WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlas Productions, LLC v. Oneandone Private Registrant / Phil McCarty
Case No. D2011-0519
1. The Parties
Complainant is Atlas Productions of Haddonfield, New Jersey, United States of America, represented by the law firm Loeb & Loeb, LLP, United States of America.
Respondent is Oneandone Private Registrant of Chesterbrook, Pennsylvania, United States of America / Phil McCarty of Gainesville, Florida, United States of America, represented by the law firm Greenberg Traurig, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <atlasshruggedmovie.com> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2011. On March 22, 2011, the Center transmitted by email to 1&1 Internet AG (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On March 24, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 28, 2011 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 28, 2011.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on March 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2011. The Response was filed with the Center on April 19, 2011.
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 9, 2011. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On April 29, 2011, Complainant submitted a Supplemental Filing to the Center. The following Monday, May 2, 2011, the Center acknowledged receipt of the Supplemental Filing and advised Complainant that in accordance with the Center’s practice “the Panel, when duly appointed, will be informed of the Center's receipt of this Supplemental Filing. It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any.” The Panel denied Complainant’s request to accept the Supplemental Filing, stating on May 12, 2011:
“The Panel has reviewed Complainant’s Supplemental Filing. Paragraph 12 of the Rules provides ‘In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.’ Panels have almost universally held that such unsolicited filings should be considered, if at all, only in exceptional circumstances. Some panels have stated that absent exceptional circumstances additional filings should not be allowed even if their content might alter the outcome of the proceeding.
There is nothing exceptional about the circumstances of this proceeding. The Response contains no factual material or argument that Complainant should not reasonably have anticipated, and the proposed Supplemental Filing consists entirely of additional evidence in Complainant’s possession when the Complaint was filed or re argument of contentions advanced in the Complaint. Leave to submit the Supplemental Filing is denied and the Panel will not consider its contents in reaching its decision.
Neither party shall submit any further material absent a specific direction from the Panel.”
4. Factual Background
Atlas Shrugged is a novel by Ayn Rand that was published in 1957. Somewhat popular when first published, over the last half-century it has gained almost a cult following as a paean to the free market system and a warning against any government regulation of business. In any sense of the word this novel is famous.
In the past few years, preparations have been made to make the novel into a movie. These have included widespread pre-release, perhaps even pre-filming, publicity. The forthcoming movie or series of movies has been the subject of widespread publicity in the entertainment and general media. According to the Complaint, production of Atlas Shrugged: Part 1 began in 2010 and the movie was scheduled to open last month.
Complainant asserts that in 1992 it acquired “exclusive rights to produce and distribute a motion picture adaptation of the book [Atlas Shrugged],” which rights included “the exclusive right to use the name ‘Atlas Shrugged’ in connection with the commercial marketing and distribution of the movie.” Complainant has actively promoted this movie project since 2009 or earlier.
Respondent, among other things a writer, screen writer, and director, registered the disputed domain name in 2004. At one time it resolved to a standard registrar’s web page, but upon receipt of the Complaint Respondent deleted any content from the web page. When the Panel tried to access the disputed domain name he received the following error message: “Error 403 Forbidden.”
5. Parties’ Contentions
Complainant contends as follows:
1. Complainant acquired the exclusive movie rights to Atlas Shrugged by assignment in 1992. Under both Policy precedent and United States trademark law, “’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.” DreamWorks L.L.C. v. Grantics, WIPO Case No. D2000-1269 (citations omitted). There is no doubt that Atlas Shrugged has built the required secondary meaning. By virtue of its pre- and post-release publicity, Complainant also holds common law rights in Atlas Shrugged. The disputed domain name differs from Complainant’s mark only by addition of the word “movie”, which under Policy precedent does not obviate confusing similarity.
2. Respondent has not been licensed to use the Atlas Shrugged mark and has never been known by that designation. Seven years of non-use is not legitimate and does not confer any right in the disputed domain name. The inclusion of a parked page at the disputed domain name is similarly not legitimate.
3. There are four bases for finding bad faith in registration and use: (a) non-use since registration of a famous mark that was well known to Respondent; (ii) use for a pay-per-click page; (iii) depriving Complainant of the right to use its mark in a domain name (see Policy, paragraph 4(a)(ii)); and (iv) “Respondent’s passive holding of a domain name incorporating Complainant’s trademarks causes dilution of the distinctive quality of the famous ATLAS SHRUGGED mark by lessening the capacity of Complainant to identify and distinguish its business activities by means via the Internet, particularly in the .com gTLD.”
Though acknowledging the renown of the novel Atlas Shrugged, Respondent asserts that Complainant has failed to establish each Policy element:
1. Complainant has provided no evidence of its right (by assignment or otherwise) to enforce in a Policy proceeding the Atlas Shrugged mark. As it has not provided a copy of the purported assignment, the Panel cannot determine the scope of Complainant’s rights. Citing the registry of Delaware, the state of Complainant’s corporate charter, which indicates Complainant was formed in August 2010, “To summarize, Complainant’s offer of proof in respect of this ‘event’ is comprised solely of an unsupported factual statement that Complainant obtained its rights via an assignment document that Complainant fails to provide to the panel but which Complainant says it was a party to eighteen years prior to Complainant’s coming into existence.” As for common law rights, the only evidence cited for publicity prior to registration of the disputed domain name is an article published on the Internet in a trade website, of unknown audience and readership. Promotion in the past few years, so far as demonstrated in the Complaint, is modest by motion picture standards.
