WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TSK Franchise Systems, Inc. and Daniel “Tiger” Schulmann v. “.” d/b/a Steve Godun
Case No. D2007-0996
1. The Parties
The Complainants are TSK Franchise Systems, Inc., Elmwood Park, New Jersey, United States of America, and its Chief Executive Officer, Daniel “Tiger” Schulmann. Both are represented by Plager Law Offices, P.C., United States of America.
The Respondent is “.” d/b/a Steve Godun of Jersey City, New Jersey, United States of America.
2. The Domain Names and Registrar
The disputed Domain Names are as follows:
Each of the Domain Names is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2007. On July 9, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with four of the Domain Names at issue. Following the first amendment of the Complaint, the Center requested registrar verification on July 17, 2007, in connection with the other two Domain Names. On July 11, 17, and 27, 2007, the Registrar transmitted by email to the Center verification responses, indicating that the punctuation mark “.” was given as the registrant’s name in registering each of the six Domain Names, but with the Respondent listed as the administrative and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 12, 2007. Following further communications with the Center, the Complainant filed a second amendment on July 20, 2007. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2007. The Response was filed with the Center on July 27, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 17, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant Daniel “Tiger” Schulmann (“Schulmann”) is the CEO of the Complainant TSK Franchise Systems, Inc. (“TSK), a New Jersey business corporation doing business as Tiger Schulmann’s MMA. TSK is a mixed martial arts (“MMA”) franchise operation offering martial arts training in more than 40 facilities located chiefly in the Eastern United States. TSK has been operating such facilities since 1984.
The Complainant Schulmann, as an individual, obtained United States Trademark Registration No. 2516743 on December 11, 2001 for TIGER SCHULMANN’S KARATE as a standard character mark, showing first use in commerce on July 1, 1987. On the same date, Schulmann obtained United States Trademark Registration No. 2516742) for a design mark incorporating the same words and the image of a tiger. Each of these registrations indicates that “TIGER SCHULMANN is the nickname of a living individual whose consent is of record”.
The Complainant TSK operates a website at “www.tsk.com” (“the TSK website”) advertising its martial arts training programs, franchise opportunities, and apparel and equipment sold under the TIGEAR brand (a design mark registered to TSK Equipment Co., Inc., United States Registration No. 2910974, December 14, 2004). It may be inferred from the Complaint and from the TSK website that the Complainant TSK is licensed to display the Schulmann marks and the TIGEAR mark.
Steve Godun is a former student and employee of the Complainant TSK. Although the registrant of the six Domain Names is shown only as the punctuation mark “.”, Godun is listed as the administrative and technical contact. Godun submitted a Response in this proceeding that makes clear that Godun registered each of the Domain Names and established websites or redirects associated with each of the Domain Names. It is undisputed that “.” is not a legal or natural person and that Godun is the person who registered and continues to exercise control over each of the Domain Names. Therefore, this Decision refers to Godun as the “Respondent” in this proceeding.
The Respondent was a student in the Manhattan TSK school beginning in 1996 and became a volunteer instructor in 2002. The Respondent states that he offered on several occasions from 1997 through 2002 to redesign the website operated by the Complainant TSK at “www.tsk.com”, with the objective of making it more useful and appealing for TSK students and former students. It is undisputed that the Complainant TSK registered the Domain Name <tsk.com> at some time in the 1990s and has used it for its corporate website and email domain ever since. The Respondent reports that the Complainant TSK did not initially agree to have the Respondent work on the website associated with the Domain Name <tsk.com>.
In October 1999, the Respondent registered the Domain Name <tigerschulmann.com>. The Respondent states that he immediately informed Ron Schulmann, manager of the Manhattan TSK school, and talked to him about the Respondent’s plans to develop a website for TSK students. According to the Respondent, Ron Schulmann verbally assented to the Respondent’s plan to use this Domain Name for a student website. When that website (the “Respondent’s website”) was finally launched in Spring 2002, the Respondent states that the Complainant TSK invited him to take photographs of TSK facilities to post on the Respondent’s website, along with certain TSK materials including introductory videotapes prepared by TSK. The Respondent says that a TSK officer announced the Respondent’s website at a TSK black belt test event in June 2002 and encouraged staff, students, and families to visit the website.
