WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United Feature Syndicate, Inc. v. All Business Matters, Inc. (aka All Business Matters.com) and Dave Evans
Case No. D2000-1199
1. The Parties
The Complainant is United Feature Syndicate, Inc., a corporation organized in the State of New York, United States of America (USA), with place of business in New York, New York, USA.
The Respondent is All Business Matters, Inc. (aka All Business Matters.com) and Dave Evans, with address in Lynchburg, Virginia, USA.
2. The Domain Name and Registrar
The disputed domain names are "farewelltocharliebrown.com" and "goodbyecharliebrown.com".
The registrar of the disputed domain names is Register.com, with business address in New York, New York, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a complaint by e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on September 11, 2000, and by courier mail received by WIPO on September 13, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On September 21, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Register.com (with the Registrar’s Response received by WIPO on September 22, 2000). On September 28, 2000, WIPO completed its formal filing compliance requirements checklist.
(b) On September 28, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.
(c) Respondent’s response was received by WIPO via e-mail on October 13, 2000, and via courier mail on October 16, 2000. Respondent also transmitted the response to Complainant.
(d) On October 27, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On October 30, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(e) On November 1, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by November 14, 2000. On November 1, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
(f) The file transmitted to the Panel by WIPO included, in addition to the complaint, a supplemental filing by Complainant in the form of a Complainant’s Response to Respondent’s Reply Brief, received via e-mail by WIPO on October 20, 2000 and by courier mail on October 25, 2000.
(g) The file transmitted to the Panel by WIPO included, in addition to the response, a supplemental filing by Respondent in the form of Respondent’s Response to Complainant’s Response, received via e-mail by WIPO on October 23, 2000.
(h) Complainant and Respondent were each advised by WIPO that acceptance of supplemental filings would be in the discretion of the Panel (following its appointment).
The Panel has not received any additional requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant has registered the word and design trademark, "Charlie Brown", on the Principal Register of the United States Patent and Trademark Office (USPTO), reg. no. 732,166, dated May 29, 1962, covering "comic drawings" (U.S. class 38). Said mark consists of the drawing of a cartoon character placed beneath the heading "PEANUTS" and above the caption "CHARLIE BROWN". Complainant has registered the word trademark "WHAT ARE YOU DOING TODAY, CHARLIE BROWN?" on the Principal Register of the USPTO, reg. no. 1,807,251, dated November 30, 1993, covering "computer software calendars" (as further specified) (International Class 9). Complainant has registered the word trademark "CHARLIE BROWN & FRIENDS" on the Principal Register of the USPTO, reg. no. 1,888,712, dated April 11, 1995, covering "chocolate bars". Complainant has registered the word service mark "YOU’RE A GOOD MAN, CHARLIE BROWN?" on the Principal Register of the USPTO, reg. no. 1,807,251, dated November 30, 1993, covering "entertainment services in the nature of a musical play" (International Class 41). Complainant has registered the word trademark "YOU"RE A GOOD MAN, CHARLIE BROWN" on the Principal Register of the USPTO, reg. no. 2,364,233 dated July 4, 2000, covering "clothing for men, women and children" (as further specified)(International Class 25). Complaint, para. 12 and Annexes 4-8.
Complainant maintains numerous trademark registrations for the word mark "Charlie Brown" in countries other than the United States, covering a broad range of goods. Countries of registration include Austria, Denmark (word, and word and design), Hong Kong, Italy, South Korea, New Zealand, South Africa, Spain, Japan, Mexico ("Charlie Brown & Friends"), Australia (word and design), Benelux (word and design), Sweden (word and design) and Vietnam. Complaint, para. 12 and Annexes 9-22.
Complainant has used the "Charlie Brown" trademark and service mark in commerce in connection with the marketing and sale, inter alia, of comic strips, clothing and dishware (id.).
Complainant has registered the domain name "charliebrown.com", and uses it to direct Internet users to a website identified on its home page as "snoopy.com" (Complaint, para. 12, and Panel visit of November 13, 2000).
