WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robert Alan Thomas v. Customer Card Services, Inc. d/b/a IAS-UK
Case No. D2000-0872
1. The Parties
Complainant is Robert Alan Thomas, residing at 475 Tramway Drive, Milpitas, California 95035, U.S.A.
Respondent is Customer Card Services, Inc. d/b/a IAS-UK, located at P.O. Box 4327, Hollywood, California 90078, U.S.A.
2. The Domain Name and Registrar
The domain name which is the subject of this proceeding is "amateuraction.com" owned by Respondent. The domain name is registered with Network Solutions, Inc., Herndon, Virginia, U.S.A.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center by e-mail on July 26, 2000, and in hard copy on July 31, 2000.
On July 28, 2000, an Acknowledgement of Receipt of Complaint was issued.
On July 31, 2000, a Complaint Deficiency Notification was issued.
On August 9, 2000, the Registrarís Verification to Request for Verification of August 1, 2000 was received.
The Amended Complaint was received by the WIPO Arbitration and Mediation Center by e-mail on August 1, 2000, and in hard copy on August 7, 2000.
On August 11, 2000, the Notification of Complaint and Commencement of Administrative Proceeding was issued.
The Response was received by the WIPO Arbitration and Mediation Center on August 30, 2000, and in hard copy on August 31, 2000.
Subsequent to the Response, there were numerous e-mail messages from both parties disputing certain aspects of the respective pleadings.
On September 26, 2000, the Administrative Panel was appointed.
4. Factual Background
Both parties claim rights in the expression AMATEUR ACTION. The Complainant alleges that he has used this expression since 1991 for his computer online service providing adult oriented images and videos worldwide, and has filed trademark applications in the U.S. to register the expression as a service mark. The Respondent alleges that it has used the service mark for its services of internet communications services of a sexually explicit nature since 1996, and has also filed to register its claimed service mark in the U.S.
In 1994, Complainant and his wife, Carleen, were indicted in U.S. federal court and convicted of interstate transportation of obscene material concerning the operations of the Amateur Action BBS. Complainant was sentenced to 37 months in prison, and Carleen was sentenced to 30 months in prison.
This case attracted worldwide media attention and was featured as the top story in news programs or around the globe. The case was also featured in articles in Time Magazine, Playboy Magazine, P.C. Magazine, and other internet related publications.
5. Partiesí Contentions
The Respondent obtained the domain name "amateuraction.com" to lead the supporters of Robert and Carleen Thomas to believe that in supporting that site they would in turn be supporting Mr. and Mrs.Thomas. Robert Thomas published and produced over 25,000 GIF images which are now on various sites all over the Internet. All images reflect the name "Amateur Action" on them. Since the contested domain name is identical to the name that was used on the 25,000 plus images, it would definitely confuse the public into thinking that amateuraction.com was indeed operated by Robert Thomas, which it is not. Moreover, the public in turn could send donations and/or support the website thinking that they are supporting Robert Thomas.
It is in the best interest of Robert Thomas and his wife Carleen, to protect the name "Amateur Action" in which he used in commerce beginning in 1991, was criminally indicted for in 1994, and did a 37 month prison sentence for doing business as "Amateur Action". Protecting the name "Amateur Action" would indeed protect the freedom of Robert and Carleen Thomas.
Respondent claims that at the time it requested registration of the domain name, it had no knowledge of Complainant or his legal problems. Respondent claims to have over 300 domain names registered for its adult web sites, with names suggested by its marketing department.
Respondent alleges that during the four years of the operation of the web site in connection with this domain name, not one person attempted to contribute to or to inquire about the Complainant.
6. Discussion and Findings
Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.
Complainant has asserted rights in the service mark AMATEUR ACTION, both at common law as well as through applications to register the mark in the U.S. Patent and Trademark Office. The Panel finds that the trademark and the domain name are identical, and that the Complainant has asserted trademark rights in such term. Accordingly, the Panel finds that the Complainant has the requisite rights to object pursuant to Policy Paragraph 4(a)(i).
There is proof in the record of alleged rights or legitimate interests of Respondent pursuant to Policy Paragraph 4(c) since Respondent owns U.S. trademark application No. 75/727737 claiming a date of first use of June 27, 1996. This application was abandoned but is currently subject to a Petition to Revive. The issue of which party has superior trademark rights in the expression AMATEUR ACTION is beyond the mandate of this Panel, and is best decided by the U.S. Patent and Trademark Office and/or the courts. As Panelist Sally Abel stated in her decision in Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More ("militec.com") WIPO Case No. D2000-0006 (February 28, 2000): "The decision (to deny the complaint) is limited to the fact that, on this record, the existence of significant factual and legal issues makes this case inappropriate for resolution under the Policy." Since Respondent has asserted trademark rights dating to 1996, the Panel finds that Complainant has not met its burden of proof concerning Policy Paragraph 4(a)(ii).
The last element in the proceeding is bad faith. Since Complainant alleges that Respondent registered the domain name in issue in order to direct Complainantís supporters to Respondentís web site, the bad faith claim appears to be under Policy Paragraph 4(b)(iv) and/or Policy Paragraph 4(b)(iii), or bad faith generally, although Complainant does not specify. The record fails to indicate evidence of bad faith other than copies of articles indicating that several magazines gave publicity to Complainantís criminal case. Accordingly, Policy Paragraph 4(a)(iii) has not been proven by the record.
Since Complainant has failed to meet its burden under two paragraphs of the Policy, the Complaint is denied.
Clark W. Lackert
Date: October 2, 2000