Bogart, Inc. v. Humphrey Bogart Club
Claim Number: FA0306000162770
PARTIES
Complainant
is Bogart, Inc., New York, NY
(“Complainant”) represented by Lawrence
V. Molnar of CMG Worldwide, Inc.
Respondent is Humphrey Bogart Club,
Las Vegas, NV (“Respondent”) represented by Ari Goldberger of ESQwire.com
Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <humphreybogart.com>
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that each of them has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Honorable
Herman D. Michels, Mark Van Buren Partridge and Anne M. Wallace, Q.C., as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 13, 2003; the Forum received a hard copy of the
Complaint on June 16, 2003.
On
June 17, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the
domain name <humphreybogart.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network Solutions, Inc. has verified that Respondent is
bound by the Network Solutions, 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 18, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 8,
2003 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@humphreybogart.com by e-mail.
A
timely Response was received and determined to be complete on July 8, 2003.
Complainant
submitted an Additional Submission to the Forum on July 16, 2003, which was not
in compliance with Forum Supplemental Rule #7.
Respondent
submitted an Additional Submission on July 21, 2003 in response to
Complainant’s Additional Submission.
On July 21, 2003, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Honorable
Herman D. Michels, Mark Van Buren Partridge and Anne M. Wallace, Q.C., as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant,
Bogart, Inc., is a Delaware corporation. Complainant owns United States
trademark registration 1,775,912 for the HUMPHREY BOGART trademark. In
addition, Complainant claims extensive common law trademark rights. Complainant
presented evidence that the name, image and likeness of Humphrey Bogart has
been used extensively by Complainant and others licensed by Complainant.
Complainant submitted evidence to show that Complainant uses, promotes,
protects and licenses third party use of the name, image or likeness of
Humphrey Bogart in all advertising, promotional campaigns of any kind or
utilizing any technology or media, and in numerous product categories
including, for example, calendars, posters, video recordings, clothing,
T-shirts, footwear, advertising, cologne, electronic devices, and publicity and
advertising services. Complainant filed an extensive list of permitted
licensees. Respondent is not a licensee and is not otherwise authorized to use
the HUMPHREY BOGART mark or any other intellectual property owned by Bogart,
Inc.
Complainant
asserts that it has invested time and energy in the promotion and protection of
the name and likeness of Humphrey Bogart and, by virtue of these activities,
Complainant has proven to the world at large that it is the sole and exclusive
owner of all intellectual property rights relating to the name and image of the
late Humphrey Bogart. Complaint further asserts that Complainant has put the
public on notice of its existence through broad enforcement of its rights
against infringers, through the careful administration of the hundreds of
licensed users that it has authorized over the decades since Humphrey Bogart’s
death, and through the requisite credit lines that adorn every licensed use of
Humphrey Bogart’s name or image, which credit lines function as notice to the
general public that Bogart, Inc. owns and claims ownership to the intellectual
property rights relating to the name and image of Humphrey Bogart.
Respondent,
Humphrey Bogart Club, registered the disputed domain name <humphreybogart.com>. Complainant asserts that this domain
name is identical to or confusingly similar to Complainant’s HUMPHREY BOGART
mark.
Complainant
asserts that Respondent has no rights or legitimate interests in the disputed
domain name because:
1.
Respondent
has not been authorized by Complainant to use the HUMPHREY BOGART mark;
2.
Respondent
has not used, nor has Respondent demonstrated any preparations to use the
disputed domain name or a name corresponding to the disputed domain name in
connection with a bona fide offering of good or services.
3.
Respondent
has not been commonly known as <humphreybogart.com>.
4.
Respondent
is not making a legitimate noncommercial or fair use of the disputed domain
name without intent for commercial gain to misleadingly divert consumers or to
tarnish the mark at issue.
Complainant asserts that Respondent registered and is using
the disputed domain name in bad faith for the following reasons:
1.
Respondent’s
administrative and billing contact, Jeff Burgar, has suggested Respondent would
be willing to negotiate a transfer of the disputed domain name in exchange for
monetary compensation. Specifically, Complainant’s evidence is that in one
conversation, Burgar suggested the sale of the domain name in exchange for the
amount it would cost Complainant in legal fees to pursue arbitration, which
amount Burgar speculated would be between $5,000 and $10,000.
2.
