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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tabu Entertainment Group, LLC v. Domains by Proxy Inc./Craig Friebolin
Case No. D2009-0755
1. The Parties
The Complainant is Tabu Entertainment Group, LLC of Key West, Florida, United States of America, represented by Becker & Poliakoff, P.A.,United States of America.
The Respondent is Domains by Proxy Inc./Craig Friebolin of Arizona, United States of America and Mayfield, Pennsylvania, United States of America, respectively, appearing pro se.
2. The Domain Names and Registrar
The disputed domain names <swingfest.com> and <swingfestmedia.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2009. On June 10, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On June 10, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 24, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 26, 2009. 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 (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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2009. The Response was filed with the Center on August 4, 2009.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 19, 2009. 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.
On August 7, 2009, Complainant filed a supplemental submission (styled as "Response & Objections to Friebolin`s Arguments") responding to Respondent`s Response. On August 21, 2009, following email correspondence with the Center regarding some delay in obtaining documentary evidence, Respondent filed a supplemental submission (styled "Supplemental Filing") responding to Complainant`s Response and Objections. Each of these submissions contains documentary evidence that the parties might not have considered necessary in their initial submissions, and the Panel accepts them as part of the record of this proceeding.
Following its initial review of the submissions of the parties, on September 2, 2009, the Panel (through the Center) issued Administrative Panel Procedural Order No. 1 to the parties. That Administrative Order provided:
"1. Tabu Entertainment Group, LLC, asserts common law trademark rights in the term SWINGFEST. Complainant has specifically asserted that SwingFest LLC is not the owner of the disputed domain names (declaration of Bradley Gross, August 7, 2009). A GoDaddy.com receipt for registration of the disputed domain name <swingfest.com> provided by Complainant dated May 21, 2008 shows SwingFest LLC as payor. The Internet website operated to promote "SwingFest 2009" at <http://www.swingfestevents.com/about.htm> indicates that the promoter is "SwingFest, LLC", and the copyright notice at the base of webpages on that site indicate that the copyright is held by "SwingFest, LLC". The Panel hereby requests, documentary evidence from Complainant that satisfactorily explains its asserted ownership interest in the alleged common law trademark.
2. Respondent has provided two declarations alleged to have been executed by Tranea Watson. Neither of those declarations is notarized. If those declarations are to be considered by the Panel as statements of Tranea Watson, Respondent should obtain notarized versions and resubmit them."
Each Complainant and Respondent provided a responsive submission to the Panel (through the Center) within the time frame established by the Order.
4. Factual Background
Complainant in this matter, Tabu Entertainment Group, LLC, is a Nevada limited liability company with an office in Key West, Florida. The principal owner of Tabu Entertainment Group, LLC is Mr. Jason Jean. Complainant asserts United States federal common law trademark rights in the term SWINGFEST based on use in commerce for a period of three years throughout the United States. Complainant indicates that the term SWINGFEST derives from the term "swinging", referring to an "alternative adult lifestyle" involving, inter alia, the exchange of sexual partners among consenting couples. Complainant alleges that it is in the business of promoting meetings of individuals pursuing the "Swing lifestyle" at various venues around the United States, including well attended annual conventions organized under the name SWINGFEST.
Respondent alleges that the term SWlNGFEST was initially developed and used by SwingFest, LLC, a Pennsylvania limited liability company, formed and managed by Tranea Watson, a resident of Pennsylvania, and that SwingFest, LLC, is owner of common law trademark rights in the term SWlNGFEST. Respondent further indicates that he acted to transfer the disputed domain names from an account in the name of Jason Jean at GoDaddy.com to his personal account at the request and under the direction of Tranea Watson, Managing Member of SwingFest, LLC, and he has provided a notarized statement from Tranea Watson to confirm that. Respondent claims that SwingFest, LLC is the rightful owner of the disputed domain names, and that Respondent initially registered those domain names on behalf of SwingFest, LLC.
Complainant and Respondent rely upon the same annual event (SwingFest 2008 and SwingFest 2009) for the assertion that the term SWlNGFEST is the subject of common law trademark rights, though disputing ownership of those rights. At the time of this proceeding, "SwingFest 2009" is actively promoted on a commercial Internet website at "www.swingfestevents.com". Complainant alleges that it is responsible for the promotion of SwingFest 2009, and there are indicia on the website that supports that position. The address of Complainant in Key West (included in its Complainant) is shown as the contact address for the promoters, Complainant`s counsel is scheduled to present a seminar on compliance with adult entertainment-related law regarding the Internet, and Complainant`s owner (Jason Jean) and his wife (Russy Jean) are scheduled to present a seminar on "Swinging 101" (Panel visit, September 12, 2009, http://www.swingfestevents.com/swinger-classes.htm). The <swingfestevents.com> domain name is registered and under the control of Complainant and its principal owner.
