WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Line Publications, LLC v. Arjay Entertainment, LLC
Case No.�D2006-1235
1. The Parties
The Complainant is Line Publications, LLC, United�States�of�America, represented by Isaacman, Kaufman & Painter, United�States�of�America.
The Respondent is Arjay Entertainment, LLC, of California, United�States�of�America, represented by Proskauer Rose, LLP, United�States�of�America.
2. The Domain Names and Registrar
The disputed Domain Names , , and� are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on September�26,�2006. On September�28,�2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On September�28,�2006, Go Daddy Software 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 October�4,�2006. In accordance with the Rules, paragraph�5(a), the due date for Response October�24,�2006. The Response was filed with the Center October�24,�2006.
The Center appointed Lawrence�K.�Nodine, John�Swinson and Jordan�S.�Weinstein as panelists in this matter on November�16,�2006. The Panel finds that it was properly constituted. Each member of 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.
Pursuant to Procedural Order No.�1 dated November�28,�2006, the due date for the decision in this matter was extended.
4. Factual Background
Complainant is a well known Los Angeles-based magazine publisher and promoter of live-events. Complainant has published “Movieline” magazine since 1985, having gone national in 1989. In May�2003, it changed the name of the magazine to “Movieline’s Hollywood Life”, and in November�2005, the magazine became known simply as “Hollywood Life”. “Hollywood Life” magazine continues to be published bi-monthly in print and online, the latter made available via the URLs and .
Since the 1990s Complainant has also promoted a variety of annual events, the relevant one being the Young Hollywood Awards, which has been produced annually since 1999. Complainant’s publications and live-events are complementary to one another, insofar as, for example, the publications serve to promote and to feature in retrospect the Young Hollywood Awards, and the Young Hollywood Awards serves to drive readership and advertising revenue for “Hollywood Life” magazine.
Complainant is the owner of:
United States Registration No.�2,795,944 dated December�16,�2003, for the Mark HOLLYWOOD LIFE;
United States Application Serial No.�76/590101 filed May�3,�2004, for the Mark HOLLYWOOD LIFE;
United States Registration No.�2,795,930 dated December�16,�2003, for the Mark MOVIELINE’S HOLLYWOOD LIFE;
United States Registration No.�2,723,886 dated June�10,�2003, for the Mark MOVIELINE HOLLYWOOD LIFE;
Registration No.�2,427,672 dated June�6,�2001, for the Mark YOUNG
HOLLYWOOD AWARDS;
Application Serial No.�76/658,058 filed April�10,�2006, for the Mark
YOUNG HOLLYWOOD AWARDS;
Application Serial No.�76/665,092 filed August�23,�2006, for the Mark
YOUNGHOLLYWOOD.COM;
Application Serial No.�76/665,093 filed August�23,�2006, for the Mark
YOUNGHOLLYWOODAWARDS.COM; and
Application Serial No.�76/666,076 filed September�15,�2006, for the Mark
YOUNG HOLLYWOOD.
5. Parties’ Contentions
A. Complainant
With respect to paragraph�4(a)(i) of the Policy, Complainant contends that:
It is the owner of the above-identified United States trademark and service mark registrations and applications.
The Domain Names adopted by Respondent infringe upon the Marks of Complainant and clearly cause a likelihood of confusion as defined by the United States Lanham Act, including, with respect to those applications for which registration is merely pending due to Complainant’s common law trademark rights. Trademarks do not have to be registered to be enforceable under the Policy.
The Young Hollywood Awards event has been produced annually since 1999.
May�2003 was Complainant’s first use of “Movieline’s Hollywood Life”. In November 2005 the magazine became known as “Hollywood Life”.
“Hollywood Life” magazine continues to be published bi-monthly in print and online, the latter made available via the URLs and .
The Domain Names at issue bear a confusing similarity to the marks, HOLLYWOOD LIFE, MOVIELINE HOLLYWOOD LIFE, MOVIELINE’S HOLLYWOOD LIFE YOUNG HOLLYWOOD AWARDS, YOUNGHOLLYWOODAWARDS.COM, and YOUNGHOLLYWOOD.COM. Accordingly, it is rightful that the Domain Names be transferred to Complainant to avoid public confusion in the future.
