WIDEawake-Deathrow Entertainment LLC v. LogoMaster.com
Claim Number: FA1104001382039
Complainant is WIDEawake-Deathrow Entertainment LLC (“Complainant”), represented by Stephen J. Strauss of Fulwider Patton LLP, California, USA. Respondent is LogoMaster.com (“Respondent”), represented by Carl J. Spagnuolo of McHale & Slavin, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The two domain names at issue are <deathrowsouth.com> and <untouchabledeathrowrecordssouth.com>, (“the disputed domain names”) and they are registered with GoDaddy.com, Inc. (“GoDaddy”).
The undersigned, Mr. David H. Tatham, certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as a Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 6, 2011; the Forum received payment on April 6, 2011.
On April 7, 2011, GoDaddy confirmed by e-mail to the Forum that both of the disputed domain names were registered with it and that Respondent is the current registrant of the names. GoDaddy has also verified that Respondent is bound by its registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (“the Policy”).
On April 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@deathrowsouth.com and postmaster@untouchabledeathrowrecordssouth.com. Also on April 11, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 29, 2011.
A timely Additional Submission was received from Complainant on May 4. 2011 which was deemed to be in compliance with the Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on May 11, 2011 which the Forum deemed to be not timely and so not in compliance with its Supplemental Rule 7.
On May 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David H. Tatham as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the two disputed domain names are identical or confusingly similar to its trademarks DEATH ROW RECORDS and a logo comprising the words DEATH ROW above and RECORDS below a representation of a prisoner in an electric chair. In Complainant’s opinion, the addition of the gTLD ‘.com’ and the words ‘ untouchable’ and ‘south’ do nothing to negate this confusing similarity.
Complainant further contends that Respondent has no rights or legitimate interest in the disputed domain names as they incorporate its DEATH ROW RECORDS trademark in its entirety and thus there is a likelihood of confusion.
Complainant owns the domain name <deathrowmusic.com> where it promotes its DEATH ROW RECORDS sound recordings and clothing. It also owns registrations of the following two trademarks (hereinafter referred to as “the Death Row trademarks”) –
No. 3,884,831 for the words DEATH ROW RECORDS
No. 3.884,857 for a somewhat macabre picture of a hooded man strapped to an electric chair with the words DEATH ROW above him and RECORDS below.
Both were registered on December 7, 2010; both claim use since 1991; both are protected for “Musical sound recordings, phonographic records featuring music, pre-recorded compact discs featuring music, downloadable musical sound recordings in Class 9; and in both the word “RECORDS” is disclaimed.
The DEATH ROW trademarks were acquired in 2009 by the WIDEawake Entertainment Group, Inc. as the result of an auction of the assets of two entertainers – Suge Knight and Andre “Dr. Dre” Young – who traded as “Death Row Records”, but who declared bankruptcy in 2006. The WIDEawake Entertainment Group, Inc. then formed the Complainant company to hold these marks as well as other intellectual property rights.
Complainant claims to have used the Death Row trademarks continually since 1999 but the bankrupt organisation had been using them since 1991, selling over 100 million albums worldwide.
Complaint goes on to contend that –
· It has no relationship with Respondent;
· It has not given Respondent permission to register or use the disputed domain names;
· Respondent has not been commonly known by the disputed domain names;
· Respondent had actual knowledge of Complainant’s rights in their DEATH ROW trademarks when it registered the disputed domain names;
· Respondent displays unauthorized reproductions of its DEATH ROW trademarks on a commercial website which promotes a competing music label under the names “Death Row Records South” and “The New and Untouchable Deathrow South” which is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use.
Complainant contends that Respondent is acting in bad faith because –
· The disputed domain names were registered with the intention of disrupting Complainant’s business;
· Respondent derives commercial benefit from the websites at the disputed domain names thus capitalizing on the likelihood that consumers, wishing to find Complainant’s goods and services, will be confused as to Complainant’s affiliation with the disputed domain names.
· Respondent had actual or constructive knowledge of its rights in the DEATH ROW trademarks which is, of itself, evidence of bad faith registration and use.
B. Respondent
Respondent contends that Complainant has failed to establish that it has acquired any trademark rights that are superior to the disputed domain names.
