WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DreamWorks L.L.C. v. Grantics
Case No. D2000-1269
1. The Parties
The Complainant is DreamWorks L.L.C., a limited liability company organized in the
State of Delaware, United States of America (USA), with place of business in Universal City, California, USA.
The Respondent is Grantics, with address in McLean, Virginia, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "baggervance.com".
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a complaint by e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on September 26, 2000, and by courier mail received by WIPO on September 28, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On October 4, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions (with the Registrar’s Response received by WIPO on October 6, 2000). On October 18, 2000, WIPO completed its formal filing compliance requirements checklist.
(b) On October 19, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail. WIPO also transmitted such notification to Respondent’s Technical Contact.
(c) Respondent’s response was received by WIPO via e-mail on November 6, 2000, and was subsequently received in hard copy. Respondent also transmitted the response to Complainant.
(d) On November 16, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On November 17, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(e) On November 22, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by November 14, 2000. On November 22, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
(f) The file transmitted to the Panel by WIPO included a request submitted by Complainant to submit a filing to address certain legal issues raised by Respondent in its response, as well as to submit evidence regarding actions of Respondent taken subsequent to the filing of the complaint. By e-mail of November 26, 2000, the Panel notified the parties and WIPO that Complainant was granted leave to file a supplemental submission (by November 29, 2000) solely with respect to evidence arising after the filing of its complaint, including a brief statement explaining the significance of the new evidence. The Panel at the same time granted Respondent leave to file a brief submission by December 4, 2000, responsive to Complainant’s supplemental submission. The Panel received supplemental submissions from Complainant and Respondent in a timely manner.
The Panel has not received any additional requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
By way of assignment of rights, Complainant holds exclusive rights to produce and first distribute a motion picture adaptation of the book, "The Legend of Bagger Vance", authored by Steven Pressfield and published in 1995. The book, "The Legend of Bagger Vance" received critical acclaim, and has sold over 180,000 copies. (Complaint, paras. 11-12). Such assignment includes the exclusive right to use the name "The Legend of Bagger Vance" in connection with the commercial marketing and distribution of the film. In March 1998, Complainant publicly announced that the well-known director and actor, Robert Redford, was in negotiations with Complainant to direct the aforesaid film on its behalf (id., para. 13 and Exhibit 5). Production of the motion picture commenced in September 1999, trailers (previews) for the motion picture were released to theatres in July 2000, and the motion picture was released to theatres in November 2000. As of the date of the filing of the complaint in this proceeding, Complainant had spent approximately $1,000,000 on advertisement and promotion of the film, "The Legend of Bagger Vance". Such advertisement and promotion has included distribution of a minimum of 15,000 posters.
According to the registrar’s verification response to WIPO, dated October 6, 2000, "Grantics" is the listed registrant of the domain name "baggervance.com", using a post office box address in McLean, Virginia, USA. The Administrative Contact is listed as "Karlin, Grant", with address in Sarasota Springs, New York, USA. According to a WHOIS database search report furnished by Complainant, the record of registration for the disputed domain name was created on December 11, 1998 (Complaint, Exhibit 1).
On April 24, 2000, Respondent’s Administrative Contact, Grant Karlin, sent an e-mail message to Complainant with the text: "Are you interested in purchasing the domain name baggervance.com? I own the domain right now (although other parties have approached me). Let me know if you are interested." (Complaint, Exhibit 7)
On April 26, 2000 Complainant responded by e-mail, offering to purchase the name for $70.00, referred to as the "transfer fee". Complainant indicated that should Respondent decline its offer, "…, we will assume that you have registered the name in goods [sic] faith, and that you will not be using it in a manner that is likely to confuse the public into thinking that you are somehow affiliated with the company or with the upcoming film." (e-mail from Cheryl Friedman to Grant Karlin)
On April 26, 2000, Karlin responded to Cheryl Friedman as follows:
"I am quite certain that in the months ahead many thousands of people will simply type in ‘baggervance.com’ and expect to find information on your company’s upcoming film. Most of these people will be confused and/or angered when they don’t see the information they expect regardless of what I use the domain for.
