WIPO Domain Name Decision D2009-0569 for weeknightswithjayleno.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Jay Leno v. Garrison Hintz Case No. D2009-0569 1. The Parties

The Complainant is Jay Leno, New York, New York, United States of America, represented by Kilpatrick Stockton, LLP, United States.

The Respondent is Garrison Hintz, Meno Falls, Wisconsin, United States, acting pro se. 2. The Domain Name and Registrar

The disputed domain name is registered with GoD, Inc. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2009. On May 4, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On May 4, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2009. The Response was filed with the Center on June 1, 2009.

The Center appointed William R. Towns as the sole panelist in this matter on June 12, 2009. 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. 4. Factual Background

The Complainant, a successful and well-known comedian, entertainer, and television personality, is claiming common law trademark rights in his personal name, Jay Leno. The Complainant perhaps is best known for his comedic career of more than thirty (30) years, and as the host of the popular late night television talk show The Tonight Show with Jay Leno for more than seventeen (17) years, from 1992 until May 2009. The Complainant began appearing in various television shows in the mid-1970s, and prior to becoming the host of The Tonight Show in 1992 he also served as the permanent guest host of the show starting in 1987, and made frequent appearances as a guest on the show. It has been announced that the Complainant will host a prime time talk show on NBC beginning in the fall of 2009, reportedly to be called The Jay Leno Show.

The Respondent registered the disputed domain name on December 13, 2008. The disputed domain name resolves to a portal website that at present contains search links on its home page under headings such as “Jay Leno”, “With Leno”, “Weeknights With”, “Jay Leno Online”, “Jay Leno Ticket”, “Guest Show Talk”, “Host Show Talk”, “Show Tonight”, and “TV Show”, among others. Internet visitors clicking on these search links are directed to secondary pages on the website featuring “sponsored” listings, with links to third party websites that offer or advertise various goods and services, both related and unrelated to the Complainant. 5. Parties' Contentions A. Complainant

The Complainant asserts common law trademark rights in his personal name, Jay Leno. According to the Complainant, as a result of his success and fame as an comedian, entertainer, author and television personality, spanning a career of more than thirty-years, including critical and commercial success as the host of the highly popular The Tonight Show for over seventeen seasons, the JAY LENO mark has acquired enormous value and goodwill and has become recognized by the public and trade as distinguishing and identifying the Complainant's services and products.

In view of the foregoing, the Complainant contends he has established common law trademark rights in JAY LENO sufficient to maintain this UDRP proceeding. The Complainant asserts that the disputed domain name is confusingly similar to his JAY LENO mark, as it incorporates his well-known name and mark in its entirety. According to the Complainant, the addition of the generic words “weeknights with” in the domain name does not dispel such confusing similarity, as Internet users reasonably would believe that the domain name is related to the Complainant.

The Complainant further asserts that the Respondent lacks rights or legitimate interests in the disputed domain name, because the Respondent has never been commonly known by the domain name, has not been authorized to use the Complainant's JAY LENO name and mark, and has no connection whatsoever with the Complainant. According to the Complainant, the Respondent cannot claim rights or legitimate interests in a confusingly similar domain name used solely to generate click through advertising revenue, and the use of a domain name that intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services.

In view of the foregoing, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith for commercial gain and to profit from resulting consumer confusion. The Complainant asserts that the Respondent could only have registered a domain name confusingly similar to the Complainant's JAY LENO name and mark to capitalize on the goodwill developed therein, which, according to the Complainant, the Respondent has done by using the disputed domain name with a portal pay-per-click website. The Complainant further maintains that the Respondent's registration of the disputed domain name after much publicity that the Complainant would be leaving The Tonight Show in June 2009 and possibly pursuing other opportunities confirms the Respondent's bad faith. B. Respondent

The Respondent asserts that he registered the disputed domain name to create a tribute site for the Complainant, and not to start a website to make money and blatantly take advantage of the Complainant's good name and character. The Respondent maintains that he was trying to make a legitimate and fair use of the domain name.

