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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VBW-Kulturmanagement und Veranstaltungsges. m.b.H v Ohanessian M
Case No D2000-0675
1. The Parties
The Complainant is VBW Kulturmanagement und Veranstaltungsges. m.b.H of Linke Wienzeile 6, 1060 Vienna, Austria (VBW). The Respondent is Ohanessian M of 10 el Saleh, Cairo, Egypt.
2. The Domain Name and Registrar
The domain name in dispute is "barbarella.com". The Registrar is Network Solutions Inc. A Network Solutions search indicates that the domain name was registered on September 10, 1998 and that the administrative contact and technical contact is the Respondent.
3. Procedural History
The complaint was received by the WIPO Arbitration and Mediation Center by email on June 26, 2000, and subsequently by hard copy on June 29, 2000. Acknowledgement of receipt of the complaint was given by the Center on July 1, 2000. Notification of the complaint was given to the Registrar, Network Solutions Inc on July 1, 2000. Network Solutions confirmed that the Respondent is the current registrant of the registration for "barbarella.com".
Notification of the complaint and commencement of the administrative proceeding was given to the Respondent by email on July 5, and subsequently by facsimile and post. A response was received by the Center by email on July 31, 2000 followed by a hard copy version. This was acknowledged by the Center on August 2, 2000.
On August 3, 2000, having received the response the Complainant requested an extension of time for two weeks to respond to the response and made further submissions in its email of August 3. The Center responded to the effect that the policy and rules do not provide for further submissions after the complaint and response and indicated that the Complainant’s response would be forwarded to the Panel to be appointed in the case which would have sole discretion whether or not to accept and/or consider the Complainant’s request. On August 10, 2000 the Complainant submitted further factual arguments. On August 11, the Respondent sent an email to the Center:-
Maintaining that all the arguments and evidence presented in the response were accurate and reflected the real facts; and
Disagreeing with the statements made by the Complainant in its August 3 email.
A three member panel consisting of Clive D Thorne (Presiding Panelist), Mr. Pierre Yves Gautier and Mr. Mark Van Buren Partridge was appointed on September 1. All three panelists have signed statements of acceptance and declarations of impartiality and independence.
The Panel has subsequently requested an extension of time for preparation of its decision which has been granted by the Center until September 22.
4. Further Submissions
Having considered the initial submissions of the complainant the Panel decided that the Complainant had not succeeded in showing its rights to the domain name in dispute. Accordingly the Panel decided to invite the Complainant to make a further submission by October 1, with the Respondent to reply by October 8. The Panel requested that the further submission should be limited to evidence of the rights at issue and more particularly evidence of the ownership of the copyright relied on and the existence of an ownership of trademarks prior to the domain name registration. In the event further submissions were submitted by the Complainant on October 4, 2000 with hard copy exhibits being received by WIPO on October 6. The Respondent submitted a short email reply.
5. Factual Background
The Complainant, based in Vienna is Austria’s leading musical production company. The Complainant avers that the name Barbarella is a sole creation of the author Jean-Claude Forrest. He apparently created the well known comic book published under the name Barbarella. Barbarella is also the title of a world wide well known motion picture with the celebrated actress, Jane Fonda, in the title part. The Complainant asserts that it acquired the underlying rights (including the name Barbarella) from Julian Forrest (who was apparently the legal successor of Jean-Claude Forrest) for producing and presenting a musical live stage production and for other exploitation. The Complainant asserts that it has the exclusive right to use the name Barbarella for merchandising and advertising in connection with the musical and intends to use the mark in commerce in connection with a large number of goods and services including cosmetics, recording media, jewelry, printed materials, glass and pottery, clothing, games and video games, alcoholic and non alcoholic beverages, tobacco products, educational services and time leasing.
The Complainant has registered Barbarella as a trademark in Austria for classes 3, 9, 14, 16, 21, 25, 28, 32, 33, 34, 41 and 42. The date of the application for registration was December 22, 1999 and the registration was granted on May 5, 2000. The Complainant has also applied for registration of "Barbarella" and "Barbarella The Musical" in the United States. It should be noted that the Respondent’s domain name registration pre-dates the Austrian and United States trademark applications having been registered on the September 10, 1998. The Complainant has also registered international registrations for "Barbarella" and "Barbarella the Musical". The applications were dated June 21, 2000 and certificates of registration dated October 5, 2000.
The Respondent is the owner of an original oil painting entitled "Barbarella". A photograph of the painting is attached as Annex A to the Response. This painting was created in 1998 and the Respondent has apparently owned it since then. In passing the Respondent refers to the fact that the name "Barbarella" is a Latin variant of the common English name Barbara. The Respondent intends to use its domain name (registered in the same year as the painting was created) in order to host a web site which will display the painting, make it available for downloading as a screen saver, allow people to recreate the work on line and to provide for the offer of high quality limited edition prints of the painting. The Respondent has hosted a first prototype of the "barbarella.com" web site since November 1998. It has since removed the web site for further development but intends to host an improved version at the "barbarella.com" domain name in the near future.
