Sony Pictures Television Inc. v. Thomas, Jeff
Claim Number: FA1506001625643
Complainant is Sony Pictures Television Inc. (“Complainant”), represented by Richard S. Mandel of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Thomas, Jeff (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sharktank.com>, registered with Network Solutions, LLC.
The undersigned certify that they have acted independently and impartially and to the best their knowledge there is no known conflict in serving as Panelists in this proceeding.
Alan L. Limbury, Sandra J. Franklin, Paul M. DeCicco as Panelists.
Complainant submitted a Complaint to the Forum electronically on June 23, 2015; the Forum received payment on June 23, 2015.
On June 24, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <sharktank.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on June 29, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 20, 2015.
Complainant’s timely additional submission was received on July 27, 2015.
On July 29, 2015, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Alan L. Limbury, Sandra J. Franklin and Paul M. DeCicco as Panelist.
Respondent’s timely additional submission was received on July 31, 2015.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant has registered the SHARK TANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,716,584, registered November 24, 2009). Complainant also asserts unregistered common law rights in the SHARK TANK mark dating back to the date of its first use, August 9, 2009. The mark is used on or in connection with a television show where entrepreneurs present business ideas to a panel of business owners and venture capitalists in an effort to secure capital investments in their start-up businesses. The <sharktank.com> domain name is identical to the SHARK TANK mark because it only differs in the addition of the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant’s. Further, Respondent is not making a bona fide offering of goods or services because the domain name resolves to a website with a message notifying Internet users that the website is under construction.
Respondent has engaged in bad faith registration and use. Respondent has failed to actively use the disputed domain name and had actual and constructive knowledge of Complainant’s television show and trademark rights when he repeatedly renewed the registration of the disputed domain name following the Complainant’s trademark registration.
Respondent makes no contentions with regard to Policy ¶ 4(a)(i).
Respondent has rights or legitimate interests. Respondent has made demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services. The disputed domain name is comprised of generic terms over which Complainant does not have a monopoly of rights. Respondent’s registration of the disputed domain name predates Complainant’s use of the SHARK TANK mark.
Respondent has not engaged in bad faith registration or use. Respondent has rights or legitimate interests that preclude a finding of bad faith. Respondent’s registration of the domain name predates Complainant’s use of the SHARK TANK mark.
C. Additional Submissions
Complainant additionally contends:
The evidence fails to demonstrate Respondent’s intention to make a use of the disputed domain name and therefore Respondent cannot demonstrate his rights and legitimate interests.
While Respondent registered the domain name before the show “Shark Tank” aired, Respondent allowed the automatic renewal feature to operate after the show became a hit. Respondent admitted that he indeed had knowledge of the show and its popularity and therefore he has acted in bad faith, as demonstrated by an email from a third party stating: “Have you ever thought about getting on the CBS show ‘Shark Tank’ and pitching them the idea that buying your domain [<sharktank.com>] would be a smart business investment? I see a serious $trategy.”)
Respondent additionally contends:
Complainant’s position contradicts the plain language of the Policy which requires bad faith registration and use.
Complainant does not contest Respondent’s assertion that the domain name was not registered in bad faith.
Respondent has not used the domain name to take advantage of its trademark value.
Respondent has never attempted to sell the domain name or transfer the domain name, despite having received several offers.
Complainant has rights in the SHARK TANK mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name before Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to hold the domain name as part of his business model.
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.”
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; 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.
The disputed domain name is identical to a trademark in which Complainant has rights.
Complainant establishes its rights in the SHARK TANK mark, for the purposes of Policy ¶ 4(a)(I), through the mark’s USPTO trademark registration. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The disputed domain name comprises Complainant’s entire SHARK TANK trademark less its space and the appended top-level domain name “.com”. These differences between the disputed domain name and Complainant’s trademark are insufficient to distinguish the disputed domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the <sharktank.com> domain name is identical to Complainant’s SHARK TANK trademark. 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”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of a disputed domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The two terms comprising SHARK TANK are generic and taken together, descriptive. “Shark Tank” has common meaning apart from any trademark value it may have acquired through its use in commerce. The registration of domain names that contain common words is permissible on a first-come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind. See National Gardening Association, Inc. v. CK Ventures, FA 1294457 (Nat. Arb. Forum Feb. 16, 2010) (“common words and descriptive terms are legitimately subject to registration as domain names on a first come, first-served basis”). Further, there is no indication that Respondent uses, or has ever used the domain name to exploit its trademark value in the category of goods and services covered by Complainant’s mark or otherwise. Respondent has provided evidence of his plans to use the disputed domain name and, despite Complainant’s arguments to the contrary, Respondent can take his time so long as there is no indication of bad faith (further discussed below). See CNRV, Inc. v. Vertical Axis, Inc., FA 1300901 (Nat. Arb. Forum May 3, 2010)(legitimate interest is established where “domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”). These foregoing factors lead this Panel to conclude that Respondent has rights or interests in respect of the domain name pursuant to Policy ¶ 4(a)(i), despite the fact that Respondent is neither authorized to use Complainant’s trademark, nor commonly known by the <sharktank.com> domain name. See Energy Source Inc. v. Your Energy Source, FA. 96364 (Nat. Arb. Forum Feb. 19, 2001) (“[r]espondent has persuasively shown that the domain name is comprised of generic and/or common descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also LML Investments LLC v. P.A. Gordon, FA 1571756 (Nat. Arb. Forum Sept., 2014) (“Such use of the disputed domain name in connection with its descriptive meaning establishes Respondent’s rights and interests in the disputed domain name.”).
