WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hollywood Media Corp. v. Marco Publishing Corporation
Case No. DBIZ2002-0251
1. The Parties
In this proceeding, Complainant is Hollywood Media Corp., a corporation with a principal place of business at 2255 Glades Road, Suite 237W, Boca Raton, Florida 33431, United States of America. Complainant is represented in this proceeding by Lorin Fine of Weil, Gotshal & Manges LLP, 767 Fifth Avenue, New York, New York 10153, United States of America.
Respondent is Marco Publishing Corporation, a corporation with a principal place of business at P.O. Box 42319, Houston, Texas 77242, United States of America. Respondent is represented in this proceeding by Stephen H. Sturgeon, Esq., of Law Offices of Stephen H. Sturgeon & Associates, PC, 11116 Hurdle Hill Drive, Rockville, Maryland 20854, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <broadway.biz>.
The registrar for the disputed domain name is Bondi LLC, P.O. Box 42319, Houston, Texas 77242, United States of America.
3. Procedural History
This administrative proceeding was initiated pursuant to the regulations of the Start-up Trademark Opposition Policy for .BIZ ("STOP") adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc. on May 11, 2001 (the "STOP Rules"), and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "Center", the "WIPO Supplemental STOP Rules").
The Complaint was filed on May 21, 2002, by e-mail, and on May 24, 2002, in hard copy.
On May 28, 2002, the Center sent to Complainant by e-mail a Notification of Deficiency, which was supplemented by a Notification of Deficiency Follow-up e-mailed to Complainant by the Center on June 13, 2002. Complainant responded to the latter on June 15, 2002, by e-mail with an Amendment to the Complaint, noting that Complainant was unaware of any other legal proceedings related to this proceeding.
On June 19, 2002, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding and a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began.
Respondent responded to the Complaint by e-mail on June 23, 2002.
The Administrative Panel submitted a Declaration of Impartiality and Independence on July 15, 2002, and the Center appointed the Panel on July 17, 2002. The Panel finds the Center has adhered to STOP, the STOP Rules and the WIPO Supplemental STOP Rules in administering this Case.
4. Factual Background
Complainant is a company which provides theater ticketing services and information through its web site addressed at the domain name, <broadway.com>.
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on March 27, 2002.
5. The Partiesí Contentions (Summarized)
-- Complainant, an American company, registered the domain name, <broadway.com>, on December 6, 1999, and has been using the mark "Broadway.com" since April 2000 in connection with the launch of its <broadway.com> web site.
-- That web site provides online theater ticketing services for shows in New York and London, and theater showtimes for virtually all professional live theater venues in North America, London, and hundreds of colleges and local live theater venues. It also contains the latest theater news, interviews with stage actors and playwrights, opening night coverage, theater reviews, and video excerpts from selected shows.
-- Complainant spends approximately $8 million annually promoting <broadway.com> through radio, television and outdoor advertising, and it benefits from a well-established visitor base, with approximately 15 million annual impressions.
-- The disputed domain name contains the identical trademark "Broadway" contained in Complainant's registered domain name. This identity and the popularity of Complainant's web site will create customer confusion.
-- Based on Complainant's information and belief, Respondent has no rights or legitimate interests in respect of the domain name. Respondent has registered a laundry list of ninety-three ".biz" domain names, none of which have any apparent relation to each other or to Respondentís operations.
-- Complainant attempted to contact and gain information about Respondent, but could not through the telephone number given the Registrar of the disputed domain name or in any other reasonable manner. Thus, Respondent is likely not a legitimate operating entity, but a smokescreen that is registering domain names for the sole purpose of warehousing those names or selling them to others for profit.
-- The disputed domain name was registered or is being used in bad faith. Due to the renown of Complainant's similar domain name, Respondent is well aware of it. Based upon Complainant's information and belief, Respondent has attempted to register the disputed domain name for the sole purpose of selling the domain name registration to Complainant or others for valuable consideration in excess of Respondentís out-of-pocket costs directly related to its registration of the that name.
-- Respondent is a publishing company that publishes newsletters on various topics.
-- STOP is designed to prevent clear abuse of the domain name registration process and clear abuse, or "cyber-squatting," is certainly not present in this case.
-- Complainant has not proven that the domain name is identical to a trademark or service mark in which the Complainant has rights, because Complainant has no rights in the mark "Broadway" through registration or common law.
-- Complainant has failed to sustain its burden of proving that Respondent did not have any legitimate interest in the domain name. Respondent publishes newsletters on various topics including the topic of "Broadway."
-- Complainant has failed to prove that there was bad faith either at the time of Respondent's registration or in the current use of the disputed domain name.
6. Discussion and Findings
For Complainant to prevail and obtain a transfer of the disputed domain name, <broadway.biz>, it is required that Complainant prove the following (STOP, ∂ 4(a)(i-iii):
-- the domain name is identical to a trademark or service mark in which Complainant has rights; and
-- Respondent has no rights or legitimate interests in respect of the domain name; and
-- the domain name was registered or is being used in bad faith.
Complainant has supplied the Panel with no evidence that Complainant holds a valid registration of the trade or service mark in the name "Broadway."
However, prior panels ruling under STOP have found that a complainant may establish rights in a mark at common law. "Broadway," common as a street name in the United States, is akin to the name of a geographical location. Thus, the Panel finds the reasoning in the case, Brisbane City Council.v. Warren Bolton Consulting Pty Ltd WIPO Case No. D2001-0047, particularly pertinent: "Thus, the important issue in a case, such as this one, concerning an unregistered mark that is a geographical location, is whether the facts of the case show that the unregistered mark is indeed performing the function of a trademark--that is to say, whether the unregistered mark is distinguishing the goods and services of the Complainant in trade from the goods or services of any other person in trade."
The Panel notes that many large (and even not-so-large) cities in the United States (i.e., Los Angeles, Baltimore, San Francisco, Oklahoma City, Nashville, San Diego, etc.) have a street named "Broadway." However, the street of that name found in New York City has taken on special meaning throughout the years. In fact, that street and its name are nearly synonymous with the legitimate stage in America. This condition arose far before Complainant went into business, and Complainant's short two-and-half year tenancy in trading under that name neither distinguishes Complainant's services nor makes it more identifiable with Complainant than with any number of other companies and people -- in short, the entire live theater industry -- who trade in goods or services within that venue. Thus, Complainant's attempt to show any appreciable degree of exclusivity in the extremely famous street name "Broadway" is an almost impossible task . Accordingly, the Panel finds that Complainant has failed to establish rights in the mark "Broadway" at common law.
Therefore, the Panel finds that Complainant has not shown that the disputed domain name is identical to a trade or service mark in which it has rights, and thus has failed to sustain its burden of proof under STOP, ∂ 4(a)(i).
STOP requires that for a transfer of the disputed domain name to occur, Complainant must establish each factor listed under STOP, ∂ 4(a). Since Complainant has failed to do so with respect to STOP, ∂ 4(a)(i), the Panel need not go on to determine if Respondent has rights or legitimate interests in the disputed domain name (STOP, ∂ 4[a][ii]), or if Respondent registered or is using the disputed domain name in bad faith (STOP, ∂ 4[a][iii]).
The Panel determined that Complainant failed to establish that the disputed domain name, <broadway.biz>, is identical to a trademark or service mark in which Complainant has rights as required under STOP, ∂ 4(a)(i). Thus, in accordance with STOP, ∂ 4(i), and STOP Rule 15, the Panel orders that the disputed domain name, <broadway.biz>, remain registered to Respondent.
Dennis A. Foster
Dated: August 7, 2002