Blackheart Records Group Inc. v. Sacred Dogs Entertainment c/o Victory Tischler-Blue
Claim Number: FA0711001115098
Complainant is Blackheart Records Group Inc. (“Complainant”), represented by Fritz
L. Schweitzer, of Schweitzer Cornman Gross & Bondell LLP,
292 Madison Avenue-19th Floor,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <therunaways.net>, registered with Dotster.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 28, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 29, 2007.
On November 28, 2007, Dotster confirmed by e-mail to the National Arbitration Forum that the <therunaways.net> domain name is registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 November 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 20, 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 December 20, 2007.
On December 28, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Runaways were an all-female performance and recording group that was formed in 1975 and included the world famous rock star Joan Jett. The Complainant, Blackheart Records Group Inc., and its predecessor-in-interest acquired all rights to the mark, THE RUNAWAYS and have been using the mark since at least as early as December 1, 1990 in connection with pre-recorded media featuring musical performances, shirts and T-shirts. The Complainant also has been using the mark THE RUNAWAYS in connection with live musical performances and hats, caps, baseball caps, and jackets since as early as November 6, 2006. The Complainant is sole owner of the mark in connection with the above-referenced goods and services.
The Complainant is the owner of several federal trademark registrations and an application for the mark, THE RUNAWAYS, including Serial No. 78/714,315 in International Class 009 for use in connection with pre-recorded CDs, video tapes, laser disks, DVDs and phonograph records, all featuring music (first date of use: 12/1/1990): Reg. No. 3,097,289 in International Class 025 for use in connection with shirts, T-shirts, hats, caps, baseball caps and jackets (first date of use: 12/1/1990): and Reg. No. 3,243,050 in International Class 041 for use in connection with entertainment services, namely, live performances by a musical and singing group (first date of use: 11/6/2006). The Complainant has valid and subsisting common-law and statutory rights in the mark THE RUNAWAYS.
The domain name <therunaways.net > is identical to the mark THE RUNAWAYS because it incorporates the Complainant’s mark with no additional modifying terms.
Respondent should be considered as having no legitimate interests in the mark because Respondent is not authorized by Complainant to use the mark in its domain name. Respondent is not commonly known by the domain name and Respondent has no trademark rights to this mark. Rather, Respondent is the producer of a documentary about The Runaways entitled “Edgeplay: A film about The Runaways”.
Respondent’s Registration and Use of the Domain Name is in bad faith because Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or endorsement of its website in violation of the Policy.
Respondent uses the domain name to sell products that are competitive with Complainant’s goods. More specifically, Respondent sells DVD’s concerning musical entertainers; CD’s featuring musical performances, T-shirts, and shirts.
Respondent has made false and misleading statements on its website. More specifically, Respondent stated in 2002 and 2003 that its website was the official website for THE RUNAWAYS and was created and authorized by The Runaways.
The Response is made by Victory Tishler-Blue, the Executive Producer of Respondent, Sacred Dogs Entertainment.
Tishler-Blue, in the name of her company, the Respondent, obtained the domain name <therunaways.net> on November 5, 2001, several years before any trademark registrations were obtained. Although the mark and domain name refer to the same musical group, Respondent’s domain name has priority, and in fact, Tishler-Blue has common law trademark rights in that name that predate those of Complainant. Tishler-Blue has legitimate rights to the name, as she was a member of the Runaways, and goes by that name. Complainant’s claim that Respondent has no connection with that name is false. A Google search of the name “Vicki Blue” will reveal hundreds of references to Tishler-Blue as a band member of The Runaways. Respondent did not register the domain name in bad faith because Complainant did not have a registered trademark that Respondent could have diverted attention from or confuse people with. The pages cited by Complainant in the years 2002 and 2003 which refer to an “official” site did, in fact, represent all members of the band other than Joan Jett and at the time posted constituted the official Runaways website that was created, authorized and maintained by members of the Runaways.
Complainant’s contention that Respondent sells goods that compete with those of Complainant is false and Complainant offers no evidence to prove the contention.
Respondent did produce a documentary film, in 2004, titled “EDGEPLAY: A Film About The Runaways” which aired over 200 times on the Showtime Network from August 2005 through August 2007. That film was produced with the full cooperation and participation from all members of the band, with the exception of Joan Jett. Respondent’s intention in producing the film was to help some of the band members who had struggled over the years, by stimulating the long-stagnant music catalogue, thus creating residual publishing income for them.
appears to be a
2. Complainant holds federal trademark registrations dating from the years 2006 and 2007 for THE RUNAWAYS mark. One of the registrations was filed on August 12, 2000. The other two were filed in 2005.
3. Respondent is the business name under which Victory Tishler-Blue a/k/a Vicki Blue operates her activities.
4. Respondent registered the domain name, <therunaways.net> on November 5, 2001.
5. The domain name and the mark are identical.
6. Complainant failed to prove that Respondent is without legitimate rights to or legitimate interests in the domain name.
7. Complainant failed to prove that Respondent registered the domain name in bad faith.
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.
Complainant must first show that it has rights in the mark THE RUNAWAYS to proceed.