2. “Respondent holds an English literature degree and also studied screenwriting at the University of Southern California’s School of Cinematic Arts. In addition to Respondent’s other creative pursuits, Respondent is an active writer, screen writer and director. Respondent is particularly interested in Atlas Shrugged. Respondent plans on using the <atlasshruggedmovie.com> domain name to pursue his hobby of analyzing and parodying movies and commercials, if a movie adaptation of Atlas Shrugged is released.“ These are legitimate potential uses of the disputed domain name.
3. The following demonstrate a lack of bad faith at the date of registration and thereafter:
(a) Complainant did not exist at the date the disputed domain name was registered, so registration predates any of Complainant’s trademark rights.
(b) Respondent has no record of registering domain names in bad faith, has not stockpiled multiple variations of the <atlasshruggedmovie.com> domain name to prevent Complainant from obtaining a suitable domain name to advertise its movie, or otherwise sought to extract financial gain from the disputed domain name.
(c) Complainant took no action against Respondent for six years.
(d) Complainant has not been prevented from registering a suitable domain name to promote its movie; in fact Complainant has registered and is using <atlasshruggedpart1.com>, a domain incorporating its current movie’s title exactly.
(e) Respondent did not offer to sell the disputed domain name to Complainant.
6. Discussion and Findings
A. Identical or Confusingly Similar.
Respondent raises one serious issue under paragraph 4(a)(i) of the Policy. Complainant asserts that it acquired rights (including trademark rights) to “Atlas Shrugged”, at least in respect to movies, by means of an assignment that took place in 1992. As Respondent points out there is no record in the USPTO that Complainant holds any such rights, and no evidence at all1 that Complainant has been authorized by the novel’s author or anyone else to enforce trademark rights in the novel’s name. In civil litigation in the United States all that is required in a pleading is a short and concise statement of the matter, with proof to come later in the case. The Policy and Rules are clear, however, that in a UDRP proceeding proof of each Policy element is required with the Complaint. Policy, paragraph 4; Rules, paragraph 3(b)(xv)(“[The complaint shall] . . . [a]nnex any documentary or other evidence, including a copy of the Policy applicable to the domain name(s) in dispute and any trademark or service mark registration upon which the complaint relies.”) (emphasis added). Policy precedent is equally clear. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.6; Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004-0755 (“The Policy requires the Complainant to prove each of the three [Policy] elements” (emphasis in original)).
Panelists’ inferring factual or legal conclusions from complainants’ unsupported allegations coupled with no response “are occasionally necessary (and appropriate), because matters involving a respondent’s motive, intent, purpose, and other subjective factors determinative under Paragraphs 4(a)(ii) and 4(a)(iii) will not always be susceptible of direct proof,” Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383. That grace does not extend to matters within a party’s control. Evidence, not allegations, is necessary. And nothing is more fundamental to a Policy proceeding – or more within a complainant’s control – than its right to enforce the trademark upon which it bases its case. If Complainant did acquire trademark rights by contract, documentary or other evidence of such rights was surely available to it. Absence of such evidence raises real doubt about Complainant’s entitlement to bring this proceeding.
Complainant has shown that it has expended considerable funds recently to promote its forthcoming movie, and on this basis might be said to have proven common law rights in the movie’s title. The absence of direct proof remains troubling, however.2 Because the Complaint fails under another Policy head, however, the Panel need not decide this issue in this proceeding.
B. Rights or Legitimate Interests.
The Policy’s requirements are conjunctive, and failure to prove any of them results in denial of the Complaint. Even assuming that Complainant is the proper party to prosecute this action and the novel’s undeniable renown, Complainant has not proven that Respondent registered the disputed domain name in bad faith, so the Panel need not address this Policy requirement.
C. Registered and Used in Bad Faith.
Registration and use of the disputed domain name must each be proven. Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413. In a Policy proceeding proving the former normally requires actual knowledge of the mark and targeting the mark’s owner – using the owner’s mark in a manner personally to profit from the fame attendant upon that mark. The Institute of Electrical and Electronics Engineers, Incorporated v. IARAS / Administration IARAS, WIPO Case No. DAM2010-0001. Respondent’s knowledge of the novel may be inferred from its longtime renown, a fact that Respondent concedes. Similarly may it be inferred that someone held trademark rights in the novel, whether or not the mark was registered. It need not be knowledge of the precise owner of the mark; Respondent may be presumed to know that someone held it. Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc., WIPO Case No. D2009-1243. But there is inadequate evidence of targeting in this proceeding.