The Complainant TSK registered the Domain Name <tigerschulmanns.com> in March 2000. The Respondent asserts without contradiction that the Complainants made no use of the Domain Name and allowed the registration to lapse in March 2005. The Respondent then registered the Domain Name in June 2005 and used it to redirect visitors to the Respondent’s website at “www.tigerschulmann.com”.
The parties agree that in 2002 the Complainant TSK hired the Respondent to redesign and administer the Complainant’s website at “www.tsk.com”. At this time, the Domain Name was transferred to the Respondent. As detailed below, the parties give conflicting accounts of that transfer. The redesigned website went live in August 2002, and “as a courtesy” the Respondent forwarded traffic from his website at “www.tigerschulmann.com” to the new TSK website at “www.tsk.com”.
In 2003, the Respondent’s employment with the Complainant TSK was terminated, and the Respondent turned over to TSK’s graphic designer the technical information and login credentials necessary to maintain the Complainant’s website at “www.tsk.com”. However, the registration of this Domain Name has never been transferred back to the Complainant TSK, although it continues to be used for both the Complainant’s website and its email domain.
The Respondent registered the Domain Names <tigerschulmannmma.com> and <tigerschulmannsmma.com> in September 2006, using them to redirect visitors to the Respondent’s website at “www.tigerschulmann.com”. (According to the Respondent, “mma” refers to Mixed Martial Arts, as taught in TSK schools.) The Respondent registered the Domain Name <ts-mma.com> in January 2007 and used it similarly to redirect visitors to the Respondent’s website.
The following chart summarizes the registration history of the six Domain Names:
Registered by Complainant TSK
Registered by Respondent Godun
199_? to 2002 (transferred to Respondent)
October 1999 - present
Mar. 30, 2000 – Mar.30, 2005
June 11, 2005 - present
Sep. 11, 2006 - present
Sep. 11, 2006 - present
Jan. 1, 2007 - present
The Respondent’s website at “www.tigerschulmann.com”, to which all the other Domain Names except <tsk.com> redirect, is headed “TIGERSCHULMANN.com, The Ultimate Resource for Tiger Schulmann’s”. The website features news about TSK schools and events, martial arts blogs, and a forum for posting comments by individuals interested in TSK and martial arts. Donations to support the operation of the website are solicited on the home page. Each page includes an “Ads by Google” advertising banner for one or more third-party vendors. A disclaimer appears prominently on the home page: “This is NOT the official site of Tiger Schulmann’s Karate. You will find them at www.tsk.com instead!”
As discussed below, the parties dispute whether they were in communication with each other after the Respondent terminated his employment with the Complainant TSK in 2003 and before the Complaint was filed in this proceeding in 2007.
5. Parties’ Contentions
The Complainants contend that all of the Domain Names “are identical in name and sound to the marks registered and used by Complainant”, creating a likelihood of confusion as to “the affiliation, connection or association of these sites with Registrant, or as to origin, sponsorship, or approval by Registrant” in violation of United States trademark law.
The Complainants assert that the Respondent has not been licensed to use the registered marks and has no rights or legitimate interests in the Domain Names. The Complainant denies that the Respondent’s website represents noncommercial fair use of the marks, because it solicits donations and displays Google AdSense advertising banners, at least occasionally including advertisements for competing martial arts schools and equipment providers.
The Complainant’s conclude that the Respondent registered and used all of the Domain Names in bad faith because he was allowed to use the <tsk.com> Domain Name only on the Complainant’s behalf and has refused to relinquish control of it after his employment terminated, and because he uses the other Domain Names to bring visitors to a website that has displayed the Complainants’ marks and copyrighted material and trades on the Complainants’ fame for commercial gain.