According to the registrar’s verification response to WIPO, dated September 21, 2000, "Dave Evans of All Business Matters.com" is the listed registrant of the domain names "farewelltocharliebrown.com" and "goodbyecharliebrown.com". According to WHOIS database records furnished by the registrar, the records for the disputed domain names each were created on December 15, 1999, and were last updated on June 2, 2000.
As of March 13, 2000, the disputed domain name "goodbyecharliebrown.com" was offered for sale on the GreatDomains.com website for an asking price of "make offer" (Complaint, Annex 26). The offer included this notation: "Collectors, comic book and comic strip fans, tribute to Charles Schulz. 50 years of memories packed into one name. Millions of fans can relate. Sell official merchandise or antiques here."
As of September 7, 2000, the disputed domain name "goodbyecharliebrown.com" was offered for sale on the GreatDomains.com website for an asking price of $74,700. The following notation accompanied the offer "Offer made but rejected. Now willing to sell for same. Name, probably for a campaign, comes with caveat: UFS may sue for rights. Buyer assumes risks. Make offer." (Id., Annex 28)
As of September 7, 2000, the disputed domain name "farewelltocharliebrown.com" was offered for sale on the GreatDomains.com website for an asking price of "make offer". The following notation followed the offer "Name comes with this warning: United Features Syndicate may sue over rights. Buyer assumes risks." (Id.)
As of September 7, 2000, the disputed domain names "farewelltocharliebrown.com" and "goodbyecharliebrown.com" were offered for sale on the "moonlight web designs" website without a stated asking price. The disputed domain names were listed in the "Retail Names" category (Id., Annex 28).
On March 14, 2000, Complainant sent by e-mail and certified mail a cease and desist and transfer demand to Respondent in regard to the "goodbyecharliebrown.com" domain name (e-mail from Christina Smith to Dave Evans, id., Annexes 25 & 27).
On March 14, 2000, Respondent replied to Complainant by e-mail stating, inter alia:
"As you can imagine, my first reaction is one of bewilderment and disbelief that United Feature Syndicate, Inc. would come after me, especially since I asked them if they wanted to talk about buying the name in December. … We checked with the US Patent and Trademarks Office and found no such registered use of the name GoodbyCharlieBrown.com or Goodbye Charlie Brown in any form."
Respondent advised that it had been in the process of donating the name to charity for an auction, and that Respondent expected this to result in "substantial gift tax relief", and continued:
Your client’s cost to attack a small businessman and the negative PR could be more costly and embarrassing than making a settlement quickly, especially in light of attempts to contact your client earlier about the name and an ongoing attempt to give the name to a charitable cause, one that Mr. Schulz believed in so much. In respect to your request that the name be removed from sale at GreatDomains.com, it has been removed. In respect to transferring the name to you or UFS, that matter can be resolved. We have certain expenses and lost opportunities to consider." (E-mail from Dave Evans to Christina Smith)
In subsequent correspondence between Complainant’s and Respondent’s counsel, Complainant first offered to pay Respondent its cost of registration of $70.00 for the disputed domain name "goodbyecharliebrown.com" (letter from Chistina Smith to James Richards of April 6, 2000), which offer was rejected by Respondent through its counsel (letter from James Richards to Christina Smith, dated April 13, 2000). Respondent through its counsel offered to sell the disputed domain name "goodbyecharliebrown.com" to Complainant for $75,000 (id.), which offer was rejected by Complainant, which counter-offered with the sum of $300 (letter from Christina Smith to James Richards, dated May 9, 2000). Respondent offered to sell the name for $74,700, or to stage a public auction in which Complainant could act as a bidder. Respondent’s counsel added: "…the use of any threats of litigation in that process will result in a withdrawal of the name from open bidding" (letter from James Richards to Christina Smith, dated July 12, 2000).
Respondent asserts in its response that it registered the disputed domain names with the "full intent of using the names to offer tribute to a then retiring MR. CHARLES SCHULZ". Respondent states;
"we felt that someone, and perhaps someone other than us, but certainly someone, should pay tribute to him and his legacy. It was with that effort in mind, All Business Matters, Inc. purchased the names in December 1999. We offered the names to UFS with no reply, so we preceded to explore options to get recognition for the potential site that could be built up with an end goal of writing a book about the late author. During that time, we offered the name for sale on several bidding sites to garner attention and reader comments". (Response, sec. I)
Other than statements in the response, there is no evidence on the record of this proceeding of any use or demonstrable preparations for use of the disputed domain names, other than the offers for sale.