Respondent registered the disputed domain name in December 2004, more than five years before Complainant began actively to promote its movie. Complainant’s only pre-registration evidence of a movie (or movies) version of Atlas Shrugged is a single Internet article, published in 2003, that a movie might someday be made of this novel. There is no evidence of the extent of this article’s circulation3 or any indication that it added more than a tiny bit of substance to the possibility in 2003 that, after almost half a century, this famous novel, like many other famous novels, might someday become the subject and title of a movie. It is not that Respondent was unaware of the possibility of a movie’s being made, but that in 2004 this was just that – a possibility, not something concrete enough for Respondent to target.
Occasionally a respondent’s conduct subsequent to its registration of a domain name may allow an inference of registration in bad faith. As Complainant argues, that conduct may be no action at all. The “warehousing” doctrine of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, may permit a panel to infer that the respondent registered a domain name that incorporates a famous mark eventually to take advantage of the mark’s or mark owner’s renown. As held in Telstra, when “it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name,” registration in bad faith may be inferred. But in this case Respondent has advanced and provided contemporaneous evidence to support an alternate reason for registration that in this Panel’s opinion is equally likely (at the least) to that of eventual improper exploitation.4 Respondent has made a number of parody films spoofing well-known commercials or movies, and has written essays on well-known movies. He might well have had a parody of Atlas Shrugged in mind.5
Several fact differences distinguish this case from DreamWorks L.L.C. v. Grantics, WIPO Case No. D2000-1269, cited in the Complaint. The basic factual pattern is similar: complainant held exclusive rights to make a motion picture of a well-known novel6 and respondent registered a domain name that incorporated the critical portion of the novel’s name. But in Grantics the respondent undertook the registration after the publicity for the movie was well underway; the movie was no longer just a theoretical possibility. More importantly, in Grantics the respondent offered the disputed domain name for sale to the complainant, and had registered many other domain names containing the names of upcoming movies. These actions brought that respondent squarely within two of the examples of evidence of bad faith in paragraph 4(b) of the Policy. Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000, also relied on by Complainant, is distinguishable for many of the same reasons.
The record in this case contains none of the usual indicia of cybersquatting. Respondent, so far as the evidence shows and the Panel could determine, has never been a party to a Policy proceeding. There is no allegation of Respondent’s collecting multiple domain names and later misusing them.7 Respondent has not attempted to sell the disputed domain name to Complainant, the author, the author’s estate, or anyone else. The parking page to which the disputed domain name once resolved promoted the registrar’s services, with no indication of links to Complainant’s competitors. In this case Respondent’s non-use does not supply any ground for inferring bad faith in registration.
Complainant bears the burden of proof on each Policy element. With no proof of targeting and a documented legitimate basis for registration that is at least equally plausible with improper exploitation, that burden has not been carried.
One further observation is in order. Respondent most recently renewed its registration of the disputed domain name in December 2010, well after publicity about a forthcoming movie had become widespread. Given Respondent’s undertaking under paragraph 2 of the Policy that “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; . . . . It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights,” under this Panel’s holding in Eastman Sporto Group LLC v Jim & Kenny, WIPO Case No. D2009-1688, renewal might be held to be the date upon which bad faith is determined, and registration possibly found to be in bad faith because the likelihood of exploitation was at that date far greater than in 2004. Central to the Sporto holding, however, was the fact that the respondent had intentionally changed the content and its use of the domain name at issue from promotion of businesses unrelated to complainant or its marks to classic cybersquatting shortly before renewal. Here Respondent’s use (or, rather, non-use) has remained unchanged beyond its post-Complaint removal of any content, despite the fact that the potential commercial value of the domain name likely increased markedly by the announcement that a movie was in the works. These circumstances do not argue for an extension of the holding in Sporto.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: May 18, 2011
1 As many panels have stated, an allegation of a factual matter required to be proven under paragraph 4(a) of the Policy, is not evidence, even when that allegation is not denied. Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172. Here, as noted, Respondent actively contests Complainant’s right to bring this proceeding.
2 This not merely a technical or mechanical pleading issue. Not only is ownership or right to enforce the mark a predicate for a Policy proceeding (Policy, paragraph 4(a)(i)), when the complainant is not the owner of a registered mark but asserts rights obtained by contract the scope of the rights may be at issue. There may for example be geographic or field of use limitations placed upon the assignee, and in many instances a right to use a mark does not include a right to enforce it. Any such limitations may impact the assignee’s rights in a Policy proceeding.
3 This article appears to have been posted on an Internet website called “Box Office Mojo.” Nothing suggests widespread distribution.
4 For this reason Respondent’s non-use of the disputed domain name similarly does not constitute use in bad faith.
5 There is much to spoof in Atlas Shrugged the novel.
6 In that case, The Legend of Bagger Vance.
7 These two facts suffice to dispense with Complainant’s contention that Respondent falls within the example of evidence of bad faith in paragraph 4(b)(ii)of the Policy. That clause requires a “pattern” of depriving mark owners of the opportunity to use their marks in domain names. For this reason Paramount Pictures Corporation v. Pete Gilchrist, WIPO Case No. D2007-0128, cited by Complainant, is factually distinguishable, for there the respondent had registered several domains incorporating the names of movies.