EWM Brand Holdings, LLC v.
Don Ross Nabb Productions, LLC c/o Don Nabb
Claim Number: FA0703000952231
PARTIES
Complainant is EWM Brand Holdings, LLC (“Complainant”), represented by Nhut
Tan Tran, of Godwin Pappas Langley Ronquillo LLP,
The domain names at issue are <thestudiosatlascolinas.com> and <themoviestudiosatlascolinas.com>,
registered with Go Daddy Software, 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 S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 30, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 2, 2007.
On April 2, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <thestudiosatlascolinas.com> and <themoviestudiosatlascolinas.com>
domain names are registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the
name. 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 April 11, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 2, 2007 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@thestudiosatlascolinas.com and postmaster@themoviestudiosatlascolinas.com by e-mail.
A timely Response was received in hard copy only on May 2, 2007 and as such was not in compliance with
ICANN Rule 5(a).
An Additional Submission from Complainant was timely received on May 7,
2007.
On May 10, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David S. Safran, as Panelist.
INITIAL PROCEDURAL
ISSUE
While
Respondent’s electronic submission was received in a timely manner, Respondent
failed to send a hard copy of its Response to either the Forum or
Complainant. In light of this
deficiency, the Panel has the sole discretion as to whether to accept the
Response as well as the amount of weight given to the Response. See Six Continents Hotels,
Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the
respondent’s failure to submit a hard copy of the response and its failure to
include any evidence to support a finding in its favor placed the respondent in
a de facto default posture, permitting the panel to draw all appropriate
inferences stated in the complaint).
However, the Panel has decided to exercise its discretion in favor of
considering Respondent’s submission. See
Strum v. Nordic Net
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain names <thestudiosatlascolinas.com> and <themoviestudiosatlascolinas.com>
are identical and confusingly similar
to its mark THE STUDIOS AT LAS COLINAS in which it holds rights as the
successor through forclosure of the party which had been using the mark since
1981. Complainant also contends that
Respondent has no rights or legitimate interests in the domain names <thestudiosatlascolinas.com> and <themoviestudiosatlascolinas.com> since Respondent does not use them in connection with
a bona fide offering of goods or services, that the Respondent is not
known by the domain names and is not associated with the Studios at Las
Colinas, and that the domain names are
not being used for legitimate noncommercial or fair use purposes. Complainant also asserts that the
domain names <thestudiosatlascolinas.com> and <themoviestudiosatlascolinas.com> were registered and are being used in bad faith since
they were registered in violation of its agreement with GoDaddy.com and are
being used for illegitimate purposes with knowledged of Complainant’s prior
rights.
B. Respondent
Respondent contends that it registered and is using the domains with
the consent of the prior owner whose rights were acquired by Complainant.
C. Additional Submissions
Complainant’s Additional Submission merely amplifies its prior
contentions.
FINDINGS
The Panel finds that the domain names <thestudiosatlascolinas.com> and <themoviestudiosatlascolinas.com> are confusingly similar to a trademark in which Complainant
has rights, that Respondent has no rights or legitimate interests in the
domains, and that the domains were registered and are being used in bad faith.
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 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 Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(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 asserts ownership of the THE STUDIOS AT LAS COLINAS mark through common law rights in the mark further supported by a pending United States Patent and Trademark Office (“USPTO”) registration of the mark (Serial No. 78/888,570 filed May 21, 2006). Complainant contends that it has used, via its predecessor in interest, the mark exclusively and continuously in connection with services for major motion picture, television, and commercial productions since 1981. Complainant argues that it has expended substantial sums of money, time and effort in promoting its goods and services under the mark resulting in a widely recognized mark. The Panel finds that Complainant has established common law rights in the THE STUDIOS AT LAS COLINAS mark sufficient to satisfy 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).
