Home Box Office, Inc. v. Lance Kotcher d/b/a
Have A Nice Life Inc.
Claim Number: FA0602000651681
PARTIES
Complainant is Home Box Office, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Lance Kotcher d/b/a Have A Nice Life Inc. (“Respondent”), 2464 Ranch Acre Circle, Jupiter, FL 33478.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <sexandthecity.com> and <sexinthecity.com>, registered with Enom, Inc. and Network Solutions, Inc. respectively.
PANEL
The undersigned certifies 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.
Honorable Herman D. Michels (Ret.) and Honorable Carolyn M. Johnson
(Ret.), as Panelists; and Honorable Karl V. Fink (Ret.), as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 28, 2006; the National Arbitration Forum received a
hard copy of the Complaint on March 2, 2006.
On February 28, 2006, Enom, Inc. and Network Solutions, Inc. confirmed
by e-mail to the National Arbitration Forum that the <sexandthecity.com>
and <sexinthecity.com>
domain names are registered with Enom, Inc. and Network Solutions, Inc.
respectively, and that the Respondent is the current registrant of the
names. Enom, Inc. and Network
Solutions, Inc. have verified that Respondent is bound by the Enom, Inc. and
Network Solutions, Inc. registration agreements 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 March 2, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 22, 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@sexandthecity.com and
postmaster@sexinthecity.com by e-mail.
A timely Response was received and determined to be complete on March
21, 2006.
A timely Additional Submission was received from Complainant and
determined to be complete on March 27, 2006.
All submissions were considered by the Panel.
On April 3, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Honorable Herman D. Michels (Ret.) and
Honorable Carolyn M. Johnson (Ret.), as Panelists; and Honorable Karl V. Fink
(Ret.), as Chair.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
· Complainant Home Box Office, Inc. ("HBO") owns all rights, title and interest in and to the mark SEX AND THE CITY. The mark SEX AND THE CITY is derived from the famous HBO TV series “Sex And The City,” which debuted in 1998 and immediately became one of the most popular cable TV series ever. HBO’s rights to SEX AND THE CITY are based upon extensive use of the mark in advertising and publicizing the television series, as well as use by licensees on a variety of products.
· HBO also owns four federal registrations and one application for the mark SEX AND THE CITY. These registrations cover a wide variety of products and services, including apparel, television series, mugs, sportsbags, and audio and video products.
· Because of this extensive and continuous advertising, publicity and use, the mark SEX AND THE CITY has become strong and famous, and consumers associate the mark SEX AND THE CITY with HBO, the TV series “Sex And The City,” and the various products and services provided under the mark SEX AND THE CITY.
· Respondent’s <sexandthecity.com> is identical to HBO’s mark and television series SEX AND THE CITY, and <sexinthecity.com> is nearly identical to that mark and television series in sound, appearance and overall commercial impression. Moreover, Respondent’s Web sites prominently display “Sex And The City” and “Sex In The City” using the same fonts and distinctive trade dress adopted by HBO to advertise and promote its mark and television series. Respondent’s registration and use of these domain names is likely to confuse and mislead consumers into believing falsely that Respondent’s Web sites and content are affiliated with or endorsed by HBO.
· Respondent registered and continues to use the infringing domain names with a bad faith intent to capitalize on HBO’s famous SEX AND THE CITY mark, and profit from the extensive goodwill that exists in that mark. Respondent also has offered to sell the domain names.
· Respondent has no rights or legitimate interests in the subject domain names.
· Based upon (1) the fame of HBO’s television series and mark SEX AND THE CITY; (2) the fact that HBO and its licensees began using the mark SEX AND THE CITY long before Respondent registered the infringing domain names; (3) Respondent’s pattern of infringing upon HBO’s SEX AND THE CITY mark and trade dress; (4) Respondent’s use of the infringing domain names to provide commercial services; (5) Respondent’s offer to sell the domain names; and (6) numerous prior cases holding that the registration and use of domain names that infringe upon marks based upon television series is a violation of the UDRP and trademark law, Respondent cannot in good faith claim that he had no knowledge of HBO’s rights in the SEX AND THE CITY mark, nor can Respondent claim in good faith that it made a legitimate noncommercial or fair use of the subject domains, or that Respondent is commonly known as SEX AND THE CITY.
