Tommy Lee v. Netico, Inc.
Case No. D2005-0915
1. The Parties
The Complainant is Tommy Lee of Beverly Hills, California, United States of America, represented by Barbara L. Berkowitz, United States of America.
The Respondent is Netico, Inc., of Las Vegas, Nevada, United States of America,
represented by Law Offices of Louis J. Esbin, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tommylee.com> (the “Domain Name”)
is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2005. On August 26, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 31, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 9, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“UDRP” or the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for a Response was October 9, 2005. The Response was filed with the Center on October 7, 2005. The Complainant submitted a supplemental filing on October 19, 2005, to which the Respondent objected on the same day.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 1, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel requested additional information from the
parties by Administrative Panel Procedural Order No. 1 dated December 1, 2005.
After the Center granted an extension of time at the Respondent’s request,
the Complainant replied to the Panel’s Order on December 12, 2005, and
the Respondent on December 15, 2005.
4. Factual Background
The Complainant Tommy Lee (born Tommy Lee Bass) is a musician and entertainer, best known as the drummer for the popular “heavy metal” band Mцtley Crьe since its inception in 1981. He is also widely known in another context, perhaps best described in the words of his own Complaint:
“Complainant was also married to Pamela Anderson, a well known actress, from 1995-1998. Private videos of their sexual conduct were stolen in 1997, making Lee notorious for his private parts.”
The Respondent Netico, Inc. is a corporation organized under the laws of the State of Nevada, United States of America and headquartered in Las Vegas, Nevada. According to state databases, the Respondent’s president and resident agent is Hagop Doumanian. The Declaration of Hagop Doumanian submitted by the Respondent in reply to the Panel’s request for additional information states that Hagop Doumanian has always been the president of Netico, Inc. In its Response, the Respondent characterizes its business as “Internet and Technology services, and in particular the development and release of ‘RED SUN – Revenge of Tommy Lee’” (a planned martial arts computer game, as discussed further below).
The Respondent registered the Doman Name in October 1998. “Jack D.” is listed as the administrative, billing, and technical contact. According to the Declaration of Hagop Doumanian, Mr. Doumanian uses “Jack D” as “a nickname.”
The Complainant provided a printed screen shot of the website to which the Domain Name resolved on August 16, 2005. It shows the address www.landings.overtureparking.com at the bottom of the printout. The screen shot displays a variety of links to commercial sites as well as links labeled “Pamela Anderson,” “Anderson Pamela,” “Electronic Drums,” “Drum Set,” “Drum Kits,” “Indie Rock,” “Indie Music,” and “Rockers.” Following the links is the line, “For information regarding this domain, please contact firstname.lastname@example.org.”
A screen shot provided by the Respondent is dated October 6, 2005. It shows the same address of a “parking” website and the same contact line, but none of the specific links quoted above is listed. Instead, this screen shot, like the site to which the Domain Name currently resolves, displays dozens of links to a variety of commercial and informational sites.
Following the Panel’s request for additional information concerning how the Domain Name was used before August 2005, the Complainant furnished printouts of archived web pages from 2000, 2001, and 2002 showing that the Domain Name formerly resolved to <miamigirls.com>, a website with explicit pornographic content. The Complainant also furnished copies of two news stories from 2002, reporting that the Domain Name resolved to a “porn site.”
The Declaration of Hagop Doumanian, filed shortly after the Complainant’s submission in reply to the Panel’s order, concedes that from April 2000 through May 2002, the Domain Name was redirected to <miamigirls.com> and that the Respondent placed adult content on that site in order to “test the performance” of the site at the request of a potential purchaser. Screen shots of the ”www.miamigirls.com” website refer to “members” pages and “trial memberships”, suggesting that certain content was available beyond a trial period only on a paid subscription basis.
In late 2002 or early 2003, according to Mr. Doumanian, the Domain Name was redirected to the Overture parking site described above. Screen shots of the parking site to which the Domain Name resolved in 2004, furnished by the Complainant, show links labeled “Tommy Lee,” “Music,” and “BMG music,” among others.
The Complainant sent the Respondent a cease-and-desist
letter dated May 6, 2003. The Respondent did not reply to this letter.
