Write Brothers, Inc. v. Dennis Pollack
Claim Number: FA0210000127800
Complainant is Write Brothers, Inc., Glendale, CA (“Complainant”) represented by J.D. Harrisman, of Coudert Brothers LLP. Respondent is Dennis Pollack, Los Angeles, CA (“Respondent”) represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon & Associates, PC.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <writebrothers.com> and <writebros.com>, registered with Go Daddy Software, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Sandra Jo Franklin, as Panelist
G. Gervaise Davis III, as Panelist
Paul M. DeCicco, as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 11, 2002; the Forum received a hard copy of the Complaint on October 15, 2002.
On October 11, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <writebrothers.com> and <writebros.com> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 October 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 5, 2002 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 and firstname.lastname@example.org by e-mail.
Respondent subsequently requested and was granted a ten-day extension to file a Response.
A timely Response was received and determined to be complete on November 15, 2002.
Complainant’s additional submissions were received on November 20, 2002. The Complainant did not seek permission of the panel prior (or subsequent) to the filing.
On or about November 25, 2002 Respondent asked permission to submit a response to Complainant’s additional submissions and incorporated such response.
On or about December 19, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed the instant panel naming Sandra Jo Franklin, G. Gervaise Davis and Paul M. DeCicco.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant changed its existing business name from Screenplay Systems to Write Brothers, Inc. in 2002. It asserts that it has trademark rights in the mark “Write Brothers” for software and services for authors to assist in writing and story development and has applied for federal registration of the mark. The mark’s first use in commerce was August 8, 2002.
Complainant states that Respondent has no rights or legitimate interest in the at-issue domain names, <writebrothers.com> and <writebros.com> because Respondent did not use, or make preparations to use the domain name in conjunction with a bona fide offering of goods or services. In support, the Complainant argues that the Respondent has repeatedly attempted to sell the domain name to the Complainant and that Respondent had no website associated with the domain name(s) until after the Complainant used the mark in commerce. Thereafter Respondent made the domain names URLs redirect to Respondent’s website ---a web store for clothing articles bearing the logo “Invest-A-Gator.” Since this is a commercial use of the domain names, since the content of the website bears no relation to the meaning of the domain names, and since the website was already “linked” by a domain name, and for other reasons, the use of the domain names in this manner is unjustifiable.
Complainant concludes that Respondent made no preparations to use the domain names and that Respondent told Stephen Greenfield, president of the Complainant corporation, that he had no use for the domain name. Complainant contends that Respondent has not commonly been known as “Write Brothers.” Respondent is not making legitimate noncommercial use of the domain names because there is a website linked to the domain name and using the same name as the Complainant’s tarnishes the Complainant’s mark.
In urging that the domain names <writebrothers.com> and <writebros.com> were registered and used in bad faith, Complainant contends that Respondent acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant or others.
Complainant argues that Respondent made repeated attempts to sell the domain names to the Complainant in that after Complainant approached Respondent about transferring the domain names to Respondent the Respondent and Complainant negotiated the transfer of the domain names from March 25, 2002 until September 10, 2002.
Complainant initially offered $4,000 to Respondent and at one point offered $9,000 for the transfer of the domain names. These offers were well in excess of the amount that Respondent had invested in the domain names. Respondent demanded that Complainant pay at least a 36,937% rate of return on Respondent’s investment.
Complainant claims that Respondent registered the domain names(s) to prevent others from reflecting the mark in a domain name and has engaged in a pattern of such conduct. Respondent made no prior use of the domain names and had no plans to do so until after the Complainant used the mark in commerce. “Willfulness” is shown because Respondent’s website was already accessible without use of the at-issue domain names.
The fact that the domain names are wholly unrelated to any endeavor, trademark or service mark engaged in or owned by Respondent, shows Respondent engaged in a pattern of purposefully preventing Complainant and all others from reflecting those marks in a domain name.
According to the Complainant, Respondent registered the domain name to attract Internet users to Respondent’s location, thereby creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location of a product or service on Respondent’s web site or location.
Complainant requests that the Panel issue a decision that the domain-name registration be transferred to Complainant or alternatively be canceled.
Respondent claims that this is not a clear case of “cybersquatting” and “cyber-piracy.”
The mark and the domain names are not confusingly similar because there is no definite proof that the Complainant has trademark rights in the mark “Write Brothers.” The words making up the at-issue mark are descriptive. The Complainant is thus required show that the mark has attained a secondary meaning. This the Complainant cannot do.
