IMPROV WEST ASSOCIATES v. Not Applicable a/k/a Kenneth Arnold
Claim Number: FA0904001256834
Complainant is IMPROV WEST ASSOCIATES (“Complainant”), represented by Dennis Ardi, of DENNIS ARDI ATTORNEY
AT LAW PROFESSIONAL CORP.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <improvcomedyclub.com>, registered with GoDaddy.com, Inc.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 9, 2009.
On April 9, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <improvcomedyclub.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 April 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 6, 2009 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 April 27, 2009.
On May 1, 2009, Complainant filed an additional submission. On May 5, 2009 Respondent filed a Reply. Both of these submissions were timely according to the National Arbitration Forum's Supplemental Rule #7.
On May 1, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that it owns and uses the trademarks IMPROV and
IMPROV COMEDY CLUB in connection with the following services; entertainment in
the nature of live performances by stand-up comedians; presentation of live
comedy shows; franchising services, namely offering business management
assistance in the establishment and operation of nightclubs featuring
performances by stand-up comedians; and bar and restaurant services. Since the
1980s several “IMPROV COMEDY CLUBS” have operating under license from Complainant
A 1998 web page exhibited to the Complaint contains the passage:
“The Improv Comedy Club proudly features the nation’s hottest stand-up comics. Founded by Bud [sic] Friedman in the mid 60’s in New York City, The Improv became a unique venue where up and coming comics could perfect their craft.”
In December, 2008, Complainant filed two applications to register the word IMPROV with the USPTO, claiming inter alia first use in commerce for live comedy shows in 1975. Those applications remain pending.
Complainant says the domain name, which was registered on April 18, 1999, is identical to its IMPROV COMEDY CLUB mark and confusingly similar to its IMPROV mark and that Respondent has no rights or legitimate interests in the domain name for that reason.
Complainant says Respondent registered the domain name in bad faith because:
(a) before any notice of this dispute, Respondent did not use the domain name or any name corresponding to it in connection with a bona fide offering of goods or services, thereby evidencing an intention to acquire and hold it primarily for the purpose of selling, renting or otherwise transferring it to Complainant or one of its licensees and to prevent Complainant from reflecting the mark in a corresponding domain name;
(b) Respondent has never been known by the domain name; and
(c) Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Under the heading “Other Legal Proceedings”, the Complaint refers to other proceedings being commenced simultaneously before The Forum seeking transfer to it of the domain name <improvcomedyclubs.com>.
Respondent disputes Complainant’s claim to the trademark rights it asserts. The two applications filed in 2008 were both for the mark IMPROV. This is the first time Complainant has claimed rights in IMPROV COMEDY CLUB as a mark. Both applications were refused by the USPTO on March 13, 2009 and again, after a response from Complainant, on April 21, 2009.
Respondent says the domain name is descriptive of a club featuring live performances by stand-up comedians, including performances that are performed with little or no preparation. Further, the word “improv” is deceptively misdescriptive of Complainant’s services insofar as they are not performed with little or no preparation.
Respondent says Complainant has never been known as “Improv Comedy Club” but as “The Improv,” and additionally has used the tag “comedy club and restaurant.” Its licensed clubs are known as “The Miami Improv,” “The World Famous Improv,” etc.
Accordingly the domain name is not identical to the name used by Complainant’s business and in fact misdescribes it.
Respondent says it should be considered as having rights and legitimate interests in the domain name because when Respondent registered the domain name in 1999, he started a business under a different domain name that included the largest listing of entertainment events on the Internet, which included improvisational comedy events, a passion of Respondent. While that listing service is not currently active, Respondent intends to use the domain name to list improvisational comedy clubs and events, for which the domain name, being descriptive of this type of comedy club, is ideally suited and highly valued by Respondent. Meantime the domain name is not being used and therefore cannot be misleadingly diverting consumers or tarnishing the name in any way.
Respondent says the domain name was not registered for the purpose of transferring it to anyone for any consideration and Respondent has rejected all offers to sell, making no counteroffers.
Respondent denies all the circumstances set out in the Policy, paragraph 4(b). In particular, Respondent says the domain name is intended to be used in relation to improvisational comedy, a use which cannot be confusing, since Complainant persuaded the USPTO to accept that Complainant’s services “feature scripted, previously prepared, pre-planned performance routines that are not improvisational in nature.”
Respondent seeks a finding of Reverse Domain Name Hijacking due to “misleading and non-factual statements made by Complainant in the Complaint, in his effort to acquire the domain name under false pretences” and to threats of litigation made in correspondence.
