Mitchell Kutash, Gerald Kubach, Michael Kohn, Catherine Kohn, and William Jones as joint shareholders d/b/a The Funnybone v. Frank Stevens
Claim Number: FA0808001221185
Complainant is Mitchell Kutash, Gerald Kubach, Michael
Kohn, Catherine Kohn, and William Jones as joint shareholders d/b/a The
represented by Amanda H. Wilcox, of Hahn Loeser & Parks LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <toledofunnybone.com>, <funnybonetoledo.com>, <perrysburgfunnybone.com>, and <funnyboneperrysburg.com>, registered with GoDaddy.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M Stoner, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 22, 2008.At the request of the National Arbitration Forum, the Complaint was amended to list a single Complainant, to correctly identify the Respondent, to list the current Registrar of record, and to conclude with the actual signature of Complainant’s authorized representative.
On August 21, 2008, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <toledofunnybone.com>, <funnybonetoledo.com>, <perrysburgfunnybone.com>, and <funnyboneperrysburg.com> domain names are registered with GoDaddy.com and that the Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 September 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 22, 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, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on September 19, 2008.
Complainant submitted an Additional Submission on September 24, 2008, which was adjudged to be timely.
Respondent submitted an Additional Submission on September 29, 2008, which was also adjudged to be timely.
On October 2, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq. as Panelist.
Complainant requests that the domain names <toledofunnybone.com>, <funnybonetoledo.com>, <perrysburgfunnybone.com>, and <funnyboneperrysburg.com> be transferred from Respondent to Complainant.
A. Complainant contends as follows:
The following domains are the subject of this Complaint: <toledofunnybone.com>; <funnybonetoledo.com>; <perrysburgfunnybone.com>; and <funnyboneperrysburg.com>.
Complainant is the owner of the
following Registered Trademark in the
Complainant has used the mark THE FUNNY BONE continuously in interstate commerce since at least as early as October 12, 1983. A copy of the registration information is attached as Exhibit A.
Respondent’s previously cited offending domain names are identical or confusingly similar to a trademark of service mark in which the Complainant has rights, namely the trademark THE FUNNY BONE.
Complainant has invested substantial dollars and resources to advertise and to promote its services under the FUNNY BONE trademark. Through this investment, the instant trademark has become well-known and is a strong brand name. Respondent’s domain names are a version of Complainant’s trademarks, compiled by inserting a geographic identifier as a prefix or suffix. Complainant contends that these geographic identifiers do not distinguish the disputed domain names from the competing marks.
Complainant also contends that due to Complainant’s federal registration, Respondent had at minimum, constructive knowledge of Complainant’s registrations. This knowledge is sufficient to support a finding of bad faith. Respondent registered the disputed domain names on June 05, 2008, per WHOIS information, as shown in Annex D. However, Complainant contends that Respondent has no rights or legitimate interests, as Respondent was never known by the domain name and is using the domain names to divert internet users to competing websites.
B. Respondent contends as follows:
Respondent contends that the domain names in issue are not identical or confusingly similar, primarily because Respondent is using the word “funnybone” for use on a humor website, with no direct connection to dinner theatre.
Respondent denies that The Funny Bone trademark has any brand recognition in the Toledo/Perrysburg market. Respondent denies that Complainant has exclusive rights to any city, state and municipality names.
Respondent contends that it purchased and registered the disputed domain names in good faith, with the intent of having a local humor site to draw local sponsors.
Respondent has been in the humor comedy business for over 20 years.
Respondent’s web site is a legitimate commercial site, with the goal of attracting local humor enthusiasts, for the purpose of selling sponsorships and ads.
Respondent’s website has nothing to do with stand up comedy or dinner theatre.
Respondent properly filed and paid for, the disputed domain names.
Respondent and Complainant’s businesses are completely different, in that Complainant’s customers have an expectation of dinner theatre and Respondent’s customers have an expectation of humor and humor listings, much like a search engine.
Complainant’s Exhibit E was a test screen used by the web designer and is not in use, nor will be.
C. Additional Submissions
Complainant, in its Additional Submission, contends as follows:
As shown in Exhibit G, Respondent
is a direct competitor of Complainant, in that Respondent operates a comedy
Respondent purchased all the domain
names that Complainant would use for its locations within
Respondent creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website. However, there is no indication that Respondent is doing business, or intends to do business by any name that includes the term Toledo Perrysburg or funnybone, per Respondent’s Annex C.