Complainant has failed to sustain its burden of proving that Respondent did not have any legitimate interest in the domain names; the allegations made by Complainant are insufficient. Respondent states that he has made “demonstrable preparations to use” the domain names in connection with a “bona fide offering of goods or services.” To wit, the Respondent declares that he planned on using <writebrothers.com> to provide do-it-yourself writing resources and had formed an L.L.C. with his brother for that purpose. Respondent’s brother Brian is a professional screenwriter and has confirmed he was involved in the plans.
Although Respondent negotiated with the Complainant for the transfer of the domain names, he did not initiate these negotiations. Respondent had no intent to divert consumers or tarnish any trademark or disrupt any business. Respondent has never attempted to sell any [other] domain names.
Finally, Respondent requests that the Panel find that the Complainant has engaged in Reverse Domain Name Hijacking. The Complainant has no rights to the domain names and is merely using the UDRP process to wisk the domain names away from Respondent.
C. Additional Submissions
Complainant has submitted supplemental material pursuant to Forum Supplemental Rule 7. The material takes the form of a reply to the Response with attached exhibits. Although some of the material is new and includes a response to the charges of Reverse Domain Hijacking, much of this “reply” rehashes the allegations and conclusions found in the Amended Complaint.
Respondent requests that it be permitted to submit supplemental material in response to Complainant’s supplemental filing. Respondent attaches its supplemental material. The material is in the form of an objection to the Complainant’s supplemental filing based on the inpropriety of Supplemental Rule 7, and a short surreply to Complainant’s “reply.”
While the Panel finds some merit in the Respondent’s argument objecting to Complainant’s supplemental filing, the reasoning setout in America Online, Inc. v. Adrian Paul Miles d/b/a AD200d.com, FA 105890 and cited by the Respondent, urges only that the Panel retain discretion as to whether or not it will consider additional submissions. A Panel should not be required to accept supplemental material from the parties. Respondent argues that in our case the Panel should not allow the Complainant’s filing.
But on the other hand, a plain reading of the the Forum’s Supplemental Rule 7 appears to allow a supplemental filing as a matter of right. At least one panel has issued a decision consistent with such a plain reading, See, e.g., The Prudential Insurance Company of America v. Rich Arzaga Marketing Company, FA 106104 (Nat. Arb. Forum May 13, 2002).
This dichotomy works an inequity on any party taking the Forum’s Supplemental Rule 7 at its face. Such a party might rely from the outset on the assumption that it may file a supplemental response, only to have its supplemental effort rejected on somewhat covert procedural grounds. What’s more, the party’s original filing might have been drafted with the expectation that there would be one more opportunity to submit material to the panel. Without the benefit of the supplemental filing, the original filing might be rendered ineffective. This situation seems fundementally unfair. Parties to a UDRP should be afforded clear rules that are interpreted uniformly across panels and dispute resolution providers.
It is beyond an individual panel’s capability to solve systemic procedural problems with UDRP aribrations. Nevertheless, this Panel urges the Forum to reconsider the propriety of Supplemental Rule 7 against the backdrop of the concerns raised herein and by the cases cited above.
With regard to the the instant proceeding, in fairness and in its discretion, the Panel will consider both parties’ supplemental submissions for such limited value as they may have here.
Complainant Write Brothers, Inc. develops software and provides services for use by authors to assist in writing and story development, and provides such services online. Complainant maintains a website at www.write-brothers.com. Complainant has applied for a services mark in “Write Brothers” via application serial nos. 76/392008 and 76/393244.
Respondent Dennis Pollack (Respondent) and his brother Brian have been involved with the business of screenwriting. Brian Pollack has numerous television writing credits including episodes of Sledge Hammer, The Love Boat, Cheers, The Simpsons, The Jeffersons and others. Resp. Exhibit A, 33 et seq. The pair made sketchy plans to use the at-issue domain names in connection with a business related to screenwriting. Together they formed a business entity to support their plans.
Respondent registered the domain names <writebros.com> and <writebrothers.com> on January 21, 1999 and January 22, 1999, respectively. Respondent is not known by the name “Write Brothers” or any similar name.
During the first quarter of 2002, the Complainant, then known as Screenplay Systems, Inc. became interested in changing its product name from Screen Writer’s Software to Write Brothers and acquiring the at-issue domain names.
Complainant first used the mark “Write Brothers” in commerce on August 8, 2002. The mark “Write Brothers” is capable of becoming a trademark in which someone could acquire rights. The words when used together are not descriptive but fanciful. In fact, in 1979, The Gillette Company was granted federal registration in the mark “Write Bros.” in connection with a line of writing instruments, http://tess.uspto.gov/bin/showfield?f=doc&state=q15sr8.2.7 (December 20, 2002).
