The Complainant is Darley Newman, DCN Creative L.L.C, United States of America (“United States”), represented by Pelosi Wolf Effron & Spates LLP, United States.
The Respondent is Chip Ward, United States, Lambda Cubed LLC, United States, represented by Samek Werther & Mills LLP, United States. 2. The Domain Name and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2020. On April 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. That same day, the Center sent a notification to the Complainant that the Complaint was administratively deficient. The Complainant filed an amended Complaint on April 24, 2020. The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2020. On May 20, 2020, the Respondent requested an extension to the Response due date. The Response was filed with the Center on May 25, 2020. On May 27, 2020, the Complainant submitted a supplemental filing. On June 8, 2020, the Respondent submitted a supplemental filing. The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 23, 2020. 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 Darley Newman (“Newman”) is the host, producer, and writer for the award-winning television travel series Travels with Darley, launched in 2016 and now in its eighth season, distributed through Public Broadcasting Services (PBS) stations in the United States and other channels online and internationally. She was also the host, producer, and writer for an award-winning equestrian-themed television travel series, Equitrekking, which also is distributed through PBS. It appears that a pilot was filmed in 2004, and some 35 episodes were initially broadcast in the period 2007-2010. The Complainant DCN Creative L.L.C. (“DCN”) is a limited liability company organized under the law of the State of Connecticut, United States. According to records found in the online database of the Connecticut Secretary of State, DCN was formed in July 2004 by Newman and the Respondent, Ward. DCN is the production company for both Equitrekking and Travels with Darley, as well as for related online and social media content. The Complainant claims to be the sole owner of DCN at present, while Ward claims that he continues to hold a 50% ownership interest, as discussed further below. The Complainant Newman holds United States Trademark Registration Number 3144227 (registered September 19, 2006) for EQUITREKKING as a standard character mark. The Complainants also claim common law trademark rights in DARLEY NEWMAN and TRAVELS WITH DARLEY, based on the ongoing television program Travels with Darley. The Registrar reports that the Domain Names were all registered in the name of a domain privacy service but identifies the beneficial owners and the dates of creation as follows: DOMAIN NAME REGISTRANT REGISTRATION DATE Lambda Cubed LLC September 11, 2003 Lambda Cubed LLC April 22, 2004 Chip Ward September 7, 2004 Chip Ward March 25, 2006 Lambda Cubed LLC June 3, 2008 The Respondent Ward is the Complainant Newman’s ex-husband and co-founder of the Complainant DCN. Ward is the registrant of two of the Domain Names, and he is the owner of the Respondent Lambda Cubed LLC (“Lambda”), a limited liability company organized under the law of the State of Wyoming, United States, which is listed as the registrant of the other three Domain Names. According to the Response, Ward and Newman were equal owners of DCN. This is supported by state filings attached to the Response or available on the Connecticut Department of State website. It is not disputed that Ward was involved in the production of Equitrekking and the business of DCN before and after their marriage. Ward is formally credited as a producer and writer for both television series. The Response states that Ward registered all of the Domain Names, initially paying for the Domain Names Ward and Newman were married on December 17, 2005 and divorced on April 10, 2019. The Response attaches a copy of the signed and notarized Marital Settlement Agreement (“Agreement”) dated December 21, 2018 between the Respondent Ward and his former wife, the Complainant Newman. The Agreement recounted that Ward and Newman were each 50% owners of the Complainant DCN, and the Agreement set forth arrangements under which Newman could acquire Ward’s interest by December 31, 2019 or extend the option to do so through June 30, 2020. The Agreement included provisions for Ward to receive a portion of certain profits generated by Travels with Darley and Equitrekking for a period following the acquisition of Ward’s ownership interest. According to Ward, the conditions for transfer of ownership have never been fulfilled, contrary to a filing made by Newman’s counsel with the State of Connecticut in January 2020. The Parties’ supplemental filings continue the argument over whether this transfer of ownership has been effected and whether it affects ownership of the Domain Names. The record indicates that DCN made contracts with third parties in connection with websites associated with the Domain Names. From screenshots available through the Internet Archive’s Wayback Machine, it appears that the Domain Names At the time of this Decision, the Domain Names The Complainant asserts that the “Equitrekking Domain Names”, The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Names: “Ward is no longer an owner of DCN, nor does he serve in any official capacity with DCN as an employee or otherwise. Ward has unlawfully retained the access codes to the Equitrekking Domain Names and the Darley Newman