Complainant is Harvard Lampoon, Inc. of Cambridge, Massachusetts, United States of America, represented by Harvey Siskind LLP, United States of America.
Respondent is Reflex Publishing Inc. of Tampa, Florida, United States of America, represented by John Berryhill, PhD., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name") is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2011. On April 26, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On April 27, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name. 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 Respondent of the Complaint, and the proceedings commenced May 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2011. The Response was filed with the Center May 23, 2011. Respondent's counsel represents in a cover e-mail note attaching the Response: "This transmission is being made at approximately 11:15 PM, May 22, 2011, Eastern US time." It appears from that same email that it arrived at (was filed with) the Center, in Geneva, Switzerland, at "5:15" on May 23, 2011. The Panel accepts the Response as timely filed.
The Center appointed Harrie R. Samaras, Clive N. A. Trotman and the Hon Neil Brown QC as panelists in this matter on July 5, 2011. 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.
On July 8, 2011, Complainant filed a paper with the Center requesting from the Panel permission to file a Supplemental Briefing to "set the record straight" with regard to "a number of ad hominem charges . . . launched against" Complainant and/or its counsel. On July 12, 2011, Respondent filed a paper with the Center objecting to Complainant's request for the additional briefing ("Respondent's Objection"). On behalf of the Panel, the Center issued Procedural Order No. 1 on July 14, 2011, denying Complainant's request for further briefing stating in part that the: “[P]anel will decide the dispute based on the submissions and record provided by the parties and as governed by the Rules and the Uniform Domain Name Dispute Resolution Policy." The Order also extended the date the decision is due to the Center until July 26, 2011.
In Respondent's Objection, Respondent stated the following:
"We note that the present Proceeding involves claims and evidence relating to Harvard University, as the Complainant has made various allegations relating to ‘alumni’, and that the presiding panelist is identified as a ‘Harvard trained mediator’. While we do not know the extent of involvement suggested by such identification, we note that the record of the Proceeding includes evidence of correspondence conducted by or on behalf of Harvard University. We trust the presiding panelist has considered the relevant circumstances and/or relationships into account in accepting appointment in this case and that they have been deemed inconsequential to appearances, or that such circumstances and/or relationships shall be considered if they have been overlooked."
The Panel deemed Respondent's note as not raising any “material issue of actual conflict ” and, in the opinion of the Panel, the matter referred to by Respondent, namely that Presiding Panelist, “is identified as a Harvard trained mediator” does not raise any such issue. As indicated above, the Presiding Panelist submitted her Statement of Acceptance and Declaration of Impartiality and Independence as a prerequisite of appointment and that Declaration remains valid. For the record, the Panel also states that the Presiding Panelist attended a 40-hour Mediation Workshop offered by the Harvard Law School Program of Instruction for Lawyers some nine years ago, but apart from her participation in that course, is not a Harvard alumna. 4. Factual Background
Complainant Harvard Lampoon Inc. ("Harvard Lampoon" or "Complainant") was founded in 1876 as a humor organization. It owns two United States Patent and Trademark Office (USPTO) trademark registrations, (Registration Nos. 2,334,353 ("the '353 Registration") and 2,744,334 ("the '334 Registration") (collectively, "the Registrations")) for the LAMPOON trademark (the “LAMPOON Mark”). Each of the registrations is incontestable. The '353 Registration is for "paper goods and printed matter, namely, magazines, newspapers and books containing humorous, parodical or satirical subject matter." The ‘334 Registration is for “providing an online publication containing humorous, parodical or satirical subject matter.” The '353 Registration was issued on March 28, 2000, and the '334 Registration was issued on July 29, 2003. The date for the first use and first use in commerce set forth on the '353 Registration is February 10, 1876, and the date for the first use in commerce set forth on the ‘334 Registration is February 15, 2002.
The Harvard Lampoon has been publishing magazine parodies of other magazines for many years, commencing in or around 1912. Complainant has made of record the covers of four of its parodied magazines: "Harvard Lampoon Parody of Playboy" (1966); "A Harvard Lampoon Parody" of Cosmopolitan (1972); "A Harvard Lampoon Parody" of People (1981); and "A Harvard Lampoon Parody" of National Geographic (2008). The dates indicated for these publications were provided by Complainant (they are not apparent from the covers made of record as exhibits). The Harvard Lampoon's Playboy and People magazine parodies had a circulation of over 500,000, and the Cosmopolitan magazine parody had a circulation of 1.2 million.