The website presently promoting "SwingFest 2009" indicates that the annual convention is operated by "SwingFest, LLC". Under the heading "About the Swingfest Events 2009 Miami Florida Takeover" is the text "HOLLYWOOD, FL (September 2008)вАФSwingFest, LLC celebrates overwhelming success as the world`s largest swingers party and adult expo. Held at the 1,000 room beachfront Westin Diplomat Resort & Spa, July 30th to August 2nd 2008, this premier event had all the makings of any mainstream corporate convention, but with a swing". This is followed by "NEW FOR 2009", "Now we do it again with вАШSwingfest Events 2009 Miami Florida`." The "Contact" for the meeting is "SwingFest, LLC" (http://www.swingfestevents.com/contact.htm). The copyright notice at the base of the website pages is "¬© 2009 SwingFest, LLC". The terms and conditions for use of the SwingFest 2009 website linked at the bottom of website pages state:
Terms and Conditions for Use of this Site (SwingFestevents.com) This web site and the related web sites contained herein (collectively, the "Site") make available information owned, managed or franchised by Swingfest, LLC. And/or its subsidiaries and affiliates (collectively, "SwingFest"), and other related goods and services. This Site, and the services of each of its modules, is offered exclusively by SwingFest and/or its various third party providers and distributors. The offer of such goods and/or services is conditioned on the user`s ("User(вАШs)" or "You(r)") acceptance of the terms and conditions and notices set forth herein and on other pages of the Site (collectively the "Terms"). (At "http://www.swingfestevents.com/terms.html")
According to the Registrar`s verification, Respondent is registrant of the disputed domain name <swingfest.com>. The record of registration for that disputed domain name was created in October 27, 2000, and last updated on January 29, 2009. According to the Registrar`s verification, Respondent is registrant of the disputed domain name <swingsfestmedia.com>. The record of registration for that disputed domain name was created on November 5, 2008, and was last updated on January 29, 2009. When Complainant sought to determine the registrant of the disputed domain name in late January/early February 2009, the record of registration was protected by a privacy shield (Domains by Proxy Inc.). Respondent indicates that the privacy shield was removed by the Registrar in connection with this proceeding, and not by his request. Domains by Proxy shall remain a co-Respondent in this matter in order to assure effective relief should it be ordered by the Panel.
Respondent has submitted documentary evidence to establish that Tranea Watson is the organizer and managing partner/member of SwingFest, LLC, and as of April 30, 2009 is listed with the Pennsylvania Department of State and Department of Revenue as President/Managing Member, Vice President, Secretary and Treasurer/Tax Manager of the business (Response, Exhibit C). Respondent has further submitted a notarized statement from Tranea Watson stating that a document submitted by Complainant and purporting to be a corporate resolution of SwingFest, LLC naming Jason Jean and Russy Jean as limited partners and officers is a forgery. Tranea Watson states her belief that Complainant has attempted a "paper takeover" of SwingFest, LLC. (Supplemental Filing, Declaration of Tranea Watson, notarized September 4, 2009). Respondent has provided further documents and allegations calling into question the validity of certain submissions to the Pennsylvania Department of State attempting to modify the records of SwingFest, LLC. There is substantial documentation constituting bank records, tax records, payment receipts, and others to indicate that Tranea Watson has served as Managing Member of SwingFest, LLC, and that SwingFest, LLC was substantially involved in the operation and promotion of the SwingFest 2008 Convention. Tranea Watson denies that she was ever an employee of Complainant (Watson Declaration, id.).
Complainant has submitted a notarized affidavit from a Pennsylvania attorney, Ms. Dupuis, stating that she was contacted by an existing client, Jason Jean, about the formation of SwingFest, LLC, in 2007. She states that Mr. Jean directed her office to name Tranea Watson, an employee of Tabu Entertainment, LLC, as the organizer and initial manager. She further states that "Sole membership in the LLC was held by Mr. Jean." The Affidavit states that a document of April 30, 2007 is attached evidencing this, but there is no such document attached to the affidavit. (Complainant`s Response and Objections, Exhibit 3). She states that in January 2009 she was requested to prepare a resolution to revise the officer information for the LLC and did so, and that a subsequent report based on that resolution was prepared by Mr. Jean and delivered to the Pennsylvania Department of Revenue to reference the change in officer information. She states that "the Pennsylvania State offices now officially listing Mr. Jean as the officer of Swingfest, LLC", but presents no documentary evidence of this. Counsel for Mr. Jean, Bradley Gross, provides a document submitted to a bank allegedly signed by Tranea Watson authorizing Mr. and Mrs. Jean to operate banking accounts in the name of the limited liability company. The affidavit of Bradley Gross states that SwingFest, LLC is not the owner of the disputed domain names, but that even if it was, Mr. Jean "is a Vice President of that company and has the power to conduct the affairs of that Company".