The Respondent observes the Complainant Schulmann has registered only the mark TIGER SCHULMANN’S KARATE, which is not identical to any of the Domain Names, and argues that the Domain Names do not demonstrably create confusion in the marketplace. The Respondent asserts that the Domain Names are not used for commercial profit, and that the minimal donations and advertising revenues to date do not even cover the costs of operating the Respondent’s website.
The Respondent denies covertly transferring the registration of <tsk.com> and states that the registration was changed with the Complainants’ knowledge and consent, so that he could improve the corporate website. He notes that he has not impeded the Complainant TSK’s use of that Domain Name for its website and email accounts. The Respondent argues that his website using the Domain Name <tigerschulmann.com> (to which the remaining Domain Names redirect traffic) is a noncommercial website that provides a forum for legitimate comment, positive and negative, on TSK teaching, practices, and events.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Multiple Complainants
The Complaint refers to “Complainant” in the singular and does not provide contact details for Daniel “Tiger” Schulmann. However, the caption and the “Parties” section of the Complaint expressly refer to Mr. Schulmann as well as TSK Franchise Systems, Inc. (“TSK”). Mr. Schulmann is the CEO of TSK, but he is not listed as TSK’s authorized representative for purposes of this proceeding. It may be that he is included as a Complainant because he personally owns the registered TIGER SCHULMANN’S KARATE marks on which the Complaint is grounded, although it would have sufficed under the Policy to show that TSK has “rights” in those marks.
Neither the Policy nor the Rules expressly contemplates multiple complainants, and some panels have rejected complaints filed in the name of more than one complainant on the ground that they have not sufficiently identified their respective ownership rights and requested remedies. See, e.g., Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson, eResolution Case No. AF-0638. In other cases, panels have accepted complaints by multiple complainants based on agency, licensing, or affiliate relationships. See, e.g., Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises, WIPO Case No. D2004-0220.
A UDRP proceeding must be predicated on a trademark or service mark in which a complainant has rights pursuant to paragraph 4(a)(i) of the Policy. The Complainant Daniel “Tiger” Schulmann owns the registered trademarks that underlie the Complaint, and they are used daily by the Complainant TSK, evidently under a licensing arrangement that is not described in the Complaint.
Allowing both companies to appear as Complainants is unlikely to result in prejudice to the Respondent. Therefore, the Panel accepts the amended Complaint as submitted. However, any order directed to the Registrar will, in the interest of avoiding confusion, refer only to the Complainant Daniel “Tiger” Schulmann, the current owner of record of the United States trademark registrations on which the Complaint is grounded.
B. Identical or Confusingly Similar
It is not disputed that the Complainants have rights in the registered TIGER SCHULMANN’S KARATE and TIGEAR marks (the latter as a design mark only). The Complainants contend that all of the Domain Names “are identical in name and sound to the marks registered and used by Complainant since 1999” (when the Respondent registered the first of the Domain Names), creating a likelihood of confusion in violation of United States trademark law.
The TIGER SCHULMANN’S KARATE and TIGEAR marks are certainly not identical to any of the six Domain Names. Moreover, the TIGEAR mark depends on design as well as word elements, and the word element echoes only the word “tiger” and so does not bear as distinctive a resemblance to the Domain Names as does the TIGER SCHULMANN’S KARATE mark.
There is a stronger argument that the Domain Names are confusingly similar to the TIGER SCHULMANN’S KARATE mark. Four of the Domain Names incorporate the distinctive name in the form of TIGER SCHULMANN or TIGER SCHULMANN’S; two of them add the relevant MMA abbreviation for “mixed martial arts”, which are in fact taught by the Complainants along with karate. “TSK” is an abbreviation for TIGER SCHULMANN’S KARATE that is used by the Complainant TSK itself in its corporate name and the names of affiliates, as well as on its website. The Complainant TSK used this abbreviation in originally registering the Domain Name <tsk.com> for its corporate website. Even the more cryptic Domain Name <ts-mma.com> is, for the Respondent and others familiar with the Complainants, a reference to “Tiger Schulmann’s” (TS) and its business of teaching mixed martial arts (MMA).