With respect to paragraph�4(a)(ii) of the Policy, Complainant contends that:
It had no knowledge of Respondent’s plans to register the domain names. “Respondent’s plans became clear on or about July�10,�2006, when it prepared and forwarded to Complainant the initial version of a proposed “consent agreement”. thus surprising Complainant by stating its intent to create “an active website under the ‘’ and ‘’ domain name [sic] and to file U.S. Trademark applications for the Mark YOUNGHOLLYWOOD.COM in International Class 41”. (Respondent has retained and held over the head of Complainant , to leverage its bargaining position.)
On August�29,�2006, Respondent filed a number of trademark applications, stating intent-to-use YOUNG HOLLYWOOD on such varying items as magazines, videogames, bottled water, restaurants and clothing.
It was only after Respondent was notified of the dispute by Complainant’s letter of September�6,�2006, that Respondent began to bring its web page, “www.” to life. The domain names and continue to remain “parked” as they were.
continues to be retained by Respondent as a bargaining chip in its negotiations to extract various concessions from Complainant in Respondent’s proposed “consent agreement”.
Respondent is not known by the marks, nor has it received a license or other grant of authority from Complainant to use the marks embodied in the Domain Names other than, if at all, on May�15,�2006, for the advertising and promotion of the Young Hollywood Awards, and for no other purpose.
The burden of proof is shifted to the Respondent to show, by providing concrete evidence, that it has rights or legitimate interests in the Domain Names.
With respect to Paragraph�4(a)(iii) of the Policy, Complainant contends that:
The fact that Respondent registered the Domain Names in bad faith can be inferred from the facts and circumstances surrounding the matter, and can be ascertained from evidence showing a pattern of such conduct. In the instant case, Respondent has registered three domain names incorporating Complainant’s marks, and to which it cannot be reasonably inferred that Respondent had or has any rights.
Wherever a pattern has emerged demonstrating a registrant has sought an advantage by voraciously acquiring domain names, even where the number of registrations has been only two or three, WIPO UDRP panels have seen fit to transfer the domain names to the aggrieved party. Accordingly, the same facts should be regarded as conclusive evidence of Respondent’s bad faith.
Respondent’s act of cybersquatting, accompanied by its attempt to obtain Complainant’s consent to the use of Complainant’s marks, while at the same time allowing the Domain Names to sit dormant, tarnishes the marks and constitutes bad faith via inactivity.
Respondent’s inaction can be evidenced from: 1) the fact that the Domain Names are connected to websites, which seem to be perpetually under construction, or which are “parked”; 2) the fact that Respondent, aware of its infringing activities, sought Complainant’s consent concurrently with or prior to actively developing the websites; and 3) Respondent’s silent refusal to turn over until Complainant’s “consent” could be otherwise obtained. It is clear that if Respondent was operating in good faith, it would have returned , to which it has no legitimate claim – and negotiated with Complainant to its best advantage.
B. Respondent
With respect to Paragraph�4(a)(i) of the Policy, Respondent contends that:
The fact that Complainant has not previously used the descriptive term “Young Hollywood” as a trademark precludes Complainant from demonstrating that Respondent’s domain name is identical or confusingly similar to any mark in which Complainant has sufficient rights. Moreover, the descriptive nature of the YOUNG HOLLYWOOD mark renders it unprotectible absent secondary meaning.
Complainant’s registration for YOUNG HOLLYWOOD AWARDS is on the Supplemental Register, not the Principal Register. The Complainant has never used the YOUNG HOLLYWOOD trademark. The United States Patent and Trademark Office has repeatedly rejected Complainant’s claim of exclusive trademark rights in YOUNG HOLLYWOOD AWARDS.
With respect to Paragraph�4(a)(ii) of the Policy, Respondent contends that:
The “www.” website is devoted to young celebrities who are commonly described by the phrase “Young Hollywood”. Respondent’s use is absolutely fair, as it is using a descriptive phrase that Complainant has never used. Respondent has legitimate rights and is plainly not acting in bad faith.
Respondent is unquestionably the sole owner of the Young Hollywood Awards content that directly covers the subject of those awards, namely, “Young Hollywood”. Respondent thus not only has legitimate rights in and to the and Domain Names, since these are the domains where Respondent distributes the Young Hollywood Awards content that it owns, but for the same reason, it is clear that Respondent is not using these Domain Names in bad faith.