On January 27, 2009, Jason Jean submitted to the "Internet Crime Complaint Center" a Complaint Referral Form alleging that Respondent had "hijacked" the disputed domain names from his GoDaddy account. In that Complaint, Mr. Jean listed the "Business Name" of the complaining party as "Swingfest, LLC". (Complaint, Annex 4). A Go Daddy.com receipt showing Jason Jean as customer lists "SwingFest, LLC" as the party renewing the disputed domain name <swingfest.com> for a period of eight years on May 21, 2008 (Complaint Annex 3).
In response to Administrative Order No. 1, Jason Jean indicates that he paid USD 1200 to purchase the <swingfest.com> domain name on "February 6, 2007", and that the purchase amount came from his own funds. He submits a bank record showing a payment to BuyDomains.com of USD 1200 on that day. On that same day, a Go Daddy Inc. receipt shows the <swingfest.com> domain name transferred into the account of "Jason Jean, Tabu Entertainment Group". On February 9, 2008, hosting services for that domain name were paid for, according to Jean and supporting documentation, "using a VISA credit card from my Swingfest LLC subaccount". The domain name was renewed for eight years on May 21, 2008, in the Jason Jean`s personal GoDaddy account, paid for using the Swingfest, LLC subaccount. On November 5, 2008, the <swingfestmedia.com> domain name was entered in Jason Jean`s personal account, using the Tabu Entertainment subaccount. (Declaration of Jason Jean, September 6, 2009, Exhibits A-E).
Respondent Craig Friebolin provides a declaration stating that he acted as an independent consultant for Complainant from January 2003 through January 2009, providing services in domain name management, website development and related matters. Respondent asserts that he and Tranea Watson conceived of a SwingFest annual event in April 2007, and that Jason Jean requested to participate in this new venture. He states that he had discretionary control over the online accounts of Tabu Entertainment Group and SwingFest, LLC, and that the disputed domain names were purchased by him at the request of Tranea Watson. He indicates that he decided to use Jason Jean`s personal accounts at GoDaddy.com to purchase and host the disputed domain names, and that this was not objected to by Jason Jean. He indicates that Watson and he jointly decided that the disputed domain names should be transferred from Jason Jean`s personal account in January 2009 because they intended to sever relations with Jean, and because SwingFest, LLC was the rightful owner of the disputed domain names. He indicates that he is a "limited member" of SwingFest, LLC. A declaration from Tranea Watson, dated August 4, 2009, supports the assertion by Respondent that they jointly decided the disputed domain names should be moved out of Jason Jean`s personal account because they were the rightful property of SwingFest, LLC, and that business relations with Jason Jean were rapidly deteriorating.
The Registration Agreement in effect between Respondent and GoDaddy.com, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties` Contentions
Complainant alleges that it owns federal common law trademark rights in the term SWINGFEST based on use in commerce in the United States and consumer recognition of the mark.
Complainant alleges that the disputed domain names <swingfest.com> and <swingfestmedia.com> are identical or confusingly similar to its trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant indicates that Respondent has not been authorized to use its trademark in the disputed domain names, and that Respondent has not made any bona fide offer of goods or services under the trademark.
Complainant alleges that Respondent registered and has used the disputed domain names in bad faith. Complainant argues that Respondent has attempted to disrupt Complainant`s business by preventing Complainant from using the disputed domain names, and by directing providing "dead links" to Internet users that may falsely create the impression that Complainant is no longer sponsoring events. Complainant further argues that Respondent acted in bad faith because he transferred the disputed domain names from Complainant without its knowledge or consent, and at least initially hid his identity behind a privacy shield.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant.
Respondent alleges that Complainant does not own trademark rights in the term SWINGFEST. Respondent contends those trademark rights are owned by Swingfest, LLC. He contends that he and Tranea Watson are the only individuals with ownership interests in Swingfest, LLC.
Respondent argues that the disputed domain names are not identical or confusingly similar to Complainant`s trademark rights because Complainant has no trademark rights in SWINGFEST.
Respondent contends that it has not acted in bad faith because Complainant was attempting to misappropriate the trademark rights and business opportunities of SwingFest, LLC. Respondent argues that he and SwingFest, LLC intend to pursue litigation against Complainant to resolve the issue of control over the SWINGFEST name, and that his direction of the disputed domain names to "dead links" is intended to preserve the position of the parties pending the outcome of that litigation.
Respondent requests the Panel to reject Complainant`s request to direct the transfer of the disputed domain names.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Each of the parties submitted extensive documentation in connection with this Proceeding, and the Panel has accepted those submissions. The Panel is satisfied that Respondent had adequate notice of the proceedings and that both parties had an adequate opportunity to present their positions.
