Warner Bros. Entertainment Inc. v. R Schwartz
d/b/a Virtual Dates Inc.
Claim Number: FA0512000608636
PARTIES
Complainant is Warner Bros. Entertainment Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is R Schwartz d/b/a Virtual Dates Inc. (“Respondent”), represented by Howard M. Neu, of Law Office of Howard M. Neu, P.A., 1152 North University Drive, Pembroke Pines, FL 33024.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <daisydukes.com>,
registered with Moniker Online Services,
Inc.
PANEL
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.
David A. Einhorn appointed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 12, 2005; the National Arbitration Forum received a
hard copy of the Complaint on December 12, 2005.
On December 12, 2005, Moniker Online Services, Inc. confirmed by e-mail
to the National Arbitration Forum that the <daisydukes.com>
domain name is registered with Moniker Online Services, Inc. and that the Respondent
is the current registrant of the name. Moniker
Online Services, Inc. has verified that Respondent is bound by the Moniker
Online Services, 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 December 14, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 3, 2006 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 postmaster@daisydukes.com by e-mail.
A timely Response was received and determined to be complete on January
3, 2006.
A timely Additional Submission from Complainant was received and
determined to be complete on January 9, 2006.
A timely Additional Submission from Respondent was received and
determined to be complete on January 14, 2006.
On January 12, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David A. Einhorn as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
[a.]Complainant Warner Bros. Entertainment Inc. ("WBE") owns all rights, title and interest in and to the DAISY DUKE mark.
[b.]WBE’s DAISY DUKE mark is derived from the famous TV series The Dukes of Hazzard, which debuted on January 26, 1979. The Dukes of Hazzard became one of the most popular TV series of all time, and featured the adventures of Daisy Duke and her cousins Bo and Luke Duke, who lived in fictional Hazzard County, Georgia.
[c.]Over the years, The Dukes of Hazzard has maintained a very strong fan base and has become the subject of numerous news articles, DVDs, video games and TV shows, including syndication of the original series. The full-length motion picture The Dukes of Hazzard, starring Jessica Simpson as Daisy Duke, was released in 2005.
[d.]WBE’s rights to its DAISY DUKE mark are based upon extensive use of the mark in publicity and advertising, including use by licensees on a variety of products, including playing cards, DVDs, a beach towel, toys and clothing. WBE began licensing the mark in about 1979, and continues to do so today.
[e.]Because of this extensive and continuous advertising, publicity and use, the DAISY DUKE mark has become strong and famous, and consumers associate the DAISY DUKE mark with WBE, the TV series The Dukes of Hazzard, and the products bearing the DAISY DUKE mark under license from WBE. UDRP panels have consistently held that the Policy affords protection to those having common law trademark rights based upon prior use of a mark. See, e.g., Cedar Trade Assocs., Inc., v. Ricks, FA 93633 (Nat. Arb. Forum Feb 25, 2000); see also Bennett Coleman & Co. Ltd. v. Lafwani, D2000-0014 (WIPO Mar 11, 2000) (“[I]t is this reputation from actual use which is the nub of the complaint, not the fact of registration as trade marks.”).
[f.]Many years after WBE first used its DAISY DUKE mark, Respondent registered and began using the <daisydukes.com> domain name with commercial pornographic services. But for the letter “s” and the “.com” Top Level Domain, the <daisydukes.com> domain name is identical to the DAISY DUKE mark, and is likely to confuse and mislead consumers into believing falsely that Respondent’s pornographic Web site and content is affiliated with or endorsed by WBE. The <daisydukes.com> domain name routes to the <voyeur.com> domain name, which is owned by R. Schwartz, the same name used by the registrant of <daisydukes.com>. In other words, R. Schwartz is using <daisydukes.com> to route consumers to his own adult and commercial Web site <voyeur.com>. Respondent also offers to sell the <daisydukes.com> domain name at his Web site.
[g.]Respondent registered and continues to use the infringing domain name with a bad faith intent to capitalize on WBE’s famous DAISY DUKE mark, and profit from the international and domestic goodwill that exists in that mark.