Respondent’s
representative, Burgar, made the following comments in an e-mail message to Complainant’s
counsel on February 4, 2003:
“Your ‘offer’ of
$1,100 for this property is blowing hot and cold air at the same time. If the
property has such a picayune value, why are you going to such effort to obtain
it? Your company has already burned up at least $30,000 in legal fees of my own
and your own in this pursuit over the past several years has it not?
The property
must be indeed worth more, otherwise you would not be continuing this
adventure. Yet, you are now threatening me with UDRP, telling me you “only have
to pay $1,100, so why should you offer more?”
Complainant
submits that while Respondent has carefully avoided making any outright, firm
demand for a sale price, there can be no mistake but that Burgar, who
Complainant describes as an experienced cybersquatter, has effectively conveyed
his position that he would not sell the disputed domain name for less than an
amount greatly in excess of Respondent’s out of pocket costs directly related
to the domain.
3.
Respondent’s
web site promotes Respondent’s other commercial websites, such as
<celebrity1000.com>, and features multiple banner advertisements for
websites some of which are of the kind and nature that Complainant objects to
in principle because they create an association between the late Humphrey
Bogart and those featured advertisements that are undesirable and harmful.
Complainant asserts that by doing this Respondent has registered the domain
name primarily for the purpose of appropriating the Complainant’s intellectual
property rights and to mislead consumers and direct them to Respondent’s
unauthorized website.
4.
Complainant
asserts that there can be no dispute that Respondent registered the domain name
with full knowledge of the existence of Complainant and the understanding that
Respondent’s registration would prove to be of great interest to Complainant.
Respondent knew or should have known, by virtue of Complainant’s diligent
activities in licensing and promoting the name and likeness of Humphrey Bogart
that Respondent’s act of registering the disputed domain name and using it in
this manner would interrupt Complainant’s legitimate business activities,
violate Complaint’s intellectual property rights and cause great harm and
impediment to Complainant’s interests.
5.
Respondent
has used the domain name for commercial gain through illegitimate business
purposes such as banner advertisements and promotions of his other websites
which have no legitimate or legal connection with the late Humphrey Bogart or
the intellectual property rights related thereto.
In support of
these assertions, Complainant provided evidence that Respondent has registered
many celebrity domain names and uses them to point to his
<celebrity1000.com> website. Complainant says this shows a pattern of
behavior amounting to cybersquatting. Complainant says Respondent’s conduct can
only be properly characterized as a stock-piling of the names of famous
personalities, their only substantial function being to attract people to view
advertising on Respondent’s <celebrity1000.com> website or to hold the
names hostage and resell them to the person whose name has been appropriated.
Complainant cites several other cases involving Respondent including: Julie Brown v. Julie Brown Club, 2000-16628
(WIPO Feb. 13, 2001); Celine Dion v.
Celine Dion Club, D2000-1838 (WIPO Feb. 13, 2001); Stephanie Seymour v. Jeff Burgar, d/b/a Stephanie Seymour Club, NAF
Case No. FA 97112 (Nat. Arb. Forum May 29, 2001); Kevin Spacey v. Alberta Hot Rods, FA 114437 (Nat. Arb. Forum Aug.
1, 2002). In all of these cases the panels found in favour of Complainants
against Respondent. Complainant also refers to Springsteen v. Jeff Burger and Bruce Springsteen Club, D2000-1532
(WIPO Jan. 25, 20001) in which Respondent was permitted to continue using the
disputed domain name because the panel held that a perfunctory biographical
sketch and minimal descriptive content relating to Springsteen was sufficient
to constitute legitimate use. Complainant points out, however, that by the time
of the Kevin Spacey decision, the
panel noted that, “the persistent behavior of this Respondent in the
registration of celebrity names militated against the ‘benefit of the doubt’
which the Panelist afforded the Respondent in the previous case.”
Complainant
asserts that Respondent’s activities registering domain names, in many or most
of which he had no legitimate right, are precisely the activities that the UDRP
is designed to prevent.
During the course
of Complainant’s repeated attempts to secure an amicable domain name transfer
from Respondent, Respondent changed the content of its website located at <humphreybogart.com>,
which was previously being warehoused, renaming it Humphrey Bogart’s House, and
posting perfunctory information as well as a degrading cartoon image of the
late Humphrey Bogart. The website now includes a biography, message board,
opinion poll and links, but is nothing more than a thinly veiled attempt to
legitimize appropriation of Complainant’s rights.
B.