The Service Agreement in effect between Respondents and Register.com subjects Respondents to Register.com’s dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).
5. Parties’ Contentions
Complainant states in its own words:
"V. Factual and Legal Grounds
"12. This Complaint is based on the following grounds:
"(a) Complainant owns all right, title and interest in trade/service marks to which the Domain Names are either identical or confusingly similar.
Complainant is the owner of at least fifty-six (56) trade/service mark registrations incorporating the phrase ‘CHARLIE BROWN’ in at least 18 countries around the world for a wide range of goods and services. These goods and services covered by those registrations include at least those falling within International Classes 2, 3, 5, 6, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 28, 29, 30, 31, 32, 33, 35, 38, 41 and 42.
The following are a representative sample of Complainant’s worldwide trade/service mark registrations for the CHARLIE BROWN mark.
[see summary of trademark and service mark registration data, Factual Background, supra.]
As a result of its widespread international use and registration, as evidenced by the above sample of registrations, the CHARLIE BROWN mark has become well-known and enjoys a strong reputation. In addition, United Feature Syndicate, Inc. dba United Media, owns the registrations for <charliebrown.com> and other related domain names.
"(b) The Domain Names <goodbyecharliebrown.com> and <farewelltocharliebrown.com> are identical and confusingly similar to Complainant’s trade/service marks because ‘CHARLIE BROWN’ is the primary component of each of these marks and each of the Domain Names.
"(c) Respondents have no rights or legitimate interests in the Domain Names.
i. No evidence indicates that Respondents have, at any time, used or made demonstrable preparations to use, the Domain Names or any name corresponding to the Domain Names in connection with a bona fide offering of goods or services;
ii. No evidence indicates that Respondents have been known, commonly or otherwise, by the Domain Names or any name corresponding to the Domain Names;
iii. No evidence indicates that Respondents have acquired any legitimate rights whatsoever (including trade/service mark rights) in the Domain Names or any name corresponding to the Domain Names; and
iv. No evidence indicates that Respondents have made any legitimate non-commercial or fair use of the Domain Names.
v. No evidence indicates that Respondents have made use of the Domain Names, apart from offering to sell such names.
"(d) Respondents registered the Domain Names in bad faith:
vi. Respondents registered the Domain Names on December 15, 1999 – just one day after Charles Schulz, creator of the Peanuts comic strip and the character CHARLIE BROWN, announced his retirement and his continuing treatment for colon cancer. Mr. Schulz’s letter announcing this to his fans and evidence of the overwhelming response by the U.S. and international press are attached as Annex [hereto].
vii. Furthermore, Respondent Dave Evans was well aware of the value of the Peanuts comic strip and, accordingly, the value of its CHARLIE BROWN and related trade/service marks and its use within a domain name. Dave Evans admits that he offered to sell <goodbyecharliebrown.com> to UFS in December 1999. A copy of his e-mail correspondence with UFS’s counsel is provided as Annex [hereto]. Additionally, Dave Evans placed <goodbyecharliebrown.com> for sale on the online auction site GreatDomains.com with the following description:
Collectors, comic book and comic strip fans, tribute to Charles Schulz. 50 years of memories all packed into this name. Millions of fans can relate. Sell official merchandise or antiques here.
See Annex [hereto]. His description clearly reflects his understanding of the value and goodwill associated with Charles Schulz’s character CHARLIE BROWN and its corresponding trade/service marks. Additionally, Dave Evans reflected his understanding of the value of the CHARLIE BROWN and related trade/service marks through his admission that he attempted to gain a ‘substantial gift tax relief’ by transferring <goodbyecharliebrown.com> to a charitable organization for it to sell. See Annex [hereto].
viii. Although Dave Evans stated that he was ‘in the process of giving the name’ to a charitable organization (see Annex [hereto]), the <goodbyecharliebrown.com> was for sale at GreatDomains.com only the day before said statement. See Annex [hereto].