In addition, the Harvard Lampoon has parodied books for many years such as: "Harvard Lampoon Big Book of College Life" (1978); "Harvard Education in a Book" (1991); and "The Harvard Lampoon Bored of the Rings" (1969) (an undated cover is of record). Complainant's most recent book parody is of the Twilight vampire books called "Nightlight", published in 2009.
Complainant maintains a website at the domain name .
Respondent Reflex Publishing Inc. owns the Domain Name, which it registered in 1998. When Internet users enter the Domain Name, they are redirected to a website at . That website features links arranged by subject matter, which linked pages (identified as Sponsored Results) have links that lead to various websites dealing with a wide variety of subject ranging from health and entertainment to communications and travel, although not covering, overtly, humorous, parodical or satirical subjects. 5. Parties’ Contentions A. Complainant
In 1969, the Harvard Lampoon licensed the LAMPOON Mark to the National Lampoon, founded that year. Pursuant to an arrangement between the parties, the National Lampoon created the National Lampoon magazine, a live show (“The National Lampoon Lemmings”), a radio show “The National Lampoon Radio Hour”) and movies (e.g., “Animal House”). The Harvard Lampoon has also launched the careers of writers and comedians, and alumni have been involved in creating or writing television shows (e.g., “The Simpsons”, “Saturday Night Live” and “The Office”).
The webpage corresponding to the Domain Name has nothing to do with any meaning of the word "lampoon." It has been used for sponsored links since at least 2004. Before that time, Respondent either used the Domain Name as a parked site or did not use it at all.
The Registrations are prima facie evidence that the LAMPOON Mark is valid and inherently distinctive. Complainant has established strong common law rights in the LAMPOON Mark as a result of its 135 years of use. This was confirmed by the United States District Court for the Southern District of New York in the case National Lampoon, Inc. v. American Broadcasting Cos., 376 F. Supp. 733 (S.D.N.Y. 1974), aff'd per curiam, 497 F.2d 1343 (2d Cir. 1974). The Domain Name is confusingly similar to the LAMPOON Mark insofar as it consists entirely of the LAMPOON Mark with no variation other than the generic top-level domain ".com" which is insufficient to avoid confusion.
Respondent has no rights or legitimate interests in the Domain Name. Respondent has never used the Domain Name in connection with a bona fide offering of goods or services. The webpage corresponding to the Domain Name is nothing more than an assortment of links, akin to a parked web page that is not a bona fide use under Paragraph 4(c). Also, Respondent is not commonly known as “Lampoon”; it is Reflex Publishing Inc. Even if Respondent were commonly known as “Lampoon”, this would not establish rights or legitimate interests in the Domain Name since it must have adopted this name with full knowledge of Complainant and its rights. Respondent is located in the United States of America where Complainant and its offerings are best known, and where it owns multiple trademark registrations for the LAMPOON Mark. Lastly, use of a Domain Name to direct users to a webpage with nothing more than links does not constitute noncommercial or fair use.
There is no plausible good faith explanation for registering a domain name that consists entirely of the LAMPOON Mark and has nothing to do with Respondent's own business, and holding on to it for twelve years without making any legitimate use of it. Given those facts, it is reasonable to infer that Respondent has no intention to make a legitimate use of the Domain Name and is instead hoping to sell it for a profit. Furthermore, Respondent is using the Domain Name in bad faith because Internet users looking for Complainant's website will go to Respondent's website by mistake, under the reasonable assumption that Complainant Harvard Lampoon owns the Domain Name (). Respondent or someone else is presumably experiencing commercial gain each time an Internet user clicks on one of the sponsored links on the webpage connected to the Domain Name. Bad faith is strengthened by Complainant's popularity and success under the LAMPOON Mark over the past 135 years. B. Respondent
Respondent is a registrant of ordinary words as domain names.
During the time that Complainant claims to have been exclusively known by the LAMPOON Mark, there were two prior registrations (later cancelled) for “lampoon” by International Telephone and Telegraph. Complainant abandoned prior applications to register as a mark “Harvard Lampoon”.
