WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kemosabe Entertainment, LLC v. Mike Nazzaro
Case No. D2012-1893
1. The Parties
Complainant is Kemosabe Entertainment, LLC of New York, New York, United States of America (“US”), represented by Carroll, Guido & Groffman, US.
Respondent is Mike Nazzaro of New York, New York, US, represented by Davis Shapiro Lewit & Hayes, LLP, US.
2. The Domain Name and Registrar
The disputed domain name <kemosaberecords.com> (hereinafter the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2012. That same day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 25, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On October 2, 2012, the Center sent an email communication to Complainant inviting it to amend the Complaint so that it would be directed only to <kemosaberecords.com> as opposed to both that domain name and <kemosabeentertainment.us> as originally filed. Complainant filed an amended Complaint on October 4, 2012.
The Center verified that the Complaint together with the amended 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 October 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2012. The Response was filed with the Center on October 26, 2012.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 5, 2012. 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.
On October 25, 2012 (the due date for the Response), the Center received an email communication from Complainant indicating that Respondent requested an extension of time to file its Response and requesting verification of the process for handling such requests. The Center noted in a responsive email communication that it never received any request for an extension of time from Respondent. The record includes an email from Respondent’s representative indicating the date October 26, 2012 and the time 04:16:38, attaching the Response, although Respondent’s representative maintained in an email communication of October 29, 2012 that he sent the Response on October 25. The Center acknowledged the Response as having been filed on October 26, 2012. On the facts here, the Panel is willing to accept the Response as having been timely filed.
4. Factual Background
Complainant has filed four Intent to Use (“ITU”) trademark applications with the United States Patent and Trademark Office (USPTO) under 15 U.S.C. §1051(b) to register KEMOSABE for various intended uses. Two of these applications were filed on March 11, 2010 for intended uses that include: (1) sound recordings; video recordings; and downloadable webcasts, podcasts, video recordings and ring tones for mobile phones featuring music (Serial Number 77957028); and (2) sheet music, books and magazines in the fields of music, entertainment, art and/or culture”, and various types of stationary (Serial Number 77957048). Two other applications were filed on March 13, 2012 that include intended uses for: (1) entertainment services in the nature of the production of motion pictures, television programs, video recordings and audio recordings (Serial Number 85568079); and (2) streaming of audio material, namely, musical recordings, on the Internet (Serial Number 85568052).
Respondent registered the Domain Name on November 8, 2011.
5. Parties’ Contentions
Since 2009, Complainant has been making a bona fide use of “Kemosabe” in connection with the operation of its recorded music label and it has four ITU applications (described above). The Domain Name is confusingly similar to the KEMOSABE mark insofar as it is identical to Complainant’s recorded music label. Aside from blocking Complainant from using its business name, Respondent provides links to unrelated third party websites and generates advertising revenue doing so and using the Domain Name. Respondent offers no bona fide goods or services, or serves any legitimate business purpose.
Respondent’s website does not indicate any connection to a bona fide offering of goods or services, or any business purpose beyond generating Internet advertising revenue. It has no relation to music, recorded music or the music industry.
Respondent registered the Domain Name only after first working for Sony Music Entertainment (along with Complainant, a co-owner of Kemosabe Records). Respondent has demanded USD 100,000 from Complainant to transfer the Domain Name. This sum greatly exceeds Respondent’s out-of pocket costs and indicates that the primary purpose of Respondent’s registration was to sell the Domain Name to Complainant. Respondent has not indicated any legitimate business function for using the Domain Name. And Respondent has not justified trading off of Complainant’s valuable goodwill, diverting users to Respondent’s website, further creating a likelihood of confusion with Complainant’s valid trademark and casting doubt as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Complainant has no rights in “Kemosabe”, thus the Complaint should be denied. The Complaint is based on four ITU trademark applications filed with the USPTO. In filing these applications, Complainant filed with the USPTO (and made of record) four verified statements that it has a bona fide intent to use the mark in commerce, which demonstrates Complainant has never used KEMOSABE in commerce. Such use is necessary to acquire rights in it under the Lanham Act or at common law. Status reports from the USPTO demonstrate that Complainant has not used KEMOSABE. Complainant had not submitted any proof of bona fide use or that KEMOSABE has acquired secondary meaning. Thus, Complainant lacks common law rights.
Complainant’s remarks concerning the content of the website with which Respondent is using the Domain Name are irrelevant to proving confusing similarity. The word “Kemosabe” was made famous in an American radio and television program as a nickname used by a character name Tonto referring to the Lone Ranger. “Kemosabe” is not original to Complainant as a company name. A search using the Google search engine yields 400,000 results, none of which refer to Complainant. The word “records” that is added to “Kemosabe” differs from Complainant’s name Kemosabe Entertainment and is enough to distinguish “Kemosabe” from the Domain Name given the many uses of the term “Kemosabe.” Also, Complainant has not put any evidence in the record regarding the name of its recorded music label. That label was not formed until August 6, 2012, well after Respondent registered the Domain Name and only two months before commencing this proceeding.
Respondent’s grandfather’s best friend was the actor Jay Silverheels who played Tonto in The Lone Ranger. After Respondent’s grandfather’s death, Respondent started a company in his grandfather’s honor and used “Kemosabe” as part of the name of the business he would form. Since 2005, Respondent has been taking steps towards opening such a business and has been purchasing domain names with the name “Kemosabe.” Without rights in KEMOSABE Complainant cannot argue Respondent is preventing it from using it with its business. There is no evidence of monetary gain.
