Academy of
Motion Picture Arts and Sciences v. S. Najeeb A. Khan
Claim Number: FA0109000100142
PARTIES
Complainant is Academy of Motion Picture Arts and Sciences, Beverly Hills, CA, USA (the “Academy”) represented by Jonathan Land, of Quinn Emanuel Urquhard Oliver & Hedges, LLP. Respondent is S. Najeeb A. Khan, Bangalore, Karnataka, India (“Mr. Khan”) represented by Dale E. Pereira.
The domain names at issue are <academyawardsbetexchange.com>, <oscarsbetexchange.com>, and <oscarbetexchange.com>, registered with Dotregistrar.com, Miami, FL, USA.
PANEL
The undersigned, after clearing potential conflicts of interest, certifies that he has acted independently and impartially and, to the best of his knowledge, and has no known conflict in serving as Panelist in this proceeding.
Jonathan Hudis as Panelist.
PROCEDURAL HISTORY
In accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999 and approved by ICANN on October 24, 1999 (the “Policy”), and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), adopted by ICANN on August 26, 1999 and approved by ICANN on October 24, 1999, and the National Arbitration Forum (the “Forum”) Supplemental Rules (Supp. Rules), the Academy submitted its Complaint for decision to the Forum electronically on September 27, 2001. The Forum received a hard copy of the Complaint on October 3, 2001.
On October 9, 2001, Dotregistrar.com confirmed by e-mail to the Forum that the domain names <academyawardsbetexchange.com>, <oscarsbetexchange.com>, and <oscarbetexchange.com> are registered with Dotregistrar.com and that the Respondent is the current registrant of the name. Dotregistrar.com has verified that Respondent is bound by the Dotregistrar.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On October 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 30, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@academyawardsbetexchange.com, postmaster@oscarsbetexchange.com, and postmaster@oscarbetexchange.com by e-mail.
A timely response was received by the Forum and determined to be complete on October 24, 2001.
On
November 7, 2001, pursuant to the Academy’s request to have this dispute
decided by a single-member Panel,
the Forum appointed Jonathan Hudis as Panelist.
RELIEF SOUGHT
The Academy requests that the domain names be cancelled.
PARTIES’ CONTENTIONS
A. Complainant
The Academy states that it was founded in 1927 by a
group of 36 film industry leaders for the purpose of advancing the
motion picture arts and sciences by promoting cultural, educational and
technological achievements. As an
incentive for members of the industry to strive toward this goal and as a means
of recognizing persons who make outstanding contributions in their respective
creative fields, the Academy presents annual “Awards of Merit,” publicly known
as “Oscars.” The Awards of Merit are
alternatively referred to in the singular as "Academy “Award” or
“Oscar.” These Oscars are presented
during a nationally and internationally televised “Academy Awards” program.
The Academy claims ownership of the marks ACADEMY
AWARD, ACADEMY AWARDS, OSCAR and OSCARS marks which it has registered in the
United States and in many other countries, including India. Copies of the Academy’s United States and
Indian trademark registrations were submitted with the Complaint.
The Academy claims to be a venerable and important
body within the motion picture industry, responsible for encouraging the
industry's cultural, educational and technological advances. The Academy upholds its esteem based on its
reputation for conferring its Academy Award of Merit only to those individuals
who have shown outstanding achievement in their creative fields. The Academy states that the integrity of the
Academy Awards would be undermined if the public or trade believed the Academy
participated in or sponsored gambling on the results of the Oscars.
As a result of the Academy's alleged long leadership
of the film industry, extensive advertising, and media attention, the Academy
states that the ACADEMY AWARDS, ACADEMY AWARD, OSCAR, and OSCARS marks have
achieved widespread and favorable public acceptance and recognition, and have
become assets of substantial value throughout the United States and the world.