·
B. Respondent
· Respondent Lance Kotcher (“Respondent”) is in the business of successfully owning and operating websites for commercial use. Respondent owns three websites, including <haveanicelife.com>, a greeting card web-based business, which he created and maintains as commercial businesses.
· Respondent lawfully purchased <sexinthecity.com> on September 28, 1999 and lawfully purchased <sexandthecity.com> on December 11, 2001. The websites are dating websites with a demographic of members who are in their early 20’s. <sexandthecity.com> offers additional service such as apparel and accessories that are not offered on <sexinthecity.com>. The domain names for both websites were chosen in accordance with Respondent’s business model of marketing dating to consumers in different cities. The offerings of both sites do not offer any content even remotely resembling the Complainant’s TV show.
· Since 1999, Respondent has spent more than $30,000 (See Annex A) marketing and maintaining the websites. <sexandthecity.com> has made several unique product offerings (ie. hats and other such accessories) that have been highlighted through multiple press releases since its inception.
· According to <uspto.gov>, Sex And The City was trademarked as “entertainment services in the nature of an ongoing television program featuring drama and comedy.” It was not until September 13, 2005 that the Complainant made any claims whatsoever to any type of communication medium such as wireless, games, etc., approximately seven years and six years after the initial launch of <sexandthecity.com> and <sexinthecity.com>, respectively.
· HBO makes no allegations that the mark SEX AND THE CITY is associated with dating websites. It is not likely that any consumers would be confused as to the source, sponsorship, affiliation, or endorsement of the websites or location of any product or services on the websites due to the differences between a fiction show and a dating website.
· Respondent’s websites display pictures of its members for the bulk of its content. HBO’s home page only features show related content. The look and feel of the websites is entirely different from any alleged trade dress adopted by HBO for the mark SEX AND THE CITY.
· Respondent makes no claims that his websites are in any way affiliated with the show Sex and The City.
· It was not until January 2006 that Complainant first approached Respondent about any alleged rights it may have had in the websites.
· HBO has no legitimate rights, and alleges no rights, in the mark SEX IN THE CITY. The domain name <sexinthecity.com> is not identical or confusingly similar to the mark SEX AND THE CITY.
· HBO did not have legitimate rights to the mark SEX AND THE CITY in the field in which Respondent operates until after Respondent had launched <sexandthecity.com>. The consumers who traffic <sexandthecity.com> use the website for dating and do not associate it with the television show.
· Respondent has legitimate rights and interests in respect of the domain names. Respondent’s websites are used as a legitimate business enterprise. Respondent’s use of the websites has not been in bad faith.
·
Respondent’s good faith registration of the domain
names is evidenced by the fact that <sexinthecity.com> was
purchased on September 28, 1999, only months after HBO’s television series
premiered and long before the show received any substantial press coverage or
it’s Emmy Award in August 2000.
· Trademark law is clear that service marks are industry specific. The websites are used as an online dating website. HBO’s Sex And The City is a TV show. There is no resemblance whatsoever, a fact which HBO freely admits. Respondent does not use any “replicas” of HBO’s SEX AND THE CITY mark and alleged trade dress.
· Respondent uses the websites to sell online services and advertise and sell, among other things, gambling services, flowers, clothing, mugs and other products. HBO and its licensees sell calendar, mugs, and other products with the SEX AND THE CITY mark on them. Respondent does not, nor has ever offered, any mugs or products with the SEX AND THE CITY mark.
· Respondent has not demonstrated any pattern of cybersquatting. Rather, Respondent’s business is to purchase and maintain websites for commercial use.
