David Pearlstein a/k/a Show Business Inc. v. Soft Image Systems
Claim Number: FA0708001053372
Complainant is David Pearlstein a/k/a Show
Business Inc. (“Complainant”),
represented by Mark Lerner, of Satterlee Stephens Burke & Burke LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <showbusiness.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David Einhorn and David Safran as Panelists, Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 3, 2007.
On August 2, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <showbusiness.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 28, 2007 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.
A timely Response was received and determined to be complete on August 28, 2007.
An Additional Submission from the Complainant was received on September 4, 2007 and was determined to comply with Supplemental Rule 7. An Additional Submission from the Respondent was received on September 9, 2007 and was determined to comply with Supplemental Rule 7.
On September 10, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David Einhorn and David Safran as Panelists and Richard Hill as Presiding Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant alleges that it publishes Show Business — a weekly trade paper targeting the performing arts industry and the needs of up-and-coming performing artists, and also publishes at the website <www.showbusinessweekly.com>.
According to the Complainant, it has both registered and common law marks in the string SHOW BUSINESS, dating back to 1941, and those marks have accumulated substantial goodwill of great value due to the Complainant’s publications’ unique perspectives on the performing arts and their current industry news and announcements. Indeed, among their target audience, the SHOW BUSINESS marks are legendary.
The Complainant states that the disputed domain name is identical to its mark SHOW BUSINESS.
According to the Complainant, the Respondent is the owner of the trademark SHOW BUSINESS (U.S. Reg. No. 1,762,555) for computer software-related goods and services. That trademark was registered in 1993 in International Class 009 for “computer software used in business presentations, desk top publishing, hypertext executive information and multi-media publishing,” and in International Class 016 for “printed publications; namely, pamphlets and manuals relating to computer software used in business presentations, desk top publishing, hypertext executive information and multi-media publishing.”
The Complainant alleges that the website at the disputed domain name was used for many years to promote computer-related goods and services. In late 2006, however, the Respondent transformed its site, making it identical or confusingly similar to Complainant’s entertainment news sources — Show Business and <www.showbusinessweekly.com>. In fact, the Respondent transformed its use of its website and its trademark so that its goods and services related to news and information about the theater and entertainment instead of software-related goods and services.
The Complainant goes on at length
to discuss how such use violates, in its opinion,
The Complainant alleges that the
Respondent is using the disputed domain name in bad faith because of the
above-mentioned violations of
Further, says the Complainant, the Respondent maintained the disputed domain name solely for the purpose of attracting offers to purchase it. In 2000, the Respondent retained a domain name auction service to market the domain name in a manner that targeted the Complainant’s audience, goods and services; in related marketing materials, the dispute domain name was proclaimed to be “one of the most prestigious names ever offered to the entertainment industry.”
The Respondent confirms that it is the owner of a registered trademark for the string SHOW BUSINESS and claims that first use of that mark dates back to 1989.
The Respondent replies at length to
the Complainant’s allegations regarding
The Respondent alleges that its registration of the disputed domain name was both legitimate and in good faith because that domain name corresponds to the Respondent’s registered trademark under which it has been doing business since 1989.
According to the Respondent, it was not aware of the Complainant’s publications and their existence played no role in its registration and use of the disputed domain name. If there was any confusion with the Complainant’s marks, it was unintentional, and the Respondent has taken steps to eliminate such confusion, in particular by putting a notice on its website to the effect that there is no link or association of any kind with the Complainant.
The Respondent confirms that it did, at one time, consider selling the disputed domain name, but states that it subsequently decided to keep it and to develop it further.
C. Additional Submissions
In its Additional Submission, the Complainant rebuts the Respondent’s
replies concerning various issues related to
In its Additional Submission, the Respondent sur-rebuts the
Complainant’s rebuttal concerning various issues related to
Both the Complainant and the Respondent have registered and common law trademarks in the string SHOW BUSINESS.
The Respondent registered the disputed domain name to promote its business, conducted under the trademark SHOW BUSINESS.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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.
However, as a preliminary issue, the Panel notes that the essential
matters at dispute appear to involve application of
The Complainant and the Respondent both assert rights to the SHOW BUSINESS mark through their respective USPTO trademark registrations. In addition, the Respondent challenges when the Complainant first acquired rights to the SHOW BUSINESS mark, albeit in a limited capacity. This dispute falls outside the scope of the Policy,
Indeed, the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.