If it were not for the fact that “TKS” and “TS” are commonly used as abbreviations by the Complainants and their students, as appears from the Complainants’ website and the Respondent’s own admission, those letter sequences would probably not be deemed confusingly similar to the TIGER SCHULMANN’S KARATE mark. But they are likely to cause confusion as to source or affiliation for a distinct audience, the thousands of persons involved with, or interested in TSK. The Respondent, who was long affiliated with the Complainants as a student, volunteer instructor, and ultimately employee, acknowledges that he chose these Domain Names because they would be understood by “current and past students of TSK as well as people who are interested in TSK” to refer to the Complainants’ TSK schools and events of mixed martial arts including karate, which are branded with the TIGER SCHULMANN’S KARATE mark. Thus, the Domain Names should be deemed “confusingly similar” to the Complainants’ mark, at least as targeted to this market.
The Respondent notes that he has usually displayed a disclaimer of affiliation with the Complainant prominently on his website, to avoid confusion, as well in the website’s copyright terms. But this is immaterial in evaluating the first element of the Policy. An identical or confusingly similar domain name may still create “initial interest confusion” among some Internet users and thereby divert traffic to the Respondent’s or a third party’s websites. See, e.g., CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul, WIPO Case No. D2004-0988, and cases cited therein (“The content of the respondent’s website is not material to the question of confusing similarity for purposes of Paragraph 4(a)(i)”; “The disclaimer on the Respondent’s website does nothing to dispel initial interest confusion”); Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (“The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”).
The Panel concludes that all six Domain Names are confusingly similar to the Complainant’s TIGER SCHULMANN’S KARATE mark for purposes of the Policy, paragraph 4(a)(i).
C. Rights or Legitimate Interests
The Policy, paragraph 4(c), advises respondents as follows:
“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.”
The Respondent does not assert that he has used his website at “www.tigerschulmann.com”, to which all but one of the other Domain Names redirect visitors, in connection with an offering of goods or services. Nor does he claim to have been known by any of these Domain Names. He states that his use of the Domain Names was never intended “for profit or any personal or professional motive other than to encourage open communication and further enhance TSK’s web presence”. The Respondent contends that the “primary purpose” of his website is “to provide a venue of communication amongst students from different schools in order to foster a feeling of community. It also serves a secondary purpose by allowing those interested in TSK to communicate with those who are or were customers of TSK”. In effect, the Respondent claims a legitimate, noncommercial or fair use of the Domain Names under Policy, paragraph 4(c)(iii).
An examination of current and historical pages from the Respondent’s website indicates that it is focused on informing website visitors about TSK programs and events and offering a forum for comments by individuals interested in TSK. The Respondent himself does not offer goods or services for sale on the website.
The Respondent does solicit donations to maintain the website, and the Respondent is not a charitable institution. The Respondent reports just over $100 in donations to date, but it would be entirely possible for the Respondent to receive donations in excess of his operating costs, which would effectively turn the operation of the website into a commercially profitable venture, whatever other purposes it might serve.
The Respondent also admits that since 2004 he has allowed website advertising services (first the Amazon Associates program, and more recently Google’s AdSense program) to place banner advertisements on his website. These keyword-based advertising programs automatically deliver ads according to website content, with the result that some of the advertisements come from the Complainants’ competitors in the markets for martial arts training, events, and equipment. The Respondent reports that his commissions from sales resulting from site visitors clicking on banner ads have been minimal, roughly $250 to date. It is quite possible, however, that some of the sales resulting from banner advertisements on the Respondent’s website reflect the diversion to a competitor of consumers originally interested in the Complainants’ schools and events.
