DECISION

Los Angeles Film Schools, LLC v. 618085 B.C. LTD. c/o Niels Hartvig-Nielsen and Anavista Capital, Inc.

Claim Number:  FA0408000306757

PARTIES

Complainant is Los Angeles Film Schools, LLC (“Complainant”), represented by David L. Sigalow, 255 South Orange Avenue, Suite 1401, Orlando, FL 32801.  Respondent is 618085 B.C. LTD. c/o Niels Hartvig-Nielsen and Anavista Capital, Inc. (“Respondent”), 14234 Kontney Road, Mission, BC V2V4J1, Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <losangelesfilmschool.com>, registered with Bulkregister, Llc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically August 3, 2004; the Forum received a hard copy of the Complaint August 4, 2004.

On August 4, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the domain name <losangelesfilmschool.com> is registered with Bulkregister, Llc. and that Respondent is the current registrant of the name. Bulkregister, Llc. verified that Respondent is bound by the Bulkregister, Llc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On August 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 2004, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@losangelesfilmschool.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 7, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <losangelesfilmschool.com>, is confusingly similar to Complainant’s THE LOS ANGELES FILM SCHOOL mark.

2. Respondent has no rights to or legitimate interests in the <losangelesfilmschool.com> domain name.

3. Respondent registered and used the <losangelesfilmschool.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Los Angeles Film Schools, LLC, is in the business of providing education services for training persons in film and cinematography techniques. 

Complainant established by extrinsic proof in this proceeding that it holds a trademark registration with the United States Patent and Trademark Office for the THE LOS ANGELES FILM SCHOOL mark (Reg. No. 2,460,573 issued June 12, 2001).

Complainant  has used the THE LOS ANGELES FILM SCHOOL mark in association with its educational services since as early as September 9, 1999.  Complainant spends approximately one million dollars per year promoting its services under the THE LOS ANGELES FILM SCHOOL mark through such mediums as magazines, trade journals and trade shows. 

Respondent registered the <losangelesfilmschool.com> domain name February 22, 2000.  Respondent has used the disputed domain name to divert Internet users to a password-protected website displaying hyperlinks to Complainant’s website as well as the websites of other businesses that compete with Complainant.  Furthermore, Respondent registered several domain names associated with the film school industry and expressed an interest in turning the disputed domain name into “a pre eminent [sic] Distributed Learning site” for the film industry. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the THE LOS ANGELES FILM SCHOOL mark through registration with the United States Patent and Trademark Office and by continuous use of its mark for the last five years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The <losangelesfilmschool.com> domain name that Respondent registered is confusingly similar to Complainant’s THE LOS ANGELES FILM SCHOOL mark because the domain name merely omits the word “the” from Complainant’s mark.  There mere omission of one word from Complainant’s registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name, “hammondsuddards.net,” is essentially identical to Complainant's mark, Hammond Suddards Edge, where the name “Hammond Suddards” identifies Complainant independently of the word “Edge”); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to Complainant’s “Asprey & Garrard” and “Miss Asprey” marks).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the

<losangelesfilmschool.com> domain name.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is allowing its registrar to use the <losangelesfilmschool.com> domain name to divert Internet users to a password-protected website, which displays a series of hyperlinks to pages promoting a variety of businesses in competition with Complainant’s business.  Respondent’s use of a domain name that is confusingly similar to Complainant’s THE LOS ANGELES FILM SCHOOL mark to redirect Internet users interested in Complainant’s services to a commercial website that offers hyperlinks to businesses unrelated to Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Finally, Respondent offered no evidence, and no proof in the record suggests, that Respondent is commonly known by the <losangelesfilmschool.com> domain name.  Furthermore, Complainant has not authorized or licensed Respondent to use its THE LOS ANGELES FILM SCHOOL mark.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and used the domain name that contains Complainant’s protected mark in bad faith. In fact, Respondent has used the <losangelesfilmschool.com> domain name to link to Complainant’s business as well as other businesses that compete with Complainant.  Thus, Respondent intentionally registered a domain name that is confusingly similar to Complainant’s mark for Respondent’s own commercial gain.  Respondent’s domain name diverts Internet users who seek Complainant’s THE LOS ANGELES FILM SCHOOL mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website).

Moreover, Respondent registered the domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that links users to Complainant’s competitors.  Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)  (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <losangelesfilmschool.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: September 21, 2004

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