Larry Moss v. EdgemarCenterfortheArts d/b/a Larry moss studios c/o Lora Guarnieri
Claim Number: FA1004001320711
Complainant is Larry Moss,
represented by Dennis Holahan, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <larrymossstudio.com> and <larrymossstudio.net>, registered with Register.com, and <larrymossstudio.org>, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2010.
On April 25, 2010 GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <larrymossstudio.org> 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 27, 2010, Register.com confirmed by e-mail to the National Arbitration Forum that the <larrymossstudio.com> and <larrymossstudio.net> domain names are registered with Register.com and that Respondent is the current registrant of the names. Register.com has verified that Respondent is bound by the Register.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 May 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@larrymossstudio.com, postmaster@larrymossstudio.net and postmaster@larrymossstudio.org by e-mail. Also on May 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Respondent’s request to file an untimely Response was granted by the Panel. The Response was received on May 28, 2010.
Complainant submitted an Additional Submission on June 1, 2010 that was determined to be in compliance with Forum Supplemental Rule 7.
Respondent submitted an Additional Submission on June 2, 2010 that was determined to be in compliance with Forum Supplemental Rule 7.
The Panel entered an order allowing Complainant to submit a Supplemental Additional Submission which was received on June 7, 2010.
The Panel entered an order allowing Respondent to submit a Supplemental Additional Submission which was received on June 18, 2010.
All submissions were considered by the Panel.
On May 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant Larry Moss is one of the
foremost acting teachers in the
The three domain names which are the subject of the Amended Complaint are confusingly similar to Complainant Larry Moss’ own website.
Any prospective student looking to sign up for classes taught by Larry Moss would easily be confused as to which website to contact.
Michelle Danner, the Founder and Director of Edgemar Center for the Arts was once an assistant to and protégé of Larry Moss. Without his consent, knowledge or permission, and in bad faith, she registered the domain names LarryMossStudio.com and LarryMossStudio.net in 2002. When Moss, in 2009, discovered this unauthorized use of his name on the internet, he demanded that Danner and Edgemar cease and desist using his name. Danner’s response was to secretly, and in bad faith, register a third Larry Moss domain name (LarryMossStudio.org) in July 2009 through Domains By Proxy, Inc., which allowed her to hide the identity of the registrar. Since June 2009, in spite of repeated demands, Danner has refused to take down the websites.
The only purpose and use by Edgemar of the three infringing Larry Moss domain names is for commercial gain by intentionally misleading the public in general, and prospective acting students in particular, by diverting these consumers to Edgemar.
Respondent, by registering the three domain names at issue is seeking to disrupt the legitimate business activity of Larry Moss.
B. Respondent
Larry Moss and Michelle Danner have been business partners since 1990 and both co-founded the Edgemar Theater in 2000. Since then, Larry Moss Studio was run by Michelle Danner out of the Edgemar Theater, with the full consent and understanding of Larry Moss. Because the Larry Moss Studio has been run from Edgemar, Danner purchased <www.larrymossstudio.com> in 2002, and has been using that domain as a website since 2003. The use of Larry Moss’ name, including any domain names, was fully authorized and done so openly with Larry Moss’ knowledge and consent. Moss continued to teach classes to the Larry Moss Studio at Edgemar for years and has contractual arrangements for its use.
It is only recently that a business dispute arose between Moss and Danner, and only recently that Larry Moss has claimed that Edgemar and Danner cannot use the domains containing his name.
The Complaint is dependent upon determining the rightful owner of the disputed domain names and the relationship between Complainant and Respondent who were business partners for many years—a determination which is outside the scope of the UDRP.
Larry Moss concedes in his complaint that he has not registered trademarks for any of the domains. His only claim is based on a specious and unsupported common law trademark right. Edgemar and Danner have been using two of the domains in question for legitimate business purposes since 2003.
C. Complainant’s Additional Submission
Nothing contained in the Response or
its Exhibits refutes the basic allegation of the Complaint: Larry Moss did not give Michelle Danner
(“Danner”) or
Respondent Edgemar has not met its burden of showing any “business partnership” between Complainant Larry Moss and Respondent Edgemar.
Edgemar has not produced any written partnership agreement or even set forth the basic terms of any alleged oral partnership agreement. There is no evidence that Larry Moss was an officer, director or shareholder of Edgemar.
There is no evidence that Larry Moss gave Edgemar permission to register and use the domain names. Edgemar was charging Larry Moss rent for teaching classes at Edgemar, and the parties reduced that agreement to writing.
Personal names do not require federal trademark registration to receive trademark protection and are protected under common law when they acquire secondary meaning. Secondary meaning is established where a complainant uses his name and mark in commerce and achieves widespread recognition for his work.
