The Complainant is Tony Barnhart and CSTV Networks, Inc. d/b/a CBS College Sports Network of New York, New York, United States of America, represented by CBS Law Department, United States of America.
The Respondent is Jaomadesigns of Mississauga, Ontario, Canada, represented by Craig Oghens, Canada.
The disputed domain name <tonybarnhartshow.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2010. On February 15, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 16, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2010. The Response was filed with the Center on March 10, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on March 17, 2010. 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.
In accordance with paragraph 10 and 15(b) of the Rules, on April 6, 2010, the Panel extended the due date for decision until April 12, 2010.
The Complainant (CBS College Sports Network) is a cable television network. One of the programs broadcast by that network is “The Tony Barnhart Show”. That show is a weekly one-hour primetime college football talk show. Tony Barnhart (the joint Complainant in this case), a well-known sports journalist and college football expert, is the host of that show. Tony Barnhart also maintains a website under the domain name <tonybarnhart.com>.
The disputed domain name was registered on July 29, 2009.
As evidenced in the Complaint, on February 2, 2010, the disputed domain name reverted to a website entitled “Tony Barnhart Show”, featuring a photograph of Tony Barnhart, and other material related to the subject matter of the Complainants' television program. The website also contains “Ads by Google” that are tailored to Internet users interested in college football. The website also contains a heading entitled “Links” which the Complainant says takes the user to other sites owned by the Respondent or affiliated entities, including <jaomadesigns.com>. The Complainant provides evidence that the domains which are linked via that website are registered by the Respondent or by entities with the same contact details as the Respondent.
The following is summarized from the Complaint.
The Complainant claims that Tony Barnhart owns common law trademark rights in his name, due to the substantial commercial goodwill he has achieved through the long use and association of his name with goods and services related to college football. The Complainant refers to past cases under the Policy which have recognized such rights in individuals' names. The Complainant claims that the disputed domain name is confusingly similar to the TONY BARNHART mark. The addition of the word “show” only serves to heighten confusion. Among others, the Complainant refers to Martha Stewart Living Omnimedia, Inc. v. Domain Deals, WIPO Case No. D2007-0289 (noting that “given the fact that one aspect of Complainant's businesses is the nationally syndicated television show ‘Martha,' the use of ‘show' in the Domain Name [<marthastewartshow.com>] is more likely to exacerbate confusion than to avoid it”).
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. In effect, the Complainant claims that the Respondent cannot demonstrate any of the illustrative circumstances of rights or legitimate interests, set out in paragraph 4(c) of the Policy.
The Complainant also says that the Respondent has registered and used the disputed domain name in bad faith, as set out in paragraph 4(b)(iv) of the Policy. Given the fame of the Complainant, the Respondent knew or should have known of its mark. In this case, there can be no serious dispute that the Respondent knew of the Complainant's name and reputation before it registered the disputed domain name. On July 29, 2009, the Complainant publicly announced that it planned to air “The Tony Barnhart Show”. The disputed domain name was registered by the Respondent on that same day. Such conduct has been recognized in past cases as indicia of bad faith. See, e.g., General Electric Company and GE Money Bank v. Crazy Moniker, WIPO Case No. D2007-1195 (finding bad faith where domain name <myearthreward.com> was registered on the same day the complainant announced the mark at issue in the dispute). The Complainant claims that the Respondent derives “pay-per-click” revenue from the links appearing on the website at the disputed domain name. The Complainant also claims that the Respondent has demonstrated a pattern of registering domain names that incorporate third party names and marks.
In August 2009, the Complainant sent a “cease and desist” letter to the Respondent and requested transfer of the disputed domain name. The Respondent replied the same day, stating:
“Domains are on a first come first serve basis. There is no bad intention, and the links that are on the sites, are primaril [sic] linking to outside resources.
That being said, If you wish to acquire the domain, you may make an offer, as we do not mind selling it, notwithstanding that we have done some key work to get the site to the top of Google, and other search engines. Your other alternative is WIPO, by which We would expect to receive appropriate correspondence regarding same.”
The following is summarized from the Response.