The '353 Registration and the '334 Registration were issued (in 2000 and 2003 respectively), after Respondent registered the Domain Name on April 22, 1998. The '334 Registration claims a first use date of February 15, 2002 which is nearly 4 years after Respondent registered and began using the Domain Name. The USPTO initially refused to register the LAMPOON Mark as descriptive. Thus, at the time Respondent registered the Domain Name, there was no reason to believe Complainant possessed nor would possess exclusive rights of any kind in the dictionary word "lampoon."
The parties corresponded after Complainant's first registration and before Complainant's second registration. The Complainant has not said a word to Respondent for the intervening 10 years before the filing of this proceeding.
Complainant suggests that The National Lampoon Inc. is a licensee of the LAMPOON Mark. It is an independent owner of federal registrations to a family of "NATIONAL LAMPOON" marks which do not mention any ownership or license interest of Complainant. There is no evidence of a license between Complainant and The National Lampoon regarding that family of marks. Respondent submits that Complainant has demonstrated use of HARVARD LAMPOON and THE LAMPOON at various points in time and with significant gaps.
"Lampoon" is a dictionary word (as noted in an attached on-line Merriam-Webster entry) as both a noun and a verb referring to "satire" or the act thereof. Complainant's trademark registrations do not change that fact nor do they confer on Complainant a monopoly in the word. What was granted to Complainant was the right to use the word "lampoon" as a brand for certain goods and services. Respondent's registration and use of the Domain Name is senior to both of Complainant's trademark registrations. Complainant does not claim to have been providing any online service until 4 years after registration of the Domain Name. Respondent is not engaged in distributing a printed publication nor is Respondent using the LAMPOON Mark as a trademark for a printed publication. The Domain Name here is most well known as a dictionary word, and secondarily most often associated with someone other than Complainant. Complainant has not demonstrated any evidence that Respondent has sought to use the Domain Name to compete with, pass itself off as, or disparage Complainant.
Respondent registered the Domain Name on April 22, 1998, upon its expiration from a prior term of registration by another party. The Domain name was identified as a target dictionary word to be released in early March 1998. That date was before Complainant's application for the first of its two Registrations. When Respondent registered the Domain Name, the USPTO had not issued Complainant's Registrations so there was no constructive notice of its rights. At the time the Domain Name expired from its prior term of registration in early March, if Respondent had accessed USPTO records relating to the issued registrations, Respondent would have seen that Complainant's applications were refused registration.
If Respondent registered the Domain Name to sell it to Complainant, as alleged by Complainant, then Respondent would be a slow salesman having registered and used it for 13 years without a sale. Furthermore, Respondent refused to sell the Domain Name to Complainant. On August 9, 2001, a person identified as Matt Macinnis of Harvard wrote to Respondent inquiring, "Is L for sale?" and the Respondent replied the same day, "Sorry, not for sale." This overture was without any claim of right in the LAMPOON Mark or a reason why Mr. Macinnis wanted to purchase the Domain Name. Complainant's counsel subsequently wrote a letter to Respondent on September 24, 2001, demanding the Domain Name. Respondent's counsel responded to that letter on November 28, 2001. Since that exchange of correspondence, Complainant has said nothing for nearly 9 years before commencing this proceeding. Respondent also received an inquiry in 2007 to sell the Domain Name to an Australian company called "Lampoon Promotions" and it also denied that request.
Complainant's apparent abandonment of the legal claim it had asserted in 2001 would raise an issue of laches in any other form of equitable proceeding. Laches per se had been disfavored as a defense in the early years of the Policy. Here the Policy existed in 2001 when Respondent refused to sell the Domain Name to Complainant. The nature of the proceeding is in equity. The Panel is empowered to draw upon any principles of law it deems applicable to a dispute. Even if the panel does not consider the facts here to constitute a prime candidate for laches then it is an admission that the registration and use of the Domain Name did not seriously disrupt Complainant's business. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent’s Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The Panel finds that Complainant satisfies this element by virtue of its USPTO trademark registrations (i.e., the '353 Registration and '334 Registration) for the LAMPOON Mark. As stated in the discussion following Question 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (“Does ownership of a registered trademark to which the domain name is identical or confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?”), the consensus view is: "If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights." WIPO Overview 2.0, at this section, goes on to say that: "The location of the trademark, its date of registration (or first use) . . . and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP."