D. Respondent’s Additional Submission
Danner and Moss have been teaching
together since 1990, co-founded the
Moss lived right across the street
from
In 2002, Larry Moss and Michelle
Danner co-founded the
Moss not only knew about the use of the domains by Edgemar, but by teaching classes at Edgemar, getting student referrals, and by using the facilities for his productions, he received direct financial benefits from that website. Students logging into the Respondent’s website were not getting the false impression that Moss taught acting classes at Edgemar, as Complainant contends, because he did in fact teach and work there, profiting from that activity.
Moss was specifically aware of the use of the <www.larrymossstudios.com> and <www.larrymossstudios.net> domains since he, through his business manager, had ongoing discussions with Danner about which domains would be used by both Edgemar and him starting as early as 2003.
There is not a scintilla of evidence that Complainant has commercially marketed his name, let alone prior to Respondent’s use of the domains starting in 2003. The only evidence of commercial use is that of Respondent. And all of this was done with Complainant’s knowledge and consent.
Although Respondent denies Complainant has such trademark rights, even if he does have such rights, he consented to the use of his name by Danner and Edgemar, not only through the domains in question, but in general, many years ago, as shown by the close relationship between the parties over many years.
To the extent Complainant argues that he has established secondary meaning, he has no explanation for why he has waited for 7 years to bring this action. Complainant cannot sit on his rights, only to decide in 2010 to take issue with such use.
Moreover, to the extent there is a legitimate controversy on the issue of laches, it is a factual question that must be decided by a full trial on the merits, rather than a summary proceeding. The NAF would therefore not be the appropriate forum to make such a determination.
If Respondent establishes that its registration and use of the disputed domain names predates Complainant’s rights to the mark, the claim must be denied.
Here, Complainant presents no evidence of commercial use by him prior to 2003. On that basis alone, his complaint must fail.
Since Respondent’s use of the domain names predates the alleged rights of Respondent, there is no bad faith.
E. Complainant’s Supplemental Additional
Submission
Moss did not know, until Edgemar
filed its additional material on June 2, 2010, that he was named as one of the
original directors of
Moss did teach classes at Edgemar starting in 2003 and has paid over $80,000 in rent for the space he used for teaching. Moss was also aware that Danner was using his name and reputation to promote Edgemar.
Moss was not aware, however, that in 2002 Danner had registered two websites using his name and had listed Edgemar as the owner.
In 2005, Moss’ business manager, Marni St. Regis, wanted to register a website for the corporation Larry Moss Studio, Inc. St. Regis found that there were two websites with that name already registered and owned by Edgemar. Edgemar was unwilling to give Moss the two domain names Danner had registered in Edgemar’s name, even though they had the same name as Moss’s corporation formed in 1991.
Moss was unaware that there were options available to him such as domain name dispute resolution procedures, in order to reclaim his name and websites. Starting in 2009, Moss has been trying to persuade Danner to give him those websites which Danner had no right to register as property of Edgemar.
Moss moved back to
Danner has admitted in the Response on May 28, 2010, that Edgemar is the real owner of that third website.
The condominium owned by Moss is
almost half a mile away from
The exhibits submitted by Respondent, which show that members of the public are contacting Edgemar through <www.larrymossstudio.com> to locate Larry Moss to hire him for acting and coaching lessons, prove Complainant’s prima facie case that Moss has established his name and it has a “secondary meaning” within common law trademark parameters.
When the domain name disputes involves the personal name of an individual who is also the Complainant, as here, common law trademark rights are established with a minimum of commercial activity. The courts and the NAF arbitrators have found common law trademark rights, and secondary meaning, in the name of any professional who advertises his services under his own name.
Just because Michelle Danner registered the domain names does not mean that Edgemar can claim that they were registered legitimately, and that their use is legitimate.
Respondent alleges that Complainant waited seven years to bring this action, and therefore the doctrine of laches applies to this case. But that doctrine is not a permissible defense in these proceedings.
Complainant’s managers and attorneys have been continually trying to get back the domain names since they discovered in 2005 Edgemar owned them. There has been no prejudicial delay in pressing these claims.
In order to prove reverse domain hijacking, a Respondent must usually show that the Respondent had registered the domain name before Complainant incorporated the name or did some other act to demonstrate its value.
Larry Moss incorporated Larry Moss Studio, Inc. in 1991. He was already a famous acting teacher by that time. Danner did not register <www.larrymossstudio.com> and <www.larrymossstudio.net> until 2002, over ten years after incorporation of the name by Moss.
F. Respondent’s Supplemental Additional
Submission
The three disputed domains all share the term LARRYMOSSSTUDIO. Thus, this is not a dispute over the use of the name Larry Moss by itself. The key element to be proven by Complainant is that he has established trademark rights in LARRYMOSSSTUDIO. He has not shown any trademark rights to LARRY MOSS.
