WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Backstreet Boys Productions, Inc. v. John Zuccarini, Cupcakeparty, Cupcake Real Video, Cupcake-Show, and Cupcakes-First Patrol
Case No. D2000-1619
1. The Parties
1.1 The Complainant is Backstreet Boys Productions, Inc., a corporation organized and existing under the laws of the State of Florida, giving two addresses: 1) c/o The Firm, 9100 Wilshire Boulevard, Suite 400W, Beverly Hills, California, United States of America, 2) c/o Ziffren, Brittenham, Branca & Fischer LLP, 1801 Century Park West, Los Angeles, California, United States of America.
1.2 The Respondents are John Zuccarini, Cupcakeparty, Cupcake Real Video, Cupcake-Show, and Cupcakes - First Patrol, all giving addresses at 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania, United States of America.
2. The Domain Names and Registrars
Certain of the domain names at issue are registered with Network Solutions, Inc. ("NSI") located in Herndon, Virginia, United States of America, and certain of the domain names at issue are registered with the Core Internet Council of Registrars, ("CORE") located in Geneva, Switzerland. The domain names at issue that are registered with NSI are <backstreeboys.com>, <backsreetboys.com>, <backstreetboyspics.com>, <backstreetboyspictures.com>, <bakstreetboys.com>, <backstretboys.com>, <bacstreetboys.com>, and <backtreetboys.com>. The domain names at issue that are registered with CORE are <backstreetboys.com>, <backsteetboys.com>, and <backstreetboyz.com>.
3. Procedural History
3.1 A Complaint was submitted electronically to the WIPO Center on November 21, 2000, and the signed original together with four copies forwarded by express courier was received on November 24, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated November 28, 2000.
3.2 On November 29, 2000, the WIPO Center sent each of the two registrars in question a Request for Registrar Verification requesting each to: (1) confirm that the domain names at issue are registered with the registrar; (2) confirm that the persons identified as the Respondents are the current registrants of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrants of the disputed domain names, the technical contacts, the administrative contacts and the billing contacts; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.
3.3 On December 3, 2000, NSI confirmed by reply e-mail that the following domain names are registered with NSI and show the following Respondents to be the respective registrants: 1) <backstreeboys.com>, Cupcakes - First Patrol; 2) <backsreetboys.com>, Cupcake - Show; 3) <backstreetboyspics.com>, Cupcake Party; 4) <backstreetboyspictures.com>, Cupcake Party; 5) <bakstreetboys.com>, Cupcake Real Video; 6) <backstretboys.com>, Cupcake - Show; 7) <bacstreetboys.com>, Cupcake - Show; 8) <bactreetboys.com>, Cupcake - Show. All of the registrants listed John Zuccarini as administrative and billing contact, and all registrants listed the same address as that for Mr. Zuccarini. The domain names are currently in active status. The registrar also forwarded the requested Whois details and confirmed that the Policy is in effect.
3.4 On December 4, 2000, CORE confirmed by reply e-mail that the following domain names are registered with CORE and show the following Respondents to be the respective registrants: 1) <backsteetboys.com>, John Zuccarini; 2) <backstreetboyz.com>, John Zuccarini; 3) <backstreetboys.com>, John Zuccarini. The domain names are currently in active status. The registrar also forwarded the requested Whois details and confirmed that the Policy is in effect.
3.5 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a three-member Panel were paid on time and in the required amount by the Complainant.
3.6 No formal deficiencies having been recorded, on December 7, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondents (with copies to the Complainant, CORE, NSI and ICANN), setting a deadline of December 26, 2000, by which the Respondents could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondents by courier and by email to the email addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondents’ attempted participation in these proceedings.
3.7 On December 27, 2000, no response having been received, the WIPO Center issued a Notification of Respondent Default.
3.8 On February 26, 2001, the WIPO Center Sent a Notification of Panel Appointment, appointing Frederick Abbott, David Wagoner, and M. Scott Donahey, all of whom had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence, with M. Scott Donahey to act as Presiding Panelist.
3.9 On March 6, 2001, the Center received and forwarded to the Panel Respondent's [sic] Answer and Opposition to Complaint and Respondent's [sic] Request for Late Filing for the Panel's consideration.
4. Factual Background
4.1 Complainant submitted evidence that the mark BACKSTREET BOYS was registered with the United States Patent and Trademark Office ("USPTO") in connection with pre-recorded compact disks, audio and video cassettes featuring music, jewelry, paper goods, leather goods, clothing, and entertainment in the nature of performances by a musical group. The evidence submitted by complainant showed that the holder of the registration was one Louis J. Pearlman, and that the registration of the trademark and service mark issued on April 27, 1999. Complaint, Annex F.
4.2 The Panel thereafter made the following request "The Panel would like to request the following additional information from Complainant: The relationship, if any, between Louis J. Pearlman and the Complainant and on what basis, if any, Complainant claims an ownership interest in the trademark registered with the United States Patent Office, Registration Number, 224182. The Panel requires this information as soon as possible." The WIPO Center transmitted this request to the Complainant on March 15, 2001.