Respondent, in its Additional Submission, alleges as follows:
Respondent denies any direct
competition with Complainant, via any internet ventures, and Complainant’s
trademark only affords Complainant a remedy when associated with dinner
theatre. Respondent denies purchasing
domain names, which Complainant anticipated using. Respondent purchased the
disputed domains, upon the recommendations of its marketing company. The words
Funny Bone are synonymous with humor and work well to attract internet hits.
Respondent’s marketing plan is to achieve a customer list in excess of 5000 and
20,000 monthly hits from the markets of Perrysburg and
1. The domain names registered by the Respondent, that is; <toledofunnybone.com>, <funnybonetoledo.com>, <perrysburgfunnybone.com>, and <funnyboneperrysburg.com> are identical or confusingly similar to the service mark THE FUNNY BONE in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the domain names; and
3. The domain names have been registered, and are being used 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 asserts rights in THE FUNNY BONE mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,339,622 issued June 4, 1985). The Panel finds that Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
Respondent’s <toledofunnybone.com>, <funnybonetoledo.com>,
domain names are confusingly similar to Complainant’s THE FUNNY BONE mark. Each of Respondent’s domain names contains
the dominant portion of Complainant’s mark: namely the terms “funny” and
“bone.” Additionally, each of
Respondent’s disputed domain names omit the article “the,” add the geographic
terms “toledo” or “perrysburg,” and add the generic top-level domain (“gTLD”)
“.com.” The Panel finds that none of
these distinctions are sufficient to differentiate Respondent’s domain names
from Complainant’s mark under Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, 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).
Complainant has offered through its Exhibits E, F, & G credible evidence that Respondent is using the <toledofunnybone.com>, <funnybonetoledo.com>, <perrysburgfunnybone.com>, and <funnyboneperrysburg.com> domain names to redirect Internet users to Respondent’s own <planetzeor.com> domain name and website.
The Panel finds that Respondent is not using the <toledofunnybone.com>, <funnybonetoledo.com>, <perrysburgfunnybone.com>, and <funnyboneperrysburg.com> domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel found the following information in Complainant’s Additional Submission to be influential in arriving at this finding. That Complainant purchased the disputed domain names that Complainant would use for its location in Toledo and Perrysburg in anticipation of Complainant’s opening new clubs in these locations and that in accordance with Respondent’s Annex C, the disputed domains all resolve to <planetzeor.com>. Panel agrees with Claimant, when Claimant says that, “Respondent could easily have registered just the domain <planetzeor.com> if Respondent intended to operate a legitimate business from this website.” See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Panel finds no evidence that Respondent is either commonly known by the <toledofunnybone.com>, <funnybonetoledo.com>, <perrysburgfunnybone.com>, and <funnyboneperrysburg.com> domain names, or licensed to register domain names using the THE FUNNY BONE mark. Respondent’s WHOIS information identifies Respondent as “Frank Stevens.” The Panel finds no other evidence that Respondent is commonly known by any of the disputed domain names, to support its allegation that it has rights and legitimate interests under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant has offered credible evidence through its Exhibits E, F & G, that Respondent is using the <toledofunnybone.com>, <funnybonetoledo.com>, <perrysburgfunnybone.com>, and <funnyboneperrysburg.com> domain names to redirect Internet users to Respondent’s own <planetzeor.com> domain name and website, a site that both disparages Complainant’s business and advertises competing comedy club services. The Panel finds that such use constitutes a disruption of Complainant’s business and is therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent’s manner of use of the <toledofunnybone.com>, <funnybonetoledo.com>, <perrysburgfunnybone.com>, and <funnyboneperrysburg.com> domain names will likely lead to confusion among
Internet users as to Complainant’s sponsorship of, or affiliation with the
resulting websites, as all of the marks entirely incorporate the dominant
service mark words of “FUNNY BONE”. The
dominant word is that memorable aspect of the trademark or service mark that
the consumer uses to call for the product or service in question. The
geographic indicators, such as
Thus, the Panel finds that such a fobbing off, of a well known mark that has been in usage for more than 20 years, to admittedly build up a data base of 5000 customer names and 20,000 monthly hits, (see Respondent’s Additional Submission, paragraph 4) is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toledofunnybone.com>, <funnybonetoledo.com>, <perrysburgfunnybone.com>, and <funnyboneperrysburg.com> domain names be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner,
Dated: October 16, 2008
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