With respect to Paragraph�4(a)(iii) of the Policy, Respondent contends that:
Complainant cannot establish any of its three mandatory conditions, most notably bad faith, as Complainant has no rights in the descriptive phrase “Young Hollywood”.
The Domain Name was registered by a third-party in 1997, years before Complainant’s Young Hollywood Awards show existed. Respondent purchased the Domain Name from a third-party owner for fair market value. Respondent made “demonstrable preparations to use” the Domain Name before it was notified of this dispute.
Although Respondent’s counsel on October�10,�2006, advised Complainant’s counsel that Respondent would transfer the Domain Name to Complainant, Respondent asserts that it registered as an asset to be contributed to a joint venture Respondent and Complainant were negotiating to create. The parties were considering having the Domain Name redirect Internet users to the “www.” website, the content of which is owned and controlled by Respondent.
6. Discussion and Findings
Pursuant to Paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested for each of the Disputed Domain Names: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has not proved that it has trademark rights in YOUNG HOLLYWOOD or YOUNG HOLLYWOOD AWARDS.
Complainant has not proved rights in YOUNG HOLLYWOOD alone (without�“Awards”). Complainant’s intent – to – use applications for YOUNGHOLLYWOOD.COM (76/665092) and YOUNG HOLLYWOOD (76/666076) were both filed after Respondent commenced use of the challenged domains and with full knowledge of Respondent’s prior use of the domain name. Moreover, Complainant has not alleged use of Young Hollywood alone as a mark, so there is no basis for a finding of common law rights in this phrase.
Neither has Complainant proved trademark rights in YOUNG HOLLYWOOD AWARDS. Complainant points the Panel to Registration Number 2427672 for YOUNG HOLLYWOOD AWARDS, but does not disclose that this is on the Supplemental Register, which is not sufficient under United States law to confer or evidence trademark rights. 15 USC � 1072.
One of the ways Complainant could have proved acquired distinctiveness was to prove (or at least assert under oath) that it has been using the mark substantially exclusively for a continuous five-year period�15 USC 1052(f). Significantly, not only has Complainant not submitted such a declaration in connection with its trademark applications (which it is not obliged to do as of yet), but Complainant failed to even make such an allegation in its Complaint, under oath or otherwise.� Complainant does allege that “[since] the 1990’s Complainant has also promoted a variety of annual events, the relevant one being the Young Hollywood Awards, which has been produced annually since 1999”. However, Complainant offers no evidence of this claim. Neither does it offer any evidence that its use has been exclusive or that this descriptive phrase has acquired secondary meaning. Even when Respondent pointed out the descriptiveness of the phrase in the Response (pages 2, 12-15 of the Response), Complainant failed to add evidence of acquired distinctiveness to the record.
Perhaps this was because Complainant could not state truthfully that it has been using the phrase substantially exclusively for the past 5 years. Respondent offers unrebutted evidence that Complainant’s use was not exclusive. But we need not even reach this issue.� It was Complainant’s burden to prove its trademark rights, and Complainant failed to submit evidence sufficient to meet its burden.�
The Panel is concerned that Complainant not only failed to mention that its only registration for YOUNG HOLLYWOOD AWARDS was on the Supplemental Register, but it also failed to attach its registration certificates to its Complaint, and failed to mention that each of its asserted applications containing the words YOUNG HOLLYWOOD had been initially refused registration as descriptive.� Clearly Complainant was aware of the importance of proving the strength of its mark, as evidenced by the following assertion it made (page 16 of the Complaint): “it is impressive to note that the Marks have shown strength comparable to the mark in Telstra, which “strength” was seen as an important element.� This “strength” is evidenced by the Marks’ use in the media for close to the last ten years, including, serving as the basis to attract the interest of a television broadcaster...for two consecutive years”.� Yet Complainant failed to assert that it used its marks substantially exclusively or that its marks had acquired distinctiveness.�
Accordingly, the Panel will not consider the question of confusing similarity and finds by majority that Complainant has not met its burden to prove that it has trademark rights in either YOUNG HOLLYWOOD or YOUNG HOLLYWOOD AWARDS. Given this ruling, the Panel will not address the remaining issues for these two Domain Names and will not transfer or .
