefore, the Panel finds that the Complainants do not have sufficient rights in the relied upon TERMINATOR mark to have standing to obtain relief in this proceeding under the Policy.
The Panel must remark that it is disturbed by the Complainants’ consistent mischaracterization and twisting of the facts regarding the extent of their rights in the TERMINATOR mark. The Complainants repeatedly make the material misstatement that the Complainants possess “exclusive” rights in the mark:
- “This Complaint is based upon the Service Mark TERMINATOR … in which Complainant AGV Productions own [sic] an exclusive license.” (Complaint, p. 5.)
- “Complainant AGV Productions acquired the exclusive right to use the name and mark TERMINATOR, and derivatives thereof…” (Complaint, p. 5.)
- “[I]f for any reason the Administrative Panel determines that the domain name cannot be transferred to Complainant Intermedia, then Complainants request that the contested domain be transferred to Complainant AGV Productions, who owns the exclusive right to exploit the TERMINATOR Mark.” (Complaint, p. 15.)
Similar mischaracterizations and twisting of the facts appear in the Complainants’ Supplemental Filings and the supporting Declarations of Erick Feitshans and Charles Menzies that contained witness testimony made under the penalties of perjury, which were submitted in response to the Panel’s repeated requests for clarification regarding the Complainants’ standing to file this proceeding:
- “Pursuant to Trademark License Agreement, dated April 29, 1996, Canal + D.A. granted Carolco the exclusive right to use the name and mark TERMINATOR, and derivatives thereof…” (Supplemental Filing, paragraph 3.)
- “The original trademark owner of the Terminator Mark, Studio Canal Image S.A. granted AGV the exclusive right to use the name and mark TERMINATOR, and derivatives thereof…” (Supplemental Declaration of Erick Feitshans, paragraph 3.)
- “[T]he entire chain of title of the TERMINATOR mark can be traced and established by reviewing: (1) the Trademark License Agreement, dated April 29, 1996, Canal+D.A. granting Carolco the exclusive right to use the name and mark TERMINATOR…” (Declaration of Charles Menzies, paragraph 2.)
The Complaint and the Declarations all include clauses certifying the accuracy of the contents of each document. Paragraph 21 of the Complaint states that: “[t]he Complainants certify that the information contained in this Complaint is to the best of the Complainants’ knowledge complete and accurate…” Similarly, the Supplemental Declaration concludes with the statement that “I declare under penalty of perjury under the laws of the State of California, the United States of America and Switzerland that the foregoing is true and correct,” followed by Mr. Feitshans’ signature. Whether these mischaracterizations and twisted interpretation of the facts were the result of deliberate misstatement or simple sloppiness, they embody material misstatements regarding a threshold issue in this proceeding.
For all the foregoing reasons, the Complaint is denied. The Panel suggests filing a complaint in the name of or joined by the owner or an exclusive licensee of the trademark TERMINATOR.
Paul C. Van Slyke
Dated: July 23, 2004