The Respondent claims that the Complainant lacks relevant trademark rights. The Respondent e.g. disputes the Complainant's claim of being “Inducted into The College Football Hall of Fame”. The Complainant was instead inducted into the “Football Writers Association of America Hall of Fame”, which the Respondent says is a “major difference”.
The Respondent also takes issue with cases cited by the Complainant. For example, David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO Case No. D2000-1459. The Respondent says that, “while Complainant has had a somewhat impressive career, Complainant personal name has not nearly achieved the level of recognition as the Complainant in the cited case”. The Respondent says that the Complainant has provided no proof to support the designation of the Complainant's name having acquired secondary meaning. “Simply writing, and reporting on issues related to football does not constitute the buying and selling of products and services across state borders.” The Respondent says that the Complainant Tony Barnhart's name is not unique and provides evidence e.g. of “Linked in Profiles” of professionals with the same name.
The Respondent says that “There are 1000s of Journalists, who write, and commentate on athletes, pets, weather, news, games, etc. To suggest that every career journalist who devotes their career to a particular genre should automatically have common law rights to their name - is a far stretch at best, and does not seem to fit within the overall scope and purpose of The Policy.”
The Respondent says that it does have rights or legitimate interests in the disputed domain name. The Respondent says that it is using the disputed domain name to inform the public, and that it has a right to do so under the First Amendment of the United States Constitution.
The Respondent claims that it did not register and use the disputed domain name in bad faith because the Respondent was not aware of the existence of any trademark rights corresponding to “Tony Barnhart” or “The Tony Barnhart Show”.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows.
The first, and more difficult, question is whether the Complainant has demonstrated that it “has rights” in a trademark, for the purpose of paragraph 4(a) of the Policy. The Complainant does not claim that it has a registered mark. Instead, it claims that it has rights in an unregistered mark for TONY BARNHART, arising from the Complainant's (Tony Barnhart's) long use and association of his name with goods and services related to college football. (The Complainant does not however argue that it has a common law mark for THE TONY BARNHART SHOW, which arguably bears a closer degree of similarity with the disputed domain name.)
What is required to demonstrate rights in an unregistered mark is outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”). The consensus of prior panels is relevantly set out under the heading: “1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?”:
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning' includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.
As further noted in the WIPO Overview, the name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights. See, WIPO Overview, paragraph 1.6, and the cases cited therein. A complainant must show that he or she has used that name to such an extent that the relevant public understands it as a mark of origin. In this connection, the panel in Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, indicated that a mark may acquire secondary meaning by long or extensive use. Evidence that a personal name has been used to the extent of acquiring secondary meaning has been found where the complainant:
“either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else's goods or services, or for direct commercial purposes in the marketing of his or her own goods and services.” (See Leonard Asper v. Communication X Inc., WIPO Case No. D2001-0539, and also the cases cited therein.)
The Complainant does not provide much direct evidence of the reputation it claims. Neither does the Complainant provide substantial evidence of the kind illustratively mentioned in paragraph 1.7 of the WIPO Overview. However, on balance, the Panel finds that the Complainant has relevant common law rights, for the following reasons.
Firstly, there appears to be no dispute that the Complainant (Tony Barnhart) is very well-known in the field of college football, and has been well-known in that field for a substantial period of time. The Respondent takes issue (as noted above) with some elements of the claims made by the Complainant in this respect. But, even if accepted, those matters raised do not, to the Panel, paint a generally different picture to that put forward by the Complainant.
Secondly, there is no dispute that the Complainant (Tony Barnhart) has used his name in connection with various commercial offerings. There is also no dispute that the Complainant has used his name in connection with “The Tony Barnhart Show”. As evidenced in the Complaint, the Respondent's own website states that it is “Dedicated to The Tony Barnhart Show” and includes other links relating to that program, as well as more generally to college football.
Thirdly, and related to the second point above, the Panel is in little doubt that the Respondent's registration of the disputed domain name was done to trade on the fame of the Complainant's name. (This is discussed further below in the Panel's discussion of bad faith.) This in itself is evidence that the Complainant's name has value as a marketable commodity, and is well-known.