As to , due to Complainant’s trademark registration for HOLLYWOOD LIFE on the Principal Register of the United State Patent and Trademark Office, the Panel finds that the Complainant has trademark rights in HOLLYWOOD LIFE.
The Panel further finds that the Domain Name is confusingly similar to Complainant’s HOLLYWOOD LIFE trademark. The addition of the descriptive or generic term “online” does not avoid confusion. Sanofi-Aventis v. Internet Marketing Inc./John Bragansa, WIPO Case No.�D2005-0742. (Referring to the domain name , the Panel found that the addition of the descriptive words “discount” and “online” to the mark does nothing to dispel a connection in the public’s mind between the pharmaceutical name and its owner, the Complainant.)
B. Rights or Legitimate Interests and Bad Faith
Continuing its discussion of , the Panel finds that Complainant’s proof fails on the issue of bad faith. There is apparently no dispute that the parties were discussing working together, in a joint venture or otherwise, to develop “www.” as a section or “channel” of Respondent’s “www.” website. While the parties dispute what was to become of the Domain Name once it had been registered, Complainant makes no argument and presents no evidence that the domain name was registered in bad faith. To the contrary, Complainant’s request for transfer of the Domain Name was in the context of contractual discussions to continue its working relationship with Respondent. As a result, Complainant’s proof fails on this point.
This Panel has limited jurisdiction under the Policy to decide only issues of abusive domain name registration. See, e.g., Bang & Olufsen America, Inc. v. BeoW, WIPO Case No.�D2001-0159 (no jurisdiction to decide underlying trademark infringement dispute between manufacturer and reseller); Private Media Group v. Anton Enterprises Inc., d/b/a/ Private USA, WIPO Case No.�D2002-0692 (where rights are dependent on interpretation of contracts, the dispute may be outside the scope of the Policy). Respondent contends that it has offered to transfer the domain name to Complainant with no strings attached. While this Panel can – and does – exhort Respondent to make good on its offer forthwith, without attaching any strings, the Panel does not have the power to order the transfer under the provisions of the Policy, in order to effectuate the parties’ contractual undertakings.
For all the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Presiding Panelist
Jordan S. Weinstein
Panelist
Dated: December�22,�2006
DISSENT
and
I disagree with the reasoning, but not the result, of the majority in relation to and .
The majority appears to decide that, as the YOUNG HOLLYWOOD AWARDS trademark registration (Registration Number 2427672) was registered on the Supplemental Register of the U.S. Patent and Trademark Office, the Complainant must then prove substantial exclusive use for a continuous five-year period to satisfy the first element of the Policy. In my view, this improperly imports notions of United States trademark law into the UDRP and raises the bar for the Complainant higher than required by the Policy. Registration is not the only determinant for proving the Complainant has rights in a trademark.
As the UDRP Panel concluded in Eric H. Bryant v. Norman J. Yerke, e-Resolution Case No.�AF-0315 (and followed in Betonsports Plc, Bet-On-Sports (Costa Rica), S.A., And Domain Choices Limited v. Tpcr Development SRL, WIPO Case No.�D2006-0634):
“Registration on the Supplemental Register is an indication that the mark has not acquired distinctiveness, at least at the time of the registration. Although registration on the Supplemental Register is not a deemed admission of a lack of acquired distinctiveness, 15 U.S.C. sec. 1095, the applicant (Complainant in this case), in order to press its rights, if any, in the mark against others must establish through record evidence that the mark has acquired distinctiveness”.
UDRP Panels have not automatically recognized marks listed on the USPTO Supplemental Register, unregistered common-law marks, or marks registered under state laws in the United States (typically without examination for distinctness) as satisfying the first element of a UDRP complaint. Betonsports Plc, Bet-On-Sports (Costa Rica), S.A., And Domain Choices Limited v. Tpcr Development SRL, WIPO Case No.�D2006-0634.
If a mark is registered on the Supplemental Register, the Complainant may still prove common law rights in the mark. The Complainant here did assert common law rights.