Despite receiving inquiries from other parties, I am offering Dreamworks the opportunity to obtain this domain first because I feel this would lead to the least confusion for the public (as well as the most benefit to Dreamworks). My offer is not a gift, however. I believe the domain has real value and I am willing to sell it for a reasonable fee.
Reply if you are still interested and we can start working out the details." (Id., Exhibit 8)
By e-mail of April 28, 2000, Complainant declined Respondent’s renewed offer of sale.
Subsequent to the aforesaid exchange of e-mail messages, Respondent posted a web page at Internet address "www.baggervance.com". This web page stated:
"Dreamworks has decided not to use this domain to give you information on the upcoming movie The Legend of Bagger Vance.
If you have an opinion regarding this lack of consideration for you, the moviegoing public, feel free to send the suggested message below to the folks at Dreamworks who made this decision (you can first edit the message as you please)."
The suggested message stated:
"I recently visited the website www.baggervance.com expecting to find information about the upcoming movie ‘The Legend of Bagger Vance.’ To my dismay, it appears that DreamWorks does not consider this movie important enough to put up a website using this seemingly logical domain name in order to supply the public with this information. Given the ubiquitous nature of the World Wide Web, I find it disheartening that DreamWorks appears to not to be willing to effectively use this medium to give potential paying moviegoers the opportunity to learn more about a movie before they decide to spend their money on it. I will definitely remember this in the future when I go to the theater to enjoy a film.
A Movie Lover"
The message was set up to be transmittable by a "Send this message" virtual button. Following the message the web page stated: "The owners of this website have no affiliation with Dreamworks SKG or the upcoming movie The Legend of Bagger Vance". After this appeared a numbered counter display, followed by the message "people have been confused by this website." Complaint, Exhibit 10.
From as early as June 21, 2000, Complainant began receiving e-mails with the text (as well as modified text) suggested by Respondent’s website (id., Exhibit 11).
On July 14, 2000, Complainant by courier mail notified Respondent that the information contained on its website was false, since Complainant had offered to pay a nominal fee to purchase the disputed domain name. Complainant demanded that Respondent remove the false information, and suggested that Respondent link his domain to Complainant’s official website at "www.amazon.com/baggervance". By courier letter of July 26, 2000 Complainant noted that Respondent had failed to remove the false information, and advised that if it did not respond by August 4, 2000, the matter would be referred to Complainant’s outside counsel. (Letters from C. Friedman to G. Karlin, id. Exhibit 13 and 14)
Grant Karlin has registered the domain name "grantics.com" and maintains a website at "www.grantics.com". Grantics, as Registrant, and Karlin, as Adminsitrative Contact, have registered the names of a number of motion pictures (such as "joetheking.com" and "bloodonthemoon.com"). The home page for said website states: "How the hell did I get here? I typed in somemovie.com and came here. What’s going on?" On an internal web page, it states "… I’ve registered these Internet domain names and had them ‘parked’ on grantics.com in order to promote this website …". (Id., Exhibits 15-18)
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).
5. Parties’ Contentions
Complainant states in its own words:
"D. The Domain Name at Issue is Confusingly Similar to Complainant’s Mark
23. "Under ¶ 4(a)(i) of the Policy, Complainant must show that it owns rights in and to the relevant mark and that Respondent’s domain name is identical or confusingly similar to that mark. Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO June 29, 2000), § 8.A. Complainant has provided sufficient evidence to establish both elements.
i. Complainant Owns Rights in the Mark ‘THE LEGEND OF BAGGER VANCE’
24. "As is self evident, the mark at issue (‘THE LEGEND OF BAGGER VANCE’) is unusual. The name ‘Bagger Vance’ is not a common name or descriptive term, and under most circumstances, ‘THE LEGEND Of BAGGER VANCE’ would be considered to be an inherently distinctive mark. Under United States law, 2 however, the title of a single literary work, whether a book or a motion picture, is protectable as a trademark only when it has acquired secondary meaning. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 10:2, p. 10-5 (2000). To show secondary meaning, Complainant is required only to show that the title of the book and the movie ‘is sufficiently well known that consumers associate it with a particular author’s work.’ Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989).
