Sunset Bronson Entertainment Properties LLC v. Jon Winston Hauer & J Winston & Company
Claim Number: FA0906001268209
PARTIES
Complainant is Sunset Bronson Entertainment Properties, LLC (“Complainant”),
represented by Bernard R. Gans, of Jeffer, Mangels, Butler & Marmaro, LLP,
California, USA. Respondent is Jon Winston Hauer & J Winston & Company (“Respondent”),
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <sunsetbronson.com>, <sunsetbronson.net>, and <sunsetbronson.tv>, registered with GoDaddy.com, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 15, 2009. Upon request of the National Arbitration Forum on June 18, 2009, Complainant amended its Complaint on June 19, 2009, so as to consistently list the Respondent’s name throughout the pleadings; and so as to assert that the Complaint was served upon the Registrar in accordance with Forum Supplemental Rule 4(e).
On June 15, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sunsetbronson.com>, <sunsetbronson.net>, and <sunsetbronson.tv> domain names are registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@sunsetbronson.com, postmaster@sunsetbronson.net, and postmaster@sunsetbronson.tv by e-mail.
Respondent's Response was received in electronic copy form on July 10, 2009, subsequent to the Response deadline of June 9, 2009. This Response was not properly served on the Complainant. Further, no hard copy of the Response was received. Therefore, The National Arbitration Forum considers the Response to be deficient under ICANN Rule 5, but the Forum defers to the ruling of the Panel on this issue.
Complainant submitted a timely Additional Submission on July 14, 2009. On July 18, 2009, Respondent submitted a timely Supplemental Response to Complainant’s Additional Submission.
On
July 17, 2009,
pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Carol M. Stoner, Esq. as Panelist.
Respondent’s Response was received in electronic copy only, subsequent to the Response
deadline and was not properly served on Complainant
Respondent argues that the hard copy of its response was not delivered on time due to an
error by the Postal Service. The Panel has reviewed credible evidence that Respondent
mailed its Response via Express Mail on June 08, 2009, and that said package arrived at
Pick-Up-Point on July 09, 2009 at 9:23 am in
express mail package was not delivered to the National Arbitration Forum until 8:21 am
on July 10, 2009. The Panel finds that said late delivery was outside of the control of the
Respondent, who initiated the mailing in sufficient time. Therefore, the Panel will not
consider the Response to be late. The Panel deems the remaining deficiencies to be
technical in nature, and not such as to adversely affect the ability of the Complainant to
adequately represent itself. In summation, Panel accepts Respondent’s Response, will
carefully consider same, and give said Response its due
weight. See J.W. Spear & Sons
PLC v. Fun League Mgmt. FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that
where respondent submitted a timely response electronically, but failed to submit a hard
copy of the response on time, “{t}he Panel is of the view that given the technical nature
of the breach and the need to resolve the real dispute between the parties that this
submission should be allowed and given due weight”).
RELIEF SOUGHT
Complainant requests that the domain names <sunsetbronson.com>, <sunsetbronson.net> and <sunsetbronson.tv> be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS.
Complainant alleges as follows:
Respondent Hauer was employed by
the Complainant’s affiliate Sunset Studios Holdings, LLC as Manager of IS
Telecommunications. In the course of his
employment, he was directed to register, on behalf of Complainant, and in
Complainant’s name, the domain names <sunsetbronson.com>, <sunsetbronson.net>, and <sunsetbronson.tv>.
Complainant paid for all expenses incurred in connection with the registration of the foregoing domain names.
The domain name <sunsetbronson.com> currently
redirects to Complainant’s website which advertises the television and film
production studios and services Complainant provides under its mark SUNSET BRONSON. Complainant also uses <sunsetbronson.com> as the domain
name for the e-mail addresses of its employees, as well as certain of the
employees of its affiliates.
Contrary to instructions, Respondent registered the domain names <sunsetbronson.com>, <sunsetbronson.net>, and <sunsetbronson.tv> in his own name, rather than that of Complainant. Upon discovering what Respondent had done, Complainant requested that Respondent – who had been released from his employment for unrelated reasons – transfer the domain names to Complainant. Respondent refused to transfer the domain names, unless Complainant paid him $15,000. Respondent’s bad faith conduct has necessitated this proceeding.
Complainant has rights in the mark
SUNSET BRONSON. Complainant has adopted
and is using the trademark SUNSET BRONSON in connection with its television and
film production studios and lots, located in
In early 2008, Complainant acquired KTLA/Tribune Studios which was the original location of Warner Brothers Studios, and is one of the oldest continuously operating studios. After acquiring the studios, Complainant changed the name to SUNSET BRONSON Studios and has continued to offer premier studio space and production services in connection with that mark. Since adopting the SUNSET BRONSON mark over a year ago, Complainant has actively and aggressively promoted its SUNSET BRONSON mark in connection with its studios and related production services.
