United Talent Agency, Inc. v. Paul Wright
Claim Number: FA0508000544992
Complainant is United Talent Agency, Inc., (“Complainant”), represented by Daniel J. Coplan of Sheldon & Mak PC, 225 South Lake Avenue, 9th Floor, Pasadena, CA 91101. Respondent is Paul Wright (“Respondent”), represented by John Berryhill, 4 West Front Street, Media, PA 19063.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <talent.us>, registered with Moniker Online Services, LLC.
The undersigned Daniel B. Banks, Jr., as Panelist, 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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 18, 2005; the Forum received a hard copy of the Complaint on August 19, 2005.
On August 28, 2005, Moniker Online Services, LLC confirmed by e-mail to the Forum that the <talent.us> domain name is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 29, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 19, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on September 19, 2005.
An additional submission was submitted by Complainant on September 30, 2005 and was determined to be deficient as not timely filed. The Panel has chosen not to consider this additional submission.
On August 23, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a corporation, organized and existing under the laws of the State of California and doing business in California. Respondent is an individual with a principal place of business in Austin, Texas. In the original Complaint, it is stated that the dispute concerns the domain name www.united.talent.us a/k/a <talent.us>. In the first amended Complaint, it is stated that the disputed domain name is <talent.us>.
Complainant claims to be a leader among the entertainment industry’s talent and literary agencies. It was founded in 1991, has nearly 100 agents and 300 employees. It represents figures in every current and emerging arena of entertainment including motion pictures, television, video gaming, music, publishing, commercials, modeling, licensing and live entertainment, among others.
Complainant is the owner of common law and statutory rights to the trademark UNITED TALENT AGENCY which was registered by the United States Patent and Trademark Office on March 21, 2003. Complainant has used and continues to use the trademark for services sold in interstate commerce throughout the world. It is a strong and famous mark and has attained considerable value.
Respondent began using the mark in April 2002 and has used the mark to offer services and goods that travel in the same commercial channels in which Complainant’s goods and services are sold.
Complainant states that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It says that the domain name “Aunited.talent.us@a/k/a talent.us . . . is an unmistakable abbreviation of the Mark AUnited Talent Agency @ to which Complainant has rights.”
Complainant further asserts that Respondent has no rights or legitimate interests in respect of the domain name because “Respondents are not making any legitimate non-commercial or fair use of the domain name. Rather, it is Respondents intent to use the Subject Domain Name for commercial gain, i.e., misleadingly to divert customers from Complainant.” Further, Respondent has used the mark to attract visitors to his website where people are subjected to an array of click-through ads.
Complainant says the domain name was registered and is being used in bad faith in that it is used solely for the purpose of click-through ads for talent agent services; to disrupt the business of Complainant; and, to divert business away from Complainant to Respondent.
This proceeding involves a blatant attempt to misuse a domain dispute policy by assertion of a facially absurd trademark claim and to take possession of a generic word being legitimately used as a domain name. The registered domain name is <talent.us>. The threshold question here is: “Does a talent agency own trademark rights in the word ‘TALENT’”?
Of minor note in this proceeding is the use of “wildcard DNS” settings for a domain name under which addresses of the form <anything>.talent.us will resolve to the same homepage for the domain name. Complainant’s assertion that Respondent has deliberately caused the resolution of <united.talent.us> is not only false, but it is entirely irrelevant to the question of whether the registered domain name, <talent.us> violates any conceivable trademark interest.
The first criterion required to be proven by Complainant is that the domain name is identical or confusingly similar to a trade or service mark in which Complainant has rights. The registered domain name is <talent.us>. We are, therefore, concerned with the word “talent.” Complainant rattles on for several pages about having been a talent agency involved in a variety of projects and presents no evidence in any of that extended discussion of the use of the word “talent” as a distinctive indicator of the source or origin of any goods or services. Complainant is not the only talent agency, and such services as provided by Complainant are generically known as talent agency services. In fact, Complainant’s trademark registration bears the following express disclaimer:
“Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “TALENT AGENCY” APART FROM THE MARK AS SHOWN”
Complainant’s assertion that the registered second level domain “talent” in the .us top-level domain is “virtually identical” to a trademark of any kind for talent agency services has to be one of the most outlandish and ridiculous claims ever asserted in a domain name dispute proceeding.
With regard to Respondent’s rights or legitimate interests in the domain name, Complainant admits that the domain name was and continues to be in use to display paid link advertising (also know as pay-per-click advertising) corresponding to search results for the word “talent.” Such use is a legitimate use of a domain name.
With regard to bad faith, Complainant admits that the domain name was registered on April 24, 2002, prior to the date of Complainant’s trademark registration. While Complainant implies that Respondent has been intentionally receiving traffic at <united.talent.us>, this is simply untrue. The domain name <talent.us>, as is common practice, is configured to use “wildcard DNS.” Complainant has not demonstrated that the domain name was registered for any reason other than the plain fact that “talent” is a generic word.
