Craig Entertainment Group v. Wheel House
Claim Number: FA0604000672152
Complainant is Craig Entertainment Group (“Complainant”), represented by Davis McCown, 700 NE Loop 820, Suite 214, Hurst, TX, 76053. Respondent is Wheel House (“Respondent”), 294 Great Island Rd., Narragansett, RI, 02882.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <cegfilms.com> and <craigentertainmentgroup.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 5, 2006; the National Arbitration Forum received a hard copy of the Complaint April 10, 2006.
On April 6, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <cegfilms.com> and <craigentertainmentgroup.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has 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 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 9, 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@<cegfilms.com> and postmaster@<craigentertainmentgroup.com> by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <cegfilms.com> and <craigentertainmentgroup.com>, are identical to Complainant’s CRAIG ENTERTAINMENT GROUP and CEG FILMS marks.
2. Respondent has no rights to or legitimate interests in the <cegfilms.com> and <craigentertainmentgroup.com> domain names.
3. Respondent registered and used the <cegfilms.com> and <craigentertainmentgroup.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Craig Entertainment Group, was established in Beverly Hills, CA in 1985 and is engaged in entertainment ventures including film production. In 2001, Complainant’s President and CEO established CEG Films Ltd. a subsidiary of Craig Entertainment Group, primarily for the purpose of producing documentary films.
Complainant asserts that it became acquainted with Respondent in March 2003, and that on March 26, 2003, Respondent contacted Complainant to inform Complainant that Respondent had registered the <craigentertainmentgroup.com> domain name. On April 4, 2003, Respondent informed Complainant that it had registered the <cegfilms.com> domain name, again without Complainant’s permission or involvement.
Respondent and a partner designed a website, which used Complainant’s business names and slogan, and directed the disputed domain names to point to this website.
Respondent then asked for, and received from Complainant, a payment of money to reimburse Respondent’s “partner” for work that person had done on the website. However, Complainant refused to make any other payments to Respondent on the grounds that Respondent’s activities were unsolicited. At that point, Respondent replaced the website that had been in place at the disputed domain names with a website that was derogatory of Complainant in nature, containing a number of insulting references to Complainant.
Since then, Complainant has discussed with Respondent the transfer of the disputed domain names to Complainant. Respondent has offered to sell the <cegfilms.com> and <craigentertainmentgroup.com> domain names to Complainant, originally for $500, then for $1000, and later for $10,000. Complainant refused these offers.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant’s CRAIG ENTERTAINMENT GROUP and CEG FILMS marks have acquired sufficient secondary meaning to establish common law rights based on Complainant’s use of the marks in connection with its business. Complainant has operated under the CRAIG ENTERTAINMENT GROUP mark since 1985 in connection with its entertainment businesses, and has also operated under the CEG FILMS mark since 2001. The Panel finds that Complainant established secondary meaning in the CRAIG ENTERTAINMENT GROUP and CEG FILMS marks for the purpose of demonstrating common law rights in the marks pursuant to Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
The disputed domain names that Respondent registered, <cegfilms.com> and <craigentertainmentgroup.com>, completely incorporate Complainant’s CRAIG ENTERTAINMENT GROUP and CEG FILMS marks, with the omission of the spaces between the terms. Because spaces are not allowed in domain names, the removal of the spaces between the terms in Complainant’s marks do not distinguish the disputed domain names from Complainant’s marks. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical). Therefore, the disputed domain names, <cegfilms.com> and <craigentertainmentgroup.com>, are identical to Complainant’s CRAIG ENTERTAINMENT GROUP and CEG FILMS marks pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has rights in the marks contained within the disputed domain names. Complainant also alleged that Respondent has no such rights. Once Complainant makes a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain names, the burden shifts to Respondent to prove that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). Complainant has presented a prima facie case, and the Panel will consider whether the evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c).
The disputed domain names that Respondent registered, <cegfilms.com> and <craigentertainmentgroup.com>, are identical to Complainant’s CRAIG ENTERTAINMENT GROUP and CEG FILMS marks. Internet users who access these domain names are currently directed to a website displaying insulting remarks and insinuations directed at Complainant’s President and CEO. The Panel notes that, in some situations, complaint websites have been found to be a legitimate noncommercial use of the domain name at which those websites are located. However, in this case, the fact that Respondent’s domain names incorporate Complainant’s marks in their entirety, with no additional qualifiers, is likely to lead Internet users seeking Complainant’s website to assume that Respondent’s website is affiliated with or sponsored by Complainant.
The Panel finds that Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety); see also Baker & Daniels v. DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27, 2002) (finding that because the respondent’s <bakeranddaniels.com> domain name merely incorporates the complainant’s trademark, without more, it is not protected by the First Amendment).
No evidence on record suggests that Respondent has ever been commonly known by the <cegfilms.com> and <craigentertainmentgroup.com> domain names and Complainant asserts that it has no formal relationship with Respondent. Furthermore, the WHOIS database contains no information implying that Respondent is commonly known by the <cegfilms.com> and <craigentertainmentgroup.com> domain names. The Panel infers from these facts that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad
faith. Respondent made several offers
to sell the disputed domain names to Complainant, each time increasing in price
the amount demanded, each of which exceeded a reasonable estimate of the costs
of registering the two domain names.
The Panel finds that Respondent’s offers to sell the domain names to
Complainant at inflated prices amount to bad faith registration and use under
Policy ¶ 4(b)(i). See Tech. Props., Inc v. Hussain, FA 95411
(Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where the respondent
verbally offered the domain names for sale for $2,000); see also Matmut v.
Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶
4(b)(i) where the respondent stated in communication with the complainant that
it would be ready to sell the <matmut.com> domain name registration for
$10,000).
The Panel finds that Complainant’s initiation of any discussion to purchase the disputed domain names is irrelevant to this holding. See Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant).
The examples of registration and use of a domain name in bad
faith provided in Policy ¶ 4(b) are not an exhaustive list, and the Panel looks
to the totality of the circumstances to determine whether Respondent engaged in
bad faith registration and use. See Digi Int’l Inc. v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth
certain circumstances, without limitation, that shall be evidence of
registration and use of a domain name in bad faith); see also Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”). Respondent registered two
domain names, both of which are identical to Complainant’s marks, and uses
these domain names to direct Internet users to a website dedicated to
criticizing and insulting Complainant’s President and CEO. This Panel finds that Respondent’s use of
domain names that are identical to Complainant’s marks without the authorization
of Complainant amounts to bad faith registration and use under Policy ¶
4(a)(iii). See Diners Club
Int’l, Ltd. v. Infotechnics Ltd.,
FA 169085 (Nat. Arb. Forum
Aug. 20, 2003) (“Respondent’s registration and use of a domain name
nearly identical to Complainant’s mark to criticize Complainant’s business
practices is evidence of registration and use of the <diners-club.net>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Robo Enters., Inc. v. Tobiason,
FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (“Respondent choose the domain name to
cause persons seeking information on ROBO ENTERPRISES to be drawn to
Respondent’s website for the purpose of exposing the user to negative and
critical views of Complainant. Choosing and operating the domain name for such
a purpose in this case is bad faith.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cegfilms.com> and <craigentertainmentgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 30, 2006.
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