[h.]Respondent has no rights or legitimate interests in the subject domain name. Respondent is not licensed or authorized to use the DAISY DUKE mark, nor is Respondent (R Schwartz d/b/a Virtual Dates, Inc.) named or commonly known as “Daisy Duke.”
[i.]Respondent’s bad faith registration of the <daisydukes.com> domain name is evidenced by the fact that the domain name was registered many years after the television character was introduced to the public and the DAISY DUKE mark became famous. The fact that Respondent’s domain name is nearly identical to a fictional female character, and is being used with a commercial pornographic Web site that offers to sell the domain name and provides content that is derogatory toward women, further shows that Respondent registered the <daisydukes.com> domain name in bad faith with the intent to profit off the goodwill associated with WBE’s mark.
[j.]Respondent’s bad faith use of the infringing domain is shown by the commercial pornographic Web site that is used in connection with <daisydukes.com>. Respondent’s Web site has absolutely nothing to do with the DAISY DUKE character or mark, nor does it even use that mark. Rather, the domain name is used solely to route consumers to Respondent’s Web site, which promotes and sells pornographic services under the header <voyeur.com>, a domain name that is owned by Respondent. Respondent registered and continues to use the <daisydukes.com> domain in bad faith solely to attract Internet users seeking to visit a legitimate and authorized Web site devoted to DAISY DUKE and The Dukes of Hazzard. Respondent’s use of the domain name in this manner violates Paragraph 4(b)(iv) of the UDRP and constitutes a bad faith use of the domain.
[k.]In addition to the <daisydukes.com> domain name, Respondent has infringed upon other third party marks and is a notorious cybersquatter. Prior UDRP panelists have held that Respondent registered and used domain names in bad faith. See, e.g., Daily Racing Form LLC v. Virtual Dates, Inc., D2001-1032 (WIPO Nov 6, 2001); and Societé Air France v. Virtual Dates, Inc, D2005-0168 (WIPO May 24, 2005). Respondent’s intentional recidivism and knowing infringements constitute a bad faith use of the infringing domain name, <daisydukes.com>, pursuant to Section 4(b)(ii) of the UDRP.
[l.]Respondent’s bad faith intent is further shown by the fact that he is offering to sell the <daisydukes.com> domain name at the bottom of his Web site. This offer to sell the domain name demonstrates that Respondent has no legitimate rights to the domain name; rather, he registered and is using <daisydukes.com> in a bad faith effort to profit off the goodwill WBE has created in that mark.
B. Respondent
[a.]Throughout its Complaint, Complainant alleges that it owns a mark for “Daisy Duke.” However, Complainant fails to attach any indication that it has registered such a mark. In fact, Complainant applied for a mark for entertainment services on December 14, 2005, two (2) days AFTER it filed this Complaint. Complainant also applied for a mark for toys and sporting goods on December 14, 2005, after this Complaint was filed. Complainant also applied for a mark for clothing for men, women and children on December 14, 2005, after this Complaint was filed. Complainant also applied for a mark for printed matter and paper goods on December 14, 2005, after this Complaint was filed. Complainant also applied for a mark for motion picture films on December 14, 2005, after this Complaint was filed.
[b.]The term “Daisy Dukes” has come to be generally recognized as a type of clothing worn by attractive women, and songs have been written about them. The pants (known as "Daisy Dukes") later inspired the 1992 song "Dazzey Duks" by rap artist Duice [copy of lyrics attached to Respondent’s Response]. Also see the Urban Dictionary which defines “Daisy Dukes” as cut-off shorts. Boots have been sold as “Daisy Dukes.” Respondent has utilized this term for his business purpose of directing users to attractive women at his <voyeur.com> web site.
[c.]Numerous other pornographic usages of “Daisy Dukes” appear on the Web. Some of these usages feature women wearing cut-off denim jeans.
[d.]An inspection of Respondent’s web site shows the necessity of Complainant’s assertion that “Respondent also offers to sell the domain name ‘DAISYDUKES.COM’ at his Web site.” The “For Sale” banner inserted by Fabulous.com is on the Voyeur.com web site and says nothing about selling <daisydukes.com>.
