Sandy Frank Film Syndication, Inc. v. Ralph Zita
Claim Number: FA1612001706714
Complainant is Sandy Frank Film Syndication, Inc. (“Complainant”), represented by Kenneth M. Motolenich-Salas of Gallagher & Kennedy, P.A., Arizona, USA. Respondent is Ralph Zita (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youaskedforit.com>, registered with Network Solutions, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2016; the Forum received payment on December 9, 2016.
On December 9, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <youaskedforit.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 December 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2017 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 email@example.com. Also on December 12, 2016, 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 January 17, 2017.
An additional submission was received from Complainant on January 19, 2017.
An additional submission was received from Respondent on January 24, 2017.
On January 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
On February 6, 2017, pursuant to Rule 12 of ICANN’s Uniform Domain Name Dispute Resolution Policy, the Panel issued the Procedural Order requesting additional information from the parties setting a deadline of February 13, 2017 as summarized below:
The Panel notes that Respondent claims the application of Res judicata over the case Sandy Frank Entertainment, Inc. v. Law Street, Inc., FA0002000093669 (Nat. Arb. Forum, April 1, 2000) on the same disputed domain name as that of the present case. The Panel orders that each of the Complainant and the Respondent is requested to clarify if each of the Complainant and the Respondent in the present case is in privity with the Complainant and the Respondent in the previous case.
On February 6, 2017, Complainant submitted additional submission pursuant to the Panel's order.
On February 13, 2017, Respondent submitted additional submission pursuant to the Panel's order.
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.
i) Complainant has rights in the YOU ASKED FOR IT mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,104,134, registered February 28, 2012). Complainant also has common law rights in the YOU ASKED FOR IT mark stemming from its promotion and longstanding use of the mark in commerce. Respondent’s domain name is confusingly similar to the YOU ASKED FOR IT MARK as the domain name incorporates Complainant’s mark in its entirety.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no existing trademark or service mark rights in YOU ASKED FOR IT or any other similar term and Complainant has not licensed or authorized Respondent to use the mark in any manner. Additionally, Respondent’s inactive use of the disputed domain name is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) Respondent registered and is using the disputed domain name in bad faith. Respondent’s inactive use of the disputed domain name demonstrates bad faith. Respondent also had actual knowledge of Complainant’s YOU ASKED FOR IT mark as Complainant has attempted to buy the domain from Respondent.
i) As a preliminary matter, Complainant has failed to include information related to the prior proceeding Complainant filed against Respondent over the <youaskedforit.com> domain name. See Sandy Frank Entertainment, Inc. v. Law Street, Inc., FA 093669 (Forum April 1, 2000). Disclosure of such prior proceedings is required under Rule 3(b)(xi). This failure to disclose is evidence of intent to hide a significant material fact and may support a finding of reverse domain name highjacking. Complainant’s action is barred by res judicata.
ii) Respondent disputes Complainant’s claim that the 1950’s television show is covered by Complainant’s YOU ASKED FOR IT mark. Further, Complainant has not used mark continuously since 1992.
iii) Respondent has rights and legitimate interests in the domain name. The domain name is a common phrase that is generic and Complainant does not have exclusive use of the phrase. Respondent’s use of the domain name is a legitimate noncommercial or fair use.
iv) Respondent’s domain name was registered in good faith with no infringing use. Inactive holding of a domain name is not necessarily indicative of bad faith registration and use. Respondent has not infringed on any of Complainant’s supposed trademark rights. Respondent’s registration predating Complainant’s rights in the YOU ASKED FOR IT mark. Additionally, Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute.
v) The Panel notes that the disputed domain name was created on December 10, 1998.
C. Additional Submissions
Complainant’s Additional Submission 1:
Complainant alleges that Respondent has not used the domain name in any manner for 17 years. Since the prior UDRP decision Complainant has registered the YOU ASKED FOR IT mark, registered related domain names, and marketed a television show using the mark. The circumstances of this case and the use of the disputed domain name warrant hearing this case anew.
Respondent’s Additional Submission 1:
Complainant’s additional submission presents no new information and rather uses the submission as a means to cover for its material omission of the prior UDRP proceeding. Again, Complainant’s actions justify a finding of reverse domain name high jacking.
