filmfreakcentral.net

The Complainant is Leo Quinones, Jr. of Glendora, California, United States of America, represented by Stetina Brunda Garred & Brucker of Aliso Viejo, California, United States of America.

The Respondent is William Chambers of Oshawa, Ontario, Canada.

The disputed domain name <filmfreakcentral.net> is registered with Network Solutions, Inc.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 2, 2003. On April 3, 2003, the Center transmitted by email to Network Solutions, Inc., Registrar a request for registrar verification in connection with the domain name at issue. On April 8, 2003, Network Solutions, Inc. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 14, 2003. The Center verified that the Complaint together with the amendment to 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 April 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2003.

The Center appointed Hub J. Harmeling as the Sole Panelist in this matter on May 14, 2003. 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 Panel has not received any requests from Complainant or Respondent regarding further submissions or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

Given the absence of a response, the following facts are undisputed:

Complainant is the holder of Unites States Registration No. 2,427,654 for the mark THE FILM FREAK, registered February 6, 2001, for radio program production services: entertainment services, namely, ongoing radio program dealing primarily with film reviews and celebrity guest appearances, in International Class 041. Complainant has been using the mark since at least as early as July 1997. Complainant also uses a FILM FREAK domain name, specifically, <filmfreak.com> (created on July 3, 1997).

Complainant has his principal place of business in California where Complainant uses his THE FILM FREAK trademark and FILM FREAK domain name to commercialize throughout the country a variety of entertainment programs dealing primarily with film reviews and celebrity guest appearances and interviews. Complainant has attached as Annex 3 various pages from his website. Complainant has his own radio show in which he promotes his services under his THE FILM FREAK service mark. Complainant has attached as Annex 4 various web pages printed from the Internet showing his usage of this mark

Respondent uses the domain name <filmfreakcentral.net> (which Respondent registered on November 19, 1998), for a website holding mainly film reviews.

Complainant states that he is the holder of a valid trademark registration for the mark THE FILM FREAK and that this trademark is well known (Annex 4 is intended to establish Complainant’s well known trademark as well as Complainant’s well known status as "the Film Freak." It includes a picture of Complainant with the actor Leonardo DiCaprio, mentioning as a caption: "The world famous ‘Film Freak’").

Complainant alleges that the domain name <filmfreakcentral.net> is identical or confusingly similar to Complainant’s THE FILM FREAK trademark. Complainant is of the opinion that the disputed domain name "identically includes Complainant’s FILM FREAK domain name, and his THE FILM FREAK trademark."

Furthermore, Complainant states that the dominant portion of the <filmfreakcentral.net> domain name is FILMFREAK, and that Respondent uses FILMFREAK throughout his website. (Annex 6 shows copies of pages from Respondent’s website to show the trademark usage).

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, since Complainant has been using the trademark THE FILM FREAK since at least as early as July 1997, and created the <filmfreak.com> domain name on July 3, 1997. Respondent registered the disputed domain name on November 19, 1998, and, in the Complainant’s view, "accordingly (...) does not have any legitimate interests" in respect of the disputed domain name.

The Complainant further argues that with Respondent’s identical use of the THE FILM FREAK mark in an identical area of business, for film reviews, there exists a likelihood of confusion between the <filmfreakcentral.net> domain name and Complainant’s THE FILM FREAK trademark.

Complainant contends that Respondent registered the domain name in bad faith. Complainant submits that, in view of Complainant’s substantial goodwill as a recognized film critic and promoter of entertainment services, Respondent was aware of Complainant’s legitimate trademark rights at the time of registration of the disputed domain name.

The Respondent did not file a reply.

The Panel notes that the Respondent has not filed a response. However, the Panel finds that this does not mean that the remedies requested should automatically be awarded. The Panel will have to establish whether the Complainant’s case prima facie meets the requirements of paragraph 4 of the Policy (Creative Hairdressers, Inc. v. Dynamic Progressive Technologies, Inc., Claim No. FA0207000114772. Also: VeriSignInc., v. VeneSign C.A.,WIPO Case No. D2000-0303).

The disputed domain name is not identical to Complainant’s trademark. The disputed domain name does not incorporate the element THE of Complainant’s trademark THE FILM FREAK. Furthermore, Respondent has added the element CENTRAL.

The Panel finds that nor the elimination of the (subordinate) element THE nor the addition of the element CENTRAL takes away the prima facie confusing similarity between the disputed domain name and Complainant’s trademark. The Panel brings to mind that the test of similarity in the context of the Policy is "whether a domain name is similar enough in light of the purpose of the Policy to justify moving on to the other elements of a claim for cancellation or transfer of domain name" (Nicole Kidman v. John Zuccarini, d/b/a Cupcake party, WIPOCase No. D2000-1415) and that, in this context it is sufficient that "the domain includes (…) a confusingly similar approximation [of the trademark], regardless of the other terms of the domain name." (Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPOCase No. D2000-0662).

