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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AST Sportswear, Inc. v. Steven R. Hyken
Case No. D2001-1324
1. The Parties
The Complainant is AST Sportswear, Inc., a New York corporation, represented by Gail E. Nickols and William C. Wright, Graham, Campaign P.C., 36 West 44th St., New York, NY 10036-8178, United States of America.
The Respondent is Steven R. Hyken, an individual residing in California, represented by Michael S. Duberchin, 24007 Ventura Boulevard, Suite 115, Calabasas, CA 91302, United States of America, and Asher Aaron Levin, Law Offices of Levy, McMahon & Levin, 16830 Ventura Boulevard, Suite 500, Encino, CA 91436, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <johnnyblaze.com>.
The domain name is registered with Register.com.
3. Procedural Background
Complainant submitted its Complaint to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") under the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") via e-mail on November 20, 2001. On November 27, 2001, the Center formally commenced this proceeding.
Respondent submitted its Response on December 19, 2001. Complainant submitted a Reply to the Response on December 20, 2001. On or about January 19, 2002, Respondent indicated that it was submitting an Objection and Response to the Reply. The Center received the exhibits to the Objection by fax on January 28, 2002.
Complainant elected to have this dispute decided by a single-member Administrative Panel. On January 18, 2002, the Center notified the parties that David H. Bernstein had been appointed as the Panelist. The issuance of this decision was, regrettably, delayed because of the parties’ delayed submission of the Reply and Objection, and by subsequent delays in processing the file at the Center.
4. Factual Background
Complainant is the owner of the registered JOHNNY BLAZE trademark, which was first used in United States commerce in 1998 and was registered for men’s, women’s and children’s clothing in March 2000. Complainant has also applied for registration in other classes and has applied for and registered the mark in several other countries.
Respondent is an individual who has used the stage name "Johnny Blaze" in past appearances, including appearances on television’s "Gong Show" in 1977 and 1988. Respondent registered the domain name at issue on or about February 12, 2001.
5. Parties’ Allegations
Complainant states that the domain name <johnnyblaze.com> is confusingly similar to Complainant’s mark because the domain name incorporates Complainant’s mark in its entirety.
Furthermore, Complainant claims that Respondent has no right or legitimate interest in the domain name because he had constructive notice of Complainant’s registration and yet registered a confusingly similar domain name. Complainant alleges that Respondent intentionally infringed Complainant’s trademark by attempting to lure consumers to his website. Complainant points to Respondent’s claim, on a version of his website that existed prior to the Complaint, that he was Complainant’s licensee.
That version of the website also promotes some sort of consumer investment. Complainant argues that Respondent cannot claim that he has been commonly known by a name corresponding to the domain name at issue because he has not been known under the name "Johnny Blaze" as an investment promoter. Under United States trademark law, Complainant suggests, holding a particular name does not create an entitlement to use the name to compete with someone else who holds a registered trademark for the same term.
Complainant also alleges that Respondent has registered and used the domain name in bad faith. Complainant first argues that the very fact of its mark’s distinctiveness justifies an inference of bad faith because it is highly improbable that Respondent selected the domain name without knowledge of Complainant’s mark. Complainant also maintains that constructive knowledge of the mark based on its registration supports an inference of bad faith. Finally, Complainant states that Respondent fraudulently held himself out as Complainant’s licensee, which cannot be explained except by bad faith.
In its defense, Respondent claims that he has used the stage name "Johnny Blaze" for over 25 years, beginning in 1977 with a performance on the "Gong Show." He registered the name "Johnny Blaze" with the American Federation of Television and Radio Artists (AFTRA) in 1987, and produced t-shirts with the name "Johnny Blaze" and a flame beginning in 1988. Respondent states that he has continued to appear as "Johnny Blaze" into 2001, both for compensation and for free.
Respondent states that Complainant’s trademark registration of JOHNNY BLAZE is improper, and that he has filed a cancellation petition with the United States Patent and Trademark Office to pursue that claim. As a result, he argues, Complainant’s interest in the JOHNNY BLAZE mark is unclear, failing to satisfy the first element of the Policy. Respondent concedes that the domain name is confusingly similar to the mark, but argues that it is Complainant that is causing confusion between Respondent’s stage name and Complainant’s mark because Complainant is advertising that its website can be found at <www.johnnyblaze.com>.