4.3 Complainant responded to the Panel's request by email of March 16, 2001, as follows: "The assignment of U.S. Trademark Registration No. 2,241,482 for the mark of BACKSTREET BOYS was recorded with the United States Patent and Trademark Office on July 1, 1999 and the Reel/Frame numbers are: 1923/0987. We will provide a copy of the assignment under separate cover."
4.4 On March 16, 2001, The Panel notified the WIPO Center that it required the production of the assignment as soon as possible. On that same date, the WIPO Center communicated the Panel's requirement to the Complainant by email.
4.5 On March 19, 2001, the Panel received from the WIPO Center a communication from the Complainant which stated in pertinent part: "Per the Panel's request, attached is a scanned copy of the Assignment of Trademarks (in .pdf format), wherein Louis J. Pearlman assigned to Complainant all rights in the Backstreet Boys mark (including Registration #2241482)."
4.6 The attachment was a two page notarized document entitled "U.S.A. Assignment of Trademarks" (the "Assignment"). On its face the Assignment transferred all right, title and interest in and to various trademarks, including that for BACKSTREET BOYS, U.S.P.T.O. Registration No. 2,241,482. The Assignor was Louis J. Pearlman. The Assignee was Backstreet Productions Inc., a corporation organized and existing under the laws of the state of Delaware, having an address at 15250 Ventura Blvd., Suite 900, Sherman Oaks, California, United States of America.
4.7 Because of the Panel's decision in this case, no further discussion of the facts is warranted at this time.
5. Parties’ Contentions
5.1 Complainant contends that Respondents have registered domain names which are identical and/or confusingly similar to the trademark and service mark registered and used by Complainant, that Respondents have no rights or legitimate interests in respect of the domain names at issue, and that Respondents have registered and are using the domain names at issue in bad faith.
5.2 Respondents filed a response more than two months after it was due and asked that it be considered. Because of the nature of our decision in this case, it is not necessary for the Panel to rule on Respondents' request at this time.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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 directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
(3) that the domain name has been registered and is being used in bad faith.
In the present case Complainant has failed to establish that Complainant has rights in the trademark on which Complainant relies. Complainant identifies itself as Backstreet Boys Productions, Inc., a Florida corporation, and lists two addresses for itself, one in Beverly Hills, California, and one in Los Angeles, California. Complainant submitted evidence that the trademark BACKSTREET BOYS was held by one Louis J. Pearlman. Upon request for further information concerning Complainant's rights to or interests in the trademark submitted, Complainant produced an Assignment showing that all right, title and interest to the trademark had been transferred to an entity known as Backstreet Productions, Inc., a Delaware corporation, located in Sherman Oaks, California. Thus, Complainant has failed to carry its burden that it has rights in the trademark on which it relies.
What is to be the effect of a dismissal of the Complaint in this matter? A recent Panel decision analyzed when a Complaint should be accepted when refiled and when it should be rejected. In Creo Products Inc. v. Website In Development, ICANN Case No. D2000-1490, the learned Panelist carefully analyzed the proper grounds for acceptance of a complaint filed following a dismissal of a previous claim brought by the same complainant against the same respondent concerning the same domain name(s). The learned Panelist found that to the extent that the refiled complaint concerned acts which formed the basis of the original complaint, the refiled complaint should only be entertained in certain limited circumstances, such as a breach of natural justice or due process in the prior proceeding, the discovery of new evidence which, with the exercise of due diligence, would not have been reasonably available at the time of the original hearing, etc. The Panel agrees with this analysis.
The learned Panelist in the Creo Products case further found that where the refiled complaint concerned acts which occurred subsequent to the dismissal of the original complaint, the refiled complaint is essentially a new action, and it should be entertained. The Panel agrees with this analysis also.
Finally, the learned Panelist disapproved of the practice of dismissing a complaint without prejudice, stating that "such a practice is not desirable, and should be avoided wherever possible." While the Panel agrees that such dismissals should be used sparingly, the Panel believes that "dismissals without prejudice" serve an important purpose in certain cases, and that the present case is one of those cases. A failure of proof, especially one of a technical nature, frequently arises in court litigation. Because the parties are present, such evidentiary deficiencies can often be cured by oral testimony given when the failure arises, by explanation of the seeming inconsistency, or by the production or creation of documents which serve to establish the technical evidentiary point at issue. However, proceedings under the UDRP do not provide for oral hearings, except in exceptional circumstances. Thus, the parties' ability to correct technical failures of proof are severely limited. The Panel believes that in such instances a "dismissal without prejudice" is the procedure to be followed in order to insure that substantial justice is done between the parties.
For all of the foregoing reasons, the Panel dismisses this case for failure of the Complainant to establish that it has rights to the trademark on which it relies. This dismissal is without prejudice to the matter being refiled should Complainant be able to present evidence of a right to the trademark on which it relies.
Dated: March 27, 2001