5. Parties’ Contentions
The Complainant asserts common law trademark rights in TOMMY LEE as a mark used “in interstate commerce in connection with his role as a musician and entertainer.” The Domain Name is identical to this mark. The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant further contends that the Respondent registered and used the Domain Name for commercial gain by attracting Internet users with the famous TOMMY LEE mark, first to a pornography site and then to a commercial “parking” site. The Complainant cites three URDP Decisions in which domain names were ordered transferred from the Respondent, Hagop Doumanian, or Krikor Doumanian, respectively.
As further evidence that the Respondent sought in bad faith to create a likelihood of confusion with the Complainant, the Complainant points to the August 16, 2005, website screen shot, replete with links that appear peculiarly relevant to the Complainant (such as “Pamela Anderson” and “drums”). The Complainant notes that the site was changed to drop those links after the commencement of this UDRP proceeding, suggesting that this is further evidence of the Respondent’s bad faith and disingenuous pleading. The Complainant also views the Respondent’s failure to reply to the Complainant’s cease-and-desist letter as an indication of bad faith.
The Complainant concludes as follows:
“It is apparent that Respondent has a continuing pattern of misusing the trademarks of others to either blackmail them into paying it money to get the name back or by misleading the public to believe that the web site is sponsored or associated with a well known company or person.”
The Respondent points out that the Complainant has no registered trademark based on the name Tommy Lee and challenges the Complainant’s claim to hold TOMMY LEE as a common law trademark. The Respondent lists other celebrities sharing the name, including the American film actor and director Tommy Lee Jones and, perhaps of particular relevance here, another actor using simply the name Tommy Lee who has starred in many American and Chinese “kung fu” martial arts films. As acknowledged by the Complainant, an Indonesian company holds a United States federal trademark in TOMMY LEE as a mark for clothing. Thus, the Respondent implicitly argues that the name has not attained a distinctive association in commerce with the Complainant and is unlikely to cause confusion among Internet users.
The Respondent claims a legitimate interest in the Domain Name because it has been developing a role-playing martial arts computer game entitled “RED SUN – Revenge of Tommy Lee” and plans to use the Domain Name in connection with that product when it is released. The protagonist in the game is “a Japanese Orphan named Tommy Lee.” According to the Respondent, it commenced development of the game in 1998, “concurrent” with the registration of the Domain Name. The Respondent reports that it chose <tommylee.com> because <redsun.com> has been registered by another party since 1996 (as confirmed by a Whois database search).
The Respondent provides as evidence of its intentions a graphic design for a game with that title, picturing a masked swordsman in Ninja-esque attire. Further evidence is proffered in the form of an agreement and invoice dated November 12, 2004, from Wave Web Works, an Australian company. These indicate that Wave Web Works has agreed to create graphic designs and interactive website features for the game, for roughly $24,000. Wave Web Works is to commence work in time for a launch in “Early Winter 2007”; it appears that no sums have been paid to date, and it is not clear whether a final order has been submitted. The Respondent claims to have invested more than $165,000 to date in developing the game. In reply to the Panel’s request for “documentary support” for this claim, the Respondent furnished a list of items the Respondent says it intends to obtain from the Australian website development company, representing “the accrual of $165,000 in development liability . . . upon delivery of a satisfactorily completed project.”
The Respondent recounts several reasons for the long delay in producing the game and explains that it points the Domain Name to “a temporary parking site” in the interim, “solely for the purpose of displaying something under the Disputed Domain Name, rather than a ‘page could not be found’ message.” As noted above, the Respondent provides a more recent screen shot of that parking site and asserts that it “has never made any reference to Tommy Lee Bass, Mцtley Crьe, or Pamela Anderson.” The Respondent makes the following statement about the website to which the Domain Name resolves:
“Respondent’s current website displayed is a temporary parking page provided by a third party entity (Overture); the contents of which are not controlled by Respondent or any of its affiliates.”
The Respondent states that the Complainant “has no evidence to support the allegation that Respondent is intending to use, or is actually using, the Disputed Domain Name as a porn site.” The Respondent denies that its intent in registering the Domain Name was to sell it to the Complainant or prevent the Complainant from obtaining any Domain Name using his name.