Respondent argues that he satisfies 4(c)(i) of the Policy, -- which states that a respondent has rights or legitimate interests in a domain name if, before any notice of the dispute, the respondent uses, or demonstrates preparations to use, the domain name or a domain name corresponding to the domain name in connection with a bona fide offering of goods or services -- because he has used a name corresponding to the domain name continuously since 1987. Respondent also argues that the same conduct satisfies 4(c)(ii) of the Policy, which states that a respondent has rights or legitimate interests if it (as an individual, business, or other organization) has been commonly known by the domain name.
Finally, Respondent argues that there is no evidence of any bad faith on his part. With respect to the false claim that Respondent was Complainant’s licensee, Respondent argues that Complainant itself violated ethical rules by sending a cease and desist letter directly to Respondent, when Complainant knew that Respondent was represented by counsel because Respondent’s counsel had previously sent Complainant a letter alleging that Complainant was violating Respondent’s rights in the "Johnny Blaze" name. As a result of this conduct, Respondent states, Complainant panicked and added the license claim to the website, but removed it within 48 hours.
Complainant’s supplementary submission argues that, because it received notice of Respondent’s trademark cancellation petition only after it filed its Complaint under the Policy, it should be allowed to respond to Respondent’s arguments with respect thereto. Substantively, Complainant maintains that Respondent’s trademark cancellation petition does not detract from its rights in the JOHNNY BLAZE mark because the mark remains on the Principal Register. The supplementary submission also argues that Respondent withdrew from AFTRA in 1991 and has presented no evidence of current use, and that an Internet search reveals no current uses of the name. Complainant also argues that Respondent’s delay in registering the domain name at issue until three years after Complainant began using its mark evidences Respondent’s lack of legitimate interest. Finally, Complainant states that the false claim that Respondent was Complainant’s licensee was present on Respondent’s website for fifteen days, not 48 hours, as evidenced by the date stamped on Complainant’s exhibit showing the website’s appearance.
Respondent’s Objection and Response to Complainant’s Reply argues that Complainant should have been aware of the trademark cancellation proceeding at the time it filed its Complaint and that Respondent warned Complainant that it would file such a proceeding. The Objection and Response also attaches Respondent’s answers to Complainant’s Interrogatories in the trademark cancellation proceeding as evidence of Respondent’s continuing use of the "Johnny Blaze" stage name, as well as an advertisement in the June/July 2001 edition of "Karaoke Scene" offering Respondent’s Elvis impersonation services under that name.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, Complainant must establish each of the following elements in order to state a claim for transfer of a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that Respondent has registered and used the domain name in bad faith.
A. The Supplemental Submissions
The Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") do not provide the parties with any right to file replies on their own volition. Rather, Rule 12 provides that only the Panel may request further submissions. Plaza Operating Partners, Ltd. v. Pop Data Technologies, WIPO Case No. D2000-0166 (June 1, 2000). Nevertheless, Panels have accepted supplemental submissions in limited circumstances, such as when a party cites new and highly relevant legal authority not previously available, presents new evidence not reasonably available at the time of its initial submission, or rebuts arguments by an opponent that could not reasonably have been anticipated. Id.; CRS Technology Corp. v. CondeNet, Inc., File No. FA0002000093547 (NAF March 27, 2000); Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 (June 29, 2000); Wal-Mart Stores, Inc. v. Richard MacLeod, WIPO Case No. D2000-0662 (September 19, 2000); Electronic Commerce Media, Inc. v. Taos Mountain, File No. FA0008000095344 (NAF October 11, 2000); Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938 (November 3, 2000).
In this case, Complainant’s Reply addresses one issue in the Response that Complainant could not reasonably have anticipated: Respondent’s filing of a cancellation petition and its argument that this filing undermines Complainant’s rights in the JOHNNY BLAZE mark. The Panel accepts the Complainant’s representation that it was unaware of the trademark cancellation petition at the time it filed the Complaint; though Respondent may have threatened such action, threat is not reality. Accordingly, the Panel accepts that portion of the Reply.