Complainant has not shown any secondary meaning in the term LARRYMOSSSTUDIO. There is no evidence of any commercial use of that phrase by Complainant. The only alleged commercial use that has been shown at all has been the consistent efforts of Respondent which has been done continuously since 2003 and with Complainant’s full knowledge and consent.
There was no evidence of continuous and extensive commercial use of LARRYMOSSSTUDIO by Complainant.
Complainant cannot show that his rights to the mark, if any, predated the 2003 registration by Respondent.
Respondent has presented an abundance of evidence showing the business activities of Danner and Edgemar since 2003 in support of the domains in questions—all of which was done not only with Moss’s knowledge, but with his participation as a director of the non-profit and with his own financial gain as a result. Thus, there has been no showing of bad faith.
NAF and WIPO decision have found laches to be a legitimate defense.
It is undisputed that Moss has been aware of the use of <www.larrymossstudio.com> and <www.larrymossstudio.net> since at least 2005. Respondent has presented evidence showing that Moss must have been aware of the use before then. Moss provides no reasonable explanation for the delay. Given the substantial time and resources expended by Respondent in supporting the domains and related business, a transfer now would cause substantial hardship and prejudice to Respondent. Seven years of goodwill, marketing and PR have now been established. Due to the unreasonable delay by Moss and the prejudice to Respondent, on that basis alone, the defense of laches is not only valid, but particularly applicable.
Moss delayed taking any action because he was aware of, consented to, and financially benefitted from, Respondent’s use of the domains. Even if Moss’s assertions are given any weight, this dispute is the type of complex business dispute not meant to be decided by a UDRP proceeding.
Respondent concludes that the facts and evidence clearly shows that Moss has not met his burden. To the extent the Panel has any doubt about the facts it should deny the claim and allow it to be settled in the appropriate forum.
Reverse domain hijacking is present. Moss admits that he knew about these registrations five years ago. He has not credibly refuted the fact that he served on the board of directors of Edgemar since 1999. He admits that he taught classes at Edgemar since 2003. Nevertheless, he still filed this complaint. This is reverse domain hijacking.
For the reason set forth below, the Panel finds Complainant has not proven that the domain names should be transferred.
DISCUSSION
Paragraph 15(a) of 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; and
(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.
However, the Panel will first consider a preliminary issue, namely:
Whether this matter is a business dispute outside the scope of the UDRP.
Preliminary Issue:
Business/Contractual Dispute Outside the Scope
of the UDRP
Respondent contends that Complainant and Respondent have been business partners since 1990 and that they co-founded the Edgemar Theater in 2000, of which Complainant was artistic director and Respondent was executive artistic director. Respondent alleges that since that time the Larry Moss Studio was run by Respondent out of the Edgemar Theater with the full consent of Complainant. Respondent states that only recently a business dispute arose between Complainant and Respondent, which resulted in Complainant’s claims that Edgemar and Respondent could no longer use the domain names that contained Complainant’s personal name within them. Respondent alleges that the complaint is dependent upon determining the rightful owner of the disputed domain names based on Complainant’s and Respondent’s business relationship, which is outside the scope of the UDRP.
Complainant argues in its Additional Submission that
Respondent and Complainant were not business partners, but that Complainant was
a tenant of Respondent. Complainant
contends that Respondent’s evidence of a business partnership is actually a
landlord/tenant lease agreement and nothing more than that. Complainant argues that there has never been
a written partnership agreement between the parties, and that while the state
of
The Panel finds that this is a contractual dispute that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
A dispute, such as the present one,
between parties who each have at least a prima facie case for rights in
the disputed domain names is outside the scope of the Policy … the present case
appears to hinge mostly on a business or civil dispute between the parties,
with possible causes of action for breach of contract or fiduciary duty.
Thus, the majority holds that the subject matter is outside the scope of the
UDRP and dismisses the Complaint.
According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel:
When the parties differ markedly with respect to the basic facts, and
there is no clear and conclusive written evidence, it is difficult for a Panel
operating under the Rules to determine which presentation of the facts is more
credible. National courts are better
equipped to take evidence and to evaluate its credibility.
The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
[The Policy’s purpose is to] combat abusive domain
name registrations and not to provide a prescriptive code for resolving more
complex trade mark disputes .… The
issues between the parties are not limited to the law of trade marks. There are other intellectual property
issues. There are serious contractual
issues. There are questions of governing
law and proper forum if the matter were litigated. Were all the issues fully ventilated before a
Court of competent jurisdiction, there may be findings of implied contractual
terms, minimum termination period, breach of contract,
estoppels or other equitable defenses.
So far as the facts fit within trade mark law, there may be arguments of
infringement, validity of the registrations, ownership of goodwill, local
reputation, consent, acquiescence, and so on.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains issues of contract law, and thus falls outside the scope of the UDRP. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
For the reasons presented above, the Panel concludes that this dispute lies outside the scope of the UDRP policy and accordingly relief shall be DENIED.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 1, 2010
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