Respondent
Respondent
asserts that it registered the disputed domain name on March 19, 1997 to use as
a fan site about Humphrey Bogart. Respondent is in the business of operating
unofficial fan web sites in connection with its <celebrity1000.com> fan
web site network. Respondent has developed hundreds of fan cites in honour of
actors, actresses, comedians, musicians, directors and other celebrities. The
sites offer biographical information on the celebrities and links to other fan
web sites. Respondent filed an extensive list of the celebrities of which
Respondent has developed fan sites. Respondent has registered hundreds of
domain names to use in connection with <celebrity1000.com> and points
those domains directly to the <celebrity1000.com>.com site until
dedicated celebrity fan pages are developed.
Respondent
asserts that Complainant only has one registered trademark for HUMPHREY BOGART
and that Respondent had no knowledge that any party claimed trademark rights to
HUMPHREY BOGART when it registered the domain name. Respondent denies offering
the disputed domain name for sale to Complainant or contacting Complainant to
discuss possible sale. When contacted by Complainant, Respondent made it clear
the disputed domain name was not for sale. Furthermore, Respondent says
discussions with Complainant’s attorney were settlement discussions and
therefore are not admissible in this proceeding.
Respondent states
there is no evidence that Respondent registered the disputed domain name with
the intent to sell it to Complainant or any other party. Respondent has never
used the disputed domain name to disrupt Complainant’s business or to prevent
it from reflecting a trademark in a corresponding domain name. Respondent has
never attempted to confuse users into believing that the site is endorsed by
Complainant. No products are offered for sale in connection with the disputed
domain name that compete with products offered for sale in connection with the
HUMPHREY BOGART trademark.
There are
hundreds of thousands of third party users of the name Humphrey Bogart on the
Internet and many unauthorized fan web pages devoted to him. Evidence of a
Google.com search shows 122,000 web pages with the name Humphrey Bogart and
416,000 web pages containing the name Bogart.
Respondent does
not dispute that the disputed domain name is identical to Complainant’s
trademark.
With respect to
rights or legitimate interests, Respondent asserts that before the initiation
of this dispute, Respondent developed a fan web site dedicated to Humphrey
Bogart and therefore he has legitimate interests under Policy 4(c)(i) and
4(c)(iii). To support this assertion, Respondent cites the following cases: The Hebrew University of Jerusalem v.
Alberta Hot Rods; The Estate of Tupac
Shakur v. R.J. Barranc, Case AF-1348 (eResolution Oct. 23, 2000); Bruce Springsteen, supra; Edward Van Halen v. Deborah Morgan, D2000-1313
(WIPO Dec. 20, 2000).
Respondent
asserts it is unquestionably engaging in the business of operating fan web
sites, as demonstrated by the extensive Celbrity1000 web site network that
features hundreds of unofficial celebrity fan sites. Respondent states this is
proof he is using the domain name in connection with the bona fide offering of
services.
Respondent
asserts that those cases cited by Complainant where panels have found against
him in the past are wrong and unfair, and that in those decisions the panels
have turned a blind eye to his well-designed network of celebrity web sites
simply to reach a decision that would transfer the disputed domain names to
celebrities by way of ostensibly satisfying the requirements of the Policy.
Respondent asserts that <celebrity1000.com> is a legitimate web site
network in which Respondent has invested substantial money and effort in
developing and that this establishes Respondent’s legitimate interest.
Respondent
asserts that Complainant is inconsistent in suggesting that Respondent has not
used the disputed domain name in connection with a bona fide offering of goods
and services because Complainant also does not dispute that Respondent has
operated a fan web site about the actor Humphrey Bogart and has used the web
site in connection with the <celebrity1000.com. The <humphreygbogart.com> web site also provides advertisements
and links to other goods and services, and there Respondent is operating a bona
fide commercial business.
Respondent
asserts that the fact Respondent is not licensed to use the HUMPHREY BOGART
trademark is irrelevant to this proceeding because in the Springsteen case the Panel suggested that the absence of permission
is not conclusive proof that the alleged infringer has no rights of his or her
own. Respondent further asserts that there is nothing on the web site that
tarnishes Complainant’s mark.
Respondent
asserts that here he not only had a plan to create a web site, but had actually
created a web site and that this establishes a legitimate interest for purpose
of the policy.