ix. Complainant United Feature Syndicate, Inc., through a letter from its counsel, provided explicit written notice to Respondents that (a) Complainant has exclusive rights in the CHARLIE BROWN trade/service mark; (b) Respondent’s registration, use and attempted sale of the Domain Names is likely to cause confusion as to source or sponsorship of the mark and to dilute the distinctiveness of such mark; and (c) Respondent’s registration, use and attempted sale of the Domain Names is in violation of United States federal law. A copy of this letter is attached as Annex [hereto]. In response to the foregoing, Dave Evans removed the domain names from GreatDomains.com. As of September 7, 2000, however, Dave Evans is offering the Domain Names for sale on at least two web sites: <http://www.GreatDomains.com> and <http://www.moonlightwebdesigns.com>. See Annex [hereto]. Dave Evans has asked for $74,700 for <goodbyecharliebrown.com>. See Annex [hereto].
x. Furthermore, Dave Evans, through his counsel, has made successive offers to United Feature Syndicate, Inc. of $75,000 and then $74,700 for sale of <goodbyecharliebrown.com>. Correspondence from Dave Evans’ counsel to counsel for UFS is provided as Annex [hereto].
xi. The above evidence strongly indicates that Respondents registered the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant United Feature Syndicate, Inc. or trading on the goodwill associated with the CHARLIE BROWN and related trade/service marks, for valuable consideration in excess of the Respondents’ out-of-pocket costs directly related the registration." (Complaint)
Complainant requests that the Panel ask the registrar to transfer the domain names "farewelltocharliebrown.com" and "goodbyecharliebrown.com" from Respondent to it (id., para. 13).
Respondent states in its own words:
"I. Facts as Known by the Respondent to Date:
All Business Matters, Inc. registered the names GoodbyeCharlieBrown.com and FarewelltoCharlieBrown.com on December 15, 1999 with the full intent of using the names to offer tribute to a then retiring MR. CHARLES SCHULZ. Subsequently, Mr. Schulz passed away and the urge to offer tribute intensified so that we began to explore the options of how to make a meaningful tribute to MR. SCHULZ. Because MR. SCHULZ was the author of PEANUTS and THE PEANUTS GANG and the many characters portrayed in the comics appearing worldwide, we felt that someone, and perhaps someone other than us, but certainly someone, should pay tribute to him and his legacy. It was with that effort in mind, All Business Matters, Inc. purchased the names in December 1999. We offered the names to UFS with no reply, so we preceded to explore options to get recognition for the potential site that could be built with an end goal of writing a book about the late author. During that time, we offered the name for sale on several bidding sites to garner attention and reader comments. Over the last several months we have accumulated many stories in connection with MR. SCHULZ and his efforts with Veterans, with children and many correspondences that ordinary people have had with him over the years. Ideas put forth by those responding include offering an online chat for people who knew the author, to create an online rolling book that picks up tidbits about the author with his many years of writing and drawing, memories as stated by people who are endeared by the characters, favorite characters and why. ABM and its representatives have discussed these and many more ideas with ordinary citizens, some by the name of Charlie Brown.
II. The Complainant, UFS, media giant United Media, Inc. and its representatives have tried to threaten the release of the name from the Respondent, All Business Matters, Inc.
"Beginning on March 14th, 2000, representatives of UFS and others began legal action to recover the domain name. After review and discussion with them by email, UFS extended the imposed deadline of March 22nd, 2000 for release of the name, GoodbyeCharlieBrown.com. After gaining counsel, UFS and its representatives, began to negotiate for the name, offering to purchase the name in an April 6th, 2000 letter in which they acknowledged ‘that other domain name registrants will hear from us in the near future as to their unauthorized use of the CHARLIE BROWN trademark.’ They go on to say that we had no right or claim to the Charlie Brown name. We make no claims to the name CHARLIE BROWN, CHARLIEBROWN.COM or to the trademarks thereof. Be clear on this FACT: All Business Matters, Inc, Dave Evans, and interested parties make no claims whatever to trademarks, service marks, copyrighted material, or any such of its many registered marks, copyrights and trade/service names/marks as seen by the numerous exhibits offered by the complainants. We make no claims, rights or other expressions of claims or ownership to any of these marks. We do not intend to interfere with their rights to market any of the many products as spelled out in the material presented on the behalf of the complainants. In fact, we find it repulsive that they use the Charlie Brown mark on whalebone, ivory, beer and ale. We would not interfere in any way with that sort of trade regardless of the dispute at hand.