· Respondent’s good faith is further shown by the fact that he has been offered money to sell his websites, but has declined. In 2002, Respondent was offered $100,000 to sell these websites to a party of <adultsky.com>. Respondent refused this offer.
· Respondent did not contact HBO to sell his websites. Moreover, upon receipt of HBO’s cease and desist letter in January 2006, Respondent did not agree to sell the websites.
· HBO cites to prior UDRP decisions where panelists have held that the name of a television series or movie is protectable under the UDRP, in order to attempt to show bad faith. Those decisions are distinguishable from this action because in those decisions, the names were not generic. The domain names SexInTheCity.com and SexAndTheCity.com are generic and are consistent with Respondent’s business model of marketing dating to consumers in different cities.
· Respondent’s registration of the domain names was not in bad faith. Respondent registered his domain names for <sexinthecity.com> and <sexandthecity.com> over eight and five years ago, respectively. The domain names <sexinthecity.com> and <sexandthecity.com> are generic and were chosen to be consistent with Respondent’s business model of marketing dating to consumers in different cities.
· Because of Respondent’s hard work and monetary efforts, <sexandthecity.com> and <sexinthecity.com> are worth a significant amount of money.
· It would be unjust to force Respondent to forfeit his hard-earned business, while HBO has waited eight years to assert any alleged right or interest to the websites. As numerous panels have held, a Complainant’s delay in bringing an action should not be rewarded, and it may result in a respondent’s acquisition of rights in the domain name.
· “The transfer of a domain name is an extraordinary remedy that ought to be exercised only in clear cases.” United States Postal Serv. v. Postoffice.com, Inc., FA 96313 (Nat. Arb. Forum Mar. 19, 2001). HBO has failed to meet its tough burden stated above. Based upon (1) HBO’s failure to show a legitimate right to the mark SEX IN THE CITY or a prior right to the mark SEX AND THE CITY; (2) the lack of confusion between Respondent’s websites and HBO’s mark SEX AND THE CITY; (3) Respondent’s rights and legitimate business interest in the websites; (4) the lack of bad faith use or registration by Respondent; (5) numerous cases holding that the registration and use of domain names in the circumstances above are not in violation of the UDRP and trademark law; and (6) HBO’s eight year delay in asserting any alleged rights to the websites, HBO has failed to prove that it is entitled to any rights in the domain names <sexandthecity.com> and <sexinthecity.com>.
C. Additional Submissions
Complainant
· HBO has prior rights to its mark SEX AND THE CITY and those rights extend to Respondent’s registration and use of identical and confusingly similar domain names. HBO began using its mark SEX AND THE CITY with online services long before Respondent registered and began using the infringing domain names.
· Respondent also falsely alleges that a trademark owner’s rights are limited solely to what is set forth in federal registrations, i.e., common law rights are not to be considered under the UDRP. The UDRP statute and the arbitrators that have interpreted it are unequivocal that common law rights are recognized under the UDRP, and those rights vest when the mark was first used in commerce.
· HBO’s exclusive rights to SEX AND THE CITY vested in 1998 when the mark was first used in interstate commerce. HBO’s subsequent federal trademark registrations strengthen HBO’s rights and are deemed to have provided Respondent with at least constructive notice of HBO’s rights at least as early as August 12, 1999, the date on which HBO filed its first federal application.
· Respondent has conceded that he sells products that conflict directly with HBO’s federal trademark registrations for SEX AND THE CITY. For example, in Paragraph 12 and 15 of his response, Respondent admits that he sells “apparel and accessories” and “hats and other such accessories” at <sexandthecity.com>. Similarly in Paragraphs 32(d), Respondent admits he uses his Web sites to sell “clothing, mugs and other products.” As set forth in HBO’s complaint, these are the identical products covered under HBO’s federal trademark Reg. Nos. 2,650,397 and 2,684,450.