The parties have put before the Panel some electronic correspondence commencing with a letter from the Complainant dated August 27, 1999, which reads as follows:-
"I am assistant to the management of a musical producer in Vienna, Austria. We acquired the rights to do a musical based on the graphic novel "Barbarella" by Jean-Claude Forrest. We would now be interested to use the site "www.barbarella.com" for our promotion and information. We do not have much money available for this particular use but would be glad if could get the URL. ... Please let me know if it is possible to buy the URL from you and how much this would cost us."
On July 12, 1999, Mr. Weber on behalf of the Complainant offered a monthly payment of US$ 200 for the use of the domain name with a maximum total payment of US$ 25,000. The correspondence appears to have continued until April 2000, when Mr. Weber indicated that the Complainant would need a firm offer on the Respondent’s behalf enabling the Complainant to buy the domain name for US$ 25,000.
6. Parties Contentions and Discussion
The Complainant submits in accordance with the Policy paragraph 4(a) that the Respondent is required to submit to a mandatory administrative proceeding because:-
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and
The Respondent has no rights or legitimate interest in respect of the domain name;
The domain name was registered and is being used in bad faith.
These are the three submissions upon which the complainant needs to prove in order to succeed in the administrative proceeding. The Panel proposes to deal with each one separately.
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant relies on the Austrian registered trademark 188252 and the application for a US trademark 75/890,726 as well as the two International Trademark registrations referred to above. It should be noted that such trademark rights as the Complainant has post date the Respondent’s registration of its domain name on September 10, 1998.
In support of its trademark rights the Complainant relies upon its license agreement with Mr. Julian Forest and legal successor to Mr. Jean-Claude Forest which it asserts includes a license for the use of the mark Barbarella. The Complainant has exhibited the license agreement between itself and Mr. Julian Forest dated April 7, 1999 but has not provided a translation. The Panel has concern that the license does not confer upon the Complainant underlying trademark rights. Nevertheless it is prepared to accept in the absence of evidence to the contrary that the complainant currently has trademark rights in the mark "Barbarella" and relies in particular upon the Austrian registered trademark 188252 and the International Trademark registrations.
With the exception of the top level domain name element ".com" of the registration the mark Barbarella is identical to the Respondent’s domain name.
The Panel therefore accepts that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Respondent has no rights or legitimate interest in respect of the domain name
The Complainant beyond asserting in its complaint that is has the rights or legitimate interest in respect of the domain name makes no specific submissions on this point. The Respondent, rightly in the Panel’s view, points to the fact that "glaringly absent is any evidence to support the Complainant’s contention that it holds any rights relating to the Barbarella comic books or motion picture".
The Respondent asserts that it has legitimate rights and interest in the domain name relying on the fact that it is owner of the painting Barbarella created in 1998 and which it has owned since then and the first prototype of the web site created in November 1998 (Annex B to the Response).
As far as the Complainant’s rights are concerned the Panel agrees with the Respondent that it can see no evidence that the Complainant has prior rights in the domain name. Its trademark applications are subsequent to the registration of the domain name by the Respondent in September 1998. The Panel therefore finds for the Respondent on this point.
The domain name was registered and is being used in bad faith
The Complainant has put forward no evidence or detailed submissions to support the allegation of bad faith. The Respondent by way of defence submits that the Complainant has not shown that the Respondent registered and used the domain name in bad faith and that it is unable to do so. The Respondent relies upon the fact that the domain name was registered prior to the trademark applications and that the domain name owner did not know of nor could have known of the Complainant or its trademark rights in September 1998. It relies upon its assertion that the Respondent registered the domain name to host a web site where it would display the painting , make it available for down loading as a screen saver and allow people to recreate the work on line and print high quality limited edition copies. The Respondent also relies on the fact that the offer to sell the domain name arose as a result of an initial approach from the Complainant offering to purchase the domain name.
The Panel is conscious of the fact that the burden of proof in showing bad faith rests upon the Complainant. There is no evidence submitted by the Complainant which justifies a finding of bad faith. Further the Respondent’s submission on the subject of bad faith satisfies the Panel that no bad faith existed.
In its further submission the Complainant admits that it accepts "that the Respondent did not register the domain name for the purpose of selling, renting our (sic) otherwise transferring the domain name to our company or to prevent us reflecting the mark in a corresponding domain name or for the purpose of disrupting our business, etc. ..." This further supports the Panel’s view that the Complainant has failed to adduce evidence of bad faith.
In summary therefore the Panel finds that the Complainant has failed to succeed in proving the elements of paragraph 4(a) of the Policy.
7. Reverse domain name highjacking
In paragraph 11 of the Response the Respondent submits that the Complainant is "guilty of reverse domain name highjacking" and asserts that the Complainant decided to attempt to secure the domain name more cheaply by filing a "baseless complaint". In the Panel’s view such assertions are speculative comment and do not justify any finding or decision by the Panel.
8. Decision and Findings
The decision of the Panel is that the Complainant has failed to satisfy the Panel that there should be a transfer of the domain name from the Respondent to the Complainant.
Clive Duncan Thorne
Pierre-Yves Gautier Mark Van Buren Partridge
Dated: October 18, 2000