Respondent states that it registered the corporate name Death Row South Inc. on December 15, 2008, and that it has traded under this name in interstate commerce using the trademarks DEATH ROW SOUTH and “UNTOUCHABLE” DEATH ROW SOUTH since as early as 2004.
It further asserts that it is the owner of a Florida State trademark registration for DEATH ROW SOUTH and the design of a man sitting in an electric chair being electrocuted which was registered on January 6, 2009, claiming use in Florida from September 13, 2006. Furthermore, it points out that Complainant’s trademark registrations were filed some six months after this Florida State registration was granted and so it – Respondent – has better trademark rights in the name and logo.
Respondent also contends that it has been using its DEATH ROW SOUTH trademark on entertainment industry products since 2004 and provided copies of various items as proof thereof.
Although Complainant states, quite accurately, that the original “Death Row Records” was declared bankrupt in 2006, Respondent notes Complainant’s claim to have acquired certain assets of the company in 2009, but contends that it began using the name Death Row South in good faith after 2006 but before 2009 at a time when the original trademark rights were legally abandoned.
Respondent concludes its response by stating that it has not registered the disputed domain names –
· in order to sell, rent, or otherwise transfer them to Complainant;
· in order to prevent Complainant from reflecting them in a corresponding domain name, and indeed contends that the disputed domain names are not preventing Complainant from continuing to possess and use domain names which adequately reflect the mark under which Complainant does business.
· In order to disrupt Complainant’s business;
· In order to attract internet users to its website by creating a likelihood of confusion with Complainant’s trademarks.
Respondent concludes by arguing that the complaint is barred by the doctrine of laches because there has been an unreasonable delay in bringing the action. Respondent admits that laches is not normally a defence under the Policy but quotes a decision in which it was held that the absence of any complaint over a long period of time in which the disputed domain name was in active use could suggest that the use does not give rise to a serious problem.
C. Additional Submissions
Complainant
In its Additional Submission, Complainant first contends that Respondent has failed to contradict a number of its own assertions in the Complaint and, far from establishing that it has rights or legitimate interest in the disputed domain names, actually supports a number of Complainant’s contentions.
Secondly, Respondent’s Florida State Trademark Registration does nothing to defeat the unregistered common law rights in Complainant’s two Federal trademark registrations which have been acquired by itself and its predecessor in business since 1991. Complainant also points out that the Florida State registration stands in the name of Death Row Records South, Inc. which is not a party to these proceedings. Complainant contends that its trademarks are among the most famous in the entertainment industry and even Florida law recognizes that a state registration does not diminish any rights acquired at common law.
Complainant denies Respondent’s assertion that the bankruptcy of Complainant’s predecessor in business caused the DEATH ROW trademarks to be legally abandoned, and complainant quotes a number of authorities on this regard.
As for Respondent’s contention that laches should be applied to this case. Complainant makes the points that –
· Laches is not available under the Policy;
· There is no evidence to support a claim to laches as the dispute was initiated seven months after the registration of one of the contested domain names and nine months in the case of the other;
· Respondent has not been prejudiced by complainant’s purported delay in bringing these proceedings.
Respondent
Respondent makes only two points in its Additional Submission – that it is the agent for Death Row Records South, Inc. with respect to domain registration, and that Complainant misunderstands, or mischaracterizes trademark law and the policy regarding the dates of first use for trademarks.
Death Row records is the name of a music label which was founded in 1991 by Suge Knight and Andre “Dr. Dre” Young. It became home to some of the West Coast’s best known rap and hip hop artists, including the well-known Snoop Doggy Dog. However, the business was declared bankrupt in 2006. Much of the business was acquired by WIDEawake Entertainmant Group, Inc. in 2009 who formed a subsidiary called WIDEawake-Deathrow Entertainment, Inc. which is the Complainant in these proceedings.
The Respondent has not provided the Panel with any factual information about itself but, from its website, it is clear that it is an organisation that carries on the tradition of the above mentioned, but now defunct, Death Row record label.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Respondent has alleged that when the earlier Death Row Record organisation was declared bankrupt in 2006, any trademark rights it may have acquired ceased to exist, so they became legally abandoned and were only revived when Complainant acquired some of the assets of the bankrupt organisation in 2009. These included certain IP rights.