Respondent asserts that this proceeding is so ill-conceived as to constitute abuse of the Policy and constitute Reverse Domain Hi-Jacking. Respondent further states that he is preparing to file an action against Complainant because the registrar of the domain name has locked the domain name and is, thus, interfering with Respondent’s exercise of its rights under the registration contract.
C. Additional Submissions
Complainant’s additional submission was deemed deficient and was not considered.
1 – The disputed domain name is not identical or confusingly similar to Complainant’s trademark.
2 – Respondent has rights and legitimate interests in respect of the domain name.
3 – The domain name was not registered nor is it being used in bad faith.
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 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
This panelist agrees with Respondent that Complainant’s assertion that the disputed domain name <talent.us> is identical or confusingly similar to UNITED TALENT AGENCY is absurd. The word “talent” is a purely generic term and services provided by people such as Respondent are generically known as talent agency services. Also, the Complainant has specifically stated in its trademark registration that “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘TALENT AGENCY’ APART FROM THE MARK SHOWN.” If Complainant makes no claim to “talent agency”, how can it claim exclusive rights to the use of the word “talent”?
This Panel finds that the disputed domain name is not confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See FloridaFirst Bank v. Carlson, FA 143677 (Nat. Arb. Forum Apr. 10, 2003) (holding that as the complainant disclaimed the exclusive right to use “BANK”, apart from the FLORIDAFIRST BANK mark, the validity of the mark was to be determined by viewing the trademark as a whole and not just the words “FloridaFirst.” Hence, when viewing the complainant’s FLORIDAFIRST BANK mark as a whole, the respondent’s <floridafirst.com> domain name was not confusingly similar to the registered mark); see also Copart, Inc. v. SalvageNow, D2000-0417 (WIPO June 28, 2000) (finding that the domain name at issue <copart.net> is not identical nor substantially similar to the mark registered and used by the complainant, CI COPART INC. SALVAGE AUTO AUCTIONS); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (“CONCIERGE is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website.”).
Rights or Legitimate Interests
Respondent is using the <talent.us> domain name to display paid link advertising corresponding to search results for the common term “talent.” Such use of a common term in connection with paid advertising is a legitimate use. Therefore, the Panel finds that Respondent’s use of the <talent.us> domain name to display links related to the word “talent” is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that using a domain name consisting of a common descriptive and generic expression as a portal to a website featuring various advertisements and links is a bona fide offering of goods or services); Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” as evidence that the respondent was making a bona fide offering of goods or services with the disputed domain name); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”).
Registration and Use in Bad Faith
The Panel finds that Respondent has rights or legitimate interests in the <talent.us> domain name pursuant to Policy ¶ 4(a)(ii); therefore, Respondent did not register or use the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Eddy’s (Nottingham) Ltd v. Smith, D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the domain name where the respondent registered the domain name in good faith, without objection by the complainant, and in the interest of promoting the complainant’s business); see also Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that Respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created).
Furthermore, the Complainant has not provided sufficient evidence to show that Respondent registered or used the <talent.us> domain name in bad faith under Policy ¶ 4(a)(iii). See PRL USA Holdings, Inc. v. Polo, D2002-0148 (WIPO Apr. 29, 2002) (finding that, because the complainant failed to provide any factual allegations as to the nature of use of the disputed domain name, the complainant failed to prove that the respondent’s domain names were being used in bad faith); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent registered the <talent.us> domain name prior to Complainant’s registration of its UNITED TALENT AGENCY mark with the United States Patent and Trademark Office. This negates any claim of bad faith registration and use under Policy ¶ 4(a)(iii). See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the domain name.”); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
Also, the <talent.us> domain name is comprised of a common term; therefore there is no evidence of bad faith registration or use under Policy ¶ 4(a)(iii). See Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where the respondent was using the descriptive domain name <thelowestfare.com> to lead consumers to a source of lowest fares in good faith); see also Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that, where the domain name is comprised of a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of the respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”).
REVERSE DOMAIN NAME HI-JACKING
Respondent asserts that the Complaint is based on a premise that could not have been alleged in good faith and that the Panel is entitled to consider “whether the Complaint is so ill-conceived as to constitute abuse of the Policy.” However, it is noted that Respondent intends to file a separate action to address Complainant’s conduct in that regard. Therefore, this Panel declines to rule on the claim of reverse domain name hi-jacking.
It is the decision of this panel that Complainant’s request for transfer of the disputed domain name be DENIED. The Complaint is dismissed.
Daniel B. Banks, Jr., Panelist
Dated: October 13, 2005
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