Complainant’s application for registration, without more, is not evidence of trademark rights in the mark. However, it does appear from the applications that Complainant believes it first used the mark in commerce on August 8, 2002, http://tess.uspto.gov/bin/showfield?f=doc&state=oi8l2s.2.5, (December 20, 2002). In its papers, Complainant presents a copy of an online page bearing the banner “The Write Brothers Store.” The page appears to be from Complainant’s website selling several writing related products, none of which are branded with the Write Brothers’ mark. Comp. Exhibit C. This specimen coupled with the application and statements regarding uses set forth in the proffered declarations indicates that the Complainant’s mark was, at least for purposes of this proceeding, used in commerce. The Complainant, therefore, has at least some trademark rights in the mark.
Other evidence of actual use in commerce is offered in a single conclusory statement in the Declaration of Stephen Greenfield. He declares that “[o]n or about August 8, 2002, we began commercial use of the “Write Brothers” mark. In his Supplementary declaration, Greenfield states that the first use in commerce was in April of 2002. Comp. Supp. A-10. Some additional material is offered as part of the Complainant’s supplementary exhibits ostensibly to show actual use of the mark in commerce. Complainant’s argument that it has trademark rights is weak. Nevertheless, the Panel has given Complainant the benefit of the doubt that it has at least some trademark rights in the Write Brother’s mark.
Complainant initiated negotiations to have the domain names transferred from the Respondent. Between March 25, 2002 and September 12, 2002 the parties attempted to negotiate the transfer, but failed to agree on price.
On or after August 8, 2002, Respondent linked the domain names to a website which sold hats and other clothing bearing the logo “Invest-A-Gator.” The content of the website has no apparent relationship to the plain meaning of the at-issue domain names.
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.”
In addition to the material submitted, the Panel examined the USPTO’s records for trademarks in the word “WRITEBROTHERS” and “WRITEBROS” and the registration record for the domain names at-issue.
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.
Identical and/or Confusingly Similar
The domain names are similar to the Complainant’s mark as written, as heard and in meaning. The Complainant demonstrates that it has at least sufficient rights in the WRITE BROTHERS mark to go forward with a UDRP complaint.
The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required –unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).
Complainant has acknowledged in its applications for federal trademark registration and its moving papers that it used the Write Brothers mark in commerce and continues to use the mark in commerce. The Complainant thus has colorable trademark rights in the Write Brothers mark.
Respondent’s <writebrothers.com> domain name is identical to Complainant’s WRITE BROTHERS mark. It incorporates Complainant’s entire mark and merely adds the generic- top-level domain name “.com.”
Respondent’s <writebros.com> domain name is confusingly similar to Complainant’s Write Brothers mark because it incorporates the majority of Complainant’s mark and merely abbreviates the word “brothers.” The abbreviation of one or more terms in a domain name does not create a distinct mark capable of overcoming a claim of confusing similarity. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).
Rights or Legitimate Interests
After registering the at-issue domain names (January 1999), Respondent had legitimate rights in the domain names. Rights in a domain name are gained by virtue of a grant from the registrar, in this case “Go-Daddy,” upon the registrant’s acceptance of registrant’s Domain Name Registration Agreement. Comp. Exhibit C. There is nothing in the record indicating that the Respondent violated this agreement. Nor did Respondent’s subsequent conduct divest Respondent of its rights in the domain name
Notwithstanding Complainant’s implications to the contrary, there is no requirement that a domain name registrant use or have any use for the domain name at the time of registration; not even for a domain name that might be similar to an existing trademark. “A domain name holder is under no obligation to immediately begin operating a website upon registering the domain name.” PROM Software, Inc. v. Reflex Publishing, Inc., D2002-1154 (WIPO Mar. 4, 2002).
Even if this were not the case, Respondent showed his intention to use the disputed domain names in connection with a bona fide offering of goods and services related to screenwriting and denies Complainant’s allegations to the contrary. In supporting declarations, Respondent has shown that he did have at least formative plans to use the domain name prior to that date regarding screen writing.
In July of 1999 I started Right Brain Domain LLC which was going to create the Write Brothers.com platform to provide do-it-yourself writing resources under one roof. . . . I wanted Write Bros [SIC] to be “Charles Schwab for writers”. [SIC] Write Brothers.com was named for Dennis Pollack and Brian Pollack. We are both writers and brothers.
Resp. Exhibit A.
