On February 9, 2005 the parties were advised of the Panel’s decision not to accept Complainants’ February 3, 2005 supplemental filing, request for hearing and addition of an additional domain name. The date for decision was reset to February 15, 2005.

4. Factual Background

Jenna Massoli professionally known as Jenna Jameson (hereinafter referred to as “Jameson”) is an individual residing in Scottsdale, Arizona. Club Jenna, Inc. is a Colorado corporation located and doing business in Scottsdale, Arizona as is Jennasis Entertainment, Inc., a California corporation.

Linq Entertainment, Inc. is a California corporation doing business in Sherman Oaks, California. Linq Entertainment, Inc. is the successor-in-interest to SN Entertainment, Inc., having acquired all of the assets of SN Entertainment, including the disputed domain name by an Asset Purchase Agreement dated August 23, 2003. The Asset Purchase Agreement was executed by Fran Fecske as President of SN Entertainment, Inc. and Steve Fecske as a party to the Agreement.

Complainant Jennasis Entertainment, Inc. is the owner of the service marks “JENNA” and “JENNA JAMESON” which have been registered in the United States as Registration Nos. 2,471,585 and 2,544,267 respectively in International Class 41 for entertainment services in the nature of live acting, dancing performance and modeling for adult performances and public appearances of a star of adult movies, etc. The mark “CLUB JENNA” is registered as U.S. Service Mark Registration No. 2,694,485 to Club Jenna, Inc. in Class 41 for entertainment services, namely, providing visual images and articles in the field of adult entertainment via a global computer network, the Internet or the world-wide web. On or about February 12, 2000, Jennasis Entertainment granted Club Jenna, Inc., an exclusive license to use the “JENNA” and “JENNA JAMESON” service marks.

Since 1999 Club Jenna, Inc. has maintained a website at “www.clubjenna.com”.

5. Parties’ Contentions

A. Complainant

Complainants contend that the disputed domain name was registered by Steve Fecske on or about July 4, 1996 for purposes of publishing a website that exploited the name, image and likeliness of Complainant Jameson. Upon learning of this site in 1998, the Complainants demanded that Fecske cease and desist from using Complainant Jameson’s name, likeliness, image and trademarks. Although Fecske and SN Entertainment proposed an agreement whereby Jameson would receive a royalty based on revenues from the website, an agreement was never consummated, but Jameson did accept payments from Fecske and SN Entertainment. On or about July 30, 1999, Complainant Jameson had a cease and desist letter sent to Fecske and SN Entertainment terminating the verbal agreement which was apparently followed by another cease and desist letter on September 10, 2001.

Complainants further contend that the disputed domain name is identical or confusingly similar to one or more service marks owned by Complainants; and that Respondent has no rights or legitimate interests in respect to the disputed domain name because Complainants’ use of the marks “JENNA” and “JENNA JAMESON” date back to 1996 whereas Respondent’s use allegedly started as of October 31, 2003, the date when the disputed domain name was sold and/or transferred to Linq Entertainment, Inc.

Complainants also contend that Respondent does not have permission to use any of the Complainants’ service marks; the letter agreement between Complainants and Fecske does not grant a license to use Complainants’ marks; and if any right was granted, it was unequivocally revoked by subsequent cease and desist letters sent by Complainants’ legal representatives. Furthermore, the disputed domain name is not the legal name of Respondent and is not otherwise used to commonly refer to the Respondent. Therefore, according to the Complainants, use of the disputed domain name is in bad faith because it is intended to divert consumers from Complainants website located at “www.clubjenna.com” for financial gain. The bad faith use is further illustrated by the fact that the website at the disputed domain name uses a model closely resembling Complainant Jameson who is called “Jenna” on the web page and text on the website refers to Complainant, Jameson.

Finally, Complainants contend that the bad faith use of the disputed domain name is further illustrated by display for profit material that is protected under United States Copyright Registrations.

B. Respondent

The Respondent contends that because Respondent’s predecessor-in-interest registered the disputed domain name nearly eight and one-half (8 Ѕ) years prior to filing of this proceeding, it is barred by laches. Moreover, Respondent contends that because the disputed domain name was registered prior to Complainants’ application for trademark registration or receipt of the registration, Respondent is the senior user of the “JENNA” mark.

Respondent also contends that it has rights and legitimate interests in the disputed domain name because before any notice of the instant dispute, Respondent used the domain name in connection with bona fide offering of services. That is, Respondent has used the domain name to offer adult entertainment content using several adult models all having “Jenna” as their first name and that any content using Complainant’s Jameson’s images was under license and consent.

Furthermore, Respondent contends that the website is not being used in bad faith because Respondent, as well as its predecessor-in-interest, relied on Complainants’ consent to retain ownership of the disputed domain name, and the website displays images of Complainant Jameson under license. With regard to the Complainants’ contention that the domain name is registered and used to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion, Respondent notes that Complainants did not have, at the time of registration of the disputed domain name, a corresponding website and Complainant Jameson profited through the receipt of license fees paid by Respondent’s predecessor-in-interest for use of Jameson’s images and that all images depicting Complainant Jameson were licensed.

Thus, Respondent asserts that the Complainants have failed to satisfy any of the requirements set forth in Paragraph 4(b) of the Policy.

6. Discussion and Findings

Pursuant to Paragraph 10 of the Rules and to insure that the parties are treated with equality and given a fair opportunity to present their cases, the Panel has admitted and has considered the supplemental papers forwarded to the Center on January 24, 2005 and January 26, 2005 respectively. The Panel has declined to admit and consider the parties’ subsequent filings as outside the scope of the Rules and as not necessary for deciding the Complaint. Furthermore, to the extent the Complainants have requested a hearing, the Panel declines to consider that request as not necessary for deciding the issues. Similarly, the Complainants’ request to add an additional domain name is declined because the time required to comply with the Rules would adversely affect the expeditious nature of this administrative proceeding. The Complainant is, of course, free to file a separate Complaint with respect to the additional domain name.

