Philip Y. Kim v.
Claim Number: FA0802001152004
Complainant is Philip Y. Kim (“Complainant”), represented by Valerie
A. Nemeth, of Valerie Ann Nemeth Attorney at Law, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <famousmonstersoffilmland.com>, registered with Compana, LLC.
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.
R. Glen Ayers, Jr. served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 21, 2008.
On February 28, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <famousmonstersoffilmland.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 March 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 26, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 26, 2008.
Additional Submissions were received as follows:
1. Complainant’s Additional Submission;
2. Respondent’s Objection and Reply to Complainant’s Additional Submission; and
3. Correspondence related to USPTO letter dated April 2, 2008.
All were timely and were considered by the Panelist.
On April 3, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Plaintiff’s Original Complaint was amended to address those issues set out in a letter from Michael C. Houle to Complainant’s attorney on February 29, 2008. The Panelist, in discussing Complainant’s contentions, refers only to the Amended Complaint and additional submissions. Complainant asserts that it owns a trademark properly registered with the United States Patent and Trademark Office, “FAMOUS MONSTERS OF FILMLAND.” This trademark is obviously identical to the domain name held by Respondent, <famousmonstersoffilmland.com>.
Complainant goes on to assert that Respondent does not have any legitimate rights in the mark or the domain name. Respondent, says Complainant, utilizes the domain name as a web portal “providing users with a search function, as well as advertisements . . . .”
Complainant also asserts bad faith. Complainant reports that Respondent registered the domain name in 2005. Complainant asserts that its mark has been well known since the 1950’s. The actual trademark was issued in 2001. This background, says Complainant, constitutes constructive, if not actual knowledge, of the mark. Complainant provided copies of correspondence to Respondent and the relevant documents showing registration with the USPTO. No response to the correspondence was forthcoming. Nevertheless, counsel for Complainant forwarded copies of the trademark registration to Respondent. Irrespective of these contacts and demands, Complainant asserts that Respondent renewed its registration of the domain name on December 6, 2007.
Complainant goes on to point out that the only purpose Respondent could have had in registering and re-registering the domain name was to “attract, for commercial gain, Internet users to Respondent’s website . . . .” Complainant also asserts that Respondent has registered, directly and indirectly, over 600,000 domains. However, Complainant alleges that Respondent maintains only a cell phone which is never answered and never responds to messages.
Respondent’s Original Response asserts that it is unclear, to Respondent, whether or not Complainant has any rights in the name. Respondent asserts that there have been three registrations of the “FAMOUS MONSTERS OF FILMLAND” mark. First, Ray Ferry, the original publisher of the magazine by the same name, registered the mark in 1993. That mark was cancelled in 2003. Mr. Ferry registered the mark again in 1994 and that mark was cancelled in 2001. These registrations were on the Supplemental Register.
Subsequently, in 2001, Mr. Ferry obtained a registration on the Principal Register. Respondent asserts, however, that the actual ownership of the mark is very confusing. Mr. Ferry ultimately filed bankruptcy and the trademark, says Respondent, was assigned variously to Esketores Systems, LLC, David Gottlieb, David K. Gottlieb, as Chapter 7 Trustee, and Complainant. Since the Complainant acquired the mark in a bankruptcy proceeding, Mr. Ferry, says Respondent, has continued to protest to assert that he owns the mark and has asserted that the mark was transferred from his ownership by fraud.
Respondent did not respond to allegations that it has no interest in the name.
Respondent does assert that its actions were not in bad faith. Respondent asserts that there is not sufficient evidence of bad faith and Respondent asserts that he had no actual knowledge of the mark in question.
C. Additional Submissions
In its “Additional Submission,” Complainant notes that Respondent is basing its allegations on a civil dispute between Complainant and Raymond Ferry. However, as Complainant points out, the evidence of Complainant’s ownership is clear. Complainant has submitted all of the relevant bankruptcy court order showing the adjudication and transfer of title to the mark in Mr. Ferry’s bankruptcy to Complainant. Mr. Ferry, and any other party who claimed an interest in the mark, were parties to the litigation in the bankruptcy court. Further, Complainant notes that all of the alleged litigation, except for Mr. Ferry’s continued insistence on some form of ownership, had been resolved long before the registration or re-registration of the domain name by Respondent.
As Complainant notes, Respondent has really not asserted that it has any rights in the name.
As to bad faith, Complainant cites Respondent’s history as a litigant in domain name matters.
As to further evidence of bad faith, Complainant points out that well after Respondent learned of the claims of Complainant, Respondent renewed the registration of the domain name.
Complainant also says that evidence of bad faith includes the simple fact that Respondent does not even have a telephone number other than a cell phone.
After Complainant’s Additional Submission, there was other correspondence from Complainant, Respondent and the National Arbitration Forum. The relevant correspondence includes a letter from Complainant’s counsel to the the National Arbitration Forum attaching a letter from the USPTO. That letter reflects the existence of claims by Ferry. Respondent, in correspondence to the National Arbitration Forum, stated that it had no objection to the additional submission of that letter.
Respondent filed its “Objection and Reply to Complainant’s Additional Submission.” In Respondent’s Objection, it objects to the Additional Submission on technical grounds. That objection is overruled. The Additional Submission was timely received and was in accordance with the National Arbitration Forum supplemental rules at paragraph 7.