Complainant argues persuasively that a bankruptcy does not result in an abandonment, quoting three authorities – the case of Drew Kaplan Agency, Inc. v. DAK.COM, FA 94328 (Nat. Arb. Forum May 16, 2000), in which it was said that the bankruptcy of DAK Industries is not an intention to abandon the Marks; Callman on Unfair Competition, Trademarks and Monopolies in which it is said “Nor does the bankruptcy of a trademark owner automatically end the life of the mark or establish its abandonment”; and the eminent T. McCarthy who states in his book that “Abandonment does not result from a temporary forced withdrawal from the market due to causes such as … bankruptcy”.
The Panel is not an expert on U.S. trademark law but accepts these three authorities, after having studied the papers put before it on this subject by Complainant.
2. Laches
Respondent has argued that there has been an unreasonable delay on the part of Complainant in bringing this Complaint, and alleges that this constitutes laches on the part of Complainant. Complainant has ridiculed this allegation saying that laches is an equitable remedy and so not available in a domain name dispute; that only a very short time has elapsed before it brought the Complaint; and that Respondent has not been prejudiced by this alleged delay.
In fact, as the Policy has been in existence for more than 10 years it is not unreasonable to suggest that if a Complainant has delayed unreasonably in bringing a complaint a Respondent could legitimately claim that it has been prejudiced by this delay. The Panel is aware that there have been a number of Decisions in which the claim of laches has been summarily dismissed. But in the relatively recent case of The New York Times Company v. Name Administration, Inc. FA 1349045 (Nat. Arb. Forum Nov. 17, 2010), it was said that laches “is a valid defense in any domain name dispute where the facts so warrant”.
However the facts in this case do not warrant a finding of laches. There is absolutely no evidence of delay on the part of Complainant, for the disputed domain name <deathrowsouth.com> was registered on August 3, 2010 and the disputed domain name <untouchabledeathroerecordsosuth.com> was registered on May 12, 2010, but the Complaint was filed on May 4, 2011. This is a delay of only 9 months in the first case and 12 months in the other. In the opinion of the Panel this is not an unreasonable delay, and certainly not enough to warrant a finding of laches.
2. Additional Submission
Because Respondent’s Additional Submission was out of time, the Panel has the option of paying it no attention. However it was only just out of time and the Panel feels it would be unfair to Respondent to ignore it. As will be seen therefore, the Panel has referred to it even though its contents appear to be off the point.
Complainant is the proprietor of the following two U.S. trademark registrations –
No. 3,884,831 for the mark DEATH ROW RECORDS
No. 3.884,857 for a somewhat macabre picture of a man in an electric chair with the words DEATH ROW above him and RECORDS below..
They were both registered on December 7, 2010 but claim use since 1991.
Complainant also annexed copies of its trademark registrations for either the words or the device in the European Union and Mexico, as well as in Japan and Australia, although these latter two appear from the papers to belong not to Complainant, but to Kaufman Entertainment Law Group.
Respondent is the proprietor of a Florida State trademark Registration for: DEATH ROW SOUTH AND DESIGN OF MAN SITTING IN ELECTRIC CHAIR BEING ELECTRICUTED (sic). The registration is in the name of Death Row Records South, Inc., it is dated January 6, 2009, use is claimed “in Florida and anywhere” as from September 13, 2006, and the word SOUTH is disclaimed.
Complainant asks the Panel to ignore this State registration firstly because it does not belong to Respondent, secondly because of their own common law user rights which go back to 1991 and so pre-date it, and thirdly because, according to Florida State law, a state registration cannot diminish or affect any previously acquired common law rights.
According to the “WIPO Overview of Panel views on Selected UDRP Questions 2.0”, the consensus view in UDRP Decisions is that in order for a Complainant to rely on common law rights, it must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Complainant has produced copies of extracts from a number of reference books, all of which confirm the claims in the Complaint that the original Death Row records company began life in the early 1990s, that it was initially a highly successful record label, particularly for rap and hip hop artists, but that it had collapsed in acrimony and lawsuits by the early 2000s. It is described in these documents as an organisation which blurred the line “between art and reality, crime and business” and as being “perceived as a record company run like a gang, or perhaps the other way round.” One of the label’s artists was acquitted of murder and another died in a drive-by shooting. One of the founders of the label spent time in prison on racketeering charges and later for parole violations.