The Respondent addresses the three earlier WIPO cases cited by the Complainant by pointing out that it was the named respondent in only one of them and stating that in the past four years there have been “no further adverse decisions rendered against Hagop Doumanian [the Respondent’s current president and registered agent], Krikor Doumanian, or Netico, Inc.” The Respondent notes that no responses were submitted in those proceedings and asserts that “in each instance of alleged pornographic use of the domain name, the domain names were acquired in bulk and without foreknowledge by respondent of their use at the time.” The Respondent goes on to cite two more recent UDRP decisions denying domain name transfers from the Respondent Netico, Inc. “a/k/a Jack D.” and Hagop Doumanian, respectively.
Finally, the Respondent claims that the Complaint
in this proceeding was filed in bad faith in an attempt at “reverse domain
name hijacking.” The Respondent asserts that the Complainant knew he had
no registered TOMMY LEE mark and made no “reasonable and informed effort
to adduce Respondent’s rights and interests prior to filing the Complaint.”
The Respondent concludes that “a monetary remedy is appropriate.”
6. Discussion and Findings
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.”
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Names, the Complainant must demonstrate each of the following:
(i) the Domain Names are 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 the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Supplemental Filings
The Complainant submitted a “Reply” to the Response, and the Respondent asked for an opportunity to rebut if the Panel accepted this supplemental filing. The Rules do not explicitly provide for supplemental filings. Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence.” Therefore, UDRP Panels are reluctant to encourage delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments. The Complainant’s supplemental filing offers no new material evidence or argument, and the Panel declines to accept it as part of the record in this proceeding.
However, the Panel requested further factual information from both parties. Relevant portions of the parties’ submissions in response to this order are discussed below.
B. Identical or Confusingly Similar
The Domain Name is undeniably identical to the Complainant’s name – or rather the version of the name he has used professionally since at least 1981, which does not include his original family name, Bass. Thus, the issue is whether this name is “a trademark or service mark in which the Complainant has rights,” as required by the Policy.
The Policy does not, by its terms, require a registered trademark or service mark. The WIPO Final Report on The Management of Internet Names and Address: Intellectual Property Issues (April 30, 1999), which is the basis for the Policy adopted later that year, does not distinguish between registered and unregistered marks in articulating a procedure to control the abusive registration of domain names.
Where the mark is not registered, however, it must
be proven by other means. Consistent with trademark law, which has long recognized
certain rights in marks based on their actual use in commerce, the UDRP complainant
must establish that the name in question has acquired a secondary meaning as
a mark identifying goods or services in commerce; there must be sufficient “goodwill
and reputation” in the name and it must be associated with the Complainant
or his goods or services. See Imperial College v. Christophe Dessimoz,
WIPO Case No. D2004-0322. Secondary meaning
may be established, for example, by evidence of the length and volume of sales
under the mark, the nature and extent of advertising, consumer surveys, and
media recognition. See Amsec Enterprises, L.C. v. Sharon McCall, WIPO
Case No. D2001-0083.
Personal names are not protected by the UDRP unless
they are used in commerce and have acquired a secondary meaning as distinctive
of the source of goods or services, which may include a celebrity’s works
or performances. See, e.g., Dr. Michael Crichton v. In Stealth Mode,
WIPO Case No. D2002-0874; Julia Fiona
Roberts v. Russell Boyd, WIPO Case No. D2000-0210.
The Complaint acknowledges that the “Complainant does not own a federal trademark registration for his entertainment name Tommy Lee.” However, it asserts that “he has common law trademark rights in the Tommy Lee mark since he has long used the name as a trademark to promote his business as a musician and entertainer.” The Complaint alleges that ever since the band Mцtley Crьe was formed in January 1981, “the name Tommy Lee has been automatically associated with Complainant Tommy Lee, the rock musician.” The Complaint asserts that the Complainant “continues to work in and promote his business using the mark Tommy Lee.”
The Complainant offers no specific proof of treating his name Tommy Lee as a common-law mark. There is no evidence, for example, that the Complainant has displayed a trademark or service mark notice in publicity or advertising. There is no evidence that the Complainant has applied to use Tommy Lee as a corporate name, trade name, trademark, or d/b/a in any jurisdiction. (By contrast, the Complainant has obtained a registered US trademark for TOMMYLAND, and the name of his band, MЦTLEY CRЬE, is also a registered US trademark.) While the Complainant has used Tommy Lee as a stage name for nearly a quarter of a century, there is no evidence in the record that he has asserted or attempted to enforce common-law trademark rights in his name against any person, until this dispute.
