WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Theatrical Stage Employees Union Local No. 2 of the International Alliance of Theatrical Stage Employees and Moving Picture Technicians, Artists and Allied Crafts of the United States and Canada v. David Eaves
Case No. D2019-1043
1. The Parties
The Complainant is Theatrical Stage Employees Union Local No. 2 of the International Alliance of Theatrical Stage Employees and Moving Picture Technicians, Artists and Allied Crafts of the United States and Canada, United States of America (“United States”), represented by Vedder Price P. C., United States.
The Respondent is David Eaves, United States, represented by Offices of Catherine Simmons-Gill, LLC, United States.
2. The Domain Names and Registrar
The disputed domain names <chicagostagehand.com> and <chicagostagehands.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2019. On May 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 7, 2019, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2019. The Response was filed with the Center May 30, 2019.
The Center appointed W. Scott Blackmer, Carol Anne Been, and The Hon Neil Brown Q.C. as panelists in this matter on June 25, 2019. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is “Local No. 2” of the United States and Canada theatrical stage employees union, established in 1893 in Chicago, Illinois, United States, and organized as an Illinois unincorporated association. Its mission is described as follows on the home page of its website at “www.iatselocal2.com”: “Chicago Stagehands® Local 2 is the labor union representing technicians, artisans and craftspersons working in Chicago’s entertainment industry, including live theatre, television production, and trade shows”.
The “R” symbol in the quoted sentence above signals the Complainant’s ownership of United States federal trademark registrations. The Complainant holds United States Trademark Registration Number 4303933 (registered March 19, 2013) for CHICAGO STAGEHANDS as a standard character mark (used for clothing, namely shirts).
The Complainant also has two United States trademark registrations on the Supplemental Register, which have attenuated value in the UDRP context, as discussed below. Under United States law, the Supplemental Register is a secondary list of marks that are capable of distinguishing the source of goods or services (or identifying an organization, in the case of a “collective membership mark”) but have not yet demonstrably done so. As explained on the United States Patent and Trademark Office (USPTO) website at “https://www.uspto.gov/trademark/laws-regulations/how-amend-principal-supplemental-register-1”,
“[t]he Supplemental Register is a second trademark register where trademarks can be registered that are not yet eligible for registration on the Principal Register, but may, over time, become an indicator of source. Marks registered on the Supplemental Register, like those registered on the Principal Register, are protected against conflicting marks in later-filed USPTO applications. However, Supplemental Register registrations do not receive the same legal advantages and presumptions of Principal Register registrations.”
See Lanham Act, 15 United States Code sec. 1094, 37 Code of Federal Regulations secs. 2.47, 2.75(a). Registration on the Supplemental Register does not constitute an admission that a mark has not acquired distinctiveness and does not prevent the registrant from subsequently applying for registration on the Principal Register (see 15 United States Code sec. 1095).
The Complainant holds Trademark Registration Number 5331637, registered November 7, 2017, for CHICAGO STAGEHANDS as a standard character mark on the Supplemental Register as a “collective membership mark” indicating membership in the Complainant association. The online database of the United States Patent and Trademark Office (“USPTO”) indicates that the Complainant originally applied for registration on the Principal Register. This was refused by the examiner, and the Complainant amended the application to the Supplemental Register on September 27, 2017.
The Complainant also holds Trademark Registration Number 5532033, registered July 31, 2018, for CHICAGO STAGEHANDS as a standard character mark on the Supplemental Register (for labor union services). The Complainant amended this application from the Principal to the Supplemental Register on May 24, 2018, again following refusal of registration on the Principal Register by the examiner.
The Complainant also claims CHICAGO STAGEHANDS as a common law trademark. The Complainant states that the association has been known by the name “Chicago Stagehands” since 1923 and that CHICAGO STAGEHANDS has been used continuously as an unregistered mark in the United States since at “at least 1950” indicating “membership in a union of stagehands; providing labor relation services”, namely, “establishing committees with employers to promote improved relations between employers and unions” and “providing information regarding labor union services”. The Complaint offers evidence that employees, members, the public, and the “live event and production industry” associate the term with the Complainant and use it in conversation and in the media to refer to the Complainant. The Complainant states that the mark has been displayed on clothing worn by members and employees of the union on jobsites since at least 1995, as well as during strikes and other union-related activities. The Complaint attaches samples of media stories referring to union officials or members as “Chicago Stagehands” or “Chicago stagehands” from 1923 onward, as well as the testimony of ten individual union employees, members, and business people that the Complainant submitted in a USPTO Trademark Trial and Appeal Board (TTAB) Cancellation Proceeding (discussed further below).