· Respondent has conceded that his web sites and services are targeted to consumers in the same general demographic group as those that are fans of HBO’s series SEX AN THE CITY.
· During the 50 months the Respondent has owned <sexandthecity.com> he claims to have received nearly 6 million visitors, which equates to about 120,000 visitors each month, or 4,000 hits every day. This enormous amount of Internet traffic is the obvious result of the popularity of HBO’s television series SEX AND THE CITY, and Respondent has intentionally registered and used these domain names to profit from the consumer confusion.
· Respondent’s allegation that HBO has known about the infringing domain names since 2004 is based solely on the unfounded assumption that HBO knew about the three and four sentence blurbs that were posted on obscure sites.
· Respondent cites to ANNEX A as alleged evidence that he has spent more than $30,000 marketing and maintaining the websites. However, the only actual invoices and monetary references included under Annex A are for monthly hosting fees that all cybersquatters must incur to activate their infringing sites. If paying monthly hosting fees were an absolute defense under the UDRP, every cybersquatter that activated a web site would be immune under the policy.
· Registering, using and promoting domain names that infringe upon another’s mark does not constitute a bona fide or legitimate use of those domain names.
FINDINGS
For the reasons set forth below, the Panel finds Complainant has proved that the domain names should be transferred.
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 has established rights in the SEX AND THE CITY mark by registering it with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,513,906 issued December 4, 2001; filed August 12, 1999). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant asserts that Respondent’s <sexandthecity.com> domain name is identical to Complainant’s SEX AND THE CITY mark because the domain name incorporates Complainant’s mark in its entirety and merely adds the generic top-level domain “.com” to the mark. The Panel finds that such a minor addition to Complainant’s mark is insufficient to negate the identical aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant).
Complainant contends that the <sexinthecity.com> domain name is confusingly similar to
Complainant’s SEX AND THE CITY mark because the domain name incorporates the
dominant features of Complainant’s mark and substitutes the term “in” for the
term “and.” The Panel finds that such a
minor alteration to Complainant’s registered mark does not substantially differentiate
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Am. Eagle Outfitters,
Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the
<americaneaglestores.com> domain name to be confusingly similar to the
complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Wellness Int’l
Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001)
(finding that the domain name <wellness-international.com> is confusingly
similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see also
Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element).
Complainant has proved this element.
Once Complainant makes a prima facie case for Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Complainant asserts that Respondent is using the <sexandthecity.com> and <sexinthecity.com> domain names to redirect Internet users interested in Complainant to Respondent’s websites featuring commercial content unrelated to Complainant. The Panel finds that Respondent’s use of domain names that are confusingly similar and identical to Complainant’s SEX AND THE CITY mark to redirect Internet users interested in Complainant to Respondent’s websites is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent is not commonly known by the <sexandthecity.com> or <sexinthecity.com> domain name and that Respondent has not been licensed or otherwise authorized by Complainant to use the SEX AND THE CITY mark. The Panel finds that Respondent has not established rights or legitimate interests in the <sexandthecity.com> and <sexinthecity.com> domain names pursuant to 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant has proved this element.
Complainant alleges that the <sexandthecity.com> and <sexinthecity.com> domain names are confusingly similar and identical to Complainant’s SEX AND THE CITY mark. Moreover, Complainant contends that Respondent commercially benefits when Internet users searching under Complainant’s mark are diverted to Respondent’s commercial websites. The Panel finds that Respondent is capitalizing on the confusingly similar and identical domain names to benefit from the valuable goodwill that Complainant has established in its mark. Thus, the Panel finds that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used an infringing domain name to attract users to a website sponsored by the respondent).
Complainant has proved this element.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sexandthecity.com>
and <sexinthecity.com> domain names be TRANSFERRED from
Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Chair
Honorable Carolyn M. Johnson (Ret.), Panelist
Honorable Herman D. Michels, (Ret.), Panelist
Dated: April 11, 2006
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