The declaration of Brian Pollack submitted by Respondent together with its attachments indicates that Brian is a screenwriter with a television credits spanning about two decades.
Therefore, the Respondent has demonstrated some preparations to use the domain names in connection with a bona fide offering of goods or services pursuant to Paragraph 4(a)(ii). Respondent thus offers a plausible explanation of why the domain names were registered. The Respondent’s plans have not yet manifested in a <writebrothers.com> and/or <writebros.com> writing related website. Although this is consistent with Complainant’s claim that Respondent had no-plans to use the domain names, it still does not prove Respondent’s lack of intention to use the domain name in a bona fide manner.
Respondent’s “intent to use” the domain name is sufficient to create a legitimate interest in the domain names. CHF Industries, Inc. v. Domain Deluxe, FA 97532 (Nat. Arb. Forum July 26, 2001). Other Panels have been concerned with setting any “objective minimum standard” regarding a registrant’s preparation to use (or use) of a domain name. See Penguin Books Ltd v. The Katz Family and Anthony Katz, D2000-0204 (WIPO May 20, 2000). This Panel has similar concerns. Innocent registrants should not have to satisfy objective requirements in addition to those expressly setout in the Domain Name Registration Agreement in order to maintain rights in a domain name.
The Panel feels, therefore, that Complainant fails to demonstrate that Respondent had no rights or legitimate interest in the domain names.
Registration and Use in Bad Faith
Finally, to prevail a Complainant must plead and prove that the Respondent registered and used the at-issue domain in bad faith. The bad faith element is actually two elements, requiring the Complainant to show both bad faith registration and bad faith use. World Wrestling Federation Entertainment, Inc. v. Brosman, D99-0001 (WIPO Jan. 14, 2000). Complainant proffers no evidence showing that Respondent registered either of the domain names in bad faith.
At the time of the domain names’ registration (January 1999), Complainant had no rights in the Write Brothers mark. Complainant first used the Write Brothers mark in commerce in August 2002, more than two years after Respondent’s registration of the names. Assuming that the Complainant acquired trademark rights in Write Brothers by sufficient commercial use, these rights could only have been acquired subsequent to Complainant’s first use. Therefore, the domain names could not have been registered in bad faith.
The Respondent did not exhibit bad faith in its negotiations with the Complainant. Complainant initiated negotiations to purchase the domain names. Complainant did so at a time when it had no trademark rights in the at-issue mark. At that time and to date, Respondent had, and has, absolutely no duty to transfer the domain names for an amount acceptable to Complainant, or for any amount whatsoever. The failure to consummate a transfer of the domain names was simply because the buyer and seller did not agree on price. Complainant’s use of the term “extortion” to describe the parties’ arms length negotiations is, at best, misplaced.
Respondent was under no duty to establish a website at the at-issue domain names’ URL. Respondent could use the at-issue domain names for any purpose or no purpose, commercial or non-commercial, so long as he did not intend to, or actually, use the domain names to infringe on the rights of other. Therefore, leaving the domain names dormant does not show bad faith, absent other evidence of misuse.
The mere act of using the domain names in a commercial manner (a web store) after Complainant announced that it believed it had acquired trademark rights in the Write Brothers mark does not create an inference of Respondent’s intent to confuse and thereby attract users (customers) to the site.
Given the foregoing, the Complainant fails to meet its burden. Although its mark and the domain names are identical, it cannot show bad faith on the part of the Respondent in registering the domain names. Nor can it show that the Respondent attempted to create a likelihood of confusion as to the source of the products on the website linked to the domain names. Bad faith is simply not present here. On the other hand, Respondent shows that he has legitimate interests in the domain names.
This is a forum for abusive registrations prevention. By no stretch can the Panel find that Respondent, who registered the at-issue domain names at a time when Complainant admits it was not even using the mark, has violated the UDRP. The Complainant simply cannot and has not stated a case of abusive registration.
REVERSE DOMAIN NAME HIJACKING
Reverse Domain Name Hijacking means using the [UDRP] Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. See Rule 1. While Complainant’s case is weak, it is colorable. The Panel does not find convincing evidence that the Complainant acted in bad faith in pursuing its claim.
Based upon the above findings and discussion and pursuant to Rule(4)(i) of the Rules of Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum Supplemental Rules of ICANN’s Uniform Domain Name Dispute Resolution Policy, the Panel, consisting of Sandra Jo Franklin, G. Gervaise Davis and Paul M. DeCicco hereby deny the relief requested by Complainant. Respondent’s request for a finding of Reverse Domain Name Hijacking is also denied.
FOR THE PANEL
Dated: December 23, 2002
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