III. The WIPO is acknowledged and welcomed by All Business Matters, Inc. to resolve this dispute.
"All Business Matters, Inc. embraces the WIPO to settle this dispute, because we feel that the organization will fairly and objective review this case and uphold the respondent, All Business Matters, Inc. We feel this way based on these arguments:
A. All Business Matters, Inc. has made no attempt to interfere with, diminish, divert business, or otherwise cause any damage to UFS, United Media, its trademarks in question or any of its ability to do business in any of its markets or products or service areas. UFS and United Media cannot show any damage or paint a picture of any potential damage that ownership in these two domain names could have on their business in the form that has been stated in their cause.
B. All Business Matters, Inc. claims the names as a freedom of speech to write and collect for the purposes of writing a tribute to MR. SCHULZ, whose copyrights are property of UFS, United Media and others, but whose copyrights include only already published material and cannot extend itself to new material attributed to MR. SCHULZ. Therefore, UFS and United Media have the same interest in the name as All Business Matters, Inc. and that is to pay tribute to MR. SCHULZ. To say that one party in more qualified to do a tribute certainly does not follow the Freedom of Speech Laws that are common to the United States and to most free nations worldwide. If that were true, then only the wealthy would own copyrights, books or any other material intended for the masses.
C. In speaking with the owners of other CharlieBrown names on the Internet and registered name owners of such names, it is clear that they, as we, are very concerned that their freedoms will be violated, due to the unsettling nature of the words used in the April 6th, 2000 correspondence from the representatives of the complainant, which clearly states ‘that other domain name registrants will hear from us in the near future as to their unauthorized use of the CHARLIE BROWN trademark’. That information has been shared with many of the current owners and registrants of some of the said names. To have a giant corporation vow to take away freedoms of all these rightful owners is indeed unsettling to us all. Each has asked us to keep them posted of the outcome of these proceedings and each wishes us well in our efforts. None of them can see why this is happening and don’t understand why UFS, United Media and its representatives feel that they can assert their domain ownership onto established sites and names that are legitimate. They further feel that All Business Matters, Inc is well within its rights to offer a tribute to MR. SCHULZ and in fact, have offered many stories about their names and how the notoriety of Charlie Brown has created some special moments for them. We are looking forward to being able to put together such a tribute to MR. SCHULZ once WIPO lets stand the current status.
D. All Business Matters, Inc. wishes to remind the WIPO that URLs are by definition, unique. It requires an effort on the part of someone to divert, misname, link or otherwise cause misdirection to get traffic to a website that is not typed in as the address of a specific URL. In fact, eBAY.com and BIDBAY.com are different enough that people will not confuse them. A hyphen in a name gives it a different address. There are thousands of examples of these situations all over the Internet. To suggest that All Business Matters, Inc. is engaging in deception to cause traffic to move from CharlieBrown.com to GoodbyeCharlieBrown.com is just not true. We have not, nor intend to ever cause traffic to move from CharlieBrown.com to GoodbyeCharlieBrown.com or FarewelltoCharlieBrown.com at present or in the future.
1. The names GoodbyeCharlieBrown.com and FarewelltoCharlieBrown.com were registered as tributes to MR. CHARLES SCHULZ. The complainant even supports that notion in the correspondence already sent to WIPO.
2. UFS offered consideration for the name on at least two occasions (that correspondence is missing from the packet of information sent to the WIPO by the complainant, but is represented in this packet). UFS violated its imposed deadline to continue to negotiate in what was believed to be good faith efforts to buy the name from us. All Business Matters, Inc. rejected the offers and chose to hold the names for itself to use as a site for tribute to MR. SCHULZ. All Business Matters, and its representatives viewed that continued attempt to purchase the name(s) from us as a continuing effort on the part of UFS to convince us that they were intending to use the domain name to create such a tribute but nowhere does that intent come through in any of the correspondence.