According to the Registrar, the Domain Name <chicagostagehand.com> was created on November 14, 2008, in the name of the Respondent David Eaves, listing no organization and showing a postal address in Chicago, Illinois, United States. The Domain Name <chicagostagehands.com> was created on January 7, 2009, also in the name of the Respondent David Eaves, but listing “Chicago Stagehand” as the organization, showing the same postal address in Chicago as for the first Domain Name. The online database operated by the Illinois Secretary of State lists Chicago Stagehand LLC as an active Illinois limited liability company registered on December 18, 2008. The Response explains that Mr. Eaves is the sole member of Chicago Stagehand LLC, which has operated since early 2009. Chicago Stagehand LLC employs “freelance stage crew” and provides “staffing services directly to live events and venues”.
Both Domain Names resolve to the website of “Chicago Stagehand” (the “Respondent’s website”), which describes itself on the home page: “Chicago Stagehand is an independently owned and operated non-union affiliated stagehand labor company.” The website advertises the company’s business as follows:
“[w]e staff concerts, corporate trade shows and special events with Stagehands, Video and Audio Technicians, Camera Operators, IT Techs, Carpenters, and various other live event personnel. We are available to service most any type of event in Chicagoland or the Midwest.”
The Respondent’s website assures users that the company is fully licensed and insured. The site provides contact pages for event organizers and workers, with support in English and Spanish. A section entitled “Career Builders” on the “About” page has this to say about the Respondent’s relationship with labor unions:
“[j]ust because we are not union doesn’t mean we are an anti-union company. We actually encourage our freelancers to explore work for local unions once they have explored the terrain of the Chicagoland labor market. We consider our company to be a stepping stone / transitional place for freelance crew to work until they figure out what comes next for them professionally - like starting their own company, going on tour, building up other work sources, going full time with one of our regular clients or applying with a union.”
Screenshots from the Internet Archive’s Wayback Machine show that the Respondent’s website has evolved over time but has advertised essentially the same services for the same geographic area since March 2009.
The Respondent David Eaves applied to USPTO to register “Chicago Stagehand” as a standard character mark for “[e]mployment [s]taffing in the field of labor and technical support in live corporate, concert and special events” on August 28, 2009. The mark was registered on the Supplemental Register on March 16, 2010, Registration Number 3761918 (see the discussion above concerning the use of the Supplemental Register for registrable marks that USPTO deems not to have sufficient distinctiveness for registration on the Principal Register). The Complainant here subsequently petitioned to cancel that registration before the TTAB in Cancellation Petition 92055242, resulting in a TTAB decision granting cancellation issued February 1, 2017. The Respondent’s registration on the Supplemental Register was cancelled effective December 15, 2016. (Meanwhile, on September 18, 2014, the Respondent applied again to register “Chicago Stagehand” as a standard character mark for the same services, Serial Number 86399091; that application was suspended in 2015 based on the Complainant’s applications which registered in 2017 and 2018; nonetheless, the Respondent’s application remains suspended.)
It is instructive to review some of the findings and conclusions of the TTAB in 2017, based on its review of evidence submitted by the same parties who are before the current UDRP Panel. Here is how the TTAB explained its decision to cancel the Respondent’s registration on the Supplemental Register:
“[w]e find that Petitioner [union Local 2, the Complainant in this proceeding] has demonstrated that it has used CHICAGO STAGEHANDS to refer to itself and that members of the public have used that term to refer to Petitioner prior to Respondent’s adoption and first use of the term CHICAGO STAGEHAND; and that the use of these designations by the parties as marks for their respective services is likely to cause confusion, mistake or deception. In accordance with Books on Tape [Books on Tape Inc. v. The Booktape Corp., 836 F2d 519 (Fed. Cir. 1987)], we find that cancellation of Respondent’s Registration on the Supplemental Register is warranted.”