Respondent has registered the
disputed domain names <sunsetbronson.com>,
<sunsetbronson.net>, and <sunsetbronson.tv>. The disputed domain names are virtually identical to Complainant’s SUNSET BRONSON mark. In fact, the only difference between Complainant’s mark and the disputed domain names is the addition of the top level domain name identifiers “.com”, “.net”, and “.tv”, respectively.
Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
As an employee of Complainant’s affiliate, Respondent was well-aware of Complainant’s right in the SUNSET BRONSON mark.
Respondent is not making use of any of the disputed domain names in connection with any bona fide offering of goods and services.
Complainant is not commonly known by the disputed domain names, nor is he authorized to use Complainant’s mark.
Complainant lastly alleges that
Respondent registered and is using the disputed domain names in bad faith. Complainant submits that Respondent acquired
the disputed domain names primarily for the purpose of selling, renting or
transferring them to Complainant. Upon information and belief, Complainant
asserts that Respondent’s actions were taken with the primary purpose of
disrupting Complainant’s business.
Respondent alleges as follows:
Complainant has failed to produce any documentation directing the Respondent to acquire the domains in question, that is <sunsetbronson.com>, <sunsetbronson.net>, and <sunsetbronson.tv>.
Complainant has not provided any material making use of the contested domains.
Respondent registered the domains in question with the anticipation of his utilization to exhibit cultural and historical information relevant to the area.
Respondent has allowed Complainant free use of the disputed domain names, pending the company’s re-branding of the company and consolidation of websites.
On October 14, 2008, Respondent, at Complainant’s direction, registered a series of seven names related to the new name of the studios as “Capital”. Respondent, upon termination, provided the relevant account and password information to Complainant’s Human Resources Department.
Complainant, on November 13, 2008, issued press releases through PR-Newswire and Reuters regarding the re-branding of studios as Sunset Gower Studios and Sunset Bronson Studios as “Capital Studios”.
Complainant has failed to establish “bad faith” on the part of Respondent, as Respondent has allowed free use of the <sunsetbronson.com> domain name for more than one year.
The articles referred to by Complainant’s Exhibits “D” and “E” are from two small local publications, published by clients of Complainant.
Respondent’s interest in the site was originally that of a writer and amateur historian, using the <sunsetbronson.com> domain as a platform for that material.
Respondent requests Complainant to
cease and desist in this action and withdraw all actions involved in this
dispute.
Additional Submissions
Complainant’s Additional Submission
Respondent registered and is using the domain name in bad faith. Respondent did not provide any explanation for why, if he was not instructed to register the domain names on behalf of Complainant, why he submitted an expense report and was reimbursed for cost incurred registering the disputed domain names. Respondent’s vague response about using the disputed names as a platform for cultural and historical musings about the area, fails to explain why Complainant immediately began using one of the disputed names, to house its website and all of its company e-mail. Respondents conduct in refusing to transfer the disputed domain back to Complainant even after being informed that his refusal is seriously compromising Complainant’s entire e-mail system and thus interfering with Complainant’s ability to effectively operate its business – is compelling evidence of registration and use in bad faith.
Respondent has no rights or legitimate interests in the disputed domain names. The idea, that one day, one might use a domain name in connection with an informational website or a bona fide offering of goods, is not sufficient to establish any rights or legitimate interest in a name.
Complainant owns the mark SUNSET BRONSON. It uses the mark on its website and the mark has been used to identify Complainant’s services in several industry publications. Additionally, Complainant owns U.S. Trademark Application, Ser. No. 76/697,864 for SUNSET BRONSON STUDIOS. The articles attached to the Complaint as Exhibits B-D each state that the property “will be known as Capital Studios at Sunset Bronson.”
Respondent’s Additional Submission
Complainant applied for the trademark on June 11, 2009 for the name Sunset Bronson Studios. Sunset Bronson is sufficiently different from the trademark for which the Complainant has only recently applied.
Complainant has failed to establish that Respondent has no rights or legitimate interests in respect of the domain name. Respondent acquired the domain name on February 05, 2008, long before Complainant applied to the USPTO on June 11, 2009 to use the trademark Sunset Bronson Studios, or any actual use of that name was established.
Finally, Complainant has failed to prove Respondent’s bad faith in purchase, use and retention of the disputed domains. Complainant has established no evidence of Respondent’s classification as being a competitor, disrupting business, nor diverting traffic for Respondent’s commercial gain.
