EMS Productions, INC. v. Eddie Sperling
Claim Number: FA0501000403090
PARTIES
Complainant
is EMS Productions, INC. (“Complainant”),
represented by Marvin H. Kleinberg, of Kleinberg and Lerner, LLP,
2049 Century Park E., #1080, Los Angeles, CA 90067. Respondent is Eddie
Sperling (“Respondent”), represented by Bonnie Newton, P.O.
Box 7401, Seminole, FL 33775.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <emsproductions.com>
and <emsexpo.tv>, registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he or she 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.
Dennis
A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum electronically on
January 13, 2005; the National Arbitration Forum received a hard copy of the
Complaint on January 18, 2005.
On
January 14, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <emsproductions.com>
and <emsexpo.tv> are registered with Go Daddy Software, Inc. and
that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, 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
January 24, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 14, 2005 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@emsproductions.com and
postmaster@emsexpo.tv by e-mail.
A
Response was received 2 days late on February
16, 2005. Respondent did not pay the
$100 late fee in accordance with the Forum’s Supplemental Rules
6(a)(i)-(iv). The Panel notes that
Respondent communicated with the Forum by telephone and email during the
submission of the late Response, and was well aware of the requirement to pay
the $100 late fee. Respondent has
offered no explanation about why it chose not to pay the late fee. The Panel
therefore believes it fair not to consider the Response to the Complaint. The Panel does not believe the parties
should be able to defy the Policy, Rules and Forum Supplemental Rules without
good reason.
On February 25,
2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
EMS Productions, Inc. was organized in 1996 to continue the organization of trade shows and expositions under the EMS
EXPO mark, which had been carried on by an affiliated organization. Annual trade shows and expositions operating
under the service mark have enjoyed great success and widespread popularity as
the most significant gathering for both emergency medical service providers and
suppliers.
Complainant’s
registered marks are now incontestable (Lanham Act Section 15). The EMS EXPO mark has become distinctive of
Complainant’s services and of Complainant’s trade shows.
Respondent
has been asked in correspondence to surrender the disputed domain name to
Complainant, but thus far has failed to respond.
The
domain <emsexpo.tv> name is identical to Complainant’s registered
and incontestable EMSEXPO mark. Respondent’s use infringes Complainant’s
service mark rights and tends to cause confusion, mistake or deception. Further, Respondent’s continuing use of the
domain name falsely suggests a sponsorship or affiliation with Complainant and
its trade shows.
The
disputed <emsproductions.com> domain name is identical to
Complainant’s corporate and trade name, which has been in continuous use since
its founding on May 8, 1996 (Exhibit A).
Complainant
has applied to register its service “EMS Productions” mark, and that
application is pending in the United States Patent and Trademark Office. It is noted that the <emsproductions.com>
domain name was “created” on June 1, 2004.
The use by Respondent also appears to be in conflict with a Florida
corporation, EMS Productions, Inc. of Coral Gables as evidenced by the records
of the Florida Secretary of State (Exhibit B).
Respondent
has no rights in the EMS EXPO mark.
Complainant notes that it and its predecessors have been using the
registered EMS EXPO mark since 1988. Respondent
operates alternatively under his own name and as “EMS Productions an Eddie
Sperling Production.” Complainant is
unaware of any other business or activity of Respondent under the fictitious
business name EMS EXPO, except Respondent using it as the site of a streaming
video (Exhibit C).
To
the best of Complainant’s knowledge, Respondent has made no commercial use of
the EMS EXPO mark, although web design, Internet video streaming and hosting
services are being offered under the EMS Productions mark (Exhibit D).
It
is not believed that Respondent is commonly known by the disputed domain
names. They are names Respondent
adopted solely in an attempt to legitimize the acquisition of the domain names
(Exhibit E).
It
is further believed that Respondent is not making a legitimate noncommercial or
fair use of the domain names, but rather has employed them with the intent to
misleadingly divert consumers for commercial gain or to tarnish and dilute
Complainant’s service mark and trade name.
It
is believed that Respondent has registered the domain name in order to prevent
Complainant, owner of the services and trade name, from reflecting the marks in
a corresponding domain name, but Complainant is unaware that such action is
part of a pattern of such conduct.
By
using the domain names, Respondent has intentionally attempted to attract, for
commercial gain, Internet users to Respondent’s web site by creating a
likelihood of confusion with Complainant’s mark and name as to the source,
sponsorship, affiliation, or endorsement of a service on Respondent’s web
site.
B.
Respondent
Respondent
did not submit a timely Response to the Complaint and is in default in this
proceeding.
FINDINGS
Complainant is a provider of media
productions and events connected with Emergency Medical Services, for which it
uses the name EMS Productions and related trademarks. Complainant or its predecessor began using the EMS name in 1988.
Before filing the Complaint, Complainant
tried to convince Respondent to turn over the <emsproductions.com>
and <emsexpo.tv> domain names to Complainant, but Respondent
refused.
