WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Jay Leno v. Guadalupe Zambrano Case No. D2009-0570 1. The Parties
The Complainant is Jay Leno, New York, New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Guadalupe Zambrano, Katy, Texas, United States of America, 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 June 2, 2009. The Response was filed with the Center on May 28, 2009.
The Center appointed William R. Towns as the sole panelist in this matter on June 11, 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 September 28, 2004. The Respondent uses the disputed domain name to redirect Internet visitors to a commercial website from which Respondent promotes his real estate services. 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 a 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 a UDRP proceeding. The Complainant asserts that the disputed domain name is confusing similar to his JAY LENO mark. According to the Complainant, the additional common word “show” in the domain name does not dispel such confusing similarity, given indications that many members of the public have come to refer to The Tonight Show with Jay Leno simply as The Jay Leno Show.
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 the disputed domain name in connection with his commercial website, because the use of a domain name that intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services.
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 maintains that the Respondent opportunistically registered the disputed domain name shortly after it was first announced in 2004 the Complainant would be leaving The Tonight Show following the 2009 season. According to the Complainant, the Respondent's opportunistic registration of the Complainant's famous name and mark in order to redirect Internet visitor to the Respondent's website demonstrates bad faith. B. Respondent
The Respondent acknowledges that the Complainant is a well-known entertainer who has acquired “a lot of fame and success”. Nevertheless, the Respondent alleges that the Complainant has no right to the disputed domain name or to any other domain name incorporating “Jay Leno”, because the Complainant has transferred any trademark rights in the JAY LENO name and mark to his employer, the National Broadcasting Corporation (“NBC”), which is owned by General Electric Company (“GE”). As proof of this the Respondent maintains that a WhoIs search shows that the domain names and are owned by GE.
Thus, with respect to the disputed domain name, the Respondent maintains that only GE “may” have a right to bring this proceeding under the UDRP. Further, the Respondent observes that there is no trademark registered with the United States Patent and Trademark Office (“USPTO”) for THE JAY LENO SHOW. While the Respondent acknowledges the domain name is identical to the reported name of the Complainant's new prime time show, the Respondent notes that he registered the disputed domain name five (5) years earlier.
The Respondent asserts that he has legitimate interests in the disputed domain name. First, the Respondent reiterates that it is GE or NBC, and not the Complainant, who own the trademark JAY LENO. Second, the Respondent denies that his use of the disputed domain name creates a likelihood of confusion. According to the Respondent, the first ten pages of a Google search for “The Jay Leno Show” contain no reference to the Respondent's website, and searches on Yahoo! and MSN yielded the same results.
Although the Respondent acknowledges that “the potential to profit from this domain name is tremendous”, and that he has “the ability to promote this domain in a way to bring a lot of business” to him, the Respondent maintains that he does not use the disputed domain name to redirect Internet traffic to his website for this purpose. According to the Respondent, his expertise is in real estate, and he is successful because of his ability in marketing. The Respondent asserts that he primarily uses real estate-related domain names to attract Internet visitors to his websites.
The Respondent says it should be the Complainant's responsibility to prove that he has benefited from directing the disputed domain name to his website. According to the Respondent, directing the disputed domain name to his website does no more for him than it would were the domain name simply parked. Moreover, the Respondent argues he could assert a legitimate interest in the disputed domain name even if he did nothing with it.
The Respondent observes that he has not attempted to sell the disputed domain name or to take any of a number of other actions that he could have taken had he registered the disputed domain name in order to exploit the domain name's great potential for profit. The Respondent maintains instead that he is a fan of the Complainant. The Respondent's position is that he has not acted in bad faith, that it is GE and not the Complainant that owns trademark rights in JAY LENO, and that he registered the disputed domain name five years before NBC decided to call the Complainant's new Fall 2009 show THE JAY LENO SHOW. The Respondent contends that the Complaint has been filed to harass and intimidate him, and he accuses the Complainant of reverse domain name hijacking. 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. Laches
The Respondent argues that he registered the disputed domain name some five years before the filing of the Complaint herein, and that he could not possibly have known then that NBC in 2009 would decide to call the Complainant's new show THE JAY LENO SHOW. This argument touches upon the issue of laches, although the Respondent has not explicitly asserted laches as a defense.
The parties are both located in the United States, where courts recognize the doctrine of laches (i.e., undue delay by the plaintiff in asserting a legal claim, resulting in prejudice to the defendant). However, the Panel concludes that the equitable defense of laches does not properly apply in this Policy proceeding. The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. See The Hebrew University of Jerusalem v. Alberta Hot Rods,WIPO Case No. D2002-0616; The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes). See also Tom Cruise v. Network Operations Center/ Alberta Hot Rods,WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint).1 C. 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.2 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.
The Respondent acknowledges that the Complainant has achieved success and fame as a comedian, entertainer and television personality. Further the Respondent does not appear to seriously dispute that the Complainant's name is entitled to common law protection as a trademark, but argues instead that the rights in the trademark belong not to the Complainant but rather to GE or to NBC. Indeed, 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 finds the Respondent's argument that the Complainant has assigned or transferred all rights in the JAY LENO mark to GE and NBC unpersuasive. At best, the circumstances relied on by the Respondent suggest only that the Complainant has authorized GE and NBC to use the Complainant's mark for promotional purposes. The Respondent has offered no evidence that the Complainant has assigned, conveyed or transferred his rights and the associated goodwill in the JAY LENO name and mark to any third person, including GE and NBC.
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. The inclusion in the domain name of the words “the” and “show” before and after the Complainant's mark do nothing to dispel such confusing similarity. Given the long association of the Complainant with The Tonight Show, 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. D. 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 Respondent's website, from which the Respondent promotes his real estate business. 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 be a fan of the Complainant, there is also no evidence of the Respondent's use of or even demonstrable preparations to use the disputed domain name with a legitimate, active fan site, or of any other attempt at making a legitimate noncommercial or fair use of the domain name.
Nor has the Respondent shown use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. While the record reflects the Respondent's use of the disputed domain name to redirect Internet users to his real estate services website, the record does not reflect any apparent reason for such use 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). The Respondent clearly lacks any connection to the Complainant, and the Respondent's opportunistic use of a confusingly similar domain name to drive Internet traffic to the his website 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. E. 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 when registering the disputed domain name. Given the Respondent's acknowledgement that “the potential to profit from this domain name is tremendous”, it is a reasonable inference that the Respondent also was aware of the Complainant's rights in the JAY LENO name and mark, and the Panel so finds. On the basis of the record in this case, the Panel can ascribe no apparent motive for the Respondent's choice of this confusingly similar domain name other than to capitalize or otherwise take advantage of that similarity. 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 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 rejects as untenable the Respondent's conclusory argument that he has derived no benefit from his opportunistic use of the disputed domain name, and the circumstances reflected in the record strongly suggest that the Respondent's claim to have registered the disputed domain name as a fan of the Complainant is pretextual.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. F. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent's strong rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Limited.,WIPO Case No. D2000-1224; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. In view of the Panel's decision, the Respondent's assertion of reverse domain name hijacking domain name is without merit. 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 names be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: June 25, 2009
1 A leading commentator on U.S. trademark law notes that the defense of laches bars the recovery of damages incurred before the filing of suit, but is inapposite to injunctive relief in a trademark action seeking to avoid confusion among customers in the future. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §31:10 (4th ed. 2005), and cases cited therein.
2 The term “trademark or service mark” as used in Paragraph 4(a)(i) encompasses both registered marks and common law marks. See e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers' Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218. Common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).
Full & Egal Universal Law Academy