25. "Even though Complainant’s motion picture has not yet been released, ‘if a movie is based upon a book whose title has achieved secondary meaning, the courts often impute that meaning to a movie made from the book, such that the movie title can be protected even during the pre-release period.’ 2 McCarthy on Trademarks, supra, §10:12, p. 10-24; see also United Artist Corp. v. Exodus Motion Picture Corp., 26 Misc. 2d 807, 207 N.Y.S. 2d 465 (1960) (granting preliminary injunction against use of the title ‘Exodus’ when plaintiff had purchased rights to produce a movie entitled ‘Exodus’ based on the best selling book of the same name). Moreover, courts have found that pre-release publicity is sufficient to cause the title of a motion picture to be protected. Paramount Pictures Corp. v. Worldwide Entertainment Corp., 195 U.S.P.Q. (BNA) 539, 542 (S.D.N.Y. 1977) (pre-release distribution of 40,000 copies of movie poster sufficient to support finding of secondary meaning); Walt Disney Productions v. Kusan, Inc., 204 U.S.P.Q. (BNA) 284, 287 (C.D. Cal. 1979) (approximately one year of pre-release publicity for motion picture and US$2,500,000 in advertising constitutes sufficient use to support preliminary injunction); Orion Pictures Co. v. Dell Publishing Co., 471 F.Supp. 392, 396, n. 10 (S.D.N.Y. 1979) (pre-release publicity in the news media and trade journals and approximately US$2,500,000 in advertising sufficient to create secondary meaning).
26. "The book The Legend of Bagger Vance was published in 1995, and Robert Redford was signed to direct the motion picture in March 1998, well before Respondent’s registration of the domain name. Respondent identified Complainant (as opposed to another motion picture studio or any other entity) as the entity for which the ‘baggervance.com’ ‘domain name has value,’ specifically identified Complainant as the source of the movie ‘The Legend of Bagger Vance’ in its form e-mail, and claimed that ‘many thousands of people will simply type in ‘www.baggervance.com’ [to] find information on [Complainant’s] upcoming film.’ Exhibit [hereto]. Respondent’s acts and statements are admissions that ‘Bagger Vance’ is associated by the public only with Mr. Pressfield’s book, and Complainant’s forthcoming movie based on the book, and are strong evidence of the existence of secondary meaning in the title ‘The Legend of Bagger Vance.’ See, e.g., Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 615 (9 th Cir. 1989) (‘proof of copying strongly supports an inference of secondary meaning;’ secondary meaning found based on plaintiff’s extensive use and defendant’s ‘deliberate and close imitation’ of mark); Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1182 n.13 (7 th Cir. 1989) (‘proof of intentional copying is probative evidence of "secondary meaning"’ and secondary meaning found where defendant intentionally copied plaintiff’s trade dress).
27. "Although Complainant believes that Respondent’s acts and admissions alone prove the existence of secondary meaning, secondary meaning can also be found through an analysis of a variety of different factors, including ‘(1) the length and continuity of use; (2) the extent of advertising and promotion and the amount of money spent; (3) the sales figures on purchases or admissions and the number of people who bought or viewed plaintiff’s work; and (4) the closeness of the geographical and product markets of plaintiff and defendant.’ 2 McCarthy on Trademarks, supra, § 10:13, p. 10-25. All of these factors establish Complainant’s trademark rights.
28. "As set forth above, Mr. Pressfield’s book was published in 1995, and publicity regarding the upcoming motion picture began in 1998. Complainant has already spent over US$1,000,000 in advertising for the motion picture and is committed to spending tens of millions of dollars more, and the underlying book has sold over 180,000 copies. Complainant has also distributed a minimum of 15,000 posters for the motion picture. These activities, taken together, establish secondary meaning in ‘The Legend of Bagger Vance.’ The success of these activities is shown by Respondent’s admission that the public will visit Respondent’s website at ‘baggervance.com’ ‘expecting to find information about the upcoming movie "The Legend of Bagger Vance."‘ Exhibit [hereto].