Those submissions that have been considered by the Panel contain numerous charges, countercharges and claims. The Panel has addressed the evidence which it considers probative of the issues to be decided in this Administrative Proceeding. By this Administrative Proceeding, the Panel is charged to determine only whether Respondent has engaged in abusive domain name registration within the terms of the Policy. The Policy and the United States Trademark and Copyright laws are not coextensive. Whether or not Respondent has infringed Complainants’ service marks or copyrights is an issue for another forum. Because of the numerous charges and countercharges in the papers, if the Panel has not discussed a particular argument propounded by one of the parties, it should not be taken as not having been considered, only that it HAS not been considered relevant for the limited purposes of this Proceeding.

In order for Complainants to prevail and have the disputed domain name <jenna.com> transferred to Complainant Club Jenna, Inc., Complainants must prove the following:

(Policy ¶ 4(a)(i-iii)):

(i) the 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 domain name was registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by the Respondent, would demonstrate the Respondent’s rights or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii).

A. Identical or Confusingly Similar

The Complainants have the burden of showing that the disputed domain name is confusingly similar to its marks. The Complainants have submitted competent evidence of ownership of the federally registered service marks “JENNA”, “JENNA JAMESON” and “CLUB JENNA”. These registrations claim use from as early as 1992 in connection with the stated services. While Complainants assert that the names “Jenna Jameson” and “Jenna” used in connection with Complainants’ goods and services are now famous marks as defined by 15 U.S.C. §1125 (c), the Panel declines to accept that view. Nevertheless, the evidence does substantiate Complainants’ prior service mark rights in the names “Jenna Jameson”, “Jenna” and “Club Jenna”. The fact the disputed domain name was registered and used by Respondent’s predecessor-in-interest before the Complainants’ applications for registration of the “JENNA”, “JENNA JAMESON” and “CLUB JENNA”marks is of no moment for the purposes of paragraph 4(a)(i) of the Policy. “The issue under the first factor is whether the Complainant has rights as of the time of the Complaint” Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 8, 2000). The Panel finds that at the time of the Complaint, the Complainants had and currently have service mark rights in the marks JENNA”, “JENNA JAMESON” and “CLUB JENNA”.

But for the addition of the generic top-level domain, the disputed domain name is identical to Complainants’ service mark “JENNA”. Furthermore, the disputed domain name incorporates the dominant portion of the “CLUB JENNA” mark and is confusingly similar to the “JENNA JAMESON” service mark.

Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainants have rights.

B. Rights or Legitimate Interests

According to Paragraph 4(c) of the Policy, a Respondent may demonstrate it has rights or legitimate interests in a domain name if (i) before any notice of the dispute, it used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) it has been commonly known by the domain name; or (iii) it is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleading divert consumers or to tarnish market issue.

Here, Respondent has not alleged that it is making a legitimate non-commercial or fair use of the domain name. Respondent has argued that it has become known by the disputed domain name, but there has been no credible evidence submitted to substantiate that claim.

On the other hand, the Panel is of the view that the Respondent has made out a good case that before any notice of the dispute, it used the disputed domain name in connection with a bona fide offering of goods or services. In the context of this decision, the Panel need not determine whether the “notice” element is triggered by the commencement of this Administrative Proceeding or the prior cease and desist letters from Complainants’ representatives. The credible uncontradicted evidence establishes that in 1998 there was at least a verbal agreement where the Respondent’s predecessor-in-interest was given the right to market the website to which the disputed domain name resolved as the official Jenna Jameson website. Although that agreement fell apart, Respondent’s predecessor-in-interest entered into a Service Agreement dated February 10, 1999 wherein it obtained rights from one Dominic Accera to display various photographs and likelinesses of Complainant Jameson. The verbal agreement between Complainants and Respondent’s predecessor-in-interest apparently continued until at least July 30, 1999 when a representative of Complainant Jameson sent a so-called cease and desist letter which objected to the use of the images and other intellectual property of Jenna Jameson but specifically granted Respondent’s predecessor-in-interest the right to retain ownership and use of the disputed domain name.

Therefore, for at least up to July 1999, Respondent’s predecessor-in-interest had rights in one form or another to display the visual images of Jenna Jameson. Being licensed either directly or indirectly from Complainants’ to display the visual images of Complainant Jameson, the Panel concludes that this was a bona fide offering of services. The Panel also finds persuasive the statement in Complainants’ representative’s July 30, 1999 letter that disclaims any ownership rights to the disputed domain name and expressly states that ownership to the disputed domain name may be retained by Respondent’s predecessor-in-interest. Indeed, Jameson’s representative stated “[y]ou are free to create any content at all for www.jenna.com, so long as it does not include any mention to Jenna Jameson or…her intellectual property”. That recognition further substantiates the earlier bona fide use of the domain name by Respondent’s predecessor-in-interest as well as subsequent bona fide use. To the extent Respondent’s predecessor-in-interest may have included unlicensed content in the website, that is an issue for another forum. Having purchased all of the assets of SN Entertainment, Respondent stands in the shoes of its predecessor.

Although compelling, the Panel need not decide the issue of whether the present Administrative Proceeding is barred by laches in view of the above conclusion.

C. Registered and Used in Bad Faith

Complainants have failed to establish that Respondent had no rights or legitimate interests in the disputed domain name. Accordingly, Complainants cannot succeed in this proceeding. Having made this dispositive finding, the Panel need not address the issue of bad faith registration and use.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Nels T. Lippert
Sole Panelist

Date: February 15, 2005

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-1042.html

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