WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SFX Entertainment, Inc. v. Phillip Cushway
Case No. D2000-0356
1. The Parties
The Complainant in this administrative proceeding is SFX Entertainment, Inc. The Respondent is Phillip Cushway.
2. The Domain Name and Registrar
The domain name in dispute is as follows: "sfxcollectibles.com". The domain name was registered by Respondent with Network Solutions, Inc. on January 31, 2000.
3. Procedural Background
On April 28, 2000, the WIPO Arbitration and Mediation Center received from Complainant a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The complaint was filed in compliance with the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on May 12, 2000.
Respondent filed a response on June 1, 2000, which was received by WIPO on June 6, 2000.
The decision of the Panel was originally due on or before June 20, 2000. However, pursuant to Procedural Order No. 1, dated June 14, 2000, the due date was extended to July 10 in order to give the parties an opportunity to file additional evidence. Complainantís "Rebuttal Submission" was received by WIPO on June 23 and Respondentís "Reply" thereto was received by WIPO on July 5.
4. Factual Background
According to the complaint, Complainant SFX Entertainment was founded in 1997, and has rapidly become an industry leader in the field of live event promotion, production, and operation. Complainantís services encompass live concerts and performances in large venues, such as stadiums and amphitheaters. Complainant owns and/or operates the largest network of live performance facilities in the U.S. In 1998, a total of 44 million people attended more than 20,000 events in venues owned or operated by Complainant.
Since 1997, Complainant has used the marks SFX ENTERTAINMENT and/or SFX on all materials advertising, promoting, or describing its services. Complainant has filed intent-to-use applications with the U.S. Patent and Trademark Office to register the marks SFX ENTERTAINMENT, SFX LIVE and DESIGN, and SFX, in connection with the above noted and related services.
In the Fall of 1998, Complainant began strategic preparations and planning for the launch of a new division specializing in the retailing and auctioning of memorabilia, such as posters, postcards, tickets, and concert programs from performances of rock, blues, jazz, and soul music. Beginning in the Summer of 1998, Complainant held an extensive series of detailed meetings and discussions with Respondent about the potential involvement of Respondent and his company, ArtRock, in the formation and operation of Complainantís contemplated collectibles unit. In March 1999, Complainant decided that its new collectibles unit would be called "SFX Collectibles," and so advised Respondent. Negotiations with Respondent terminated shortly thereafter.
On January 25, 2000, Complainant sent a cease-and-desist letter to Respondent protesting Respondentís unauthorized copying of certain copyrighted images. See Exhibit 5 to Complaint. Six days later, on January 31, 2000, Respondent registered the domain name sfxcollectibles.com. At present, the domain name does not resolve to a Web site.
On March 15, 2000, Complainantís counsel sent a cease-and-desist letter to Respondent protesting Respondentís registration of the domain name sfxcollectibles.com and demanding that Respondent transfer the name to Complainant. See Exhibit 6 to Complaint. On March 30, 2000, Respondent replied, in part, as follows: "Your assumptions and conclusions are entirely inaccurate in regard to sfxcollectibles.com. It has nothing to do with what SFX Entertainment does." See Exhibit 7 to Complaint.
In the "Response to Complaint," Respondent contended that he has been involved with posters for many years and that he is the founder and president of ArtRock, a company specializing in collectible rock and roll art. During the past several years, Respondent has considered expanding into the field of science fiction/fantasy arts. Over the past 18 months, Respondent has spoken with numerous artists concerning publishing in the science fiction/horror genre. Respondent has already begun publishing several prints for his new venture in the science fiction genre, and anticipates that, by this Fallís holiday selling season, he will have sufficient inventory to properly launch.
5. Partiesí Contentions
Complainant contends that it has established the necessary elements under the applicable Policy to prevail. It argues that the domain name sfxcollectibles.com is virtually identical to the service marks SFX and SFX ENTERTAINMENT. It also argues that Respondent has no legitimate interests in the domain name in dispute, inasmuch as, upon information and belief, Respondent has not used or made any demonstrable preparations to use the domain name in connection with the bona fide offering of goods or services. Finally, Complainant contends that the following circumstances support a determination of bad faith registration and use: (1) Complainant is a direct competitor of Respondent; (2) Respondent cannot, upon information and belief, proffer any bona fide use for the domain name; and (3) the domain name is confusingly similar to Complainantís marks.
In its "Response" and "Reply to Complainantís Rebuttal Submission," Respondent argues that he should prevail because: (1) the terms "SFX" and "Collectibles" are generic terms for describing Respondentís goods to be marketed at the sfxcollectibles.com Web site; (2) that, as a result, his decision to register the domain name was not in bad faith; (3) he has been discussing over the past 18 months with various artists the publication of a new line of prints and collectibles devoted to the science fiction and fantasy genres; and (4) his use constitutes "fair use."
6. Discussion and Findings
The Panel determines that Complainant has established that the domain name in dispute is identical or confusingly similar to a service mark in which Complainant has rights, pursuant to para. 4.a.(i) of the Policy. While the evidence, in particular Exhibits C-E of the "Response," establishes that the term "SFX" is descriptive or generic when used on or in connection with science fiction and special effects, the evidence does not establish that "SFX" is descriptive or generic as used in connection with Complainantís services. Nor does the evidence, including the printouts from the database of the U.S. Patent and Trademark Office of other SFX-related registrations, establish that SFX is a weak mark.
The Panel determines, however, that Respondent has rights or legitimate interests in respect of the domain name. In particular, the Panel finds that the evidence, including the sworn declaration of Alan Forbes (see Exhibit D of Response), supports a determination that, prior to commencement of the instant dispute, Respondent began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, within the meaning of para 4.c.(i) of the Policy. Further, given the descriptive nature of the term "SFX" in the context of science fiction, the Panel determines that Respondent is making a legitimate "fair use" of the domain name.
While the Panelís determination on the issue of Respondentís legitimate interests is dispositive of the outcome of this matter, it notes, with respect to the issue of bad faith, that, pursuant to the recently enacted Anticybersquatting Consumer Protection Act, "[b]ad faith intent Ö shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful." See 15 U.S.C. ß1125(d)(1)(B)(ii).
In view of the above, the Panel denies Complainantís request for transfer to it of the domain name "sfxcollectibles.com".
Jeffrey M. Samuels
Dated: July 10, 2000