Fourthly, while the Complainant has provided limited direct evidence to support many of the claims it makes, those claims are plausible and, in the main, not disputed by the Respondent. The Complainant has certified those claims in accordance with the Policy. Taking into account the other points mentioned above, the Panel has therefore given those statements some weight.
Finally, the notoriety of the Complainant Tony Barnhart is easily discovered on the most cursory Internet search. While such evidence would have more preferably been provided by the Complainant, the Panel has conducted such a search by entering the terms “Tony Barnhart” as a search term in “www.google.com”, which provides a plethora of results relating directly to the Complainant.
On balance, the Panel considers that these factors (taken together) sufficiently establish that the Complainant has used the name “Tony Barnhart” in trade or commerce, and that the name has established secondary meaning by being used as a marketable commodity to promote goods or services. The name has also been used to promote “The Tony Barnhart Show” – a commercial cable television service. It may be true, as argued by the Respondent, that the Complainant's name is not unique as a personal name. However that does not, by itself, prevent the name also having sufficient distinctiveness in a trademark sense. The use of the name “Tony Barnhart” is clearly used in this way in “The Tony Barnhart Show”. This is because that name, in that context, calls to mind the “product” with which the Complainant is associated: that is, programs relating to college football.
Such a finding appears to the Panel to be consistent with relevantly similar past cases decided under the Policy. For example, Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, WIPO Case No. D2004-0108 involved somewhat similar facts to those here. In that case, the Complainant sought to establish common law rights in the name of the television host “Tony Snow” (the then host of the program “Weekend Live with Tony Snow”), and the panel also commented on the limited evidence put forward by the then complainant. Nevertheless, the panel noted, among other things, that: “Having provided no documentary evidence, the Complainant is fortunate that the degree of fame of Tony Snow is easily verifiable for instance by entering ‘Tony Snow' as a search term on ‘www.google.com' and the Panel therefore concludes that there is clear, cogent and convincing evidence that common law trademark rights exist in the personal name Tony Snow in the United States.”
For these reasons, the Panel considers that the Complainant has established unregistered rights in the mark TONY BARNHART.
The next issue is whether the disputed domain name is confusingly similar to the Complainant's mark. (It is self-evidently not identical.) The Panel considers that the disputed domain name is confusingly similar to the Complainant's mark. The whole of that mark is incorporated in the disputed domain name. The addition of the word “show” is clearly referable to the Complainant and one of its products, which seeks to potentially increase confusion.
The Panel therefore finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
The Respondent provides little evidence of having rights or legitimate interests in the disputed domain name. The explanation that the Respondent is using the disputed domain name to “inform the public” is unconvincing. Every website provides information of one kind or another. Rather, the nature of the Respondent's website suggests more strongly that the Respondent's primary motivation was to exploit the value of the Complainant's mark. Such a use cannot be legitimate for the purpose of the Policy.
The Respondent's related claims to rights of free speech under the First Amendment of the United States Constitution are similarly unconvincing. It does not appear to the Panel that the Respondent has been primarily motivated to register the disputed domain name for the purpose of exercising a right of free speech. Such arguments have been considered by panels in different contexts: for example, in the context of considering “criticism” websites. See e.g. Justice for Children v. R neetso / Robert W. O'Steen, WIPO Case No. D2004-0175. However, the Respondent in this case is not operating a website of that kind.
The Panel therefore finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
Bad faith may be found where the Respondent registered and used the disputed domain name to take unfair advantage of the Complainant's rights in some way. See e.g. Your Golf Travel Limited v. Hardelot Holidays Limited, WIPO Case No. D2007-1058.
The Panel considers that the disputed domain name was registered and used for the purpose of unfairly exploiting the value of the Complainant's mark. It is self-evident that the Respondent's website relates directly to the Complainant's field of business, as well as providing commercial links to the commercial services of third parties. As evidenced by the Complainant, the registration of the disputed domain name coincided with the announcement that it planned to air “The Tony Barnhart Show”. The timing of the registration therefore also supports a finding that the Respondent was motivated to “cash in” on the Complainant's television program.
The Panel therefore finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tonybarnhartshow.com> be transferred to the Complainant.
James A. Barker
Date: April 12, 2010