Complainant asserts rights in the THE RUNAWAYS mark through its registration of the mark with the United States Patent and Trademark Office, Registration No. 3,097,289 issued May 30, 2006 and its continuous use of the mark since 1990. Although Complainant’s trademark registration date does not predate Respondent’s registration of the <therunaways.net> domain name on November 5, 2001, previous panels have found that the relevant date for the purposes of Policy, Paragraph 4(a)(i) is the date the registration is filed. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003).
Since Complainant filed its first
registration on August 20, 2000, though no trademark was issued until years
later, it only seems proper to permit this date to be determinative under
Policy, Paragraph 4(a)(i). See
Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003).
The mark THE RUNAWAYS and the domain name <therunaways.net> are identical since spaces are impermissible,
capitalization versus lower case is without effect and the difference in top-level
domains are irrelevant. See Little Six, Inc. v. Domain For
Complainant prevails on this point.
The Complainant must first show a prima facie case under this point to be able to proceed. This Complainant attempts to accomplish this by contending that Respondent is not authorized to use THE RUNAWAYS mark, and is not commonly known by <therunaways.net> domain name. Respondent contends that its owner, Tischler-Blue, under the name, Vicki Blue, as a member of The Runaways, was known by that name. Respondent contends that it needed no authorization from Complainant since its common law rights were in existence prior to the year 1990, the date Complainant claims to have acquired the rights to THE RUNAWAYS mark. Complainant made no challenge to these assertions, nor did Complainant offer evidence of common law rights or enlighten the Panel as to the contractual relationships relevant to the facts and circumstances of this case. Complainant offered no evidence and only an unsupported contention that Respondent sells products that compete with Complainant’s goods, and that consumers have been diverted and have been misled. It may well be that Complainant has such evidence. If Complainant has satisfactory evidence but either because of the nature of these truncated proceedings, or by election, chose not to present such evidence, Complainant may pursue its claims in court, which is a more appropriate forum because it provides for discovery, live testimony, and credibility determinations. See Lopez v. Irish Realty Corp., FA 94906 (Nat. Arb. Forum Aug. 8, 2000).
As to Complainant’s contention that Tishler-Blue chose to register the disputed domain name under the registrant, Sacred Dogs Entertainment, and that Sacred Dogs Entertainment is not commonly known as <therunaways.net>, this is not proof of no rights to or legitimate interests in the disputed domain name. “A person or entity may legitimately register and use many domain names that are different from corporate or trade names. Thus, while registration of a domain name that mimics one’s corporate or trade name may provide proof of legitimacy, Policy Section 4(c)(ii), the inverse is not also true; the absence of a corporate or trade name from which a domain name was derived does not render the registration and use illegitimate.” See CSR Tech. Corp. v. CondeNet Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000).
What can be determined from the pleadings and inferences that can be made from the scant evidence presented is that Respondent, a member of The Runaways musical group which has been defunct for many years, produced a documentary film about the group, with the cooperation of some members of the group, which Respondent desired to market. Respondent registered the domain name on November 5, 2001, years prior to the issuance of any trademark registration of THE RUNAWAYS mark. In 2004, Respondent began to market the documentary film on the <therunaways.net> website.
Under the Policy, a party who before any notice to the party of the dispute, uses a domain name in connection with a bona fide offering of goods or services demonstrates rights to and legitimate interests in the domain name. The marketing of the documentary film appears to be a bona fide offering of goods. Complainant makes no claim to rights or ownership of the documentary film. No contention is made in the pleadings to suggest that any dispute became apparent until the year 2007.
The Panel has examined the website at <therunaways.net>. The site clicks through to another website that markets nothing other than goods associated with the documentary film. The Panel finds that Respondent should prevail under Policy, Paragraph 4(c)(i).
Tishler-Blue contends that she has been commonly known as a member of The Runaways musical group. Whether this alone should permit Respondent to prevail under Policy, Paragraph 4(c)(ii), need not be reached, but may lend some support to Respondent’s claim to rights and legitimate interests.
Respondent prevails under Policy, Paragraph 4(a)(ii).
Complainant must prove the disputed domain name was registered in bad faith. See Policy, Paragraph 4(a)(iii). Respondent registered the domain name in 2001, years before the issuance of a registered trademark to Complainant. Respondent’s undisputed representations that Respondent believed the domain name registration was proper since the registrant was a member of The Runaways musical group and was registered with authorization and for the benefit of a number of members of the group, does not seem to amount to the type of bad faith proscribed under the Policy. Compare Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand, D2001-0916 (WIPO Oct. 12, 2001).
Mere assertions of bad faith are insufficient to establish Policy, Paragraph 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech Ltd., FA 406512 (Nat. Arb. Forum Mar. 9, 2005). See also Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) and Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000).
“In its simplest form, The Uniform Dispute Resolution Policy applies only to bad faith/abusive domain name registrations (cybersquatting) and provides an efficient alternative mechanism to resolve such disputes. It is not the vehicle to resolve trade or service marks disputes and does not preclude the parties’ ability to litigate such disputes in a court of law. The decision in this proceeding is based solely on the Rules and Policy previously set forth to which the parties contractually agreed to submit themselves and does not purport to decide the issue of service mark infringement.” See Taylor Corp. v. TechniCard, FA 94308 (Nat. Arb. Forum Apr. 17, 2000).
Respondent prevails under Policy, Paragraph 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 11, 2008
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