Domain Names and refuses to provide them to DCN to administer the daily operation and affairs of these sites. Furthermore, Respondents are not authorized to use the registered mark EQUITREKKING, the DARLEY NEWMAN mark or the TRAVELS WITH DARLEY mark to administer the affairs of websites associated with the domains, which have been owned and operated by DCN for years. Therefore, Respondents have no right or legitimate interest with respect to their continued restraint of the Equitrekking Domain Names and Darley Newman Domain Names other than to unlawfully profit from them to Complainants’ detriment. The domain names should be immediately transferred to DCN as their rightful owner.” The Complainant makes several arguments for bad faith on the part of the Respondent: “(i) Respondents have full knowledge that they have no ownership rights in, nor are they authorized to use, the Registration, the DARLEY NEWMAN mark or the TRAVELS WITH DARLEY mark; (ii) Ward has unlawfully exceeded his authority by listing himself and Lambda Cubed as the owners of the Equitrekking Domain Names and Darley Newman Domain Names after his departure from DCN and without DCN’s authorization; (iii) Respondents, in particular Ward, refuse to provide access codes for the Equitrekking Domain Names and the Darley Newman Domain Names to Complainants in willful violation of DCN rights in and to the domain names and Newman’s valid and subsisting U.S. trademark rights in the Registration as well as the right to use her personal name as a mark in connection with entertainment services related to the Show; and (iv) DCN has paid all fees relating to the registration and maintenance of the Equitrekking Domain Names and the Darley Newman Domain Names since their inception, while Respondents have paid nothing but still intend to solely profit from their continued unlawful use of the domain names.” B. Respondent The Respondent Ward argues that he remains an owner and was never an employee of DCN, and that he or his company Lambda continue to own the Domain Names. Ward observes that he personally registered the Domain Names The Respondent also denies bad faith in registering the Equitrekking Domain Names, because this occurred two years before trademark registration. The Response does not detail the motivation for registering these Domain Names. The Respondents offer to remove references to the Complainant Newman from the website associated with the Domain Name The Respondent requests a finding of Reverse Domain Name Hijacking with respect to four of the five Domain Names, Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. 6.1 Preliminary Matter: Consolidation and Multiple Parties The Rules, paragraph 3(c), contemplate that a complaint may relate to more than one domain name, provided that the domain names are registered by the same person, while paragraph 10(e) also gives UDRP panels the authority to consolidate multiple domain name disputes. In assessing whether a complaint may be filed by multiple complainants, as in this proceeding, UDRP panels consider whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1. Similarly, where there are multiple respondents (which is also the case here), panels look at whether “(i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties”. Procedural efficiency is also a consideration in consolidation scenarios. Here, the record shows that the two limited liability companies at issue are owned by the two individuals who are, respectively, the Complainant and the Respondent. The Domain Names arguably all concern these individuals and the two television shows in which they were jointly involved, for which the Complainant claims relevant trademarks. The material facts are intertwined, and procedural efficiency favors consolidation. The Parties do not suggest otherwise. Hence, the Panel will proceed to a Decision with all Parties and all five Domain Names. 6.2 Preliminary Matter: Supplemental Filings The Complainant and the Respondent each submitted supplemental filings. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview 3.0, section 4.6. The supplemental filings here concern the Respondent Ward’s present interests in the Complainant DCN, which requires construing the Marital Settlement Agreement and the Parties’ subsequent conduct in relation to its provisions. That task is better left to another forum. For the reasons discussed below in connection with the element of bad faith, the Panel does not find it necessary to determine the status of Ward’s current ownership interest in DCN to resolve the material issues in this UDRP proceeding. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Complainant Newman unquestionably holds a registered EQUITREKKING trademark. The Equitrekking Domain Names are identical to this mark, disregarding, as usual, the generic Top-Level Domains (“gTLDs”) “.com” and “org“, respectively, which are viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2. The Complainant also claims the Complainant Newman’s personal name “Darley Newman” as an unregistered, common law mark, as well as the name of the television show, Travels with Darley. As explained in WIPO Overview 3.0, section 1.3, a UDRP complaint may be grounded on unregistered marks, but it is not sufficient to advance “conclusory allegations of unregistered or common law rights”. “Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint”, such as proof of secondary meaning based on such factors as “(i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys”. A