29. "The favorable critical reaction to Mr. Pressfield’s book also provides evidence of secondary meaning for its title. Field Enterprises Educational Corp. v. Cove Industries, Inc., 297 F .Supp. 989, 995 (E.D.N.Y. 1969) (secondary meaning found for the phrase ‘WORLD BOOK’ based in part on holding that ‘a highly praised work is more likely than not to be known to the public by name’); Allied Artists Pictures Corp. v. Friedman, 68 Cal. App. 3 rd 127, 134-35 (1977) (secondary meaning for the title of the film ‘The Story of O’ based on book of same title can be found from wide dissemination of the book and pre-release publicity for the film); see, also, Jackson v. Universal International Pictures, Inc., 36 Cal.2d 116 (1950) (secondary meaning found in title of play that ran for only two weeks in Philadelphia and seven days in New York, received bad reviews, and was seen by only 3,750 people).
30. "Based on the foregoing, there can be no doubt that consumers associate ‘The Legend of Bagger Vance’ exclusively with the book and motion picture of the same name. As a result, there is substantial goodwill belonging to Complaint in the title ‘The Legend of Bagger Vance,’ and it functions as Complainant’s mark.
ii. The Domain Name is Identical or Confusingly Similar to Complainant’s Mark
31. "As can be seen from the publicity materials for the book, Exhibit [hereto], Mr. Pressfield’s book is often referred to simply as ‘Bagger Vance,’ and Respondent has admitted that ‘baggervance.com’ is a ‘seemingly logical domain name’ through which to get information about the movie ‘The Legend of Bagger Vance.’ Exhibit [hereto]. As a result, but for the first level domain name ‘.com,’ Respondent’s domain name ‘baggervance.com’ is identical to or confusingly similar to Complainant’s mark. …
E. The Domain Name Has Been Registered and is Being Used in Bad Faith
32. ":Respondent’s activities with regard to the ‘BAGGERVANCE.COM’ domain name constitute violations of two provisions of the Policy, namely, ¶¶ 4(b)(i) and 4(b)(ii).
i. Respondent Has Attempted to Sell the Domain Name to Complaint for an Amount in Excess of Its Out-Of-Pocket Costs
34. "As shown above, after soliciting an offer from Complainant to purchase the domain name at issue, Respondent rejected Complainant’s offer to purchase the domain name for Respondent’s out-of-pocket expense, and demanded a payment in excess of that amount. Exhibit [hereto]. When such a payment was not made, Respondent then started a campaign to harass Complainant into increasing its offer. Respondent’s offers to sell the domain name, coupled with its efforts to extort Complainant, constitutes the very sort of bad faith proscribed by ¶ 4(b)(i) of the Policy, and compels the transfer of the domain name to Complainant.
ii. Respondent’s Activities Also Constitute a Violation of ¶ 4(b)(ii) of the Policy
36. "The primary site operated by Respondent can be found at www.grantics.com. A true and correct copy of the printout of the database search for ‘grantics.com’ and the first page of the ‘www.grantics.com’ website are attached hereto as Exhibit [hereto]. Respondent has registered several other domain names that are the titles of motion pictures owned by third parties, including ‘joetheking.com’ (for the motion picture ‘Joe the King’ produced by 49 Parallel, Forensic/291 Films and Lower East Side Films), ‘bloodonthemoon.com’ (for the motion picture ‘Blood on the Moon,’ a new film starring Steven Seagal), and ‘invisiblecircus.com’ (for the motion picture ‘Invisible Circus’ produced by Fine Line Features, Industry Entertainment and Nicolas Entertainment). True and correct copies of printouts of database searches for these domain names and information regarding the motion pictures are attached hereto as Exhibits [hereto], respectively. Each of the websites associated with those domain names is automatically forwarded to Respondent’s main site.