Although revenues from these sources have not surpassed the Respondent’s registration and operating costs, there is no reason they could not do so in the future. This calls into question whether the Respondent can rely on “noncommercial” or “fair use” interests to use Domain Names that are confusingly similar to the Complainants’ mark. As noted in McCarthy on Trademarks and Unfair Competition (4th ed. 2006) (reflecting United States trademark law precedents, which are appropriately cited in this proceeding as all parties are based in the United States):
“Most cases have held that regardless of free speech principles, a web site containing criticism of a company or an organization cannot be identified by a domain name confusingly similar to the name or trademark of the target group. The right to disseminate criticism on the Internet cannot trump the public’s right not to be deceived by a confusingly similar domain name.” (§ 31.148.50, p. 31-251)
“[U]se of the trademark of a company in the domain of a site that is devoted to criticizing or complaining about that company will constitute infringement if there is some commercial aspect. * * * Initial interest confusion obviously plays a role in such cases.” (§25:76, pp. 25-326 – 25-327)
The latter point is routinely made in UDRP proceedings where a website criticizing a brand or company is also used for commercial purposes. See, e.g., Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477. While some UDRP decisions countenance using trademarks under certain conditions in domain names associated with “protest” or “criticism” websites (see, e.g., Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206), the use of a trademark in a confusingly similar domain name for commercial purposes does not benefit from the same presumption of legitimate fair use.
Given the conclusions below on the element of bad faith, it is not necessary to determine whether the Respondent has established noncommercial or fair use rights or interests for purposes of the Policy, paragraph 4(c)(iii), with respect to the Domain Name <tigerschulmann.com>.
The facts are quite different with respect to the Domain Name <tsk.com>. This Domain Name was previously registered by the Complainant TSK and has always been used in connection with a bona fide offering of goods and services – those of the Complainants. The Respondent effected the transfer of the Domain Name to his own name when he was employed by the Complainant TSK to redesign the website. The Complainants deny that they were aware of this transfer at the time, while the Respondent asserts that the transfer was made to facilitate his “administrative access” to redesign and maintain the Complainants’ website, with TSK’s “full knowledge, understanding and intent”. The Respondent refers to the fact that the registrar at that time (Network Solutions) would have requested confirmation of the transfer by email. However, the parties offer no documentary or sworn evidence concerning the transfer of this Domain Name to the Respondent, and it is impossible for the Panel to determine whether and how Network Solutions obtained confirmation of the transfer.
What is undisputed is that the transfer occurred when the Respondent was an employee of the Complainant TSK, and that the Respondent’s administrative and technical control of the website was intended to facilitate the performance of his duties to redesign and administer the website on behalf of the Complainant TSK. There is no indication that the Respondent registered or used, or planned to use, the Domain Name <tsk.com> in connection with his own offering of goods or services, or that the name was one by which the Respondent was known, or that the Respondent made noncommercial or fair use of the Domain Name. Rather, the website continued to be used for TSK’s commercial website and email accounts, with content determined ultimately by TSK management. The Respondent indicates, in fact, that one of the reasons he left TSK’s employ in 2003 was that he disagreed with its policies for the website, such as restricting posted comments that might be construed as critical of TSK. And even though the Respondent continues to hold the registration for the Domain Name, he has not exerted control over it; he provided TSK with the information and login credentials to manage the website itself.
The Complainants allege that they have repeatedly asked the Respondent to relinquish the Domain Name <tsk.com>. He denies any such contacts until the Complaint in this proceeding.
The Respondent asserts a right in this Domain Name based simply on the assertion that the Complainants acceded to the registration transfer that he effected while in their employ, but this is not supported by documentary or other evidence of a sale or assignment or instructions to the registrar at the time. The Respondent does not explain why he needed to own the Domain Name in order to redesign and maintain the Complainants’ website. Given that (a) the transfer was effected while the Respondent was an employee of the Complainant TSK and (b) the website continued to be used for the Complainants’ online presence, it is unlikely that the Complainants knowingly “gave” the Domain Name to the Respondent.