The Panel does not accept any other portion of the Reply. It expressly disregards Complainant’s evidence concerning Respondent’s AFTRA membership (which, in any event, is ambiguous because there is no explanation in the record of what it means when AFTRA says both that "Johnny Blaze is a member of AFTRA" and that "he is on honorable withdrawal") or his lack of current use of the stage name Johnny Blaze. Both of those assertions were contained in Respondent’s counsel’s May 16, 2001 demand letter, and thus Complainant should have anticipated these issues in its October 31, 2001 Complaint. As for the rest of the Reply, it is essentially argument, and thus it, too, will not be considered.
The Rules contemplate that a respondent has the right to respond to a complaint, Rule five, and direct the Panel to treat the parties "with equality." Rule 10(b). It is thus appropriate to grant Respondent a right to submit a sur-reply limited solely to the issue of the cancellation petition. Pacific Fence & Wire C. v. Pacific Fence, WIPO Case No. D2001-0237 (June 11, 2001). The Panel thus has considered the Respondent’s Sur-Reply to the extent it addressed that issue.
B. Identical or Confusingly Similar to Complainant’s Trademarks
Respondent argues that, because he has filed a trademark cancellation petition, Complainant has not shown that it has rights in the JOHNNY BLAZE mark. Pending the outcome of that proceeding, however, Complainant’s registration is still valid and justifies a finding that Complainant has rights in the mark. In addition, Respondent has not rebutted Complainant’s evidence of extensive advertising and sales under the mark, which, at the minimum, creates common law rights under U.S. law (which applies to these two U.S.-based parties). Moreover, Respondent has not alleged any challenge to Complainant’s trademark registrations for JOHNNY BLAZE in Canada, England, Australia, Japan, Norway, Denmark, France or Germany, or in the Benelux registry; each of these registrations is itself sufficient to provide trademark rights for purposes of the policy. The Panel thus finds, for purposes of these proceedings, that Complainant owns rights in the trademark JOHNNY BLAZE. As there is no dispute as to the fact that the domain name is identical to that mark, Complainant has satisfied its burden on the first factor.
C. Rights or Legitimate Interests
This case raises an unusual question: If Respondent was previously known as "Johnny Blaze" in the entertainment field, does he have a legitimate interest (for purposes of the Policy) in the <johnnyblaze.com> domain name if he uses that domain name to advertise an unrelated business?
The only copy of the website’s contents provided to the Panel – a version that existed after Complainant’s cease and desist letter but before the Complaint was filed – promotes the "USWITCH security system" using the "Johnny Blaze" name, and states that "johnny blaze(tm)" is licensed from Complainant and <www.licensingworld.com>. Even today, the website appears to promote a variety of unrelated goods and services, and says nothing about Respondent’s stage career as Johnny Blaze. The Panel is hard pressed to see how this particular use of the domain name <johnnyblaze.com> can constitute a "legitimate interest" in the normal understanding of those words .
The Policy, though, is a limited tool for acting against certain types of cybersquatting, and provides a contractual-based remedy. If there is a "legitimate interest" as that term is defined in the Policy, the Policy precludes transfer of the domain name, even if the use does not seem "legitimate" in the broader understanding of that word. Cf. e-Duction, Inc. v. Zuccarini, WIPO Case No. D2000-1369 (February 5, 2001); The Thread.com, LLC v. Poploff, WIPO Case No. D2000-1470 (January 5, 2001).
To determine whether Respondent has a "legitimate interest," as those words are used in the Policy, one must look to the actual language of the Policy. It provides that, if Respondent "proves" that he has "been commonly known by the domain name, even if [he has] acquired no trademark or service mark rights," the Panel "shall" find that Respondent has a legitimate interest. Policy 4(c)(ii). Significantly, that section of the Policy contains no restrictions on the type of use of the domain name that is acceptable or legitimate. In contrast, the other examples of legitimate interest include an analysis of market-based factors: paragraph 4(c)(i) applies only if there is a "bona fide offering of goods and services," and paragraph 4(c)(iii) applies only if there is "noncommercial or fair use of the domain name, without intent for commercial gain." Thus, even if Respondent were selling Johnny Blaze clothing on the site in a way that infringed Complainant’s trademark rights (which would vitiate any claim of legitimate interest under paragraph 4(c)(iii)), the Policy would not provide a remedy if Respondent could prove a legitimate interest under paragraph 4(c)(ii); rather, Complainant would have to pursue its claims (whether of trademark infringement or cybersquatting) under the applicable national laws.