According to the Respondent, he is aware of the anti cybersquatting law, and before registering the disputed domain name he ascertained that the Complainant had not registered his name as a trademark. The Respondent further contends that there are a number of domain names incorporating the Complainant's name that resolve to third party websites seeking to benefit from the Complainant's common law trademark. For example, the Respondent argues that the Complainant's common law trademark is used without regard to the Complainant's rights every time a ticket is sold on the Internet for one of the Complainant's Las Vegas shows.

The Respondent claims he had no choice when registering the disputed domain name with GoDaddy other than to park the domain name at a portal site containing advertising links. He asserts that he has nothing to do with the content on the website, and he denies any commercial gain. The Respondent asserts that NBC, who employs the Complainant, has four links on his website, and he attributes any confusing similarity to NBC's actions. The Respondent further asserts that there is no confusion, maintaining that a Google search for “Jay Leno”, “The Jay Leno Show”, or even “Weeknights with Jay Leno” does not return a link to his website.

The Respondent denies that he registered the disputed domain name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant, or to prevent the Complainant from utilizing his common law mark in a corresponding domain name. According to the Respondent, the disputed domain name does not create confusion, he derives no monetary compensation therefrom as the domain name holder, and his registration of this single domain name is not itself evidence of bad faith since there was an expectation of developing a legitimate interest in the domain name. 6. Discussion and Findings A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

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

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar

The Panel initially addresses the question of whether the Complainant has established common law trademark or service mark rights in his personal name, Jay Leno.1 As noted by the panel in Israel Harold Asper v. Communication X Inc.,WIPO Case No. D2001-0540, in cases involving entertainers, authors, professional athletes and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another's goods or services, or for direct commercial purposes in the marketing of the complainant's own goods or services. See, e.g., Freddy Adu v. Frank Fushille,WIPO Case No. D2004-0682; David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla,WIPO Case No. D2000-1459; Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210; Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235; Monty and Pat Roberts, Inc. v. Bill Keith,WIPO Case No. D2000-0299; Steven Rattner v. BuyThisDomainName (John Pepin),WIPO Case No. D2000-0402; Daniel C. Marino, Jr. v. Video Images Productions, et al.,WIPO Case No. D2000-0598; Isabelle Adjani v. Second Orbit Communications, Inc.,WIPO Case No. D2000-0867; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847; Nik Carter v. The Afternoon Fiasco,WIPO Case No. D2000-0658.

Merely having a “famous” name is not sufficient to establish common law trademark or service mark rights in the name. The Policy itself inherently makes a distinction between the protection afforded trademark rights and rights arising under the law of publicity, which has been discussed in further details in several UDRP cases. See Israel Harold Asper v. Communication X Inc.,WIPO Case No. D2001-0540. Under the law of publicity, as recognized in virtually all United States jurisdictions, well known individuals have the right to control commercial exploitation of their names and likenesses. See Bi-Rite Enterprises, Inc., Et Al. V. Bruce Miner Company, Inc., Et Al., 757 F.2d 440 (1st Cir. 1985). To be entitled to protection under the Policy, however, a personal name must function as a trademark, and for common law trademark rights to exist, the Complainant's personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source. That is to say, the Complainant's personal name must be used such that a relevant segment of the public comes to recognize the name as a symbol that distinguishes his goods and services from those of others.

On the basis of the highly probative evidence presented by the Complainant in this case, the Panel concludes that the Complainant's name has come to be recognized by the public as identifying and distinguishing the Complainant's goods and services from those of others. Accordingly, the Panel finds that the Complainant has established common law trademark rights in JAY LENO, and that the Complainant has standing to assert such rights in this proceeding. The Panel notes that the Respondent does not appear to contest that the Complainant has common law trademark rights in JAY LENO, but rather seems to assert that it is others and not he who are seeking to exploit and profit from the Complainant's rights.