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 use, 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 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.
A. Identical or Confusingly Similar
For Complainant to succeed in demonstrating that Respondent has engaged in abusive domain name registration and use within the meaning of the Policy, Complainant must demonstrate rights in a trademark or service mark.
The trademark at issue in this proceeding is SWINGFEST. Complainant owns no federal trademark registration for SWINGFEST. Such registration would establish a presumption of ownership of that term as a trademark.
The term SWINGFEST, by Complainant`s own analysis, combines two descriptive terms, "swing" and "fest". In the context referred to by Complainant, the term "swing" refers to an "alternative lifestyle" involving consensual exchange of sexual partners. "fest" is a common short form for "festival". SWINGFEST has a descriptive connotation for a celebration of a form of alternative lifestyle. Because it is a descriptive term, in order for Complainant to establish common law trademark rights it must demonstrate secondary meaning, that is, that the public recognizes and distinguishes the term as identifying a good or service of Complainant. Complainant has made a prima facie showing that SWINGFEST has been used in connection with the promotion of an annual convention with significant recognition by the consuming public, and Respondent has not challenged the basic premise that SWINGFEST has assumed the status of a common law trademark. The Panel can assume for purposes of this proceeding that SWINGFEST has taken on the characteristics of a common law trademark because it appears to be recognized as distinctive by the consuming public. The more difficult issue in this proceeding is: Who owns rights in that trademark?
Assuming that there is an identity between Complainant and its owner, Jason Jean, Complainant has provided substantial evidence that it purchased the disputed domain names and placed them in the Jason Jean personal account at GoDaddy.com. Whether Respondent was an employee or independent contractor of Complainant, assuming that Complainant had not consented to the transfer of those domain names out of Jason Jean`s account, Respondent may well have acted wrongfully.
However, the Panel must distinguish between ownership of the registration of the disputed domain names and ownership of the SWINGFEST trademark. In order to succeed under the Policy, Complainant must demonstrate that it owns the SWINGFEST trademark.
Complainant does not enjoy a presumption of ownership because it holds no trademark registration. Complainant must affirmatively demonstrate ownership, and Complainant has had ample opportunity to do that. It has not succeeded.
The website promoting SwingFest 2009 preponderantly suggests that the trademark is owned and controlled by SwingFest, LLC, a Pennsylvania limited liability company. The terms and conditions for use of the website (see Factual Background, supra) state that the website and the information on it is owned or controlled by SwingFest, LLC. The contact party for the meeting is SwingFest, LLC. Promotional announcements refer to the promoter as SwingFest, LLC. The copyright notice is in the name of SwingFest, LLC. A recently added hyperlink to Jason Jean`s personal website provides the only reference to Tabu Entertainment Group, and this is an indirect and attenuated reference.
Who owns and controls SwingFest, LLC? Respondent has provided substantial evidence that Tranea Watson is the Managing Member and sole officer of SwingFest, LLC. There is documentary evidence that Tranea Watson organized the company in 2007, and state tax records as of April 30, 2009 show Tranea Watson as the sole member and officer of the company. Complainant`s Pennsylvania counsel provides an affidavit saying that she prepared an amending document at the request of Jason Jean, but fails to provide the document, and disclaims responsibility for filing it. Complainant`s Florida counsel provides a copy of a bank record that is not a formal state document. Tranea Watson has stated that she did not sign documents referred to by Complainant.
Complainant has the burden in this proceeding of demonstrating ownership rights in a trademark. Complainant has had more than ample opportunity to provide straightforward documentation from the State of Pennsylvania to persuasively support its ownership or control of SwingFest, LLC, or to provide persuasive documentary evidence of contractual corporate control. It has not done that. Instead, it has provided inconclusive and self-serving statements from counsel.
The evidence on the record of this proceeding strongly suggests that SwingFest, LLC owns whatever trademark rights may exist in the term SWINGFEST. The Panel does not have sufficient information to determine why SwingFest, LLC, was formed as it was. The Panel does not have persuasive evidence that, as a matter of law, Complainant owns or controls SwingFest, LLC.
The Panel determines that Complainant has failed to demonstrate rights in a trademark. It therefore cannot establish that Respondent engaged in abusive domain name registration and use within the meaning of the Policy. For that reason, the Panel does not address the issues of rights or legitimate interests and bad faith.
This determination should not be confused with a decision regarding whether Respondent acted lawfully in transferring the disputed domain names from Complainant`s personal account to his own. Respondent might have misappropriated third-party property without taking unfair advantage of third-party trademark rights. The Panel does not have the authority to make a determination about a wrongful taking that does not involve established trademark rights.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: September 13, 2009