On the present record, it seems unlikely that the Complainants intended to give the Respondent the Domain Name <tsk.com> or license his use of a Domain Name confusingly similar to their name and an abbreviated version of their mark for his own purposes. The Respondent has offered no other reasons for registering and using that Domain Name. The Panel concludes, then, that the Respondent has no rights or legitimate interests in the Domain Name <tsk.com>.
The remaining four Domain Names, <tigerschulmanns.com>, <tigerschulmannsmma.com>, <tigerschulmannmma.com>, and <ts-mma.com>, were all registered after the Respondent’s dubious conduct with respect to the Domain Name <tsk.com> and after the Respondent began to display advertising and solicit donations on his website to which these Domain Names resolve. Using these Domain Names to increase traffic to the Respondent’s website has the effect of exposing more Internet users to the advertising prominently featured on that website. The Respondent may be disappointed in the revenues and donations generated by his website to date, but these efforts have compromised his claims to purely legitimate, noncommercial use of the Domain Names. The Panel concludes, therefore, that the Complainants have satisfied the second element of the Complaint with respect to these four Domain Names.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad faith registration and use, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Complainants argue bad faith based on several facts and inferences, all of which are disputed:
- The Respondent has “willfully and maliciously” failed to relinquish control of the Domain Name <tsk.com>, transferred while he was employed by the Complainant TSK, despite “numerous requests”.
- The Respondent has registered additional Domain Names that create a likelihood of confusion with the Complainants’ marks, for commercial gain (this contention appears to reflect the Policy, paragraph 4(b)(iv), although it is not cited).
- The Respondent has compounded the likelihood of confusion as to source or affiliation by displaying on his website at “www.tigerschulmann.com” the Complainants’ marks and copyrighted material, in violation of trademark and copyright law, without license or proper attribution. (The Respondent’s website includes copies of material earlier published on the Complainants’ website, which the Respondent explains as his effort to create a “living archive” for TSK “enthusiasts.”)
- The request for donations on the Respondent’s website “impugns the reputation” of the Complainant TSK, which does not solicit donations.
The Respondent contends that his purposes were always to promote TSK and provide a forum for TSK students and others interested in TSK. He claims not to have received any requests to transfer the <tsk.com> Domain Name until the Complaint was filed in this proceeding. He points out that the Complainants submitted evidence of only one such communication, a January 2007 email from a TSK employee named Bosyk, which reads in pertinent part as follows:
“We need to make some changes to our website hosting company. They (Network Solutions) tell us that the domain name was changed to you [sic] name; I guess that happened when you reregistered it for us. They won’t let us change it back without your permission. I would like to speak with you about changing it back to either Mike Sachs or myself, so we can make the necessary changes.”
The text suggests that Bosyk, at least, was unaware of the registration transfer until 2007 and also did not know of any other communications on the subject between the Complainants and the Respondent. The Respondent denies receiving this email and says that it “appears to be nothing more than a fabrication”. The Respondent says, however, that he told counsel for the Complainant (presumably after the Complaint was filed) that he “may be amenable to returning the tsk.com domain to TSK if only TSK would contact Mr. Godun to begin the process”.
As discussed above, the Respondent does not convincingly explain why the Complainants would have knowingly given an employee the Domain Name <tsk.com> for his personal ownership and use, since they continued to use it for their corporate website and email accounts and apparently planned to do so indefinitely (as they have used it in the succeeding years down to the present). The Respondent also does not explain why it was necessary to transfer the registration to his name in order to work on his employer’s website. The circumstances of the registration transfer, and the Respondent’s failure to return the Domain Name to his employer, are suggestive of bad faith, possibly an intention to extort eventual payment to avoid disruption of the Complainants’ business or possibly simply a vague idea of maintaining some control or leverage over the Complainants and their policies. At best, the Respondent has been evasive and ambiguous in responding to the Complainants’ requests to return the Domain Name <tsk.com>.