C. Additional Submissions
Paragraph 12 of the Rules does not
contemplate unsolicited submissions after the Complaint and Response and gives the
Panel the "sole discretion" as to acceptance and consideration of
additional submissions. The overriding principle of Rule 12 enables the Panel
both to disregard unsolicited submissions received within the time limits
contemplated by the Forum’s Supplemental
Rule 7 and to take into account unsolicited submissions received outside those
time limits. See Darice, Inc. v.
Thus, no party has the right to insist upon the admissibility of
additional evidence. See SembCorp Indus. Ltd. v. Hu Huan Xin,
D2001-1092 (WIPO Nov. 16, 2001). It is appropriate to consider the
circumstances of each case before deciding whether to admit unsolicited
additional submissions. See
Complainant’s Additional Submission seeks to establish that Complainant has common law rights in its claimed marks and to re-argue its case on legitimacy and bad faith. It does not address the allegation of Reverse Domain Name Hijacking. Accordingly, this is not a case of discovery of evidence not reasonably available to Complainant at the time of its initial submission, nor of arguments by Respondent that Complainant could not reasonably have anticipated. See Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001). Nevertheless, in the interests of fairness to Complainant, the Panel has had regard to its Additional Submission and an accompanying affidavit of its counsel.
Respondent’s Reply seeks to rebut Complainant’s claim to common law trademark rights and to reargue Respondent’s case on legitimacy and bad faith. The Panel has taken that Additional Submission into account.
Complainant has failed to establish all the elements entitling it to relief.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) 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.
In application 77/635393 Complainant is seeking registration of the mark IMPROV for use in connection with “entertainment in the nature of live performances by stand-up comedians” in International Class 041. In application 77/635235 Complainant is seeking registration of the mark IMPROV for use in connection with “pre-recorded CDs, video tapes, laser disks and DVDs featuring performances by stand-up comedians” in International Class 009, “franchise services, namely, offering business management assistance in the establishment and operation of nightclubs featuring performances by stand-up comedians” in International Class 035, “presentation of live comedy shows” in International Class 041, and “bar and restaurant services” in International Class 043.
The applications were initially rejected on the ground that, insofar as Complainant’s services are improvised, i.e., invented, composed, or performed with little or no preparation, the mark is descriptive. This objection was withdrawn upon Complainant informing the USPTO that its services feature scripted, previously prepared, pre-planned performance routines that are not improvisational in nature.
The applications in relation to International Classes 09 and 041 have also been rejected on the ground of deceptive misdescription in that IMPROV will be taken by the public to refer to improvisation yet Complainant’s services are not improvised. This objection does not apply to classes 035 and 043 and can in any event be overcome by evidence of acquired distinctiveness, which Complainant has been asked to provide, such as specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.
The following factors are generally considered by the USPTO when determining acquired distinctiveness: (1) length and exclusivity of use of the mark in the United States by the applicant; (2) the type, expense and amount of advertising of the mark in the United States; and (3) the applicant’s efforts in the United States to associate the mark with the source of the goods and/or services, such as unsolicited media coverage and consumer studies.
Under the Policy
it has been established that trademark registration applications, as distinct from
registrations, do not give rise to trade mark rights. See
Aspen Grove, Inc. v.
Accordingly, the question for the Panel is whether Complainant has common law rights in a mark. To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for Complainant to prove that the mark is in fact a trademark. Thus, Complainant must produce evidence of the kind presently sought by the USPTO proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with Complainant and not with others not authorized by Complainant to use the mark. That is to say, Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent. See British Heart Found. v. Meyer III (eResolution Case No. AF0957).
Complainant relies on an affidavit by its Counsel
attesting to his personal experiences over the last 25 years of attending the
IMPROV COMEDY CLUB in
Ignoring those parts of the affidavit expressing opinions about the very issue to be determined, the Panel is prepared to accept, for the purposes of this administrative proceeding and despite the slender evidence which that affidavit provides, that Complainant has, through use, acquired common law rights in the mark IMPROV COMEDY CLUB. The Panel is not satisfied that the same can be said in relation to the word IMPROV.
It is well established that the specific top level of a domain name such as “.com,” “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Magnum Piering, Inc. v. Mudjackers & Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 29, 2001); see also Rollerblade, Inc. v. Chris McCrady, D2000-0429 (WIPO June 25, 2000).
The domain name is identical to Complainant’s IMPROV COMEDY CLUB mark. Complainant has established this element.
Respondent is not known by the domain name
and has made no use of it since it was registered in 1999. This suffices to
establish a prima facie case of absence of rights or legitimate
interests on the part of Respondent.