Complainant argues that the <thestudiosatlascolinas.com> domain name is identical to Complainant’s THE STUDIOS AT LAS COLINAS mark and the <themoviestudiosatlascolinas.com> domain name is confusingly similar to the mark. Complainant argues that the <thestudiosatlascolinas.com> domain name includes Complainant’s mark in its entirety without any alteration. Complainant states that the inclusion of the term “movie” in the <themoviestudiosatlascolinas.com> domain name does not distinguish the disputed domain name from Complainant’s mark since the term “movie” is descriptive of Complainant’s business. The Panel finds that the <thestudiosatlascolinas.com> domain name is identical to Complainant’s mark and the <themoviestudiosatlascolinas.com> domain name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. In G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), the panel found that the complainant’s submission of a complaint constituted a prima facie case for purposes of the Policy. Additionally, in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel found that the complainant’s assertion that the respondent lacked rights or legitimate interests in the disputed domain name shifted the burden to the respondent to demonstrate that the respondent did have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Thus, the Panel finds that Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain constitutes a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests as outlined in Policy ¶ 4(c).
Complainant contends
that Respondent is using the <thestudiosatlascolinas.com>
and <themoviestudiosatlascolinas.com> domain names to redirect Internet users to
Respondent’s website located at the <drnshowbusiness.com> domain
name. Complainant argues that Respondent
operates a website that deceives consumers and misappropriates public goodwill
in Complainant’s mark. In its Additional
Submission Complainant states that Respondent has failed to provide any
evidence of prior permissive use of the disputed domain names. Complainant further states that Respondent
does not have any contract or relationship with Complainant. Complainant asserts that such use is neither
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
as Respondent is misappropriating Complainant’s mark in order to promote its
goods and services, nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii), as Respondent is operating a commercial website. In its Additional Submission, Complainant
emphasizes that Respondent has failed to meet any of the requirements for a bona
fide offering of goods or services and has failed to provide any concrete
evidence in support of its alleged legitimate interests. The Panel finds that Respondent lacks rights
or legitimate interests in the disputed domain name pursuant to Policy ¶¶
4(c)(i) and (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v. Tencent Commc’ns Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s
mark “as a portal to suck surfers into a site sponsored by [the respondent]
hardly seems legitimate.”).
Complainant further asserts that Respondent is not commonly known by the <thestudiosatlascolinas.com> and <themoviestudiosatlascolinas.com> domain names. Complainant cites as evidence the fact that Respondent’s WHOIS information identifies Respondent as “Don Ross Nabb Productions, LLC.” Complainant also asserts that Respondent is not sponsored by or affiliated with Complainant, and Complainant has not given Respondent permission to use Complainant’s mark in a domain name. The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant contends that Respondent is using the
disputed domain names to redirect Internet users to its own website. Complainant argues that because the disputed
domain names are identical and confusingly similar to Complainant’s mark,
Internet users seeking Complainant may instead find themselves redirected to
Respondent’s website and may mistakenly believe that Respondent is somehow
sponsored by Complainant. Complainant
asserts that Respondent is profiting from this confusion. Such action has been found to evidence bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”); see
also 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).
While Respondent has asserted that it has registered and is using the domain names pursuant to consent received from Complainant’s predecessor and has provided a copy of a letter dated July 20, 2003, to that effect, the Panel has noted that the domains were not registered until more than two years later and after Complainant acquired ownership of the Studios at Las Colinas mark and the underlying business. Given the close working relationship that Respondent contended existed between it and Complainant’s predecessor in interest, it is reasonable for the Panel to attribute knowledge of the transfer of ownership to Respondent and belated filing of the domain names to a change in Respondent’s relationship with the Studios at Las Colinas after Complainant acquired the Studios at Las Colinas mark and the underlying business.
As a result, the
Panel finds Respondent has registered and
is using the domains in bad faith pursuant to Policy ¶ 4(b)(iv).
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 <thestudiosatlascolinas.com> and <themoviestudiosatlascolinas.com>
domain names be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: May 24, 2007
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