It appears to the Panel more likely than not that the Respondent registered and maintained the Domain Name <tsk.com> with a degree of bad faith, since he has not advanced a good-faith explanation for his actions despite submitting a detailed Response. He has not taken overtly hostile action toward the Complainants; he cooperated in turning over technical access to the Complainants’ website to another employee when he left the company, and he has not acted to cut off the Complainants’ email accounts or take down their website. But he has also not relinquished sufficient control to allow the Complainants to make needed changes in their web hosting arrangements, according to the January 2007 Bosyk email. Fundamentally, it is difficult to imagine any good-faith reason for holding on to the Domain Name more than four years after leaving the job in which he was working on the Complainant TSK’s website as its employee. And it is highly unlikely that his employer wanted him to hold the registration indefinitely beyond the term of his employment, if it ever knowingly acceded to the transfer in the first place.
By the time the Respondent acquired the Domain Name <tsk.com>, the Respondent had for several years operated a noncommercial website aimed at the Complainants’ students and others interested in the Complainants’ schools and events, using the Domain Name <tigerschulmann.com>. It does not appear that the Respondent even displayed banner ads on this website until 2004, so it would be difficult to conclude that the Domain Name <tigerschulmann.com> was registered in bad faith for commercial gain in 1999. Moreover, the Respondent claims, without contradiction, that he had the Complainants’ blessing to operate a website oriented to TSK students, and this may be inferred as well from the facts that the Complainant TSK linked to his website and hired him to redesign its own website after the Respondent’s website was in operation.
It may be, as discussed above, that the subsequent banner ads and solicitation of donations on the Respondent’s website impair his claim to “fair use” of the Domain Name <tigerschulmann.com>. But this does not necessarily imply that the Domain Name was originally registered in bad faith, with the intent of misleading Internet users for commercial gain, and the predominantly noncommercial nature of the website suggests otherwise.
The Complainants may, if they choose, pursue trademark or copyright claims against the Respondent in an appropriate forum. But they have not sustained the claim that the Domain Name <tigerschulmann.com> was both registered and used in a bad-faith attempt to mislead Internet users for commercial gain.
The remaining four Domain Names, <tigerschulmanns.com>, <tigerschulmannsmma.com>, <tigerschulmannmma.com>, and <ts-mma.com>, are more problematic. It may be, as the Respondent suggests, that they were registered in order to attract more visitors to his “news and comment” website about the Complainants’ schools and events. But each of these four Domain Names is confusingly similar to the Complainants’ marks, and the Respondent registered them after he began to display advertisements, including advertisements for the Complainants’ competitors, on the website to which they resolve. Moreover, these registrations followed the Respondent’s dubious conduct with respect to the Domain Name <tsk.com>, and one of these Domain Names, <tigerschulmanns.com>, had previously been registered to the Complainants. Thus, there was a strong likelihood of confusion with the Complainants’ marks, and the Respondent had already shown bad faith in acquiring and retaining control of the Domain Name used by the Complainants, <tsk.com>, in which he had no legitimate interest. On balance, it appears more likely than not that the Respondent registered these four Domain Names in a bad-faith attempt to mislead Internet users for commercial gain, and possibly also as leverage for a more substantial eventual settlement regarding control of the Domain Name <tsk.com>.
The Panel concludes that the Domain Names <tsk.com>, <tigerschulmanns.com>, <tigerschulmannsmma.com>, <tigerschulmannmma.com>, and <ts-mma.com> were registered and used in bad faith. The Panel concludes, on the other hand, that the Complainants have not established the probability that the Domain Name <tigerschulmann.com> was both registered and used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <tsk.com>, <tigerschulmanns.com>, <tigerschulmannsmma.com>, <tigerschulmannmma.com>, and <ts-mma.com> be transferred to the Complainant Daniel “Tiger” Schulmann, and the Panel denies the Complaint with respect to the Domain Name <tigerschulmann.com>.
W. Scott Blackmer
Dated: September 5, 2007