Complainant’s Additional Submission 2 pursuant to the Panel's Order:
Complainant, pursuant to the Panel's Order, submitted an additional submission regarding privity between Sandy Frank Film Syndication, Inc. (“SFFS”) and Sandy Frank Entertainment, Inc. (“SFE”).
Sandy Frank Film Syndication, Inc. (“SFFS”) is the Complainant in this matter (FA1612001706714). Sandy Frank Entertainment, Inc. (“SFE”) was the Complainant in prior matter FA0002000093669. SFFS and SFE are in privity. As indicated in Exhibits, SFFS and SFE have Sandy Frank, an individual, as Chief Executive Officer. Since the CEO of each of SFFS and SFE is the same individual with full authority to exercise the powers of each of the entities, privity exists between SFFS and SFE for res judicata purposes. Notwithstanding the likely existence of this privity, Complainant submits that there exists an intervening material change of determinative facts, as established through the filings of record by Complainant in this matter, which mandates that the doctrine of res judicata be non-applicable to this matter.
Respondent’s Additional Submission 2 pursuant to the Panel's Order:
As indicated in the Exhibits, Respondent was a Director and Co-CEO of his company, Law Street, Inc. Respondent was a founder, dominant officer and significant major shareholder of his closely-held company, Law Street, Inc. Respondent holds and maintains the company domain name <lawstreet.com> -- along with other domain names -- associated with Law Street’s online business portfolio for future use. Law Street’s business address is the same as that of Respondent as indicated in the Exhibit. Respondent’s interests and those of his company were integrally-related and fully coincided during the prior case and those interests continue to coincide. Respondent managed and controlled the company and sought to protect the company from adverse actions, as such actions would directly impact and affect Respondent. Complainant’s prior case is one such example of an action considered adverse to the interests of Respondent at the time. Complainant's recently re-filed action is similarly considered adverse to the interests of Respondent. As noted from the indicated appearances in Complainant's prior case, Respondent actively defended his company Law Street, Inc. against Complainant’s claims at that time. Likewise, Respondent is again actively defending against Complainant's recently re-filed action for a second-time. Respondent believes himself to be soundly in privity with his own company, Law Street, Inc., and vice versa. As such, Respondent believes the application of res judicata is warranted, in line with the UDRP consensus view on re-filed cases (WIPO Overview 2.0, Paragraph 4.4), UDRP legal precedent and the case law according respect to a prior judgment.
The proceeding brought by the Complaint is barred by the Forum’s earlier decision, FA0002000093669 (Nat. Arb. Forum, April 1, 2000).
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."
Preliminary Issue – Res Judicata
Respondent has alerted this Panel to the existence of Forum UDRP Case Sandy Frank Entertainment, Inc. v. Law Street, Inc., FA 093669 (Forum April 1, 2000) FA 1689685, which is concerned the same domain name as the disputed domain name of the instant case. The key findings of the Panel in that case are:
The Complainant has successfully established the first element and the second element of Paragraph 4(a) of the Policy. It, however, has failed to produce any proof as to the third element that the Respondent registered or is using the domain name in bad faith. There is no claim that the Respondent is unfairly dealing in domain names or registering domain names to prevent the owners of trade or service marks from using them as a domain names. There is no evidence that the Respondent is confusing the name of the domain site to the detriment of the Complainant or that the Complainant’s service mark "You Asked For It" for a television series is diminished or tarnished by the proposed use of the phrase for a legal question and answer service. This third element of bad faith must be established before relief can be granted.
Respondent submits that despite Rule 3(b)(xi) and its direct knowledge, Complainant fails to disclose anywhere in its filing its prior unsuccesful UDRP case involving both the same <youaskedforit.com> domain name and the same parties to this proceeding.
Respondent avers that since Complainant had filed the first case and was reminded of that fact during communications that it had initiated with Respondent, the Complainant's material omission of this previous case from its submission, along with a false Certification, evidences its first intent to hide a significant material fact.
Respondent asserts that Complainant’s action is barred by res judicata. To support its assertion, Respondent cites Paragraph 4.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview 2.0) as below:
Consensus view: A refiled case concerns the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances.
A re-filing complainant must clearly indicate the grounds allegedly justifying the refiling of the complaint. The provider with which such refiled complaint has been filed has responsibility for determining if, prima facie, the refiling complainant has indeed pleaded grounds which might justify entertaining the refiled complaint. An affirmative determination is a precondition for provider acceptance of the refiled complaint, and for panel determination of the refiling request and any decision on the merits. A re-filing complainant's failure to clearly identify that its complaint is a re-filing of an earlier UDRP complaint may constitute a material omission for the purpose of any panel assessment of reverse domain name hijacking.
