Roseanne Barr v.
Claim Number: FA0803001155782
Complainant is Roseanne
Barr (“Complainant”), represented by Michael
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roseannetv.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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 11, 2008.
On March 11, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <roseannetv.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 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 14, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on April 14, 2008.
Additional Submissions were timely received from both parties.
On May 4, 2008, pursuant
to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the well known entertainer, Roseanne Barr. In her Complaint, she asserts that Respondent’s registration of the domain name <roseannetv.com> is improper under the ICANN policies.
Complainant asserts that the word ROSEANNE constitutes a common law trademark owned by Complainant. In support of that allegation, Complainant states that the common law trademark exists as a result of Complainant’s long television career in which she has appeared in three television shows, including the long running “Roseanne,” “The Roseanne Show,” which ran for two seasons; and, a reality show called “The Real Roseanne Show.” She has also published books entitled “Roseanne.” The original television show, “Roseanne,” is available on DVD and is sold as “Roseanne.”
Of course, ROSEANNE has never been registered as a trademark with the U.S. Patent and Trademark Office.
The domain name, even with the addition of “tv,” is certainly confusingly similar to the alleged common law trademark. As to rights in the name, Complainant points out that Respondent has no rights in the name and has never received any assignment of rights in the name.
As to bad faith, Complainant points out that the website links to websites which sell Roseanne Barr DVD’s which constitute registration and use in bad faith because the use of the domain name is intended to attract Internet users for commercial gain. Bad faith is also shown by the legal history of Respondent’s business. Respondent has been a frequent respondent in domain name disputes, and, during the last twelve months, says Complainant, Respondent has been ordered to transfer domain names 55 times (out of 59 cases, filed with the National Arbitration Forum).
In its Response, Respondent stresses that there is no common law mark. First, Respondent asserts that having a famous name does not necessarily create an unregistered, common law mark.
Respondent asserts on a number of bases that there is no common law mark. Most importantly as Respondent points out, the Complainant must establish that “the name in question” has a secondary meaning identifiable to Complainant’s goods or services.”
As to rights in the name, Respondent asserts that it does have rights in the name and that it uses the domain name to provide links to a number of entertainment options including links to Roseanne Cash, a very well known country music singer.
As to bad faith, Respondent denies that it was aware that Roseanne Barr claimed a trademark, common law or any other mark, in her first name. Respondent also denies that Complainant ever attempted to contact it.
Further, and more to the point, Respondent has pointed out that Complainant has offered no evidence that Respondent specifically intended to confuse customers concerning the domain name’s relationship to Complainant.
Respondent also asserts that its somewhat checkered past is irrelevant to this inquiry.
C. Additional Submissions
Complainant filed an Additional Submission in which Complainant offers evidence of the existence of a common law mark. Complainant’s evidence shows that Googling “Roseanne” generates a large number of results. Certainly Complainant’s Additional Submission shows that Roseanne Barr and her first name are very famous. Complainant then discusses again its argument that Respondent has no rights in the name and again asserts that the registration and use of the name is in bad faith. Again, Complainant relies heavily upon the business history of Respondent.
Respondent’s Additional Submission requests that Complainant’s additional submission be stricken. That request is denied. Like Complainant, Respondent then rehashes the issue of whether “Roseanne” is a common law mark.
The Panelist cannot find that there is sufficient evidence offered to show that Roseanne Barr holds a common law mark in the name “Roseanne.”
Although Complainant has offered a great deal of evidence that Roseanne Barr, the entertainer, is well known, even only by her first name, there simply is no evidence that the name “Roseanne” has acquired a secondary meaning identifying goods or services provided by Ms. Barr. For example, as pointed out by Respondent, there are other very well known entertainers with the same name, including Roseanne Cash. Further, to argue that Ms. Barr’s name identifies, for example, DVDs of her original and famous television show is not sufficient—(the show was named “Roseanne,” the show starred “Roseanne,” the show still sells under the name “Roseanne,” therefore, the name ROSEANNE has become a common law trademark).
However, as the Respondent points out, for
personal names to become common law trademarks, the public must identify the
personal name as a symbol which identifies and distinguishes the goods and
services of only the trademark holder. See McCarthy on Trademarks and
Unfair Competition, 578-579
(2nd ed.). There
are domain name opinions finding that personal names have acquired the status
of common law marks. Many of those
decisions are not persuasive. However, for an example of a personal name that
has clearly acquired a common law mark identifying sources of goods and
services. See Garnett v. Trap Block Techs., FA
128073 (Nat. Arb. Forum Nov. 21, 2002).
In Garnett, the Panel found
that the name “Kevin Garnett” was a common law mark held by the relatively
famous basketball player of the same name. Garnett had actually opened a retail store
named “One On One with Kevin Garnett,” located at the Mall of America in
Here, there just simply is not enough evidence that “Roseanne” has become an identifier of anything other than otherwise copyrighted items such as DVD copies of her television show and books. “Roseanne” does not identify goods and services as did KEVIN GARNETT which was used to “brand” photographs, playoff programs, basketball jerseys, trading cards, basketballs, etc.
Because the Panelist has found that there is no common law mark, there is no reason to analyze issues of rights in the name and bad faith.
Suffice to say, if there were a common law mark, Respondent would have no rights in the name, and Respondent’s conduct would be in bad faith. Respondent frequently registers all sorts of domain names, including names like “Roseanne.” Respondent frequently loses domain disputes. In this case, Respondent has not registered a domain name which is identical to or confusingly similar to a mark.
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.
There is no common law trademark, and, therefore, Respondent prevails on this issue.
The Panelist does not reach this issue.
The Panelist does not reach this issue.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <roseannetv.com> domain name is not ordered TRANSFERRED from Respondent to Complainant.
R. GLEN AYERS, JR., Panelist
Dated: May 8, 2008