FINDINGS
The Panelist finds as follows:
(1) the domain names <sunsetbronson.com>, <sunsetbronson.net>, and <sunsetbronson.tv> registered by the Respondent are identical or confusingly similar to the trademark or service mark “SUNSET BRONSON” in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names
have been registered and are being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that a registration is not necessary for Complainant to establish rights in the SUNSET BRONSON mark under Policy Par. 4(a)(i) provided that Complainant can establish common law rights in the mark through a sufficient showing of secondary meaning in the mark. See Artistic Pursuit LLC v. Calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy Par. 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark);
see also Great Plains Metromall, LLC v. Creach, FA97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant contends that since its adoption of the SUNSET BRONSON mark in early 2008, Complainant has continuously used the mark since that time, and has been the subject of much media attention. The Panel was influenced by Complainant’s Exhibits
B & C, evidencing use of the mark SUNSET BRONSON on its website and in advertising. The entertainment industry flaunts it own, in this case, a multimillion dollar renovation of independent television and film studios housed on historical studio lots, formerly belonging to Warner Bros. and Columbia Pictures. Thus the relevant public, that is the entertainment industry, has come to easily-recognize the SUNSET BRONSON mark as representing state of the art film and television studios. Though the time period is short, the exterior glitz and glamour of the renovated buildings, on legendary lots inside Hollywood, publicized in the media, and fronted by large signs containing the mark, is sufficient to convince this Panelist that the Complainant has made a sufficient showing of secondary meaning in the SUNSET BRONSON mark. That is, the relevant public, in calling for the largest independent television and film studios, is likely to respond to the media buzz surrounding the renovated and merged studios, and call for SUNSET BRONSON. Thus, Complainant has made a sufficient showing of common law rights in the mark under Policy Par. 4(a)(i), dating back to early 2008. See George Weston Bakeries v. McBroom, FA 933276 (Nat. Arb. Forum April 25, 2007) (finding that the Complainant could establish common law rights in its GW Bakeries mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate significant goodwill”); see also Stellar Call Ctrs. Ppty Ltdd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the Complainant established common law rights in the STELLAR CALL CENTERS mark because the complainant demonstrated that its mark had acquired secondary meaning).
Complainant asserts
that all of the <sunsetbronson.com>, <sunsetbronson.net>, and <sunsetsetbronson.tv> domain
names are identical to Complainant’s SUNSET BRONSON mark because the mere
additions of the generic top-level domains (“gTLD’s”) “.com,” “.net,” or “.tv”
do not sufficiently distinguish any of the disputed domain names from
Complainant’s mark. All of the disputed
domain names delete the space within the mark.
The Panel agrees with these arguments and finds that all of the disputed
names are identical or confusingly similar to Complainant’s SUNSET BRONSON mark
under Policy Par. 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
Mar. 27, 2007)(concluding that the affixation of a
gTLD to a domain name is irrelevant to a Policy Par. 4(a)(i) analysis); see also Bond & Co. Jewelers, Inc. v.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy Par. 4(a)(ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP Par. 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent does not rebut Complainants’ assertion that the <sunsetbronson.com> domain name resolves to Complainant’s website. This use of the <sunsetbronson.com> domain name is not a bona fide offering of goods and services,
under Policy Par. 4(c)(i) or a legitimate noncommercial or fair use under Policy Par.
4(c)(iii). See WorldPay v. Jones, FA 1169388 (Nat. Arb. Forum May 8, 2008) (finding
the respondent was not using the disputed domain name in connection with a bona fide
offering of goods or services pursuant to Policy Par. 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy Par. 4(c)(iii) because the respondent used
the
disputed domain name to link to complainant’s website); see also MO Media LLC v.
NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the
respondent copied the complainant’s websites in their entirety at the disputed domain
names).
Complainant shows through its Exhibit “I” that the <sunsetbronson.net> domain name
and through its Exhibit “J” that the <sunsetbronson.tv> domain name each resolve to
similar websites that display several hyperlinks to various unrelated third-party websites.
Complainant then pre-supposes that Respondent receives click-through fees for these
hyperlinks. The Panel concurs with Complainant’s contentions and finds that
Respondent’s subjected use of the <sunsetbronson.net>and <sunstbronson.tv> domain
names is not a bona fide offering of goods and services under Policy Par. 4(c)(i) or a
legitimate
noncommercial or fair use under Policy Par. 4(c)(iii). See Constellation Wines
U.S. Inc. v.
that the respondent had no rights or legitimate interests under Policy Pars. 4(c)(i) or
4(c)(iii) by using the disputed domain name to operate a website featuring links to goods
and services unrelated to the complainant); see also Meyerson v. Speedy Web, FA 960409
(Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any
goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy Par. 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy Par. 4(c)(iii).