Thus, the Complainant must show that YOUNG HOLLYWOOD AWARDS has become a distinctive identifier associated with the Complainant or its goods and services. Relevant evidence of such distinctiveness includes length of use, the nature and extent of advertising and media recognition. The fact that the distinctiveness may only exist in a small geographic area does not limit Complainant’s rights in a common law trademark. The generic nature of the component words does not bear on the specific secondary meaning acquired for the mark created by their combination. Eurobet UK Ltd. v. Intergate, WIPO Case No.�D2001-1270. Furthermore, the use of some of the words included in the trademark by other businesses does not undermine Complainant’s claim to trademark rights in a particular combination of words. Australian Trade Commission v. Matthew Reader, WIPO Case No: D2002-0786.
When a complainant proves that there is enough goodwill and reputation in and to a name and sufficient association of the same with the complainant, no matter how strong or weak those trademark and service mark rights may be, that is sufficient to satisfy the first element the Policy. Action Sports Videos v. Jeff Reynolds, WIPO Case No.�D2001-1239. Imperial College v. Christophe Dessimoz, WIPO Case No.�D2004-0322. If a complainant shows that it has been using the mark in association with its business for a number of years, this is often sufficient to satisfy the first element of the Policy. Uitgeverij Crux v. W. Frederic Isler, WIPO Case D2000-0575. There is no need for the complainant to prove that its common law trademark is sufficiently strong to meet some requirement of United States trademark law. Simply put, as stated in the Policy, the Complainant must prove that it has trademark rights, not United States trademark rights.
In this case, the Complainant has demonstrated trademark rights in YOUNG HOLLYWOOD AWARDS. The evidence shows that the YOUNG HOLLYWOOD AWARDS have been organized, substantially promoted and run by the Complainant as a yearly event each year since 1999. The evidence shows that the YOUNG HOLLYWOOD AWARDS are promoted in the Complainant’s magazines and on websites. Movie stars attend the YOUNG HOLLYWOOD AWARDS; presenters are given YOUNG HOLLYWOOD AWARDS gift bags; there are YOUNG HOLLYWOOD AWARDS post-award parties. The evidence also shows that the Respondent licensed the TV rights for the YOUNG HOLLYWOOD AWARDS from the Complainant, including the right to use the name YOUNG HOLLYWOOD AWARDS in association with the creation of TV shows about the awards. This, in my view, is sufficient evidence to show that the Complainant has trademark rights in YOUNG HOLLYWOOD AWARDS.
In my view, the disputed domain names and are confusingly similar to the Complainant’s common law trademark YOUNG HOLLYWOOD AWARDS.
I find that the first element of the Policy is satisfied in relation to the disputed domain names and .
However, I find that the Respondent had a legitimate interest in registering and using the disputed domain names and . When the Respondent registered or purchased these domain names in 2006, the Respondent believed that it had the rights to register and use these domain names under license from the Complainant.
As stated in the Complaint (emphasis added):
“Respondent is not known by the Marks, nor has it received a license or other grant of authority from Complainant to use the Marks embodied in the Domain Name other than, if at all, on May�15,�2006 for the advertising and promotion of the Young Hollywood Awards, and for no other purpose.”
Although the evidence from both parties is not entirely clear, it would appear that the Complainant licensed the Respondent to use the trademark YOUNG HOLLYWOOD AWARDS to advertise and promote the Young Hollywood Awards. Accordingly, it appears that the Respondent registered the disputed domain names and pursuant to this license.
Accordingly, I would deny the Complaint with respect to and .
I agree that the Complainant satisfies the first and second elements of the Policy in relation to the disputed domain name for the reasons given by the majority.
In relation to bad faith, the evidence shows that the Respondent registered the disputed domain name to give it leverage in the somewhat hostile negotiations then taking place between the Complainant and the Respondent. This, in my view, is registration in bad faith. See Asset Loan Co. Pty Ltd v. Gregory Rogers, WIPO Case No.�D2006-0300.
Moreover, the Respondent did not respond to the Complainant’s allegations with respect to the domain name. Where the Respondent does not respond, the Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”. See Brown Thomas & Company Limited v. Domain Reservations, WIPO Case No.�D2001-0592.
Accordingly, I would grant the Complaint with respect to and order that it be transferred to the Complainant.
John Swinson
Panelist
Dated: December�22,�2006
Full & Egal Universal Law Academy