3. All Business Matters, Inc. has as much right to own this name as anyone. In the sense of protection under the Freedom of Speech common to all free peoples, we feel that a site of tribute should be left to the author of that site to determine what is an opinion, a fair assessment of history or their perspective of it. To knuckle to pressure of giant corporations is suppression of those rights based off the money that is thrown at the victim of such a campaign.
4. All Business Matters, Inc. has not shown any attempt to do harm, cause confusion, distract traffic or otherwise cause any harm or damage to UFS and its many service marks and copyrights.
5. All Business Matters, Inc. views this stand taken by us as a fight for the rights of all the other rightful owners of domain names related to and about this case. We are fearful that the words used by the complainant will come true, that they will take action ‘that other domain registrants will hear from us in the near future as to their unauthorized use of the CHARLIE BROWN trademark.’ Again, we make it perfectly clear, we are not trying to claim CharlieBrown.com as our own, no more that we are trying to claim ownership of anyone else’s URL. The rules governing these domain purchases are clear.
6. All Business Matters, Inc. is not trying to claim any part of trademarks, copyrights, service marks or any such brands owned, registered, leased, or portrayed by UFS, United Media or any of its representatives. In fact, All Business Matters, Inc. wishes to elevate the image of MR. SCHULZ with stories of common people (those Charlie Brown kind of people) that wish to remember him in kind ways. MR. SCHULZ was indeed a believer in the common people. He was brave in the face of opposition to stand up for his beliefs. We here at All Business Matters, Inc. feel the same.
We wish to thank, in advance, the WIPO for its considerable efforts that it will make on the case now before it. We pray that you will let stand the issue as is.
The intent of the current owners of these two domains was, is, has been and will continue to be that they are to be used for tribute to the author of the Peanuts cartoon characters. The Peanuts characters are numerous, including Lucy, Linus, Snoopy, PigPen, The Red Baron, Marcy, Peppermint Patty, Charlie Brown, and many peripheral characters over the years. These characters represent a spirit of freedom, of innocence and childhood. To dispute over them for service marks and use them to promote the trade in whalebone, to promote them to aid in the sale of beer and ale is not the interpreted use as portrayed by the author in our opinion. It certainly is not the position of All Business Matters, Inc. The connotation that goodbye and farewell are positive for the purpose of selling and promoting the goods as offered by the many Charlie Brown marks and services around the world does not fit with the sense of acquiring the names. Much the same was stated in the Verizon suit that allowed a dissident to continue to own the name VerizonReallySucks.com after realizing that the name VerizonSucks.com (in dispute) was indeed not the spirit in which these sorts of suits are based. When a party interferes, causes confusion, creates loss of sales, diverts revenue, attention or otherwise disrupts the parties rightful use of their domain names, then the system for which this intended protection is justified. However, when a party merely wishes to use a name to pay tribute to an icon within the culture, it is in the interest of all that the name should be permitted for that purpose as well. Such cases could be made for names such as GoodbyeBillGates.com, SoLongBillClinton.com, SeeYaRoundHillary.com and on and on and on. If the fact that a public icon can be targeted to receive bad publicity is not banned, why, then, should not the same be applied to good publicity? When an entity wishes to pay respect to an icon such as Mr. Charles Schulz for his contribution to the world of entertainment and political satire, then what forces should stand in the way? We feel these two names are in dispute, have been bargained for, and are deadlocked in dispute for one reason, and that is because UFS and United Media feel that their power supersedes freedom of speech, one of the main points that Mr. Schulz stood for in his portrayal of the average American ‘Charlie Brown’. Our sole intent in owning these names is, has been and will continue to be to pay respect and give tribute to Mr. Schulz for his portrayal of the oppressed and down trodden as well as the innocence of youth and the bountiful spirits of that youth. To suggest that ABM, Dave Evans and interested parties are trying to interfere with UFS, United Media’s ability to promote their products and services is totally without reason, proof and merit. The name cannot be confused with CharlieBrown.com or any such domains because it suggests that someone is saying goodbye to them. It appears that the media giant will not be saying goodbye to Charlie Brown. The name will be used strictly as a promotion of a tribute to the late Mr. Schulz. The only matter at hand is who has exclusive rights to a deceased party’s tributes? Can a single publisher own the tributes to all great Americans? Have they not written to and for many great Americans? Great authors? Does having had a business contract with that author guarantee all future uses of the books and articles about that author, especially after death? We think the freedoms inherent in our society far exceed claims as UFS and its representatives put forward here. We ask that this ruling authority let stand the ownership." (Response)
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion (Footnote 1). The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this proceeding, Respondent has furnished a detailed response to the complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings.