The Academy states that its marks are recognized nationally and internationally as signifying the Academy's annual awards program. The Academy contends that its ACADEMY AWARD, ACADEMY AWARDS, OSCAR and OSCARS marks have achieved strong secondary meaning. Moreover, says the Academy, the public universally associates “Academy Awards” and “Oscars” with the “Oscar” presentation by the Academy. The Academy also claims that the public universally associates “Academy Award,” “Oscar,” and “Oscars” with the “Oscar” statuette presented to the winners of the Academy's annual Awards of Merit. Thus, says the Academy, the ACADEMY AWARD, ACADEMY AWARDS, OSCAR and OSCARS marks are unquestionably linked in the public mind with the Academy and its Award of Merit. A United States court has found that the OSCAR mark is a famous mark that deserves the strongest form of protection. See, Academy of Motion Picture Arts and Sciences v. Creative House Promotions, Inc., 944 F.2d 1446, 1455 (9th Cir. 1991) (holding that the “Oscar” design mark “should be given the strongest possible protection against infringement”).
The Academy alleges that Mr. Khan registered the domain names <academyawardsbetexchange.com>, <oscarbetexchange.com> and <oscarsbetexchange.com> which wholly incorporate the Academy’s marks. Mr. Khan combined the Academy’s marks with descriptive term “bet exchange.” Mr. Khan’s representative, Dale Pereira, stated in a letter (a copy of which is attached to the Complaint) that his “client is making preparation to start a bet exchange” in connection with the contested domain names. Users are likely to be confused, says the Academy, by Mr. Khan’s use of the Academy’s trademarks resulting in the belief that Mr. Khan’s bet exchange is somehow sponsored or approved by or affiliated with the Academy.
The Academy states that it designs the Academy Awards ceremonies to appeal to a broad audience including families. Mr. Khan’s use of the Academy’s marks in connection with a gambling business, says the Academy, will tarnish the wholesome family-oriented image the Academy has created in its telecasts. The Academy says it does not participate in or sponsor wagering on the outcome of the Oscars. If the public believed the Academy sponsored gambling on the event, the results would be subject to accusations of bias and the Academy’s integrity would be questioned. The Academy states that it diligently preserves and protects the reputation of the OSCAR, OSCARS, ACADEMY AWARD and ACADEMY AWARDS marks. Mr. Khan’s intended use of these marks will result in the tarnishment of the Academy’s marks.
Mr. Khan’s stated intention of doing business as a bet exchange (betting on the outcomes of the Academy Awards ceremony), says the Academy, would be to conduct a business designed to profit from bets placed on the outcome of the Academy Awards. Mr. Khan has not requested permission, nor has the Academy granted him permission, to use the Academy’s trademarks in his business. Further, Mr. Khan has not been commonly known by any of the domain names. In contrast, the Academy states that it has been known by its marks since the 1930s and has made use of them on the Internet and in its domain names since 1996. Mr. Khan, says the Academy, is not making a legitimate noncommercial or fair use of the contested domain names.
It is alleged that Mr. Khan registered the contested
domain names with the intent to use the Academy’s famous marks to attract
Internet users to Mr. Khan’s Web site for commercial gain. Mr. Khan stated that his intended use of
the domain name is commercial when his counsel wrote, “betting on the Academy
Awards has become big business” and “my client is making preparation to start a
bet exchange.”
The Academy alleges that the only reason Mr. Khan
registered the domain names at issue is to attract Internet users to his Web
site. Respondent’s bad faith intention
is made clear, says the Academy, in light of Mr. Khan’s registration of over 15
other domain names with the term “betexchange” that incorporate other entities’
famous marks, including but not limited to: <nflbetexchange.com >(National Football League), <nbabetexchange.com> (National
Basketball Association), <mlbbetexchange.com>
(Major League Baseball), <nhlbetexchange.com>
(National Hockey League) and <nascarbetexchange.com>
(Nascar Auto Racing). Mr. Khan’s use of
the Academy’s and others’ marks in his domain names, says the Academy, creates
a likelihood of confusion as to the source, sponsorship and endorsement of Mr.
Khan’s web site.
The Academy asserts that Mr. Khan knew of the Academy’s marks before registering the domain names and intended to use them to attract Internet users to Respondent’s Web site for commercial gain. Further, Mr. Khan’s use of the Academy’s marks in conjunction with a gambling web site will serve to tarnish them.