Nevertheless, there is ample evidence of the Complainant’s fame, including media articles and Internet search engine results provided by the Complainant. The Respondent does not contest the Complainant’s assertion that he is a world-famous rock star who has used the professional name Tommy Lee in commerce since the early 1980s.
The Panel therefore finds that, although the TOMMY LEE mark may be a relatively weak one in trademark law, the Complainant has nevertheless established the first element of his UDRP Complaint.
C. Rights or Legitimate Interests
It is undisputed that the Complainant has rights to use the mark TOMMY LEE, at least in connection with musical performances and certain other goods and services, and that the Complainant has not licensed the Respondent to use the mark in any fashion. The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name, placing the burden on the Respondent of coming forward with evidence of such rights or interests.
The Policy’s non-exhaustive list of grounds for asserting rights or legitimate interests in a Domain Name includes the following (Paragraph 4(c)(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”
The Respondent claims to have invested years of effort and over $165,000 in developing a computer game entitled “RED SUN – Revenge of Tommy Lee,” with plans to operate a related interactive website to which the Domain Name would resolve. According to the Response, and as attested more recently in the Declaration of Hagop Doumanian, this has always been the purpose for obtaining and holding the Domain Name. The only documentary evidence of this, however, is an undated graphic, a website development contract dated in 2004, for work to be detailed (and paid for) sometime before Winter 2007, and a list of website development items for which the Respondent claims it has “accrued liability” on its books of account, apparently on the assumption that it will order, receive, and pay for these items at some undefined time in the future.
The Panel’s Order requesting further information specifically encouraged the Respondent “to provide additional documentary support for its claim to have engaged in ‘demonstrable preparations’ to use the Domain Name in connection with the planned computer game.” The Respondent has declined to do so, stating that it “is, quite frankly, reluctant to provide the Panel with any further financial or either web site or video game development information, because of the real threat of piracy and theft of sensitive materials . . . .” The Respondent offers to provide further information only if the Panel, as well as the Complainant and its representatives, execute a “Non-compete, Non-Intervention, and Non-Disclosure Agreement.”
The Panel considers it unlikely that there would exist no evidence of a purported seven year development effort apart from materials revealing the Respondent’s commercial secrets and “novelty concepts.” The Respondent has had ample opportunity in this Proceeding to provide convincing support for its claim of “demonstrable preparations” to use the Domain Name in connection with a computer game incorporating the name Tommy Lee. The only documentary evidence of such preparations that is clearly dated before the commencement of this Proceeding is the rather vague website development agreement executed years after the Domain Name was registered (and after the Complainant’s cease-and-desist letter). In the Panel’s view, this does not establish the Respondent’s “demonstrable preparations” to use the Domain Name to promote a computer game, particularly compared to the actual use of the Domain Name over the past seven years, as discussed further below.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy includes a non-exhaustive list of circumstances that constitute evidence of bad faith in the registration and use of a domain name. Although the Complaint does not cite these provisions of the Policy, it argues that the Respondent “has a continuing pattern” of registering domain names to “blackmail” trademark owners or to create confusion as to the source of a website and attract Internet users to the site for commercial gain. These charges approximate the instances defined in Paragraphs 4(b)(i) and (iv):
“(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name;”
“(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.”
Paragraph 4(b)(i) is inapposite, however. There is no evidence in this case that the Respondent, which has used the Domain Name for seven years, has ever tried to sell it to the Complainant or a third party.
Consistent with Paragraph 4(b)(iv), the Complainant infers that the Respondent chose and maintained the Domain Name so that it might, for commercial gain, confuse and divert Internet users seeking the famous Complainant’s website. The Panel agrees.
It is uncontested that the Respondent registered the Domain Name in 1998, after honeymoon sex videos of the famous Complainant and his equally famous model/actress wife Pamela Anderson were widely distributed over the Internet. It is also uncontested that the Domain Name was used to direct Internet users to pornographic content (including subscription-based content) at <miamigirls.com> and later to a parking site that, until this Proceeding was opened, included links labeled Tommy Lee, Pamela Anderson, and other names and terms indisputably related to the Complainant. It is implausible that these links were accidental; it is much more likely that they reflect an effort to capitalize on the Complainant’s name and fame, especially given the recent exposure of the Tommy Lee / Pamela Anderson sex videos.