37. Respondent’s registration of ‘baggervance.com,’ the acknowledged ‘seemingly logical domain name’ for Complainant’s movie, and its pattern of registering domain names that correspond with the titles of motion pictures, establish that Respondent has also violated ¶ 4(b)(ii) of the Policy, and compel the transfer of the domain name to Complainant.
F. Respondent Has No Rights to or Legitimate Interest In the Domain Name
38. "Complainant has neither licensed nor otherwise permitted the Respondent to use the ‘THE LEGEND OF BAGGER VANCE’ mark or to apply for or use any domain name incorporating any portion of the mark. Respondent therefore cannot make any showing that it has a right to or legitimate interest in the domain name at issue. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-003, ¶ 7.2 (February 18, 2000).
G. The Defenses Provided Under the Policy Do Not Apply to Respondent
39. "The Policy provides a non-exclusive list of factors that a respondent may rely upon to prove that it has a legitimate interest in a domain name. …
Policy, ¶ 4(c). Respondent can provide no evidence to support any of these defenses.
40. "Respondent apparently did not configure the domain name at issue to resolve to an independent website until after Complainant rejected Respondent’s offer to sell the domain name. Prior to that time, the domain name simply redirected to Respondent’s primary website located at ‘www.grantics.com.’ This website did not even reference the motion picture ‘The Legend of Bagger Vance’ and clearly did not, and does not, make a bona fide offer of any goods or services. A true and correct copy of the first page of the December 31, 1999, version of the ‘grantics.com’ website is attached hereto as Exhibit [hereto]. As a result, Respondent will be unable to present evidence that it either made use of or prepared to use the domain name at issue prior to receiving notice from Complainant of this dispute. Policy, ¶ 4(c)(i).
41. "Moreover, Respondent is known as ‘Grantics,’ or possibly as ‘Grant Karlin,’ not ‘Bagger Vance,’ the fictional character in Mr. Pressfield’s book and in the forthcoming motion picture, and Respondent cannot demonstrate that it is commonly known by the domain name at issue. Policy, ¶ 4(c)(ii).
42. Finally, Respondent’s current use of the domain name as a vehicle to harass Complainant and to pressure Complainant to pay for the domain name cannot be considered to be a ‘fair use’ of the mark under United States law. The traditional ‘fair use’ defense to a trademark infringement claim has been limited to the use by the accused infringer of a descriptive trademark to describe the accused infringer’s goods or services (Toho Co., Ltd. v. William Morrow and Co., Inc., 33 F.Supp. 2d 1206, 1211 (C.D. Cal. 1998)), and then only if the use of the term is ‘otherwise than as a mark.’ 35 U.S.C. § 1115(b)(4). Given the distinctive nature of Complainant’s mark, Respondent cannot rely on the traditional fair use defense.
43. "Under certain limited circumstances, it may be proper to use another’s trademark to describe or refer to the trademark owner’s goods, services or business, provided that there is no likelihood of confusion. 3 McCarthy on Trademarks, § 23:11, p. 23-38. This type of ‘fair use’ has been denominated ‘nominative fair use.’ See New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 308 (9 th Cir. 1992) (setting forth three-part test for determining existence of non-statutory nominative fair use defense including element that the use of the mark must not be ‘false or misleading’); see also Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp. 2d 1161 (C.D. Cal. 1998). It apparently is this type of fair use to which the drafters of the Policy intended to refer in allowing ‘legitimate noncommercial or fair use’ of a trademark as a defense. Policy, ¶ 4(c)(iii). Such a defense is not available to Respondent for several reasons:
a. As admitted on Respondent’s website itself, Respondent’s domain name is the ‘seemingly logical domain name’ for the upcoming movie ‘The Legend of Bagger Vance,’ and, as such, it is a name persons ‘expecting to find information about the upcoming movie ‘The Legend of Bagger Vance’’ will use to try to contact Complainant. Respondent has admitted that the domain name will cause and has caused confusion, Exhibits [hereto], and has even kept count of the number of ‘people [who] have been confused by this website.’ Exhibit [hereto]. Respondent’s admission that its use of the ‘baggervance.com’ domain name causes actual confusion ‘regardless of what [Respondent uses] the domain for,’ Exhibit [hereto] (emphasis added), precludes a fair use defense of any sort. Toho Co. v. William Morrow and Co., supra, 33 F.Supp. 2d at 1211 (use of GODZILLA character in book created likelihood of confusion as to sponsorship or endorsement by trademark owner, thereby negating fair use defense).