However, this conclusion about possible confusion was not tantamount to a recognition of the Complainant’s common law rights in CHICAGO STAGEHANDS, as the Complainant implies. The Federal Circuit Court of Appeals in Books on Tape observed that in challenging a registration on the Supplemental Register, where the registrant has not yet established proprietary rights, the challenger is not required to demonstrate proprietary rights of its own. Indeed, the TTAB found that the Complainant had only sporadic “technical trademark use”:
“[t]he sporadic and scant use of the term CHICAGO STAGEHANDS by Petitioner [union Local 2] and the public’s equivocal use of that term, either as an apt descriptor applicable to Petitioner or as a direct reference to Petitioner, are insufficient to persuade us that CHICAGO STAGEHANDS has acquired distinctiveness as a source indicator for Petitioner’s services. …”
The TTAB then commented about both parties:
“[o]n the present record, neither party has demonstrated that it has a protectable proprietary interest in its designation; indeed, at present neither is capable of demonstrating substantially exclusive use of its designation even in its own geographic market. We emphasize that our determination in this case does not affect either party’s right to continue use of its designation; and it does not foreclose to either party the opportunity to demonstrate at another time and on a different record that its mark has in fact acquired distinctiveness, for the purpose of enforcing asserted service mark rights or obtaining registration on the Principal Register.”
As mentioned above, the Complainant has two registrations of CHICAGO STAGEHANDS trademarks on the Supplemental Register, indicating that there is no USPTO determination that the mark is sufficiently distinctive for the type or classes covered by the application for registration on the Principal Register.
In the current proceeding, the Complainant has not submitted new evidence of use to support common law rights. The Respondent points to evidence in the TTAB proceeding showing that the Complainant itself commonly used the abbreviation “IATSE 2” and a graphic logo with those characters, not the terms “Chicago Stagehands”, in its online and printed materials, social media accounts, website, radio and television advertising, official documents and filings, agreements, playbills, paychecks, newsletters and other communications. The Panel observes that the Complainant’s domain name and social media accounts still appear to be based on “IATSE 2” rather than “Chicago Stagehands”, although that term, as noted above, now appears on the home page of the Complainant’s website along with the “IATSE 2” name and logo. A somewhat different term, “Stagehands Local 2”, appears with the “IATSE 2” logo on the Complainant’s Facebook page.
5. Parties’ Contentions
The Complainant asserts that the Domain Names are confusingly similar to its CHICAGO STAGEHANDS trademark. The Complainant contends that the Respondent was aware of the Complainant’s mark when it registered the Domain Names and had no permission to use it.
The Complainant infers that the Respondent registered and used the Domain Names in bad faith, to prevent the Complainant from obtaining domain names corresponding to its mark and to mislead Internet users for commercial gain.
The Respondent relies on the detailed findings of the TTAB to assert that the Complainant had not established common law rights in CHICAGO STAGEHANDS in 2008 and 2009, when the Domain Names were registered. The Respondent claims a legitimate interest in using Domain Names corresponding to the descriptive name of the limited liability company formed at that time and used since for the Respondent’s business of contracting non-union stage crews for Chicago area events.
The Respondent has operated this business independently for a decade and denies choosing the name of the business and corresponding Domain Names to mislead customers or deprive the Complainant labor union of relevant domain names.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant indisputably holds a registered United States trademark on the Principal Register for CHICAGO STAGEHANDS as a standard-character mark. One of the Domain Names incorporates this mark in its entirety (omitting the space between words that cannot be included in the DNS system); the other is nearly identical, merely dropping the plural “s” at the end. This does not avoid confusion. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id.