As a procedural matter, the Panel does not accept or consider Complainant’s supplemental filing, or Respondent’s supplemental filing in response thereto. Neither filing raises a matter not already presented in the initial complaint and response.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant is the holder of a trademark registration for the word and design mark "CHARLIE BROWN" in the United States and has used that mark in commerce (see Factual Background, supra) (Footnote 2). Complainant’s registration of the "CHARLIE BROWN" mark on the Principal Register at the PTO establishes a presumption of its validity in U.S. law (Footnote 3), and Respondent has not challenged this presumption. Complainant has registered the word mark "CHARLIE BROWN" in numerous countries outside the United States. The Panel determines that Complainant has rights in the trademark "CHARLIE BROWN" (Footnote 4). In view of the substantial number of jurisdictions worldwide in which Complainant has successfully registered "CHARLIE BROWN" standing alone as a word mark, and in view of the well known nature of the word mark standing alone in the United States as identifying Complainant’s cartoon character, the Panel determines that Complainant has rights in the word mark "CHARLIE BROWN" within the meaning of paragraph 4(a)(i) of the Policy (Footnote 5).
Respondent has registered the domain names "farewelltocharliebrown.com" and "goodbyecharliebrown.com". Each of these domain names (1) incorporates Complainant’s "CHARLIE BROWN" mark, (2) adds the generic top-level domain name (gTLD) ".com", (3) eliminates the space between "CHARLIE" and "BROWN", and (4) uses Complainant’s mark in lower case format while Complainant’s mark generally appears with initial capitalization (i.e., "Charlie Brown"). The domain names separately add the terms "farewellto" and "goodbye" in front of Complainant’s mark.
The addition of the generic top-level domain name (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain names to "CHARLIE BROWN" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services (Footnote 6). Insofar as domain names are not case sensitive, and the elimination of space between terms is dictated technological considerations and the customary practice of domain name registrants, the Panel concludes that use of the lower case letter format, and elimination of the space between "CHARLIE" and "BROWN", in "farewelltocharliebrown.com" and "goodbyecharliebrown.com" is without legal significance from the standpoint of comparing those names to "CHARLIE BROWN" (Footnote 7).
Respondent does not, by adding the common nouns "farewellto" and "goodbye" (Footnote 8) preceding "CHARLIE BROWN", create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying mark held by Complainant.
The mark "CHARLIE BROWN" is strongly associated with a cartoon character that is used by Complainant in the commercial marketing of goods and services. Internet users who view the domain names "farewelltocharliebrown.com" and "goodbyecharliebrown.com" are likely to assume that there is an association between those names and Complainant as a source of goods or services. The addition of a common term to a strong mark is generally insufficient to negate a likelihood of confusion with the mark. The Panel determines that "farewelltocharliebrown.com" and "goodbyecharliebrown.com" are confusingly similar to "CHARLIE BROWN" within the meaning of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
The second element of a claim of abusive domain registration is that the Respondent has no rights or legitimate interests in respect of the domain names (Policy, para. 4(a)(ii). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"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." (Policy, para. 4(c))
Respondent has expressly stated that it accepts the validity of Complainant’s trademark. Respondent appears to claim a legitimate noncommercial or fair use interest in the mark, as follows:
"All Business Matters, Inc. claims the names as freedom of speech to write and collect for purposes of writing a tribute to MR. SCHULZ, whose copyrights are property of UFS, United Media and others, but whose copyrights include only already published material and cannot extend itself to new material attributed to MR. SCHULZ."