With respect to
Complainant’s allegations of bad faith, Respondent asserts that there is no
evidence that Respondent registered the disputed domain name with Complainant
in mind. Unlike the case of a living person, where it can, perhaps, be argued
that the registrant registered a domain name incorporating the person’s name to
profit from the fame of that person, here Humphrey Bogart has not been alive
for over 40 years, so the party claiming trademark rights is not evident from
the fact of the domain name. Respondent asserts it had no knowledge that
Complainant claimed trademark rights to the HUMPHREY BOGART mark when it
registered the disputed domain name. There is no evidence that Respondent
registered the disputed domain name with intent to sell it to Complainant, to
disrupt Complainant’s business, to prevent Complainant from registering a
domain containing the mark or to profit by creating the likelihood of consumer
confusion. Respondent simply registered a domain name to use it for a Humphrey
Bogart fan site.
Respondent also
argues that it cannot be concluded that Respondent had a bad faith intent at
the time it registered the disputed domain name in 1997 because there were no
cases at the time indicating that use of the domain name for a fan web site was
illegal.
Respondent argues
that a fair review of Respondent’s <celebrity1000.com> web site, as well
as its <humphreybogart.com> web
site, shows that they are genuine web sites with bona fide content, including
biographical information on the celebrities and without any information that
could seriously be deemed an intent by Respondent to misleadingly divert
customers. Respondent spent hundreds of thousands of dollars to develop and
operate a celebrity fan site network and has never made an unsolicited offer to
sell a celebrity domain name to any party. Respondent has never done anything
to suggest that a web site it operates is endorsed by any celebrity, and
Respondent has never used a celebrity domain name to tarnish or attack a
celebrity.
Respondent
asserts that the settlement negotiations initiated by Complainant do not
establish bad faith. Respondent asserts that because these were settlement
negotiations the evidence of the negotiations is not admissible in this
proceeding.
Lastly,
Respondent asserts that there is no evidence that Respondent has used the
disputed domain name to misleadingly divert Internet users. In support of this
argument, Respondent cites the Springsteen
and Hebrew University cases, supra,
in which panels found in favour of Respondent. Respondent relies on the
following quote from Springsteen:
“The users of
the Internet do not expect all sites bearing the name of celebrities or famous
historical figures or politicians, to be authorized or in some way connected
with the figure themselves. The Internet is an instrument for purveying
information, comment and opinion on a wide range of issues and topics. It is a
valuable source of information in many fields, and any attempt to curtail its
use should be strongly discouraged. Users fully expect domain names
incorporating the names of well known figures in any walk of life to exist
independently of any connection with the figure themselves, but having been placed
there by admirers or critics as the case may be.”
Respondent
asserts that Complainant has provided no proof that Respondent has intended any
confusion of any kind. There are numerous third party sites on the Internet
related to Humphrey Bogart and hundreds of thousands of third party references
to Humphrey Bogart or Bogart. Respondent argues this is compelling evidence
that users do not expect that all references to the late Humphrey Bogart are
associated with or endorsed by Complainant. The issue of consumer confusion is
reduced where the celebrity is deceased. Respondent relies on the following
quote from the Hebrew University
case:
“Because Mr.
Einstein died long before the advent of the Internet and was not in his
lifetime engaged in the supply of goods or services under his name, this Panel
finds that what Internauts are seeking when they enter the disputed domain name
is information about Dr. Einstein. That is precisely what Respondent’s site
<celebrity1000.com> contains. Accordingly, it was not misleading for
Respondent to select and use the disputed domain name to lead to that site nor,
for the above reasons, does the use of the disputed domain name for this
purpose tarnish Complainant’s trademark.”
C.
Additional Submissions
Complainant
filed an additional submission without the required fee, but with a photocopy
of checks being mailed via UPS. While this means the submission is not in
technical compliance with Supplemental Rule #7, the Panel has considered this
submission as well as Respondent’s Reply dated July 21, 2003. While we have
considered these submissions, we note that nothing in those submissions
affected the outcome of the case.
FINDINGS
The Panel finds as follows:
1. The domain name <humphreybogart.com> is identical to or confusingly similar
to Complainant’s HUMPHREY BOGART trademark.
2. Respondent does not have rights or
legitimate interests in the domain name.
3. Respondent registered and is using the
domain name 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.
Respondent does not dispute this element.
Complainant has provided evidence to establish registered and common law
trademark rights in the HUMPHREY BOGART trademark. With the exception of the
.com extension, the disputed domain name is identical to Complainant’s HUMPHREY
BOGART trademark. Complainant therefore succeeds on the first element.
The
Panel has carefully reviewed the evidence submitted by Complainant and
Respondent as well as the cases cited by both Complainant and Respondent. We
are mindful that Respondent has been subject to a number of Complaints under
the UDRP. We are mindful that Respondent has been successful on some occasions
and unsuccessful on others. We acknowledge that each case must be decided on
its merits, and having done the extensive review indicated, we have concluded
in favour of Complainant on this element.