The Domain Name was not registered or used in bad faith. Respondent has been planning to open a business using “Kemosabe” in honor of his grandfather since 2005 even before Complainant formed its business in January 2010. Further, Respondent worked at Sony Music Entertainment from 2002 to 2006 and it was not until long after Respondent left that he heard of Complainant’s founder. Respondent did not register the Domain Name to sell it and denies he demanded USD 100,000 for it. Respondent is not trading off of good will in KEMOSABE because there is no evidence of good will.
It is Complainant that took Respondent’s business name after hearing of Respondent’s plans through people at Sony Music Entertainment and, thus, it would be proper for the Panel to find reverse domain name hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
Complainant has failed to get out of the starting gate. Under paragraph 4(a)(i) of the Policy, Complainant must prove that the Domain Name is identical or confusingly similar “to a trademark or service mark in which Complainant has rights.” With regard to its rights in KEMOSABE, Complainant alleges in its submission that it has been: (1) “making a bona fide use of the Kemosabe name before the filing of its March 11, 2010, 1B trademark application”; (2) “using the Kemosabe Trademark to further its legitimate business for several years prior to this filing”; and (3) “using the Kemosabe name in connection with the operation of its recorded music label of the same name since 2009.” Respondent has vigorously disputed Complainant’s rights in KEMOSABE including the lack of evidence in the record supporting any rights. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), at paragraph 1.7 to prove common law rights: “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition…. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.” The Panel agrees with Respondent, Complainant has not shown any rights to KEMOSABE. Complainant has failed to provide any evidence of use whatsoever let alone any evidence to support its conclusory allegations. Likewise Complainant has failed to provide evidence to establish common law rights in KEMOSABE.
Complainant mentions the four ITU applications it has filed with the USPTO for various intended uses of KEMOSABE, but it has not asserted that the filing of those applications gives rise to trademark rights. “According to McCarthy on Trademarks, it is “fundamental to United States trademark registration practice that use must precede registration. Without use, there is no ‘trademark’ to be recorded on the Federal Register of marks. The ‘use’ necessary is use in the ‘ordinary course of trade, not just token use.’" PRGRS, Inc. v. BPB Prumerica Travel, WIPO Case No. D2002-0076. The most current USPTO records the Panel accessed online for Complainant’s ITU applications Serial Numbers 85568079 and 85568052 state as their status: “Notice of Allowance (NOA) sent (issued) to the applicant. Applicant must file a Statement of Use or Extension Request within six months of the NOA issuance date.” The most current USPTO record the Panel accessed online for Complainant’s ITU application Serial Number 77957028 states as its status: “A third request for extension of time to file a Statement of Use has been granted.” And the most current USPTO record the Panel accessed online for Complainant’s ITU application Serial Number 77957048 states as its status: “A fourth request for extension of time to file a Statement of Use has been granted.” Complainant has not really argued, let alone provided any evidence here to support a finding that the filing of, or notices of allowance for, its ITU applications give rise to trademark rights. See PRGRS, Inc. v. BPB Prumerica Travel, WIPO Case No. D2002-0076 (denying complaint involving a pending ITU application and no evidence of use in commerce); see also True North Media, LLC and Good Universe Media, LLC v. 1soft Corporation, Greg Thorne, WIPO Case No. D2012-1457 (denying complaint involving a pending ITU application and no evidence of common law rights); Continental Casualty Company v. Andrew Krause / Domains by Proxy, Inc., WIPO Case No. D2008-0672 (denying complaint involving a pending ITU application and no evidence of use in commerce).
Furthermore, despite Complainant’s receipt of notices of allowance (“NOA”) for the four ITU applications, having failed to provide acceptable proof of use to the USPTO, these notices do not constitute trademark registrations. See the USPTO’s website at http://www.uspto.gov/trademarks/process/tm_sec1btimeline.jsp (“The NOA is not a registration, but indicates that the mark will be allowed to register after an acceptable Statement of Use (SOU) is filed.”); see also Donald J. Trump v. eStore of New York, WIPO Case No. D2007-0119 (“In other words, an applicant for such a mark [an ITU applicant] not only lacks a federal registration but also represents (until it has filed a statement of use or an amendment to allege use with the United States Patent and Trademark Office) that it has not used the mark that is the subject of the application. ‘[T]he application merely establish[es] that, on the date that [it was] filed,… applicant intended to use the mark as a trademark. The [application] do[es] not, standing alone, evidence use of a mark.’ Viva Group, Inc. v. Peter Best, Jr., WIPO Case No. D2006-1151. See also Friends of Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D2002-0451 (denying complaint where “[n]o document showing actual use of the alleged mark is in the record”); and PC Mall, Inc. v. Pygmy Computer Systems, Inc, WIPO Case No. D2004-0437 (“Complainant may not rely on the constructive use date of its [intent-to-use] application”).)
Under paragraph 4(a)(i) of the Policy, Complainant must prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Because Complainant has not carried its burden on this element, the Panel need not decide whether Complainant has met its burden on the other elements.
B. Reverse Domain Name Hijacking
Respondent alleges that Complainant is liable for reverse domain name hijacking because Complainant took Respondent’s business name after hearing of Respondent’s plans through people at Sony Music Entertainment.
Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, Respondent must typically show that Complainant knew of Respondent’s unassailable rights or legitimate interests in the Domain Name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. In any event, based on the available record, the Panel sees insufficient basis on balance to conclude that the Complaint was brought in bad faith and accordingly declines to make a finding here of reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied.
Harrie R. Samaras
Dated: November 19, 2012