The Panel therefore concludes that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel notes that Complainant’s statement that the Complaint is (also) based upon Complainant’s "FILM FREAK domain name, specifically, <filmfreak.com>" remains without effect, as the Policy recognizes only trademarks or service marks as bases for a Complaint.

The Panel notes that it is for the Complainant to adduce evidence that the Respondent does not have any rights or legitimate interests in respect of the domain name.

In this context, the Complainant has brought forward the fact that the use of the disputed domain name by the Respondent has commenced 1½ years after the first use of the THE FILM FREAK trademark by the Complainant.

First, the Panel finds that the fact that the trademark use predates the registration of the disputed domain name cannot in itself lead to the conclusion that the Respondent has no legitimate interest in the domain name. The Policy stipulates in its paragraph 4(c)(i) that, regardless of the existence of a valid trademark, the Respondent can demonstrate his legitimate interest by proving that, before any notice to him of the dispute, the domain name was used in connection with a bona fide offering of goods or services.

The fact that the Complainant has a valid trademark right does not mean that Respondent has no legitimate rights to the domain name. The trademark in question is a quite common and generic term, descriptive of a film enthusiast. Ownership of the mark does not ipso facto give Complainant the exclusive right to the descriptive word in all contexts related to film (see PRIMEDIA Special Interest Publications, Inc. v. John L. Treadway, WIPO Case No. D2000-0752).

Second, as a result hereof, the Panel finds that it was for the Complainant to adduce arguments - beyond the mere existence of his (descriptive) trademark - to establish prima facie that elements are present that do indicate the absence of a right or legitimate interest. The arguments that the Panel has identified in the Complaint that might be considered as such are that:

- that there is likelihood of confusion between the domain name in dispute and Complainant’s trademark; and

- that the Respondent was aware of the Complainant’s trademark rights at the time of registration of the disputed domain name.

To underpin these contentions, the Complainant has submitted print-outs of both his own and the Respondent’s website.

The Panel finds that these arguments are insufficiently supported by facts demonstrating that there would be actual likelihood of confusion – as a matter of fact – and/or awareness of the Respondent of Complainant’s (at that time unregistered) rights, to assume absence of legitimate interests of the Respondent in respect of the domain name.

The Panel considers – in the absence of a response – that the materials submitted to the Panel, together with Complainant’s statement that the disputed domain name has been registered in 1998, and that (what the Panel considers to be) normal use thereof has been made in relation to film reviews, might go a long way in establishing a prima facie case of Respondent’s legitimate interests in the disputed domain name.

Assessing the facts and circumstances brought forward by the Complainant, the Panel therefore finds that the Complainant has not succeeded in establishing that – prima facie – the requirement of paragraph 4(a)(ii) has been met.

In addition, the Panel finds that the Complainant has not succeeded in establishing a prima facie case for registration as well as use in bad faith by the Respondent.

No mention is made of any "use in bad faith" in the Complaint.

The Panel has found in the Complaint (be it in the section about legitimate interests) one assertion by the Complainant that might be interpreted as an argument for use in bad faith: the Complainant submits that there that there exists a likelihood of confusion between the <filmfreakcentral.net> domain name and Complainant’s THE FILM FREAK trademark.

In this regard, the Panel makes reference to the ground for finding bad faith use mentioned in paragraph 4(b)(iv) of the Policy (recognizing that this is just one of a non exhaustive list of examples). In this paragraph, it is stated that creating a likelihood of confusion together with an intentional attempt to attract, for commercial gain, Internet users to one’s website, constitutes bad faith use.

In this case, the Complainant has not alleged – nor demonstrated – that the likelihood of confusion is paired with an intentional attempt to attract users to Respondent’s website under false pretenses. The Panel finds therefore that, even if the Complainant had duly demonstrated the likelihood of confusion, this fact does not prima facie amount to a case of bad faith use.

As the Policy demands both bad faith use and bad faith registration, the Panel, finding no case of bad faith use, does not need to assess whether the requirement of bad faith registration has been met.

The Panel observes, however, that the Complainant bases his argument that there is bad faith registration on the alleged awareness by the Respondent of Complainant’s trademark. As indicated above, the Panel finds that Complainant has not sufficiently established such awareness and that therefore also bad faith registration has not been established by the Complainant.

For all the foregoing reasons, the Complaint is denied.