b. Moreover, given Respondent’s purely pecuniary motive in registering the domain name and its extortionate motive in using it, it is clear that Respondent is attempting merely to ‘tarnish the trademark or service mark at issue,’ by encouraging visitors to ‘baggervance.com’ (described by Respondent as ‘potential paying moviegoers’) to ‘remember [the site ] in the future’ when they go to movies. Exhibit [hereto]. As a result, based on the clear language of the Policy itself, the defense will fail. Policy, ¶ 4(c)(iii).
c. Finally, Respondent is not using the domain name to exercise its right to criticize Complainant’s business practices or the ‘The Legend of Bagger Vance’ story itself, in the manner in which the registrant in Bridgestone Firestone, Inc. et al. v. Jack Myers, Case No. D2000-0190 (WIPO July 6, 2000), used its domain name, or even in the manner in which Respondent arguably intends to use the other movie-related domain names that it has registered. Exhibit [hereto]. In Bridgestone Firestone, the Panel allowed the continued registration of the ‘bridgestone-firestone.net’ domain name because the website associated with the domain name contained criticism and commentary about the trademark owner’s business practices, in particular its longstanding refusal to pay the registrant, a former employee of the trademark owner, pension funds that he had claimed for many years. In stark contrast to the Bridgestone Firestone case, it is clear that Respondent’s sole motive in registering and using the ‘baggervance.com’ domain name was to try to coerce Complainant into buying it. Respondent’s website ‘comments upon’ Complainant’s activities only to the extent of stating that Complainant ‘has decided not to use this domain to give you information on the upcoming movie The Legend of Bagger Vance’ and stating (falsely) that Complainant ‘appears to not be willing to effectively use [the World Wide Web] to give potential paying moviegoers the opportunity to learn more about a movie before they decide to spend their money on it.’ Exhibit [hereto]. This form of ‘commentary’ cannot possibly be what the authors of the Policy meant by ‘legitimate noncommercial or fair use’ of a domain name. Under such an expansive interpretation of that defense, every domain name dispute would generate a ‘fair use’ defense because every bad faith registrant could defend its actions merely by using the domain name to ‘comment upon’ the trademark owner’s refusal to purchase it. Compare Bridgestone Firestone (allowing continued registration of domain name because registrant ‘has not usurped the <.com> domain but has utilized only the <.net> domain’ and ‘has included criticism and commentary on the site’) with Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477 (WIPO July 20, 2000) (fair use defense rejected because registrant did not register the domain names ‘in order to express opinions or to seek the expression of opinion of others’ but rather to ‘extract money from Complainant’). As a result, this defense must fail.
44. "Based on the foregoing, Respondent either registered or acquired the domain name at issue ‘primarily for the purpose of selling, renting, or otherwise transferring the domain name registration … for valuable consideration in excess of [the] documented out-of-pocket costs directly related to the domain name’ (Policy, ¶ 4(b)(i)), or ‘registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, [and Respondent has] engaged in a pattern of such conduct’ (Policy, ¶ 4(b)(ii)). For either reason, the domain name must be transferred to Complainant." (Complaint)
In its supplemental submission, Complainant indicates that Respondent’s efforts after the initiation of this proceeding to modify its website to adopt fair use language from the Policy and additional critical expressive content does not materially alter the character of this proceeding.
Complainant requests that the Panel ask the registrar to transfer the domain name "baggervance.com" from Respondent to it (id., para. 45).