The Panel finds that the disputed domain name in the instant case is the same as that of the previous case Sandy Frank Entertainment, Inc. v. Law Street, Inc., FA 093669 (Forum April 1, 2000). On the basis of the Additional Submissions along with relevant supporting exhibits which were filed by each of Complainant and Respondent pursuant to the Panel's Order, the Panel recognizes that the Complainant of the prior case and that of the instance case as well as the Respondent of the prior case and that of the instance case are in privity with each other.
Typically, complaints may not be resubmitted for relief subsequent to their denial due to res judicata principles unless the complainant meets its high burden of demonstrating the need for such additional review. See, e.g., Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) (finding that the burden of establishing that a second complaint should be entertained is “high”). Several criteria have been set forth for determining whether a complaint may be refiled. See Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) (noting, and subsequently applying to the UDRP, the four common-law grounds for the rehearing or reconsideration of a previously filed decision as (1) serious misconduct on the part of a judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice).
Against Respondent’s assertion on the application of res judicata, Complainant submits that res judicata is not applicable to the instant case on the grounds that:
i) From the date of the prior decision until the filing of the UDRP Complaint in this file, Respondent has not used the Disputed Domain Name for any legitimate purpose and has not engaged in any “process of development.”
ii) In contrast, since the date of the prior decision, Complainant has:
a. Obtained a registered trademark for YOU ASKED FOR IT (Reg. No. 4,104,134, U.S. Ser. No. 85/195,464, date of first use: 1992).
b. Actively used the registered trademark in the covered goods and services through youaskedforittv.com, which was acquired on June 17, 2016 and has been in use since August 2016 by offering online the YOU ASKED FOR IT library of over 1600 mini- documentaries.
c. Marketed a television program entitled YOU ASKED FOR IT to broadcast and cable networks for new production.
iii) In addition, as indicated in the Declaration of Sandy Frank, Complainant is engaged in the business of (i) licensing of vintage television programs and portions thereof; (ii) licensing of archival entertainment footage and vintage television programs and associated audio tracks; (iii) licensing of intellectual property management software; and (iv) providing information, consultancy and advisory services in relation to licensing of intellectual property, with all of the foregoing offered under the YOU ASKED FOR IT trademark. The prior decision (Conclusion ¶ 3) indicated that the Complainant “had failed to produce any proof as to the third element that Respondent registered or [was] using the domain name in bad faith,” and went on to state that “[t]here is no claim that the Respondent is unfairly dealing in domain names or registering domain names to prevent the owners of trade or service marks from using them as a domain names.” Complainant submits that the above facts demonstrate a material and substantial change of circumstances which establish a claim of cybersquatting for which transfer of the Disputed Domain Name to Complainant pursuant to this Forum’s rules is just. Complainant is actively using the YOU ASKED FOR IT trademark in multiple ways while Respondent, despite the claim sixteen years ago, has not engaged, over the span of more than a decade, in any “process of development” that justifies his retention of the Disputed Domain Name from Complainant, the rightful trademark owner. Respectfully, Respondent is using the domain name in bad faith and preventing Complainant from using its trademark as the Disputed Domain Name. This material change of determinative facts, as established through the filings of record by Complainant in this matter, mandates that the doctrine of res judicata be non-applicable to this matter.
The Panel is of the view that Complainant’s argument may relate to only item (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
However, the Panel finds that the mere fact of and evidence for passive holding of the disputed domain name for more than 16 years, various promotional activities for Complainant's mark, and obtaining a trademark registration for Complainant's mark since or after the decision of the previous case do not constitute the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial and are insufficient to reverse the panel's judgment on the merits of UDRP ¶ 4(a)(iii) in the prior case on the same domain name.
As such, the Panel determines that Complainant has not met the burden of demonstrating the need for additional review, and thus it holds that this proceeding is barred by the Forum’s earlier decision, FA0002000093669 (Nat. Arb. Forum, April 1, 2000).
As the proceeding brought by the Complaint is barred by the Forum’s earlier decision, FA0002000093669 (Nat. Arb. Forum, April 1, 2000), the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <youaskedforit.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: February 14, 2017
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