Accordingly, the burden shifts to Respondent to provide evidence of its
rights or legitimate interests under paragraph 4(c) of the Policy. See,
e.g., Cassava Enter. Ltd., Cassava Enter. (
That paragraph sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Respondent has provided no evidence to support his contention that he intends to use the domain name for the improvised comedy club services it describes or at all. He does not even identify the other domain name under which he claims to have operated a business with which the present domain name is claimed to be associated.
In State Farm Mutual Automobile Insurance Co. v. Rocky E. Faw, FA 94971 (Nat. Arb. Forum July 12, 2000), Respondent was found to have no legitimate interests in respect of the domain name where he had not used nor developed the domain name for a legitimate non-commercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 94970 (Nat. Arb. Forum July 11, 2000).
In the absence of any evidence of use or demonstrable preparations to use the domain name since it was registered in 1999, the Panel finds Respondent has no rights or legitimate interests in the domain name. Complainant has established this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The Complaint seeks to draw the inference of bad faith registration and use from the absence of circumstances identified in the Policy as giving rise to rights or legitimate interests. Yet these are separate elements. It is inappropriate to infer bad faith solely from absence of rights or legitimate interests.
says the domain name was registered shortly after the opening of an IMPROV
COMEDY CLUB in
The Panel is not prepared to infer from Respondent’s lack of use for the last 10 years an intention to acquire and hold the domain name primarily for the purpose of selling, renting or otherwise transferring it to Complainant or one of its licensees nor to prevent Complainant from reflecting the mark in a corresponding domain name. Registration for the latter purpose may be taken as evidence of bad faith registration and use if there is a pattern of such behavior. None is alleged nor established here.
Complainant relies upon Respondent’s “passive” use as demonstrating bad faith, in accordance with the leading case of Telstra Corp. Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The present case, however, is on all fours with Alberto-Culver Co. v. Pritpal Singh Channa, D2002-0757 (WIPO Oct. 7, 2002), in which the domain names were <staticguard.com> and <staticguards.com>. The learned panelist said:
…Complainant relies on the idea of "passive holding" as established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This case established the proposition that doing nothing with a domain name may amount to bad faith registration and use. However the Panelist in that case was extremely careful to note that this principle does not apply to every example of passive holding. The specific circumstances in that case included false name information in the WHOIS record, false address information, failing to respond to the Complaint, an extremely famous mark within the geographical region of both Complainant and Respondent, and a mark that was entirely invented. This case has none of those features: Respondent has provided his name, and his address, and has responded within time to the Complaint. Complainant has provided no evidence that its mark is so well known that any registration (without use) of a domain name cannot help but lead to the conclusion that Respondent registered with male fides. And, unlike the mark in Telstra, the mark and the domain names here are the concatenation of two generic English words. I conclude therefore that the Telstra passive holding principle does not apply to the facts in this case.
The same words apply here with equal force, the only exception being that the name under which the domain name was registered was “Not Applicable.” The name and address of Respondent, Kenneth Arnold, were disclosed as the Administrative Contact and Technical Contact. Accordingly, registration in the name “Not Applicable” is insufficient to distinguish this case from Alberto-Culver Co., supra and insufficient to attract the “passive use” doctrine of Telstra Corp. Ltd., supra.
The Panel concludes that this is not a case in which Respondent’s non-use for 10 years can properly be regarded as evidence of bad faith registration and use.
Accordingly Complainant has failed to establish this element.
Reverse Domain Name Hijacking
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain‑name holder of a domain name.” See also Rule 15(e). To prevail on such a claim, it has been held that a respondent must show either that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000‑1224 (WIPO Nov. 8, 2000) and Goldline International, Inc. v. Gold Line, D2000‑1151 (WIPO Jan. 8, 2001) or that the Complaint was brought in knowing disregard of the likelihood that Respondent possessed legitimate interests: Smart Design LLC v. Carolyn Hughes, D2000‑0993 (WIPO Oct. 21, 2000); or that Complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Dan Zuckerman v. Vincent Peeris, DBIZ2002‑00245 (WIPO Aug. 12, 2002); HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., D2002‑0754 (WIPO Nov. 27, 2002).
The Panel is not prepared to make such a finding in this case. Complainant’s mark is weak but Respondent has made no use of the domain name in 10 years and has no rights or legitimate interests in the domain name. Although Complainant has failed to establish all the required elements, the Panel is not prepared to find that it brought the Complaint in bad faith.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Panelist
Dated: May 13, 2009
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