Turning to the issue of identity, the Panel finds that the disputed domain name is confusingly similar to the Complainant's JAY LENO mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. The disputed domain name is confusingly similar because it incorporates the Complainant's mark in its entirety, and the inclusion in the domain name of the words “weeknights with” preceding the Complainant's mark does nothing to dispel such confusing similarity. Given that the Complainant has served as the host of a popular weeknight television show for more than seventeen (17) years, the confusing similarity between the disputed domain name and the Complainant's mark arguably is exacerbated. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc.,WIPO Case No. D2007-1524.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The record convincingly establishes that the Respondent was aware of the Complainant at the time he registered the disputed domain name. The Respondent has used the confusingly similar disputed domain name to redirect Internet users to the portal website containing links to third party commercial websites in order to generate paid advertising revenues. It is undisputed that the Respondent has not been authorized to use the Complainant's mark, and there is no indication in the record that the Respondent has ever been commonly known by the disputed domain name.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has pointed to no circumstances in the record that would bring his registration and use of the disputed domain name within any of the safe harbor provisions of paragraph 4(c) of the Policy. There is no evidence that the Respondent has ever been commonly known by the disputed domain name. While the Respondent claims to have registered the disputed domain name for use with a fan site relating to the Complainant, the Respondent has offered absolutely no evidence of the use or even demonstrable preparations to use the disputed domain name with a legitimate, active fan site, or evidence of any other attempts at making a legitimate noncommercial or fair use of the domain name.

Nor has the Respondent made the requisite showing of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent uses or has permitted the disputed domain name to be used with a portal website containing pay-per-click advertising links. While it appears to be generally accepted that the use of a domain name to generate paid advertising revenues is not a per se violation of the Policy, in the absence of any intent to exploit and profit from another's trademark, the record in this case reflects no apparent reason for such use by the Respondent here other than to exploit and profit from the Complainant's mark through the creation of initial interest confusion. See Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986 (and decisions cited at ¶ 6.18 therein). Such use does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946; E v. Ultimate Search, Inc.,WIPO Case No. D2001-1319.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.

The circumstances in the record dispel any doubt that the Respondent was aware of the Complainant prior to registering the disputed domain name. The Respondent does not appear to dispute that the Complainant has common law trademark rights in JAY LENO, and it is a reasonable inference from the overall circumstances in the record that the Respondent knew or would have known of the Complainant's rights when registering the disputed domain name.2 The Respondent clearly lacks any connection to the Complainant, and has used the disputed domain name, which incorporates the Complainant's mark in its entirety, solely for the purpose of driving Internet traffic to a portal pay-per-click website. Under the overall circumstances reflected in the record, the Panel can ascribe no apparent motive for the Respondent's opportunistic registration and use of this confusingly similar domain name except to capitalize or otherwise take advantage of the Complainant's rights. See Aubert International SAS and Aubert France SA v. T Co., supra.

In light of the foregoing, the Panel finds that the Respondent's registration of the disputed domain name with knowledge of the Complainant's rights in the JAY LENO mark in the circumstances presented here is evidence of bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. Moreover, the Panel is of the opinion that the Respondent has used the disputed domain name in bad faith to attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion in terms of paragraph 4(b)(iv) of the Policy. See E v. Ultimate Search, Inc., supra.

The Panel finds the Respondent's argument that he has derived no benefit from the monetization of the disputed domain name unpersuasive. Even assuming that the Respondent has not received any advertising revenues generated by his website, a dubious proposition given the overall circumstances at hand, the Respondent knowingly has permitted the disputed domain name to be monetized and used to exploit the Complainant's mark. Further, the Respondent has taken no steps to curtail such use, and has offered no credible explanation for his failure to do so. In the final analysis, the Respondent, as the domain name holder, is responsible for the use of the disputed domain name and the content on his website. See Aubert International SAS and Aubert France SA v. T Co., supra.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: June 26, 2009

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