B. Respondent
Mr. Khan states that he was not aware that the Academy had trademark registrations in India or in any other part of the world for the marks ACADEMY AWARDS, OSCAR or OSCARS. To the best of the Mr. Khan’s knowledge the ACADEMY AWARDS, OSCAR or OSCARS are associated in his mind and in the minds of the general public as “an event” or “a ceremony.”
Mr. Khan claims to have vast experience in the field of betting. He has been a bookie since 1978, he has been issued a bookmaker’s license, and he has been closely associated with betting.
In order to establish an online betting exchange, Mr. Khan registered the domain name <anybetexchange.com>. Anybetexchange.com is a betting intermediary that acts as a betting agent, putting people in touch with each other through its software called “Quote your Price.” The Anybetexchange.com web site allows people to quote their own odds or prices to each other, in order to make betting transactions.
Mr. Khan uses, or intends to use, Anybetexchange.com as a primary web site in conjunction with related URLs that forward users to his primary web site. To that end, Mr. Khan registered a number of domain names that include many prefixes juxtaposed to the suffix “…betexchange.com,” such as: <cricketbetexchange.com>, <tennisbetexchange.com>, <soccerbetexchange.com>, <footballbetexchange.com>, <golfbetexchange.com>, <olympicsbetexchange.com>, <beautycontestbetexchange.com>, <horseracingbetexchange.com>, <snookerbetexchange.com>, <formula1betexchange.com>, <carracingbetexchange.com>, <horseracebetexchange.com>, <motorbikeracebetexchange.com>, <nbabetexchange.com>, <nflbetexchange.com>, <nascarbetexchange.com>, <mblbetexchange.com>, <nhlbetexchange.com>, <superbowlbetexchange.com>, <emmyawardsbetexchang.com>, and others, including the disputed domain names. Mr. Khan claims that these domain name registrations are evidence of his practice of a legitimate business and not in themselves enough to infer his bad faith.
The stated purpose of Mr. Khan’s registration and use of these domain names is to carve out a cyber turf through which to launch his ‘bet exchange’ web-site and then to surround it with related domain names. It is Mr. Khan’s intention to start a bet exchange, which will exchange bets on the outcome of the winners and losers of all types of events, including the Academy Awards. Mr. Khan has submitted the affidavit of his web site designer to show the efforts he has undertaken to develop his web site(s).
Mr. Khan states that he is in no way infringing on any of the Academy’s trademark rights, and that he has not engaged in the act of abusive registrations or cybersquatting. Mr. Khan further alleges that his actions will not divert customers, or disparage or tarnish the Academy’s marks. Mr. Khan claims that the Academy has no rights in gross in its trademarks, and that its attempt to restrain him from his stated business objective is in bad faith. Mr. Khan claims that none of the examples of bad faith use and registration stated in paragraph 4(b) of the Policy apply here.
If there is any doubt, says Mr. Khan, the parties’ dispute should be decided in a Court of Law. Mr. Khan states that UDRP Panels do not have jurisdiction to decide questions of infringement, dilution, unfair competition, or similar causes of action. The Panel can only decide whether the Academy has met the elements of a claim or transfer under the Policy. Mr. Khan asserts that whether the Academy’s marks have become generic for “an event” should be decided by a Court of Law.
Mr. Khan asserts that the addition of “…betexchange” to ACADEMY AWARDS, OSCAR or OSCARS is sufficient to distinguish his domain names from the Academy’s marks. Finally, Mr. Khan questions the appropriateness of the remedy sought by the Academy, cancellation rather than transfer of the domain names.
FINDINGS AND
DISCUSSION
Paragraph
15(a) of the Rules instructs this Panel to “decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.” The Panel shall respect Mr. Khan’s
admonition that the Panel decide the Academy’s claim for relief on the basis of
whether the Academy has met the required elements of the Policy.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the contested domain name has been registered and is being used in bad faith.
In an administrative proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements is present. Policy, para. 4(a).
The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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 it is shown that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on his web site or location.
Policy, para. 4(b).
On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrant’s rights or legitimate interests to the domain name:
(i) before any notice to the registrant of the dispute, his 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 registrant (as an individual, business, or other organization) have been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the registrant 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.