Notwithstanding the Panel’s finding regarding Complainant’s rights in a mark pursuant to Policy ¶4(a)(i), a complainant’s successful demonstration of a respondent’s bad faith under Policy ¶4(a)(iii) almost universally requires showing that the complainant’s trademark rights predate the time the respondent registered the at-issue domain name.
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
WIPO, WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 2.1 (2d ed.).
It is axiomatic that if a complainant does not have trademark rights at the time of a disputed domain name’s registration (even though it may have such rights at the time of the parties’ dispute), there can be no bad faith registration on the part of the domain registrant/respondent. Numerous decisions support this very logical proposition. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001); see also Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO September 23, 2001); see also PrintForBusiness B.V v. LBS Horticulture, D2001-1182 (WIPO December 21, 2001).
Respondent, through an associated company, registered the <sharktank.com> domain name in 2002, and registered it in his own name in 2007, both well prior to Complainant’s SHARK TANK USPTO trademark registration. Complainant filed for USPTO registration on Sept. 18, 2008, registered Nov. 24, 2009. Notwithstanding the registration date of Complainant’s mark, Complainant might nevertheless establish it had pre-registration common law rights in the mark by submitting appropriate evidence that the mark acquired secondary meaning before the domain name’s registration. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). However, according to the operative SHARK TANK USPTO registration record, Complainant first used the SHARK TANK mark on August 9, 2009 and while common law rights might arise subsequent to a mark’s use in commerce, they logically cannot precede such use.
Complainant does not contend that Respondent’s initial registration of the disputed domain name was in bad faith. Its argument is that the subsequent renewals of the disputed domain name by Respondent with knowledge of Complainant’s trademark suffice to establish bad faith registration, citing several UDRP decisions to that effect, including Big 5 Corp. v EyeAim.com, FA 1513704 (NAF, Oct. 11, 2013). The attempt to equate renewal with initial registration has been rejected by numerous other UDRP decisions and this Panel does not accept the proposition that, as the Policy is presently worded, bad faith renewal can overcome and displace initial good faith registration. This Panel prefers the majority approach in A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800.
Given the foregoing, the Panel concludes that Complainant does not, and cannot, meet its burden regarding Respondent’s bad faith registration and use of the <sharktank.com> domain name under Policy ¶4(a)(iii).
Reverse Domain Name Hijacking
Respondent requests a finding of reverse domain name hijacking (RDNH) against Complainant. However, even though the Panel holds that Complainant fails to satisfy its burden under the Policy, a finding of reverse domain name hijacking does not necessarily follow. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”).
On the one hand, it appears that Complainant’s filing was certainly doomed to fail from the outset given the undisputed fact pattern showing that the disputed domain name was first registered prior to Complainant’s having any rights in its SHARK TANK trademark. On the other hand, Complainant prevails under Policy ¶4(a)(i) and as discussed below it is not clear from the record that Complainant knew or should have known to a reasonable certainty that the Complaint would fail under either Policy ¶(a)(ii) or ¶(a)(iii).
While Respondent initially registered the <sharktank.com> domain name prior to Complainant having trademark rights in the SHARK TANK mark, there is a handful of minority cases which, however flawed, nevertheless instruct that a panel should look to the disputed domain name’s re-registration date(s) (if a re-registration date) rather than the initial registration date when assessing whether or not a disputed domain name could have been registered in bad faith. Indeed, in our case several re-registrations of the disputed domain name occurred after Complainant acquired rights in its SHARK TANK mark. The fact that re-registrations of <sharktank.com> occurred subsequent to Complainant’s acquiring trademark rights in the SHARK TANK mark allows, under the minority view, for the possible finding of bad faith registration if there is sufficient cooperating collateral evidence for such finding.
While this Panel wholly disagrees with the minority position relied on by Complainant, Complainant’s reliance on such cases cuts against the Panel’s summarily concluding that Complainant knew, or should have known with a reasonable degree of certainty at the time it filed its complaint, that such complaint must ultimately fail. Therefore, Complainant had a good faith basis to pursue a remedy via the UDRP and on balance the Panel finds that Complainant did not engage in RDNH. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sharktank.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Sandra J. Franklin,
Paul M. DeCicco (Chair),
Dated: August 6, 2015
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