Given that a showing of a "legitimate interest" can defeat a charge of cybersquatting under the Policy, a Panel must be careful to ensure that a Respondent’s claim that he or she has "been commonly known by the domain name" is legitimate. See Penguin Books Ltd. v. Katz, WIPO Case No. D2000-0204 (May 20, 2000) (finding legitimate interest where Respondent produced evidence that he "has for many years been known by the nickname ‘Penguin’"). Mere casual nicknames or other unsubstantiated assertions of past use are insufficient. See, e.g., DIMC, Inc. v. Phan, WIPO Case No. D2000-1519 (February 20, 2001) (rejecting claim that Respondent was known by nickname "Krylon" given absence of evidence of when alleged nickname was adopted and how it was used); Red Bull GmbH v. Gutch, WIPO Case No. D2000-0766 (September 21, 2000) (rejecting claim that Respondent was known by nickname "Red Bull" since childhood because Respondent did not provide any evidence to support contention); Gambro AB v. Family Health & Wellness Center, WIPO Case No. D2001-0447 (May 25, 2001) (Respondent did not submit any evidence to support suggestion that its employee was known by nickname "Gambro"); see also Sumner v. Urvan, WIPO Case No. D2000-0596 (July 24, 2000) (Respondent’s evidence that his nickname is "Sting" is "at the weaker end of the spectrum of such evidence" and thus did "not establish that he has been ‘commonly known’ by the domain name as contemplated by" the Policy). Rather, particularly when there are not insubstantial allegations of bad faith, a Panel should require a persuasive showing of a bona fide use of the name.
Here Respondent has satisfied that burden. He has submitted conclusive documentary evidence that he used the stage name Johnny Blaze as a professional stage name during his career. He appeared on network television as "Johnny Blaze" starting in 1977 (long before the start of the commercial internet). He applied to join the American Federation of Television and Radio Artists ("AFTRA") under the stage name "Johnny Blaze" in 1987. And he sold T-shirts emblazoned with the "Johnny Blaze" stage name beginning in 1988. Regardless of whether Respondent is making any current use of the "Johnny Blaze" stage name, there is no question but that, at least in the past, Respondent was "commonly known by the domain name." Indeed, Complainant concedes that "Respondent . . . has been using the mark before notice of the dispute." Thus, under the literal terms of the Policy, Respondent has established a "legitimate interest" for the limited purposes of this proceeding. Accordingly, however strange the content on Respondent’s website may seem (including the "panicked" posting of the false and subsequently-deleted license language), the Panel determines that the Complaint fails under the second element of the Policy.
D. Bad Faith
In light of the Panel’s conclusion with respect to the second factor of the Policy, there is no reason to consider the parties’ allegations concerning bad faith. Moreover, those issues are so complex in this case that they likely need to be resolved by a fact finder, with the benefit of live testimony, who can better assess the parties’ credibility and facts like why Respondent falsely claimed to be a licensee of Complainant and why Complainant has falsely advertised that its website can be found at <www.johnnyblaze.com>.
For all of the foregoing reasons, the Panel decides that Complainant has not met its burden of proof under the Policy. Accordingly, this Panel concludes that the domain name at issue should not be transferred to the Complainant.
David H. Bernstein
Dated: March 26, 2002
1. If the domain name were only used as an email address for emails to Respondent, or if the website discussed Respondent’s stage career and continued availability as an entertainer, that would raise a different issue because that current use would be tied directly to the past use, and thus would be more obviously legitimate (in a common sense understanding of that term).
2. Complainant correctly notes that not all prior use can qualify as a legitimate interest, citing World Wrestling Federation Entertainment, Inc. v. Rift, WIPO Case No. D2000-1499 (December 29, 2000), and Madonna v. Parisi, WIPO Case No. D2000-0847) (October 12, 2000). As those decisions hold, when a prior use itself infringed the Complainant’s rights, the use is not legitimate. See also Universal City Studios, Inc. v. G.A.B. Enters., WIPO Case No. D2000-0416 (June 29, 2000). These cases are inapposite because Respondent’s professional use of the Johnny Blaze stage name long proceeds Complainant’s first use of the Johnny Blaze mark in 1998.