Thus it can be assumed that rights in the mark DEATH ROW and in the grisly device of the man in the electric chair go back to approximately 1991. There does seem to have been a gap in their use between a declaration of bankruptcy in 2006 and 2009 when the company’s assets were acquired by Complainant at auction. The Panel has discussed this question above and, in any case, since a trademark registration must be out of use for at least 5 years before it can be struck off the Register, this 3 year gap would seem to be of little consequence. The Panel is therefore prepared to accept that common law rights in the two trademarks on which Complainant relies, and both of which were subsequently registered with the USPTO in 2010, are valid and long-standing.
There is nothing in the Policy to say that a Complainant must have a registered trademark in order to prove a Complaint. The Policy refers only to “rights” and it is well established that these can be common law or other rights. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) in which it was found that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist, while in British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000) it was said that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and that the Policy applies equally to “unregistered trademarks and service marks”.
The Florida State registration upon which Respondent relies does not negate Complainant’s common law rights. The mark post-dates them and in any case it does not stand in the name of Respondent. Respondent attempts to overcome this hurdle by claiming in the Additional Submission that it is only acting as the agent for the trademark owner, but provides no evidence for this and the Panel cannot accept this claim.
Having established that Complainant has rights in the name and trademark DEATH ROW RECORDS the next question to be decided is whether this name is identical or confusingly similar to the two disputed domain names – <deathrowsouth.com> and <untouchabledeathrowrecordssouth.com>. That Respondent had the now defunct Death Row record company in mind when adopting the names DEATHROW SOUTH and UNTOUCHABLE DEATHROW RECORDS SOUTH, and when registering the disputed domain names, is apparent. Respondent, Complainant, and Complainant’s predecessors are (or were) all in the business of producing and selling music. In addition, no one could have hit upon such a strange and unusual name as DEATH ROW by chance, and there is very prominent use on Respondent’s website of the picture of the man in the electric chair which Complainant uses and which its predecessor in business used for many years.
In this case, Respondent has taken the distinctive element of Complainant’s word trademark, namely the words DEATH ROW (for ‘RECORDS’ is disclaimed) and in one case added to it the generic word “south” and in the other has done that as well as preceding it with the generic word ”untouchable”.
It is very well established through a host of Decisions under the Policy that if a domain name is merely the combination of a common or generic word and a Complainant’s trademark, this is sufficient for a finding that it is confusingly similar to that trademark. For example, in the decision in the case of V Secret Catalogue, Inc. v. Wig Distributions, FA 301727 (Nat. Arb. Forum Sept. 7, 2004), the Panel found that the domain name <victoriassecrethair.com> was confusingly similar to the trademark VICTORIA’S SECRET. Also, in the case of Allianz of Am. Corp. v. Lane Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) it was found that the addition of the generic term ‘finance’, which described the Complainant’s business, did not sufficiently distinguish the Respondent’s domain name from the Complainant’s trademark ALLIANZ; and in The Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) it was found that the domain name <duracellbatteries.com> was confusingly similar to the Complainant’s trademark DURACELL.
The Panel has therefore concluded that both of the disputed domain names are confusingly similar to marks in which Complainant has rights and that paragraph 4(a)(i) is therefore proved.
It is well established that the burden for proving that a Respondent has no rights or legitimate interests in a disputed domain name rests with a Complainant. However this puts him in the almost impossible position of proving a negative. So it is customary, when a Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, for the burden to shift to Respondent to show that it does have rights or legitimate interests. See, for example, both Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), and AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
In this case the Panel finds that Complainant has indeed made out a prima facie case. Therefore the burden shifts to Respondent. However, given the history of the name ‘Death Row’ for a record company between the early 1990s and 2006 when it became bankrupt (see above), and given that Complainant quite legitimately acquired the rights in this name as the result of an auction in 2009, it is apparent that Respondent cannot have been using the name legitimately, as it claims, since 2004 or since December 15, 2008 when it was granted a corporate name registration. It is also clear that if it did so it could not have been in good faith.
The Panel has therefore concluded that paragraphs 4(a)(ii) and 4(a)(iii) of the Policy are also proved.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deathrowsouth.com> and <untouchabledeathrowrecordssouth.com> domain names be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: May 17, 2011
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