[e]Respondent did not register the domain name in question for the purpose of selling, renting or otherwise transferring the domain name to Complainant or a competitor of Complainant, nor has it done so. Respondent did not register the domain name in question in order to prevent the owner of the subject trademark (though not registered), from reflecting the mark in a corresponding domain name, nor has it done so. Respondent did not register the domain name for the purpose of disrupting the business of a competitor, nor is it a competitor of Complainant. Respondent does not use the domain name to intentionally attempt to attract, for commercial gain, internet users to Respondent’s web site, by creating confusion, using Complainant’s mark.
C. Additional Submission of Complainant
[a.]Complainant contends that Respondent falsely claims he has been using <daisydukes.com>
consistently to redirect to the adult Web site at <voyeur.com>. Even if this were true, such unauthorized
and improper use of the Warner Bros. DAISY DUKE mark would constitute a bad
faith registration and use of the subject domain name. However, Respondent’s allegations are false. Copies of cached screen shots taken of <daisydukes.com>
on three separate dates in 2005, namely, February 2, February 7, and March 5,
demonstrate that Respondent has used the infringing domain name, <daisydukes.com>,
to sell merchandise associated with the Warner Bros. series of television
programs and movies. Although he now
apparently uses the Warner Bros. DAISY DUKE mark in his domain name to route
prospective customers to adult content at <voyeur.com>, he previously
used the domain name with a Web site titled: “Daisy Dukes —Everyones [sic] favorite resident of Hazzard county
Played by captivating actress Catherine Bach.”
[Respondent refutes the factual accuracy of this contention in his
additional submission set forth below.]
[b.]Complainant contends that Respondent’s <daisydukes.com>
site advertised and sold a variety of products that bear Warner Bros. DAISY
DUKE and DUKES OF HAZZARD marks. In
fact, several of the products clearly show the Warner Bros. name and logo with
the copyright and registration notices.
Respondent sold these DAISY DUKE and DUKES OF HAZZARD products in 2005,
the year in which Warner Bros. released the highly publicized and successful
motion picture The Dukes of Hazzard.
[Respondent refutes the factual accuracy of this contention in his
additional submission set forth below.]
[c.]Respondent has chosen to support its claim that “Daisy
Dukes” is a term to describe women’s shorts by including a blog Web site and
definitions from an “Urban Dictionary,” all of which include photographs of and
references to the character Daisy Duke and The Dukes of Hazzard. This evidence only further demonstrates that
consumers are likely to associate the <daisydukes.com> domain name
with The Dukes of Hazzard and the character Daisy Duke, and Warner Bros.
products and services.
D. Additional Submission of
Respondent
[a.]Complainant bases its entire
Supplementary pleading upon the premise that in February and March of 2005,
Respondent used the subject domain to sell merchandise associated with the
Warner Bros. series of television programs and movies. However, counsel for Respondent was in error
in his Response when he stated that Respondent had registered the domain in
1997. Upon further review, Respondent’s
counsel has learned that the domain was registered by Dennis Ryan of
Connecticut in 1997, and sold to Respondent on August 1, 2005 at which time the
domain became registered to Respondent.
Respondent immediately upon obtaining the subject domain, redirected it
to his <voyeur.com> web site.
[b.]During all the years that the prior
registrant held the subject domain and was using it to sell Warner Bros.
Products, Complainant was silent and did nothing to attempt to obtain the
domain or transfer it to Warner Bros.
It was only after Respondent purchased the domain and used it to
redirect to his adult site that Complainant took action. It would therefore appear that Complainant
“sanctioned” the “unauthorized” use of the <daisydukes.com> domain
until Complainant no longer was profiting from its use.
FINDINGS
DISCUSSION
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 claims to have a trademark in
DAISY DUKE, a character in the TV series and motion picture, The Dukes of
Hazzard. While Complainant does not
have a registered trademark for DAISY DUKE , Complainant claims common law
trademark rights based upon exclusive use of the mark in publishing,
advertising and merchandising.
