CMG Worldwide, Inc. v. Humphrey Bogart
Club
Claim Number: FA0302000144631
PARTIES
Complainant
is CMG Worldwide, Inc.,
Indianapolis, IN (“Complainant”) represented by Lawrence V. Molnar of CMG Worldwide, Inc. Respondent is Humphrey Bogart Club, Las Vegas, NV
(“Respondent”) represented by Ari Goldberger of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <humphreybogart.com>
registered with Network Solutions, Inc.
PANEL
The
undersigned panel certifies that they have acted independently and impartially
and to the best of their knowledge have no known conflict in serving as the
Panel in this proceeding.
The
Panel: Dawn Osborne (Chair), the Honourable Bruce E Meyerson Esq and Mr Alan L.
Limbury.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 5, 2003; the Forum received a hard copy of the
Complaint on February 6, 2003.
On
February 7, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <humphreybogart.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, 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
February 10, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 3, 2003 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@humphreybogart.com by e-mail.
A
timely Response was received and determined to be complete on March 24, 2003.
On April 2, 2003, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Dawn Osborne
(Chair), the Honourable Bruce E Meyerson Esq. and Mr. Alan Limbury as
the Panel.
On
April 15, 2003 the Panel requested additional information from the Complainant as
to the rights it claims in the mark HUMPHREY BOGART. Supplemental information
was provided by the Complainant on April 24, 2003. An additional statement was
then filed by the Respondent on May 12, 2003.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
Complainant is in the business of representing living and deceased celebrities
and their heirs, families, and estates of deceased celebrities for the purposes
of licensing to third parties permission to commercially utilize the names,
likenesses, voices, rights of publicity and endorsement and other visual and
aural depictions of such celebrities, together with the trademarks and related
rights associated with same.
The
Complainant is the exclusive, worldwide licensing agent for Bogart Inc. who is
the owner of trademark 1,775,912 for the mark HUMPHREY BOGART and proprietary
rights, including the right of publicity, right of association, sponsorship,
and/or endorsement, in and to the name and likeness of the late and very famous
and accomplished actor Humphrey Bogart and is charged with enforcement of these
rights.
The
Complainant alleges that the domain name at issue <humphreybogart.com>
is identical or confusingly similar to the registered and common law trademarks
and other intellectual property issues in which Bogart Inc. has exclusive
rights.
In
view of the decision of the Panel below, other submissions made by the
Complainant in the Complaint need not be considered relevant here.
B.
Respondent
The
Respondent contends that the Complaint must be dismissed because the
Complainant is not the owner of a registered trademark that is identical or
confusingly similar to the disputed domain name <humphreybogart.com>
and has produced no evidence of common law trademark rights.
In
view of the decision of the Panel below, other submissions made by the
Respondent in its Response need not be
considered relevant here.
C.
Additional Submissions
In
its Supplementary Information submitted on May 24 2003, the Complainant states
it has authority from Bogart Inc. to pursue the Complaint, but confirms that
Bogart Inc. was the exclusive owner of the trademark rights HUMPHREY BOGART and
the common law rights associated with Humphrey Bogart, the actor, in commerce.
An affidavit of Stephen Bogart, the son of the actor Humphrey Bogart, was
exhibited confirming this. A representation agreement between Bogart Inc. and
the Complainant (with its date of execution and date of termination unhelpfully
redacted) was exhibited which contained a clause that the Complainant shall not
obtain or claim ownership to the Humphrey Bogart name and trademarks. The
Respondent did not contest this additional information.
FINDINGS
The owner of the trademark HUMPHREY
BOGART has been shown to be Bogart Inc., an entity which is not a party to this
Complaint. The Complainant may have contractual rights with respect to the
trademark, but does not have “rights” in the trademark HUMPHREY BOGART within
the meaning of the UDRP Policy.
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.
The owner of the HUMPHREY BOGART
registered trademark is Bogart Inc. The Respondent does not contest this, nor
that Bogart Inc. is the owner of unregistered common law rights in the HUMPHREY
BOGART name.
The Complainant has not shown any
“rights” in the trademark HUMPHREY BOGART within the meaning of the UDRP
policy. Whilst it may have contractual rights to represent Bogart Inc. the
owner of the rights in HUMPHREY BOGART, the Complainant does not own these
rights or have any rights in the trademark itself. This is confirmed by both
the affidavit of Stephen Bogart and the representation agreement submitted with
the Complainant’s supplementary information.
This is a case similar to the cases NBA Properties Inc v Adirondack Software
Corp., D2000-1211 (WIPO Dec.
8, 2000) and Backstreet Boys
Prod. V. Zuccarini,D2000-1619
(WIPO Mar. 27, 2001) where
the wrong Complainant filed the Complaint. Accordingly, the Complainant failed
to satisfy Paragraph ¶ 4(a)(1) of the Policy. As pointed out in the Backstreet
Boys case the only option open to the Panel in this type of case is to
dismiss the Complaint “without prejudice.”
Given the Panel’s findings above there is
no need to make any further determinations in this decision.
DECISION
The
Complainant having failed to satisfy all three elements required under the
ICANN Policy, the Panel concludes that relief shall be DENIED.
Dawn Osborne Panelist (Chair)
Dated: May 27, 2003
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