Respondent states in its own words:
"Under Paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy (‘Policy’), Complainant must show that it owns rights in and to the relevant mark and that Respondent’s domain name is identical or confusingly similar to that mark. The domain name in dispute, baggervance.com, nor any name confusingly similar, is not a registered trademark or service mark according to the United States Patent and Trademark Office. Therefore, Complainant has not shown sufficient evidence to establish the elements above. This indisputable fact is enough for the Administrative Panel to rule in favor of the Respondent.
"Any claim by the Complainant that some secondary trademark status of the disputed domain name exists is inapplicable to this case. The domain in question was registered on December 11, 1998, before the registrar, Network Solutions (NSI), implemented a Registration Agreement (effective January 1, 2000) whereby the ICANN Policy applies to all state and common law trademarks, as well as to nationally registered trademarks. Any modifications to the NSI Registration Agreement after December 11, 1998 were unilateral and are unenforceable.
"To the extent that the Complainant asserts ownership of rights to the mark ‘THE LEGEND OF BAGGER VANCE,’ this has no significance to this case. The domain name in question is ‘baggervance.com,’ not ‘THE LEGEND OF BAGGER VANCE’ or ‘THELEGENDOFBAGGERVANCE.com’.
"To the extent that the Complainant asserts ownership of rights to the mark ‘BAGGER VANCE’ or ‘THE LEGEND OF BAGGER VANCE,’ Respondent claims that insufficient evidence was shown to prove that this is relevant to the disputed domain, ‘baggervance.com.’ Complainant claims to have established trademark rights by some or all of the following factors: ‘(1) the length and continuity of use; (2) the extent of advertising and promotion and the amount of money spent; (3) the sales figures on purchases or admissions and the number of people who bought or viewed plaintiff’s work; and (4) the closeness of the geographical and product markets of plaintiff and defendant’ and Complainant claims to have shown that the title of the book and the movie ‘is sufficiently well known that consumers associate it with a particular author’s work.’ To say that the phrase ‘BAGGER VANCE’ or the title ‘THE LEGEND OF BAGGER VANCE’ was well known by the average Internet user on or before December 11, 1998 (the date of domain name registration) is a ridiculous exaggeration. In addition, advertising and promotion (online or offline) for the motion picture ‘THE LEGEND OF BAGGER VANCE’ was insignificant before December 11, 1998.
"To the extent that the Complainant asserts ownership of rights to the domain name ‘baggervance.com,’ by the acts of the Complainant in expressing little interest in obtaining the domain name in question, the domain name apparently is of little or no value in promotion of the upcoming movie ‘THE LEGEND OF BAGGER VANCE,’ and hence this admission by the Complainant proves that the domain name has no secondary meaning.’
"In addition to the statements above which provide sufficient evidence that the Complainant has not shown that it owns rights in and to the relevant mark and that Respondent’s domain name is identical or confusingly similar to that mark, the current purpose of the website using the domain name baggervance.com is to exercise the owner's right to criticize the business practices of DreamWorks L.L.C.. A legal precedent has been set for this in the case of Bridgestone Firestone, Inc. et al. v. Jack Myers, Case No. D2000-0190 (World Intellectual Property Organization July 6, 2000).
For the reasons above, the remedy sought by the Complainant must be denied." (Response)
In its supplemental response, Respondent asserts that it has used the disputed domain name for legitimate noncommercial or fair use purposes.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. (Footnote 1) The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this proceeding, Respondent has furnished a response to the complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings.
The Panel rejects Respondent’s argument that it is not bound by the Policy. Respondent’s registration agreement with the Registrar provided that changes to the Registrar’s dispute settlement policy would be binding on Respondent as evidenced by Respondent’s continued maintenance of registration of the disputed domain name. Following the Registrar’s adoption and implementation of the Policy, Respondent maintained its registration of the disputed domain name and is bound by the Policy.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has obtained by assignment the exclusive right to use the name of the novel, "The Legend of Bagger Vance", published in 1995, in connection with the production and first distribution of a motion picture by that name (see Factual Background, supra). In March 1998 Complainant commenced to publicize forthcoming production of the motion picture, "The Legend of Bagger Vance", thereby alerting the public of a connection between the motion picture and Complainant. Complainant has used the name "The Legend of Bagger Vance" to identify a motion picture it has produced and first distributed to theatres. That name became associated by the public with the novel published in 1995, and subsequently with the motion picture in production and publicized by Complainant, and with the motion picture produced, advertised and distributed by Complainant.