Common law protection has been held to extend
to specific ingredients of successful television series. Warner
Bros. Inc. v. Boy Toys, Inc., 658 F.2d 76 (2d Cir. 1981) (reversing denial
of a preliminary injunction for Warner Bros. against defendant for use of
distinctive symbols found on the “General Lee” car appearing in the Dukes of
Hazzard TV series). See also Silverman v. CDS Inc. , 632 F.Supp 1344
(S.D.N.Y. 1986) (stating, in dicta,
that the names of the characters in the
“Amos ‘n’ Andy” show are protectible marks), judgment aff’d in part, vacated in part by Silverman v. CBS Inc. 870 F.2d 40, 9 U.S.P.Q.2d 1778 (2d Cir. 1989)
(without addressing this issue). The
addition by Respondent of the letter “s” to this mark does not create a
significant distinction, See Nat’l Geographic Soc’y v. Stoneybrook Invs.,
FA 96263 ( Nat. Arb. Forum Jan. 11, 2001) (finding the domain name <nationalgeographics.com>
was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark).
Thus, Complainant has satisfied the
requirement of paragraph 4(a)(i) of the Policy.
There is nothing in the record, including the
WHOIS registration information, which demonstrates that Respondent is commonly
known by the disputed DAISY DUKES name.
See Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent
does not have legitimate rights in a domain name when the respondent is not
known by that mark).
Thus, Complainant has satisfied the
requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets forth four
examples of bad faith, which are not exclusive, but which “shall be evidence of
registration and use of a domain name in
bad faith”:
“(i) circumstances indicating that you have
registered or have acquired the domain name primarily for the purpose of
selling, renting or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern
of such conduct; or
(iii) you have registered the domain name
primarily for the purpose of disrupting the business of a competitor ; or
(iv) by using the domain name, you have
intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location, by
creating a likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or location.”
The first example above is inapplicable,
because there is no evidence that Respondent registered or acquired this
specific Domain Name primarily for the purpose of selling it to Complainant or
a competitor. Complainant has produced
no evidence of any offer by Respondent to sell this specific Domain Name to
anyone. Similarly, the second example
above is inapposite, because the evidence is insufficient to show that
Respondent’s registration or use of the Domain Name was intended to prevent
Complainant from utilizing its mark in a domain name. The third example does not apply because Respondent, who is
operating a pornography web site, is not a competitor of Complainant and there
is no evidence that Respondent registered the Domain Name for the purpose of disrupting
Complainant’s business.
The fourth example presents a far closer
question, whether Respondent intentionally attempted to attract, for commercial
gain, Internet users to its web site or the web sites of others, by creating a
likelihood of confusion with Complainant’s mark as to the source of sponsorship
of the web site or services offered by Respondent’s web site.
Respondent submits that his use of the term
“daisy dukes” is not in bad faith because the term has become accepted
vernacular for women’s cut-off shorts and this term has been used in that
connotation to attract people to this pornographic web site. The best evidence submitted by Respondent in
support of that position is his submission in evidence of the lyrics of a 1992
song “Dazzey Duks” by rap artist Duice.
The song repeatedly uses this term to refer to cut-off shorts and makes
no reference to the Dukes of Hazzard television series. Complainant does not address this evidence
in its Additional Submission and presents no counter-arguments regarding its
significance. The Panel finds that
this piece of unrefuted evidence slightly tips the balance in favor of
Respondent. See, similarly, Bernstein v. Action Adver., Inc.,
D2000-0706 (WIPO Sept 28, 2000)
(finding that the term “lip service”, which was a trademark of the complainant,
had an apt connotation with respect to adult entertainment and that therefore
the respondent’s use of this term in a domain name was not in bad faith).
For the foregoing reason, the Panel finds
that Complainant has not satisfied its burden of proof to establish bad faith
registration and use under paragraph 4(a)(iii) of the Policy.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
David A. Einhorn, Panelist
Dated: February 2, 2006
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