According to Complainant, Respondent uses
the disputed domain names for video streaming and advertising video production
and web hosting.
The disputed domain name <emsproductions.com>
was registered on June 1, 2004, while the disputed domain name <emsexpo.tv>
was registered on September 24, 2004.
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 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;
(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.
Complainant has submitted a listing of
its United States EMS trademark registrations.
These include Reg. No. 2,735,921, issued July 15, 2003 for EMS EXPO in
connection with organizing medical trade shows and expositions; and Reg. No.
1,930,546, issued October 31, 1995 for the EMS mark for a monthly magazine on
emergency care.
Both disputed domain names, <emsproductions.com>
and <emsexpo.tv>, have Complainant’s EMS trademark as their
distinctive component. In the context
of video or similar goods and services,
“productions” is descriptive rather than distinctive. And in the field of organization of
emergency medical treatment trade shows, “expo” is a descriptive, logical
add-on and is in any case contained in one of Complainant’s trademark
registrations supra.
Thus, the Panel finds Complainant has
carried its burden of proof to show that the disputed domain names are
identical or confusingly similar to a trademark in which Complainant has rights
(paragraph 4(a)(i) of the Policy).
The Panel realizes that one of
Complainant’s trademarks is a design mark rather than a word mark (Reg. No.
2,554,433 for EMS EXPO, issued April 2, 2002), but the Panel did not consider
this mark in the identical or confusing similarity analysis. It is well settled that the Policy applies
to word marks rather than design marks.
Also in keeping with well-settled Policy doctrine, the Panel did not
give much significance to Complainant’s application for a trademark for the
“EMS Productions” mark. (For the
limited weight, if any, to be given to trademark applications as opposed to
trademark registration and use, See Amsec Enterprises, L.C. v. Sharon
McCall, D2001-0083 (WIPO Apr. 3, 2001).
Complainant asserts Respondent is using
the disputed domain names without permission and without legitimate rights or
interests. In particular, Complainant
contends Respondent is not making a bona fide offering of goods and services
per Policy paragraph 4(c)(i), and is not commonly known by the disputed domain
names, as allowed under the Policy at paragraph 4(c)(ii).
For his part, being in default,
Respondent can not fulfill his obligation--resulting from Complainant’s prima
facie case--to demonstrate to the Panel that he does have legitimate rights and
interests in the disputed domain names. (For Respondent’s obligations in response to a Complainant’s prima facie
showing of no legitimate rights and interests, See The American
National Red Cross v. BV, FA122225 (Nat. Arb. Forum, Oct. 21, 2002); see
also H.J.M. DeVries, Leidseplein Beheer B.V. v. O.E.W. van der Zwan,
D2004-0174 (WIPO June 7, 2004).
The Panel thus finds Complainant has
carried its burden of proof to show Respondent does not have legitimate rights
or interests in the disputed domain name as required by paragraph 4(a)(ii) of
the Policy.
Complainant contends Respondent is using
a name, EMS, that refers not only to Complainant, but also to a Florida
corporation of the same name. The Panel does not regard this piece of
information as relevant for proving bad faith under Policy ¶ 4(b)(ii); as
Complainant itself admits, it does not attempt to show that Respondent engaged
in a pattern of this conduct as required by the Policy.
However, the Panel does agree with
Complainant that Respondent is in violation of the bad faith provisions of the
Policy ¶ 4(b)(iv). The Panel is
convinced that the timing of Respondent’s registration of the disputed domain
names during 2004 shows that he had observed Complainant’s activities in
emergency medical services and decided to copy Complainant by using available
domain name variations of Complainant’s EMS trademark. (For similar decisions under the Policy, See
Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar.
21, 2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract users to a website sponsored by Respondent); see also
Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb.
Forum Dec. 4, 2003) (finding that Respondent created a likelihood of confusion
as to the source of its website because it registered a domain name confusingly
similar to Complainant’s mark and used it to redirect Internet traffic to a
completely unrelated website).
The Panel notes that Respondent’s name,
Eddie Sperling, could lead to Respondent perhaps using his initials, perhaps
even with an “M” as his middle name, to form the name “EMS.” However, even if this were true it would not
change this Decision. The Panel is convinced
Respondent is a recent immigrant into this field of emergency medical services
and is intent on using the good will Complainant has been accumulating since 1988.
The Panel believes it proper to assume Respondent is web site hosting
and video streaming to market emergency
medical services for commercial gain since
it seems highly unlikely Respondent would be offering these services for
free.
Therefore, the Panel finds Complainant
has carried its burden of proof to show
Respondent registered and is using the disputed domain names in bad faith per ¶
4(a)(iii) of the Policy.
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 <emsproductions.com>
and <emsexpo.tv> domain names be TRANSFERRED from
Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: March 11, 2005
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