personal name may be protected as a common law mark when it is used in commerce “as a distinctive identifier of the complainant’s goods or services”. See id., section 1.5; David Michael Bautista, Jr. v. Quantec LLC / Whois Privacy Services Pty Ltd / Lisa Katz, Domain Protection LLC,WIPO Case No. D2016-0397. Here, the Complainant offers evidence that Newman has had wide exposure since the Equitrekking and Travels with Darley series launched, in 2004 and 2016, respectively, not only on PBS but in short segments on many online channels (including MSN Travel, Amazon Shorts, AOL, Huffington Post, Daily Motion, and CreateTV), and that both television series received additional recognition through Emmy Awards, the North American Travel Journalist Award, and other honors naming Newman or the shows. Both the name “Darley Newman” and the show title Travels with Darley have been used not only on television but on various online and social media channels, sometimes promoting or endorsing other travel entertainment or destinations. Thus, they have taken on secondary meaning associated with a relevant market, in this case the markets for travel entertainment and wilderness and adventure travel. The Panel finds that the Complainant has established rights in DARLEY NEWMAN and TRAVELS WITH DARLEY as common law marks for purposes of the UDRP. The Domain Names The Panel concludes, therefore, that the first element of the Complaint has been established for all five Domain Names. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the 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) that 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. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s marks in the Domain Names. The Respondent has not claimed relevant trademark rights or advanced other relevant rights or legitimate interests in the Domain Names, and none are evident in the case of the four Domain Names that are not currently in use. The Domain Name The Panel concludes that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, but these are expressly not exclusive. The Complainants cite none of these circumstances. They focus entirely on the argument that the Respondent Ward, once separated from the Complainant Newman and her business, should have handed over control of the Domain Names. Hence the argument over whether Ward truly retains any ownership interest in DCN, which renewed the Domain Name registrations and managed the websites, and which Ward listed as the “organization” in registering two of the Domain Names. The challenge for the Complainants is that the Policy, paragraph 4(b)(iii) is stated in the conjunctive: a complainant must show that “the domain name has been registered and is being used in bad faith”. The UDRP by its terms requires a showing of bad faith at the time of registration as well as subsequent use in bad faith. “Bad faith” in policy terms is defined in terms of abusing or taking unfair advantage of the trademark of another. See WIPO Overview 3.0, section 3.1. Thus, regardless of the Parties’ conduct since the breakup of the marriage and the business, the Panel cannot order the transfer or cancellation of the Domain Names (the only UDRP remedies), unless the Panel can conclude that, more probably than not, the Respondent registered the Domain Names in a bad faith attempt to attack the Complainant’s trademarks. With respect to the Darley Newman Domain Names, this would be improbable. The Complainant claims common law protection for DARLEY NEWMAN and TRAVELS WITH DARLEY. The Respondent Ward registered the Domain Name It is also difficult to argue bad faith in the registration of the Equitrekking Domain Names, even though a trademark was clearly anticipated in that case. The Respondent Ward registered the Domain Name Again, though, the Complainant offers no evidence that Ward acted contrary to instructions or over Newman’s objections in registering the Equitrekking Domain Names for use in the business that they established together and in which they both participated. The Domain Name The Panel concludes that the Complainant has not met its burden, on this record, of establishing the likelihood of bad faith in the registration of the Domain Names. The Complaint fails on the third element with respect to all five of the Domain Names. D. Reverse Domain Name Hijacking Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here with respect to four of the five Domain Names. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.). Here, the Complaint fails on the element of bad faith, and the Panel concludes that the Parties’ disputed ownership of the Domain Names is not suitable for resolution in a UDRP proceeding. The Complaint is not without factual support, however, and the contested issues are not so patently improbable as to warrant a finding of Reverse Domain Name Hijacking. The Panel therefore denies that request. The Respondent has also suggested more nuanced solutions that are not within the ambit of UDRP remedies but may be considered in further negotiations between the Parties. 7. Decision For the foregoing reasons, the Complaint is denied. W. Scott Blackmer
Bethesda, Maryland, United States
Bethesda, Maryland, United States
DCN Creative, LLC
New York, New York, United States
DCN Creative, LLC
New York, New York, United States
Bethesda, Maryland, United States
(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.
Sole Panelist
Date: July 7, 2020
Full & Egal Universal Law Academy