Respondent is listed in the WHOIS information as “Jon Winston Hauer and J Winston & Company.” Complainant asserts that Respondent is not commonly known by any of the disputed domain names. Panel has not reviewed any information which controverts this contention, and therefore finds that Respondent is not commonly known by the disputed domain names under Policy Par. 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy Par. 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent has not disputed Complainant’s argument that Respondent offered to sell the <sunsetbronson.com>, <sunsetbronson.net>, and <sunsetbronson.tv> domain names to Complainant for $15,000.00. The Panel finds that Respondent’s uncontroverted offer to sell the disputed domain names for more than Respondent’s out-of-pocket costs for registering the disputed domain names is further evidence that Respondent lacks rights and legitimate interests in all of the <sunsetbronson.com>, <sunsetbronson.net>, and <sunsetbroson.tv> domain names under Policy Par. 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy Par. 4(a) (ii); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests”).
Complainant asserts that Respondent is a former employee of Complainant who registered the disputed domain names on behalf of Complainant, but intentionally registered the disputed domain names in Respondent’s name. Respondent has not rebutted this assertion and merely states that Complainant has no proof of it. Respondent is undisputedly a former employee and Respondent undisputedly registered the disputed domain in his own name, as evidenced by the WHOIS printouts. Further, Complainant reimbursed Respondent (per Exhibit “K”. Panel agrees with Complainant’s assertions and finds that Respondent’s misguided actions have not merited him any rights or legitimate interests in the disputed domain names under Policy Par. 4(a)(ii). See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Nat. Arb. Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark); see also Nasaco Elecs. Pte Ltd. v. A&O Computer AG, D2000-0374 (WIPO July 14, 2000) (finding that the respondent has no rights or legitimate interests in the domain name where the respondent’s former employee registered the domain name and transferred it to the respondent, who has since made no use of the domain name).
Respondent does not rebut, either in his Response or in his Supplemental Response, Complainant’s contention that Respondent offered to sell the disputed domain names to Complainant for $15,000.00. The Panel finds that Respondent’s uncontroverted offer to sell the <sunsetbronson.com>, <sunsetbronson.net>, and <sunsetbronson.tv> domain names to Complainant, for more than Respondent’s out-of-pocket costs to register these names, constitutes bad faith registration and use under Policy Par. 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2000. sufficient evidence of bad faith registration and use under Policy Par. 4(b)(i)); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Complainant asserts
that Respondent’s <sunsetbronson.net>
and <sunsetbronson.tv> domain
names resolve to similar websites, each of which displays hyperlinks to
unrelated third-party websites.
Complainant argues that Respondent receives click-through fees for these
hyperlinks. Panel has reviewed
Complainant’s Exhibit “I” evidencing <sunsetbroson.net>
and Complainant’s Exhibit “J” evidencing <sunsetbronson.tv> and makes a presumption that Respondent
does receive click-through fees for the hyperlinks to unrelated parties. Panel
therefore, finds that Respondent’s use of the abovementioned domain names
constitutes bad faith registration and use under Policy Par. 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v.
this Domain Name May Be For
Respondent, while an employee of Complainant, registered the disputed corporate
domain names in Respondent’s own name, and then boldly sought and received
reimbursement for same. See Complainant’s Exhibit “K”. Respondent’s twin assertions
in these
regards that “Complainant has failed to produce any documentation directing
(emphasis per Panelist) the Respondent to acquire the domains in question” and that
“Respondent has allowed free use, patiently awaiting the Complainant’s re-branding of
the company and consolidation of their web sites” do not further buttress his claims of
rights or legitimate interests in the disputed domain names. Rather, Respondent, through
the registration and use of the disputed domain names, has conducted himself as a
“faithless employee”. Such conduct constitutes further evidence of bad faith registration
and use
under Policy Par. 4(a)(iii). See Arab Bank for Inv. & Foreign Trade
v. Akkou,
D2000-1399 (WIPO Dec.19, 2000) (finding bad faith registration and use where the
respondent was formerly employed by the complainant, andwas fully aware of the name
of her employer); see also 163972 Canada, Inc. v. Ursino, AF 0211 (e-Resolution July 3,
2000) (finding that because the respondent was hired by the complainant to help design
and register the complainant’s websites, the respondent had intimate knowledge of the
complainant’s business and use of its TEENFLO mark. Therefore, the respondent’s
registration of the <teenflo.com> domain name was in bad faith).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunsetbronson.com>, <sunsetbronson.net>, and <sunsetbronson.tv> domain names be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner,
Esq., Panelist
Dated: July 31, 2009
-11-
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