Policy, para. 4(c ).
Rights of Complainant - Identical and/or Confusingly Similar Domain
Names
The Academy’s rights in the ACADEMY AWARDS, ACADEMY AWARD, OSCAR, and OSCARS marks are demonstrated by its United States and India registrations, the uncontested statements of its historical and present use of these marks, and Mr. Khan’s acknowledgement that these marks are used in connection with “events” or “ceremonies” sponsored by the Academy. The Panel also finds that the contested domain names are confusingly similar to trademarks in which the Academy has rights.
It is undisputed that the Academy owns the registered trademarks ACADEMY AWARDS, ACADEMY AWARD, OSCAR and OSCARS. It owns registrations for these marks in both the United States and India, Mr. Khan’s country of origin. The disputed domain names wholly incorporate the Academy’s marks, combined with the generic terms “…bet exchange.” The Panel views these domain names as being confusingly similar to the Academy’s registered marks. See National Collegiate Athletic Ass’n v. Universal Internet Techs., Inc., FA97295 (Nat. Arb. Forum June 25, 2001) (finding the domain names <ncaawager.com>, <finalfoursportsbook.com> and <marchmadnesssportsbook.com> as being confusingly similar to various marks held by the NCAA); see also Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding the domain name <christiesauction.com> to be confusingly similar to the Complainant's mark since it merely adds the word auction used in its generic sense).
The Question of
Respondent’s Rights or Legitimate Interests
Mr. Khan is not commonly known by the ACADEMY AWARDS, OSCAR or OSCARS marks or by the contested domain names. Policy ¶ 4(c)(ii). See Victoria’s Secret et al v. Asdak, FA96542 (Nat. Arb. Forum Feb. 28, 2001) (finding no proof that Respondent was commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).
The Academy asserts, and Mr. Khan does not deny, that the Academy has not licensed or otherwise authorized Mr. Khan to use the Academy’s marks in connection with gambling web sites. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Mr. Khan’s use of the contested domain names does not constitute fair use and is not a legitimate noncommercial use. Mr. Khan’s use of the Academy’s marks in connection with an online gambling business will tarnish the wholesome family-oriented image the Academy seeks to maintain in its telecasts. Policy ¶ 4(c)(iii).
Whether Domain
Names Were Registered and Used in Bad Faith
Mr. Khan is using the Academy’s marks in bad faith to attract Internet users to his web site. Policy ¶ 4(b)(iv). See Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com> to a gambling website). Mr. Khan has engaged in bad faith by registering domain names that will, if he ever puts them in use, ultimately result in consumer confusion. See, Phat Fashions v. Kruger, FA96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Hewlett-Packard Co. v. Wieland, FA95852 (Nat. Arb. Forum Dec. 6, 2000) (finding bad faith where any future use of the inactive website would result in consumer confusion); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where any future use of the domain name would do nothing but cause confusion with the Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present).
As Mr. Khan readily concedes that he was aware of the Academy’s marks in connection with “events” or “ceremonies”, he knew or should have known of the Academy’s established marks. See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).
In addition, the Panel finds that Mr. Khan engaged in a bad faith pattern of registering domain names incorporating the marks of others, and merely adding to them the suffix “… bet exchange.” While this is not a per se violation of Policy ¶ 4(b)(ii), the Panel finds generally that Mr. Khan’s domain name registration practices in this regard, coupled with Mr. Khan’s stated intentions for using these domain names, constitutes a pattern of bad faith registration and use within the meaning of the Policy ¶¶4(a)(iii) and 4(b).
The Panel’s findings herein are sufficient to grant the Academy either forms of the relief specified by the Policy, namely cancellation or transfer of the contested domain names. However, it is only the remedy of cancellation that the Academy seeks. The Panel’s Order for relief is reflected accordingly.
DECISION
Based upon the foregoing, the Panel directs the CANCELLATION of the domain names <academyawardsbetexchange.com>, <oscarsbetexchange.com> and <oscarbetexchange.com>.
Jonathan Hudis, Panelist
Dated: November 14, 2001
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