The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://www.wipo.int/amc/en/processes/process1/report/index.html). This report states at paragraph 135:
In view of the weight of opinion against mandatory submission to an administrative procedure in respect of any intellectual property dispute arising out of a domain name registration, the final recommendations of the WIPO Process contain two major changes in respect of the suggested administrative dispute‑resolution procedure:
(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.
(ii) Secondly, the notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights.
And the WIPO Report states at 153:
… The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting), as defined below, and would not be available for disputes between parties with competing rights acting in good faith.
And at 166:
The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations.
The pertinence of these passages is confirmed by Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000), where the Panel indicated that legitimate disputes should be decided by the courts:
The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline administrative dispute-resolution procedure.
See also Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”).
Therefore, the Panel will not address those aspects of the present
dispute that hinge on interpretation of
The disputed domain name is identical to the Complainant’s mark. See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES pursuant to Policy ¶ 4(a)(i)).
The Respondent has trademark rights in the string SHOW BUSINESS. These trademark rights confer rights in the disputed domain name to the Respondent pursuant to Policy ¶ 4(c)(ii). See Kelly v. Qsoft Consulting Ltd., D2003-0221 (WIPO Apr. 30, 2003) (finding that the respondent had concurrent rights and legitimate interests in the <mygaydar.com> domain name where, at the time that the administrative proceeding was commenced, both parties had “homonymous trademark rights to the GAYDAR mark” through their respective use of the mark in the U.S. and the U.K.); see also Fuji Photo Film Co. v. Fuji Publ’g Group, D2000-0409 (WIPO July 2, 2000) (finding that because the respondent had used or traded using the corporate name Fuji since 1992 for Internet services, point of sale software, and bulletin board services, all that are outside the scope of the complainant’s FUJI mark, the respondent had rights and legitimate interests in the <fuji.com> domain name).
As noted above, various questions raised by the parties with respect to trademark priority or seniority, or unfair competition, are outside the scope of the Policy and will not be considered by this Panel.
A minority of the Panel notes that the Respondent states that its current use in the field of theater and entertainment is a natural development and expansion of its previous software related goods and services usage. Therefore, said future use could have been envisioned and planned for at the time of registration. If so, the domain registration by the Respondent could have indeed have been in bad faith, and thus not legitimate, given that the Complainant claims well-known trademark rights dating back to 1941. Indeed, if the Respondent intended to eventually use the domain name in the field of theater or entertainment, bad faith registration may exist regardless of whether Respondent first used the domain in a different field. This would be no different than an initial period of passive use, which would also not negate bad faith. That the Respondent argues that the theater and entertainment field is a natural expansion of its initial software business suggests that the Respondent intended to enter the field of theater and entertainment from the time of its domain name registration.
However, as noted above, the majority holds that issues related to interpretation or application of U.S. trademark law, and conflicts between two owners of similar or identical trademarks, are outside the scope of the Panel, in particular because the Respondent argues that his registered use for computer software used in multi-media publishing and for publications related to such computer software covers its current use of the disputed domain name. Indeed, the website at the disputed domain name has a sub-caption stating “Multimedia publishing since 1989” and states that its goal is “[t]o create the largest entertainment network in the world.” In contrast, the Complainant’s web site at <www.showbusinessweekly.com> is sub-captioned “The original casting weekly for stage and screen” and is clearly focused on those activities.
Therefore, the majority of the Panel holds that the Respondent has rights in the disputed domain name.
The Complainant admits that the Respondent holds a registered trademark for the SHOW BUSINESS mark in association with computer software and desktop publishing, and that the Respondent registered the disputed domain name to advertise its products and services online.
Therefore, the Complainant admits that the
Respondent’s registration of the disputed domain name was not in bad
faith. Whether or not the Respondent’s
subsequent use of the disputed domain name violates
As noted above, a minority of the Panel holds that the Respondent’s use and registration may have been in bad faith.
But the majority holds that the record clearly shows that the Respondent did not register the disputed domain name in bad faith, and, therefore, that the Complainant has failed to prove this element of the Policy, which requires both registration and use in bad faith.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David Einhorn David
Richard Hill, Presiding Panelist
Dated: September 18, 2007
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