Titles of books and motion pictures are not registered by the United States Patent and Trademark Office (USPTO). (Footnote 2) However, titles of books and motion pictures that acquire secondary meaning may be protected as trademarks. (Footnote 3) A principal criterion for determining secondary meaning is that members of the public associate the title with the author or producer of the book or film. (Footnote 4) Public recognition of the title of a book has been found to confer secondary meaning to the title of a motion picture adapted from the book. (Footnote 5) An alleged infringer’s intentional adoption of a trademark for the purpose of confusing consumers is strong evidence of secondary meaning in that trademark. (Footnote 6) In the present proceeding, Respondent clearly adopted Complainant’s title with the intention of confusing consumers.
The Panel determines that "The Legend of Bagger Vance" is a trademark of Complainant used in connection with the marketing and sale of a motion picture. The Panel further determines that Complainant’s rights in the mark arose prior to December 11, 1998, the date on which Respondent registered the disputed domain name.
Respondent registered the domain name "baggervance.com". The disputed domain is essentially identical to Complainant’s "The Legend of Bagger Vance" trademark, except that it drops the first three words of the title, leaving only "Bagger Vance". The name "Bagger Vance" is distinctive. By Respondent’s direct admission in correspondence to Complainant, "baggervance.com" is the name that consumers would expect to be used to identify Complainant’s motion picture website on the Internet. The Panel determines that the domain name "baggervance.com" is confusingly similar to Complainant’s "The Legend of Bagger Vance" trademark within the meaning of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
The second element of a claim of abusive domain name registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, para. 4(c))
Respondent has claimed legitimate noncommercial or fair use of Complainant’s trademark on grounds that it used the website identified by the disputed domain name to criticize Complainant. Respondent’s website directed critical commentary at Complainant (including by request to confused Internet users) following Complainant’s refusal to buy the disputed domain name for a price in excess of Respondent’s out-of-pocket expenses. Its use of the domain name was intended to disrupt Complainant’s business, and by so doing to force Complainant to purchase the name. Respondent was misleadingly diverting consumers to its website for its own commercial gain. This is not a legitimate non-commercial or fair use of Complainant’s mark. Consequently, Complainant has established the second element necessary to succeed on a claim of abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
There is overwhelming evidence on the record of this proceeding that Respondent registered the disputed domain name primarily for the purpose of selling it to Complainant for valuable consideration in excess of its out of pocket expenses directly related to the domain name. While Respondent may well have engaged in additional actions sufficient to constitute bad faith in other respects, the Panel need not address such additional actions.
The Panel determines that Respondent registered and used the disputed domain name in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) of the Policy. Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain name "baggervance.com" to the Complainant.
Based on its finding that the Respondent, Grantics, has engaged in abusive registration of the domain name "baggervance.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "baggervance.com" be transferred to the Complainant, Dreamworks L.L.C.
Frederick M. Abbott
Dated: December 16, 2000
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. See J. THOMAS MCCARTHY, 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§10:1-10:4 (4th ed. 1996 and updated).
3. See, e.g., Dr. Seuss Enterprises v. Penguinbooks USA, 109 F.3d 1394 (9th Cir. 1997).
4. See McCarthy¸supra note 2, at §§10:10-10:11.
5. United Artists v. Exodus Motion Picture Corp., 26 Misc. 2d 807, 207 N.Y.S.2d 465 (Sup. Ct. NY 1960).
6. Cf. Vision Sports, Inc. v. Melville Corp., 888 F. 2d 609, 615 (9th Cir. 1989) and Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F. 2d 1176, 1182 (7th Cir. 1989) (both in trade dress context).