The only evidence on the record of this proceeding regarding Respondent’s use of Complainant’s mark, other than Respondent’s speculative statements about its intentions, is that Respondent first approached Complainant with the intention of selling it the disputed domain names, and then offered the names for sale on public auction websites (including indications of their potential utility in connection with the sale of goods). If Respondent intended to establish a tribute website to the memory of Charlie Brown’s creator, or to collect materials for writing a book, the mechanism of approaching Complainant to offer the names for sale, and then posting them for sale to the public, is a most peculiar way of going about the task. The facts before the Panel contradict Respondent’s assertions regarding its intentions. The Panel determines that Respondent has failed to demonstrate noncommercial or fair use interests in the disputed domain names (Footnote 9).
Respondent has failed to establish rights or legitimate interests in the disputed domain names. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
Respondent has offered the disputed domain names for sale to the public on commercial websites. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.
In several earlier administrative proceedings conducted under the Policy, this sole panelist has determined that offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy. This is based on the nonexhaustive character of the express list of bad faith factors in paragraph 4(b) of the Policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others. In the instant proceeding, Respondent has sought to profit from the mere registration of a well-known mark as domain names (in combination with common terms). The Panel determines such registration and use to be in bad faith.
In addition to posting the disputed domain names for sale to the public, Respondent has directly offered the disputed domain name "goodbyecharliebrown.com" for sale to Complainant for a price substantially in excess of its costs related to the name. Respondent has indicated its awareness that Complainant is the holder of the "CHARLIE BROWN" mark. Such an offer leads to a finding that Respondent registered the name "goodbyecharliebrown.com" primarily with the intention of selling it to Complainant for an amount in excess of its out of pocket costs in connection with the name. This constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy.
The Panel determines that Respondent registered and used each of the disputed domain names in bad faith within the meaning of paragraph 4(a)(iii) of the Policy (Footnote 10). Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain names "farewelltocharliebrown.com" and "goodbyecharliebrown.com" to the Complainant.
Based on its finding that the Respondent, All Business Matters, Inc. (aka All Business Matters.com) and Dave Evans, has engaged in abusive registration of the domain names "farewelltocharliebrown.com" and "goodbyecharliebrown.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names "farewelltocharliebrown.com" and "goodbyecharliebrown.com" be transferred to the Complainant, United Feature Syndicate, Inc.
Frederick M. Abbott
Dated: November 14, 2000
Footnotes:1: See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2: Cartoon characters and their names are capable of protection as trademarks. See generally J. THOMAS MCCARTHY, 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§6.31 & 10:42-10:43 (4th ed. 1996 and updated). Copyright law may impose certain limitations on the extent of trademark protection for cartoon characters and their names. While the expiration of copyright protection may allow for public domain use of cartoon characters and their names in connection with expressive works, it might not permit such use in connection with the sale of products or services. In the instant proceeding, Respondent's sole demonstrated use of the disputed domain names is in connection with offering them for sale to Complainant and the public in a manner promoting their utility for sales of goods. Theoretical questions regarding the relationship between copyright and trademark protection for cartoon characters and names need not be addressed.
3: 15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
4: For purposes of this proceeding, the Panel does not consider it necessary to determine the significance of Complainant's combination word marks that incorporate the term "Charlie Brown".
5: Cf. CBS Broadcasting Inc. v. Worldwide Webs, Inc., Case No. D2000-0834, decided Sept. 4, 2000 (concerning "ilovelucy.com").
6: See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.
7: See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).
8: Regarding the definitions and linguistic functions of "farewell' and "goodbye", see Miriam Webster Online Collegiate Dictionary, http://www.m-w.com/home.htm.
9: Compare Helen Fielding v. Anthony Corbert aka Anthony Corbett, Case No. D2000-1000, decided Sept. 25, 2000 (failure to demonstrate legitimate preparations to use) and Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited, Case No. D2000-1001, decided, Oct. 3, 2000 (successful demonstration of legitimate preparations to use).
10: See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000; General Electric Company v. Online Sales.com, Inc., Case No. D2000-0343, decided June 19, 2000; General Electric Company v. John Bakhit, Case No. D2000-0386, decided June 22, 2000, and; Wal-Mart Stores, Inc. v. Kenneth E. Crews, Case No. D2000-0580, decided August 30, 2000.