The Panel further finds that the Domain Name is identical to the LAMPOON Mark insofar as LAMPOON is incorporated in its entirety in the Domain Name. See Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493 (holding
The Panel therefore finds that Complainant satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Because, as discussed below, the Panel concludes that Complainant has failed to meet its burden of proof respecting bad faith registration and use under paragraph 4(a)(iii) of the Policy, a determination whether Respondent has established rights or legitimate interests in the Domain Name is not strictly necessary to the Panel's decision in this case. Notwithstanding that, the Panel has decided to address this issue.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, 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) Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) 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.
Respondent maintains that it registered the Domain Name because of its appeal as a dictionary word (e.g., it can be used as a noun and a verb referring to "satire" or the act thereof), and asserts that, "Complainant does not, by virtue of its federal trademark registrations possess the right to prevent others from using a dictionary word in accordance with its ordinary meaning, nor as a descriptor of humorous subject matter."
"It is important that Panelists decide cases based on the very limited scope of the Policy. The Policy is designed to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another. 'The primary rule in relation to domain name registrations is ‘first come, first served.' The UDRP provides a narrow exception. It is not a per se breach of the UDRP to register the trademark of another as a domain name where the trademark is a generic word.’" M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230 (citing Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc,WIPO Case No. D2002-0658). A number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent's aim in registering the disputed domain name was to profit from and exploit the complainant's trademark. See, e.g., National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424. The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See M, LP v. Bill Zag and NWLAWS.ORG, supra.
Complainant has failed to meet its burden of demonstrating that Respondent has no right or legitimate interest in the Domain Name. In the present case, the fact is that Respondent registered a domain name using an ordinary dictionary word (“lampoon”) in the absence of circumstances indicating that Respondent’s aim in registering the Domain Name using “lampoon” was to profit from Complainant’s LAMPOON Mark. Indeed, Respondent established legitimate rights to the Domain Name before Complainant was able to demonstrate to the USPTO its rights to register the LAMPOON Mark (i.e., Respondent registered the Domain Name in 1998 before the USPTO issued Complainant trademark registrations under Section 2(F) of the Lanham Act for the LAMPOON Mark). And, as discussed below, there is no evidence of Complainant’s "many years of using the LAMPOON Mark" from which the Panel might possibly infer that Respondent knew of Complainant’s rights in the LAMPOON Mark and intended to exploit it. Furthermore, Respondent is using the Domain Name on a website having sponsored links to a wide variety of subject matter none of which Complainant has shown, or the Panel deems, to compete with Complainant’s parodical magazines and books.
The Panel therefore finds that Complainant has not satisfied paragraph 4(a)(ii) of the Policy. C. 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 Respondent registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Name; or
(ii) circumstances indicating that 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 Respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that Respondent intentionally is using the Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of 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 Telestra 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,supra. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. Id.. The Policy provides a remedy only in cases where a complainant proves that the domain name “has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).
The requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telestra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. If any required element is not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (denying transfer of the Domain Name because Complainant failed to prove bad faith registration).
One fact bears noting as an initial matter - Respondent registered the Domain Name in 1998, some thirteen years ago. "The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration. "AVN Media Network, Inc. v. Hossam Shaltout,WIPO Case No. D2007-1011. The only evidence of record showing that Complainant took any action against this Respondent to enforce its rights was a letter proffered by Respondent in this case dated September 24, 2001, aimed at persuading Respondent to transfer the Domain Name. Complainant sent that letter three years after Respondent registered the Domain Name and then waited another ten years to assert its rights to the Domain Name by commencing this proceeding. There was no explanation for Complainant’s delay in complaining about Respondent’s domain name. Although the Panel's decision in this case that Complainant has failed to establish bad faith registration does not rest simply on the passage of time between registration of the Domain Name and Complainant's assertion of its rights, it is a fact that the Panel cannot ignore.
After carefully considering the totality of the circumstances in the record, the Panel does not find any evidence demonstrating that Respondent registered the Domain Name with the aim of profiting from and exploiting Complainant's rights in the LAMPOON Mark. While Complainant has established registration rights in the LAMPOON Mark sufficient to satisfy paragraph 4(a)(i) of the Policy, the LAMPOON Mark nonetheless comprises the common dictionary word “lampoon,” which the record and the Panel's own searching indicates is subject to significant and widespread third-party use in its ordinary or descriptive sense (inter alia, in articles discussing satirical commentary, in the name of business establishments, as a font name, in event names, book titles and name of hanging lamp).
