Jerry Leiber dba Jerry Leiber Music and Mike Stoller dba Mike Stoller Music v. Russx Casting Company
Claim Number: FA0110000100713
Complainants are Jerry Leiber and Mike Stoller, Los Angeles, CA (“Complainant”) represented by Aidan Synnott, of Paul, Weiss, Rifkind, Wharton & Garrison. Respondent is Charles Bukowski Russx Casting Company, Obninsk, Kaluga reg, RU (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is <smokeyjoescafe.com>, registered with BulkRegister.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 19, 2001; the Forum received a hard copy of the Complaint on October 22, 2001.
On October 24, 2001, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <smokeyjoescafe.com> is registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name. BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The disputed domain name is identical or confusingly similar to a name to which Complainant has full rights.
Respondent has no rights or legitimate interests in respect to the disputed domain names.
Respondent registered and is using the disputed name in bad faith.
No response was received.
Smokey Joe’s Cafe is a musical revue that first opened in November, 1994 and opened on Broadway in March, 1995. The show is credited as the longest running musical revue in Broadway history. The name “Smokey Joe’s Cafe” has been used to market and sell a cast album and home video of the show as well as various other souvenir merchandise. Complainant maintains that its promotion of “Smokey Joe’s Cafe” has allowed the name to achieve secondary meaning as a famous mark.
On April 19, 2001, Respondent registered <smokeyjoescafe.com> after Complainant inadvertently allowed its registration of the name to lapse. Respondent has used the domain name to display pornography and to direct viewers to other pornographic sites. Respondent has also posted a notice on the site that the domain name is for sale.
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.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required—unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); accord, see Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).
In light of Complainant’s undisputed representation, Complainant has established common law rights to the “Smokey Joe’s Cafe” name by use of the name in a continuous and ongoing manner so that secondary meaning is created. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning is established).
It is irrelevant that “.com” has been added to the disputed domain name and that spaces have been removed from the mark. See Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that the “mysticlake.net” is plainly identical to Complainant’s “MYSTIC LAKE” trademark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to submit a response in this proceeding. Such a failure to respond can be construed as an admission that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Further, the use of the disputed domain name to direct viewers to commercial pornographic sites does not constitute a legitimate interest in the name. See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).
Since no right or legitimate interest in Respondent is immediately apparent, the Panel may conclude that no such rights or interests exist. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied, and Respondent has no rights or legitimate interests in respect of the disputed names.
Registration and Use in Bad Faith
Respondent’s attraction of Internet users to a commercial pornographic website through use of Complainant’s mark is evidence of bad faith. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding use of another's well-known mark to link to a pornographic site is evidence of bad faith registration and use).
Respondent’s offer to sell the disputed domain name, even without naming a specific price, further adds an appearance of bad faith. American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Because Complainant previously used the disputed domain name to promote the show associated with its mark, Respondent’s subsequent registration of the name further indicates bad faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <smokeyjoescafe.com> domain name be transferred from Respondent to Complainant
John J. Upchurch, Panelist
Dated: December 3, 2001
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