The Respondent claims it “overlooked” the redirect from the Domain Name to <miamigirls.com> and had no control over the parking site. The redirect to <miamigirls.com> lasted for more than two years, however, and the content on the parking site mysteriously changed shortly after the Respondent received notice of this Proceeding. The Respondent admitted to obtaining some revenue from the parking site and avoided answering the question directly posed by the Panel as to whether the Respondent earned revenues from using the Domain Name to redirect Internet users to the pornography site. In fact, the Respondent is the registered owner of the <miamigirls.com> domain name, which now resolves to a parking site but formerly included “members only” pornographic content as well as carrying advertising. The Panel concludes that the redirect to <miamigirls.com> exploited confusion over the source of the Domain Name for the Respondent’s commercial gain.
The Panel notes that redirects to <miamigirls.com> featured in two earlier
URDP proceedings finding that Hagop Doumanian (the Respondent’s president)
and Krikor Doumanian (with whom the Respondent denies any affiliation), respectively,
registered and used domain names in bad faith. See LOFO High Tech Film GmbH
v. Hagop Doumanian, WIPO Case No. D2000-1085;
Diversified Gestao e Investimientos Lda. v. Krikor Doumanian, WIPO
Case No. D2000-1749. In yet another URDP proceeding, Paramount Stations
Group of Fort Worth/Dallas, Inc. v. Netico, Inc., WIPO
Case No. D2001-0715, Netico, Inc. (the Respondent in this case) was found
to have registered and used domain names in bad faith. The Respondent’s
dubious history in using domain names including marks held by others, and the
diversion of Internet users to the Respondent’s “www.miamigirls.com”
pornographic website at about the same time that the Domain Name resolved to
that site, support an inference that the Respondent used the Domain Name incorporating
the Complainant’s famous name for similar purposes here.
The circumstances described in paragraph 4(b) of the Policy, justifying an
inference of bad faith, are expressly “without limitation.” The
Panel finds further evidence of bad faith in the Respondent’s failure
to respond in any way to the Complainant’s 2003 cease-and-desist letter.
See, e.g., Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake
Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO
Case No. D2000-0330 (inferring bad faith from a failure to respond to allegations
of trademark infringement).
Finally, the Panel notes that the Respondent has been less than forthcoming in this Proceeding, which is also suggestive of bad faith. The Respondent, for example, argued in the Response that the Complainant “has no evidence to support the allegation that Respondent is intending to use, or is actually using, the Disputed Domain Name as a porn site.” The Respondent, which surely is in the best position to know, avoided describing how the Domain Name was used before August 2005, until the Panel directly asked the question and the Complainant provided screen shots of the pornographic and parking sites to which the Domain Name formerly resolved. Only then did the Respondent concede that it had used the Domain Name to redirect traffic to a site with “adult content,” while still avoiding the question as to whether it had earned revenues from that site. Similarly, the Respondent avers that it never advertised or claimed an association with Tommy Lee or Pamela Anderson, while it is uncontested that those names appeared prominently on the parking site to which the Domain Name resolved until shortly after this Proceeding commenced.
In short, the Respondent has asserted legitimate reasons for registering and using a Domain Name identical to the Complainant’s famous name, but its credibility is undercut by the lack of supporting evidence for its claimed purposes, the opportunistic ways in which it has actually used the Domain Name, a history of involvement in bad-faith registration and use of domain names, the failure to respond to the Complainant’s trademark allegations before this Proceeding, and the Respondent’s evasive and misleading submissions in this Proceeding.
Therefore, the Panel concludes that the Domain Name was, more likely than not, registered and used in bad faith within the meaning of the Policy.
E. Reverse Domain Name Hijacking
The Respondent asks for a finding of Reverse Domain Name Hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 15(e) of the Rules provides as follows:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Rules do not provide for monetary relief in such
a case, as the Respondent mistakenly suggests. In any event, as the Panel concludes
that the Complaint is well founded, it also concludes that the Complaint was
not brought in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <tommylee.com> be transferred to the Complainant and denies the Respondent’s claim of Reverse Domain Name Hijacking.
W. Scott Blackmer
Dated: December 28, 2005