Furthermore, the circumstances in the record do not indicate that Respondent knew or should be deemed to have had notice of Complainant's rights in the LAMPOON Mark when it registered the Domain Name. It is undisputed that Respondent registered the Domain Name in 1998 and that the Registrations for the LAMPOON Mark, which Complainant is relying on here, did not issue until after Respondent registered the Domain Name in 1998 (the '353 Registration issued in 2000, and the '334 Registration issued in 2003). Accordingly, Respondent could not have had actual notice of the Registrations as the USPTO had not issued them at the time Respondent registered the Domain Name. Even if the doctrine of constructive notice were to apply here (and not all Panels accept that constructive notice is applicable in UDRP proceedings), the Panel cannot infer that Respondent had constructive notice of Complainant's registrations for the LAMPOON Mark and then registered the Domain Name in bad faith because Complainant's trademark registrations issued well after Respondent registered the Domain Name.
Furthermore, there is no evidence Respondent registered the Domain Name - a dictionary word - knowing of Complainant and its rights in the LAMPOON Mark. In an attempt to show its alleged long-standing rights to the LAMPOON Mark as a common law trademark, Complainant cites to a laundry list of alleged uses of the LAMPOON Mark starting in 1912 and extending to the present day in conjunction with its magazine and book parodies. It made of record, however, only four of its magazine parody covers and each one of them indicates that the source of the magazine parody is "the Harvard Lampoon"; none of them used LAMPOON - the trademark relied upon here. Complainant also points to its most recent book, "Nightlight" (a parody of the Twilight vampire books) as evidence showing recent use of the LAMPOON Mark. Even though it was published many years after Respondent registered the Domain Name it, too, indicates in bold letters at the bottom of the cover that the book's source is "The Harvard Lampoon". And although Complainant did not make the book cover of its book parody "Bored of the Rings" of record, the Panel found it on the Internet and the cover of the book also lists "The Harvard Lampoon" as the source. Even taking Complainant's word on the dates of the exhibits (the Panel could not find the dates on any of the magazine or book covers) that some antedate the date Respondent registered the Domain Name, none of them evidence Complainant's alleged common law rights in the LAMPOON Mark. Similarly, although Complainant quotes circulation numbers for its Playboy and People magazine parodies, because both magazines fail to show use of the LAMPOON Mark the Panel does not deem that information evidence of Complainant's rights in the LAMPOON Mark. Thus, the Panel cannot infer bad faith registration by Respondent from any this information.
It bears mentioning that Complainant recites a laundry list of further alleged uses of the LAMPOON Mark through “The National Lampoon” (e.g., magazines, radio and television shows, and movies), which it represents as a licensee of the Mark. Complainant has not provided the Panel with any evidence of the license or information related to these uses which would permit the Panel to make a determination regarding whether such uses may constitute common law trademark rights in the LAMPOON Mark or whether they inure to Complainant's benefit for purposes of this proceeding. One observation regarding Complainant's list of The National Lampoon's use of the LAMPOON Mark - none indicate use of that Mark, rather they evidence use of the National Lampoon's own mark (e.g., "National Lampoon" magazine, "The National Lampoon" Lemmings live show, "The National Lampoon" Radio Hour for a radio show).
Complainant has also cited to a case (National Lampoon, Inc. v. American Broadcasting Cos., 376 F. Supp. 733 (S.D.N.Y. 1974), aff'd per curiam, 497 F.2d 1343 (2d Cir. 1974)) brought by The National Lampoon seeking a permanent injunction against defendants' use of the word "Lampoon," alone or in combination with other words (e.g., National Lampoon) as a title for a "pilot" television program of humor and entertainment. Complainant claims the court in that case "relied largely on the strength of the Lampoon's rights." First, the result or findings in that case have no bearing on the determination the Panel is required to make in this proceeding involving burdens of proof, claims for relief, and evidence that are different from the cited case. Furthermore, unlike the cited case in which it appears the National Lampoon proffered some evidence of use of "Lampoon," here there is no such evidence or even evidence that Complainant was known to the public as "Lampoon" for the relevant time periods. An interesting observation by the district court in that case which casts further doubt on Complainant's alleged use of the LAMPOON Mark is the following:
“The Harvard Lampoon and plaintiff [National Lampoon], in referring to themselves internally, and even in advertising their various publications, occasionally use the word "Lampoon" without use of the word "National" or "Harvard", as applicable. In practically all circumstances, however, the word is used at least once in any particular situation coupled with the modifying description "National" or "Harvard" as the case may be. National Lampoon, Inc. v. American Broadcasting Cos., 376 F. Supp. 733, 738 (S.D.N.Y. 1974) (emphasis added).”