Respondent’s objection is largely concerned with addressing the scope and extent of the dispute that seems to exist between Mr. Ferry and Complainant. However, Respondent also seems to argue several things including that the mark is not particularly unique and is weak, even though the mark is registered on the Principal Register at the USPTO.
In reviewing the Response, it appears that the main issues are under ICANN Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.”
Respondent contends that a dispute exists between Complainant and a third party regarding the rights of the FAMOUS MONSTERS OF FILMLAND mark. Complainant has submitted evidence to show that no court proceeding currently exists which would prevent the Panelist from rendering a decision in the UDRP matter at hand.
Even if the there were a concurrent proceeding exists, the Panelist may nevertheless choose to proceed with the UDRP matter at hand. See Creative Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003) (choosing to proceed with a decision under the authority of Rule 18(a), despite the filing of a lawsuit over the parties respective trademark rights in federal court); see also BPI Commc’ns, Inc. v. Boogie TV LLC, FA105755 (Nat. Arb. Forum Apr. 30, 2002) (deciding to proceed despite the complainant filing suit in federal court for trademark and service mark infringement). Alternatively, the Panel may choose to abstain from rendering a decision in the current matter. See Lutton Invs., Inc. v. Darkhorse Distrib., Inc., FA 154142 (Nat. Arb. Forum June 4, 2003) (stating that “[t]he pending arbitration between the parties to this dispute, touching on matters directly relevant to the resolution of a claim under the UDRP, justifies terminating the present administrative proceeding” and dismissing the complaint without prejudice); see also AmeriPlan Corp. v. Gilbert FA105737 (Nat. Arb. Forum Apr. 22, 2002) (the function of the UDRP is to reduce the cost and effort required to resolve domain name disputes by offering a simplified mechanism in lieu of litigation, to render a decision on a domain name dispute when there is already a court action pending does violence to this function of the UDRP).
The Panelist has chosen to proceed.
Identity of Mark and Name
First, the Panelist finds that the Complainant clearly holds a mark properly registered on the Principal Register of the USPTO. The Complainant has provided a complete history and copies of relevant documents from the United States Bankruptcy Court. Pursuant to the United States Bankruptcy Code, the sale of the trademark rights clearly extinguished any rights that Mr. Ferry had, irrespective of his continued protestations to the contrary. See generally 11 U.S.C. §363.
Complainant, as assignee of a mark registered with the USPTO, has sufficiently established rights in the FAMOUS MONSTERS OF FILMLAND mark pursuant to Policy ¶ 4(a)(i). See remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the registered mark, REMITHOME, by virtue of an assignment); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Stevenson v. Crossley, FA 1028240 (Nat. Arb. Forum Aug. 22, 2007) (“Per the annexed U.S.P.T.O. certificates of registration, assignments and license agreement executed on May 30, 1997, Complainants have shown that they have rights in the MOLD-IN GRAPHIC/MOLD-IN GRAPHICS trademarks, whether as trademark holder, or as a licensee. The Panel concludes that Complainants have established rights to the MOLD-IN GRAPHIC SYSTEMS mark pursuant to Policy ¶ 4(a)(i).”).
Rights in Name
Respondent has never submitted any evidence that it has any rights in the name.
Complainant makes a prima facie case in support of its allegations concerning rights in the name, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Finally, as to bad faith, Respondent’s conduct in initially registering the domain name may not have been in bad faith, but the renewal of the registration was. Respondent’s discussions of its reluctance to transfer the domain name as requested to the owner of the identical mark is, at best, disingenuous. The clear evidence of a bankruptcy court sale cannot be overcome by Mr. Ferry’s apparent mistaken belief that somehow he may still recapture the mark. Admittedly, the Bankruptcy Court information was not available except on PACER until provided by the Complainant.
The renewal of the domain name in the face of Complainant’s correspondence is the deciding factor. Respondent’s pattern of conduct in registering domain names and creating click-though sites is not particularly persuasive. However, given Respondent’s actual knowledge as of the renewal date, together with its willful ignorance concerning the status of the mark as the result of a bankruptcy sale, persuades the Panelist of the existence of bad faith.
Respondent renewed the disputed domain name
after having received a true and correct copy of Complainant’s USPTO
registration for the FAMOUS MONSTERS OF FILMLAND mark. The Panelist may find that because Respondent
had actual or constructive knowledge of Complainant’s rights in the FAMOUS
MONSTERS OF FILMLAND mark when it reserved the disputed domain name, the <famousmonstersoffilmland.com>
domain name was registered and used in bad faith pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see
also Yahoo! Inc. v.
Therefore, it is clear that the Complainant has met its burden of proof of showing ownership of a mark which is identical to or confusingly similar to Respondent’s domain name. Respondent has not even attempted to rebut the allegation that it has no legitimate rights or interest in the domain name itself. Finally, as discussed above, Complainant has clearly shown Respondent’s bad faith by showing that, after Respondent knew of Complainant’s ownership of the domain name, and knew or should have known that the ownership of the domain name long predated the original registration of the domain name, Respondent still renewed the domain name, denying use of the domain name to Complainant.
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.
The Panelist finds that the mark and the domain name are identical.
The Panelist finds that the Respondent has no legitimate interest in the domain name and has not even asserted that its holds any legitimate interest in the domain name.
Finally, as set out above, the Panelist finds that the registration and use was in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <famousmonstersoffilmland.com> domain name be TRANSFERRED from Respondent to Complainant.
R. GLEN AYERS, JR., Panelist
Dated: April 17, 2008
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