It is not necessary to rely for standing on the Complainant’s other registered marks, but it is worthwhile noting that they require evidentiary support beyond registration because they appear only on the USPTO Supplemental Register:
“[c]omplainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights. Even where such standing is established, panels may scrutinize the degree of deference owed to such marks in assessing the second and third elements.” (WIPO Overview 3.0, section 1.2.2)
The Panel finds that, the Complainant has established sufficient common law rights and/or secondary meaning in the CHICAGO STAGEHANDS marks as of 2008 for purposes of this proceeding, and that both Domain Names are confusingly similar to the Complainant’s CHICAGO STAGEHANDS trademarks and concludes on that basis that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing trademark rights, confusing similarity, and a lack of permissive use. This shifts the burden to the Respondent.
The Respondent points to his incorporation of a business at the end of 2008 with a name corresponding to one of the Domain Names (and differing from the other only by the plural “s”), with advertising and revenues commencing in early 2009. The TTAB reviewed evidence of the Respondent’s filings, invoices, and revenues and concluded in its decision on the Cancellation Petition cited above that “[f]or purposes of our analysis, we accept that Respondent was providing services under his mark in 2009, with use analogous to trademark use commencing as early as March 2009.” The TTAB found that testimony concerning the Respondent’s 2014 revenues, for example, were “indicative of a bona fide small business”. The TTAB characterized the Respondent as “a very small business” in the 2017 decision, offering services mostly different from the Complainant’s but overlapping in the placement of workers for live event productions. The TTAB concluded that the Respondent was genuinely engaged in business using the “Chicago Stagehand” name since 2009, although the Respondent could not demonstrate that the mark had acquired sufficient public recognition to become “distinctive of his services” and merit trademark protection.
These USPTO conclusions are consistent with the Panel’s view of the available facts and lead to its finding under the UDRP that the Respondent, (1) before notice of the dispute, has used both Domain Names in connection with a bona fide offering of goods or services (Policy, paragraph 4(c)(i)) and also, (2) has been commonly known by a name corresponding to the Domain Name <chicagostagehand.com>, even though it has not succeeded in acquiring or maintaining corresponding trademark rights (Policy, paragraph 4(c)(ii)).
Thus, the Panel would conclude that the Respondent prevails on the second element of the Complaint, unless the Complainant established the probability that both the selection of the company name and the corresponding Domain Names, and their use by the Respondent, represented an effort by the Respondent to exploit the Complainant’s prior common law trademark (as the Complainant had no registered trademark at that time). That issue is better addressed in the following section on bad faith.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following cited by the Complainant (in which “you” refers to the registrant of the domain name):
“(ii) you have 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 you have engaged in a pattern of such conduct; or […]
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
As there is no evidence of a “pattern” of the Respondent registering domain names corresponding to trademarks, the citation of paragraph 4(b)(ii) is inapposite.
The Complainant has the fundamental challenge of demonstrating that the Respondent sought in bad faith to attack a trademark. It is undisputed that the Respondent registered the Domain Names in November 2008 and January 2009, respectively, incorporated a limited liability company with the name “Chicago Stagehand LLC” in December 2008, and was doing business through an associated website by March 2009. All of this occurred years before the Complainant applied for a CHICAGO STAGEHANDS trademark registration, so the Complainant relies on common law claims that the USPTO did not find persuasive as meeting technical trademark standards for secondary meaning as recently as its 2017 decision in the Cancellation proceeding. The Panel does not find compelling evidence that the Respondent, while undeniably aware of the Complainant, would necessarily have been aware that it used the term “Chicago Stagehands” as a common law trademark at the time of the Domain Name registrations in December 2008 and January 2009. At that time, the Complainant was prominently using on its website another, quite different, mark based on its initials – IATSE 2. There was testimony submitted to the TTAB that two individuals warned the Respondent that the Complainant sometimes used the name “Chicago Stagehands”, but those conversations occurred later in 2009, after the Domain Name registrations. The Complainant has the burden of demonstrating that the Respondent, more likely than not and despite its denials, chose the Domain Names for their trademark value rather than their clearly descriptive value. Balancing the available evidence, the Panel finds that the Complainant has not met that burden here. Thus, the predicate is absent for a finding of bad faith registration under the Policy, paragraph 4(b).
The Panel concludes, therefore, that the Respondent prevails on both the second and third elements of the Complaint.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Carol Anne Been
The Hon Neil Brown Q.C.
Date: July 9, 2019