Subject to limited exceptions, not applicable here, bad faith registration cannot be found if Respondent registered the Domain Name before Complainant acquired trademark rights. See WIPO Overview 2.0 at section 3.1 and cases cited therein and also Dreamgirls, Inc. v. Dreamgirls Entertainment,WIPO Case No. D2006-0609. The Panel is not satisfied that, in 1998, Complainant was entitled to claim a common law mark. Nor is any passive holding of the Domain Name sufficient evidence of bad faith registration by the Respondent when there was is no proof of a trademark in being at the time of registration. Nor is there any evidence before the Panel that Respondent’s aim in registering the dictionary word "lampoon" as its Domain Name at that time was to take advantage of likely Complainant rights. See e.g., ExecuJet Holdings Ltd. v. Air Alpha America, Inc.,WIPO Case No. D2002-0669, and other relevant decisions cited in WIPO Overview 2.0 at section 3.1.
With regard to bad faith use of the Domain Name, Respondent admits to being a "well known registrant of ordinary words as domain names" and this case appears to be an example of that. See also PROM Software, Inc. v. Reflex Publishing Inc.,WIPO Case No. D2001-1154 (domain name ); Educational Directories Unlimited v. Reflex Publishing, Inc., NAF FA 0142378 (domain name ). Complainant has not presented the panel with any evidence that Respondent has engaged in an abusive pattern of registering domain names to prevent Complainant or other trademark owners from reflecting their marks in corresponding domain names. Nor does the record demonstrate that Respondent registered the Domain Name primarily for the purpose of disrupting Complainant's business (this is not likely given the fact that but for one demand letter, Complainant left Respondent alone for thirteen years), selling the Domain Name to Complainant, or exploiting Complainant's Mark by creating a likelihood of confusion with Respondent's website, given that Complainant had not established trademark rights at the time Respondent registered the Domain Name. With regard to Complainant's allegation of bad faith use based on the suggestion that Respondent registered the Domain Name to sell it, Respondent debunked that allegation making of record email correspondence showing that on two occasions Respondent refused to sell the Domain Name to potential purchasers. One of those overtures came from Complainant (or a representative) itself. Thus, not only was Complainant incorrect in its supposition, it was disingenuous to allege bad faith use with evidence existing that Respondent rejected an offer of Complainant to sell the Domain Name. In short, there is nothing in the record to establish that Respondent registered the Domain Name based on anything other than its ordinary meaning.
In the final analysis, the ultimate burden of proof with respect to all three elements of paragraph 4(a) of the Policy remains with the Complainant. For all of the foregoing reasons, the Panel concludes that the Complainant has failed to satisfy its burden of showing bad faith registration and use name under paragraph 4(a)(iii) of the Policy. D. Laches
Respondent raises the issue of laches stating, "Concerning the Complainant's apparent abandonment of the legal claim it had asserted in 2001, this would certainly raise an issue of laches in any other form of equitable proceeding." Although courts in the United States of America have barred the recovery of damages on the theory of laches, they generally have not done so in trademark actions where the relief sought is prospective injunctive relief. See Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011. As stated by that panel, “the remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches.” Id. Respondent acknowledges that laches is not expressly recognized in UDRP Policy. However, the Panel notes the unanimous three-person decision in New York Times Company v. Name Administration Inc. (BVI), NAF Case No. FA1349045 (November 17, 2010) that laches is "a valid defense in any domain dispute where the facts so warrant." In the present proceeding, Complainant has failed on more substantial grounds and it is therefore not necessary for the Panel to decide on this record whether the Complaint should fail because of laches. However, the Panel has taken Complainant's inaction into account in deciding certain of the issues above. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Harrie R. Samaras
Presiding Panelist
Clive N.A. Trotman
Panelist
The Hon Neil Brown QC
Panelist
Dated: July 26, 2011
Full & Egal Universal Law Academy