On
the evidence before us, it appears that
before notice to Respondent of this dispute, Respondent was using the disputed
domain name solely as a link to his commercial site at
<celebrity1000.com>. After notice of the dispute, Respondent created a
Humphrey Bogart fan site. On this point, we agree with the panel in Spacey, supra, that Respondent’s
creation of a fan site after notice of a dispute is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i).
We
also find lack of a bona fide offering of goods or services for another reason.
Respondent asserts that he is operating a legitimate business at
<celebrity1000.com>, and that he has spent hundreds and thousands of
dollars developing that site and the related celebrity fan sites. The inference
the panel draws from all the evidence, including Respondent’s own admissions,
is that Respondent is not using the celebrity fan sites, including <humphreybogart.com>, primarily
as fan sites, but as a means of attracting users to his unrelated business at
<celebrity1000.com>. We have concluded that the link to the commercial
site has the primary purpose of furthering Respondent’s commercial interests
including the profit derived from the banner ads. We therefore conclude that,
in so far as Respondent is using Complainant’s trade mark in this manner,
Respondent is not engaged in the bona fide offering of goods or services.
Respondent’s primary purpose here is not to provide an informational site about
Humphrey Bogart, but rather to link to his business site.
With
respect to Policy ¶ 4(c)(i), there is no evidence before the panel that
Respondent has been commonly known as <humphreybogart.com>.
With
respect to Policy ¶ 4(c)(iii), Respondent cannot establish that he is making a
legitimate noncommercial or fair use of the domain name without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark at
issue. As we have already noted, Respondent’s use of the disputed domain name
is not, in fact a noncommercial use because his primary purpose is to link to
another site for commercial gain. His purpose is not to provide Internet users
with information about Humphrey Bogart, but to increase his profits in his
business at <celebrity1000.com>.
Based
on the foregoing, the panel has concluded that Respondent does not have rights
or legitimate interests in the disputed domain name.
We
also note that our conclusions in this respect are consistent with trademark
law as applied in the recent case of The
Taubman Company v. Webfeats, 319
F.3d 770 (6th Cir. 2003). The
court in that case indicated that a domain name <taubmansucks.com> used
only for critical commentary was fully protected by the First Amendment and
“not subject to scrutiny under the Lanham Act.” However, the same conclusion
was not reached for <shopsatwillowbend.com> where the site had links to
the defendant’s business site. When the commercial link was included in the
site, the court stated “we believe the advertisement on Mishkoff’s site, though
extremely minimal, constituted his use of Taubman’s mark “in connection with
advertising” of the goods sold by the advertisers. This is precisely what the
Langham Act prohibits.”
Complainant
contends that Respondent’s registration
of <humphreybogart.com>, among
other things, violates Policy ¶ 4(b)(iv), which states that the following shall
be bad faith:
“(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.”
We
have already noted our conclusion that Respondent’s primary purpose in
acquiring and using the disputed domain name was to attract Internet users to
the <celebrity1000.com> commercial web site for commercial gain. Again,
Respondent has admitted that he has spent hundreds of thousands of dollars
developing this commercial venture, including the celebrity fan sites,
including the one in dispute here. This evidence is sufficient to establish the
intent for commercial gain required under Policy ¶ 4(b)(iv). Whether the
subject of the disputed domain name is alive or deceased, there are still
established intellectual property rights in the mark HUMPHREY BOGART. By using
the entirety of the mark in the disputed domain name, there can be no question
that Respondent intended to create confusion as to the source, sponsorship,
affiliation or endorsement of his web site and the <celebrity1000.com>
link. Respondent admits he chooses celebrity names for his fan sites to then
link them to the commercial site. It is
inevitable that a substantial number of Internet users will mistakenly believe
that the owners of the rights in the HUMPHREY BOGART name have licensed or
authorized Respondent's use of the disputed domain name, when in fact the
owners of the HUMPHREY BOGART name and mark object to Respondent's site. In this Panel’s opinion, this is precisely
the kind of activity Policy ¶ 4(b)(iv) was designed to address.
We
have therefore concluded that Respondent registered and is using the disputed
domain name in bad faith.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <humphreybogart.com> domain name
be TRANSFERRED from Respondent to
Complainant.
Anne M. Wallace, Q.C., Panel Chair
Dated: August 4, 2003
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