Metro-Goldwyn-Mayer
Studios Inc. v. World Readable c/o R.L. Cadenhead
Claim Number: FA0612000868828
PARTIES
Complainant
is Metro-Goldwyn-Mayer Studios Inc. (“Complainant”), represented by Nathan J. Hole,
of Loeb & Loeb LLP, 321 North Clark St., Suite 2300, Chicago, IL
60610. Respondent is World Readable c/o
R.L. Cadenhead
(“Respondent”),
represented by Wade Duchene 7061 Clairemont Mesa Blvd. 223, San Diego,
CA 92111.
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <wargames.com>, registered with eNom, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Sandra
J. Franklin, G. Gervaise Davis and Alan L. Limbury as Panelists.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
13, 2006; the National
Arbitration Forum received a hard copy of the Complaint on December
14, 2006. The Complaint
named Bulkregister, LLC as Registrar but the National Arbitration Forum
ascertained that the Registrar is eNom, Inc. and gave Complainant an
opportunity to amend the Complaint accordingly, which Complainant did on
December 18, 2006.
On
December 14, 2006, eNom,
Inc. confirmed by e-mail to
the National Arbitration Forum that the <wargames.com> domain name is registered with eNom,
Inc. and that the Respondent
is the current registrant of the name. eNom,
Inc. has verified that
Respondent is bound by the eNom, 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
December 19, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 8, 2007 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@wargames.com
by e-mail.
A
timely Response was received and determined to be complete on January
8, 2007.
On
January 16, 2007, Complainant filed a timely additional submission in
compliance with the National Arbitration Forum's Supplemental Rule #7.
On
January 23, 2007, Respondent filed a timely additional submission in compliance
with the National Arbitration Forum's Supplemental Rule #7.
On
January 22, 2007, pursuant to Complainant’s request to have the dispute decided
by a three-member Panel, the National Arbitration Forum appointed Sandra Jo
Franklin, G. Gervaise Davis and Alan L. Limbury as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
Complainant
is engaged in the worldwide production of motion pictures, television
programming, home video, interactive media, music and licensed merchandise. In
1983 it released a very successful motion picture called WARGAMES, which
grossed more than $53 million at the box office, and in 2003 it registered
WARGAMES as a service mark with the United States Patent and Trademark Office
(No.2,690,923) for a range of entertainment services in Class 41.
Respondent
registered the disputed domain name <wargames.com> on April 16,
1998. On October 17, 2005, Complainant announced its sixth ROCKY movie. That day, Respondent registered the domain
names <rockyvii.com>, <rockyviii.com> and <rockyix.com>. On
September 7, 2006, Complainant objected to Respondent's registration of the
disputed domain name and the three 'rocky' domain names. At the time all four
resolved to an identical website stating: 'Nothing is published on this
particular domain'. This remained the position as regards the disputed domain
name on September 13, 2006. Next day
Respondent agreed to surrender the three 'rocky' domain names but claimed the
disputed domain name was being used in connection with an online store selling
military simulation wargames. He produced a printout dated September 14, 2006
showing this newly commenced use.
Complainant
says the disputed domain name is identical to Complainant's WARGAMES mark and
that Respondent has no rights or legitimate interests in the domain name. The
relevant enquiry is confined to Respondent's pre-notification activities, i.e.
pre-September 7, 2006. At that time Respondent had held the domain name
passively for eight years, redirecting traffic to <click2net.com> and
apparently thereby generating pay-per-click (PPC) revenue. There is no evidence
to suggest Respondent is known by the disputed domain name. His only use has
been in bad faith, which negates legitimacy.
Complainant
says there are several grounds for concluding that Respondent registered and
used the disputed domain name in bad faith. He had full knowledge of
Complainant's WARGAMES mark and film. He has engaged in a pattern of
registering high-traffic domain names, including several that targeted
Complainant's motion pictures, and upon the death of Pope John Paul II, he
registered several anticipated names for the new Pope, including <benedictxvi.com> which, upon the
accession of the new Pope, received 100 hits a minute. He held the disputed
domain name passively for eight years. He misleadingly redirected users for
commercial gain by creating a likelihood of confusion with Complainant's
WARGAMES mark.
B.
Respondent
Respondent
acknowledges that the domain name <wargames.com> is similar to
Complainant's mark registered on February 25, 2003. He claims rights and
legitimate interests in the domain name.
He has a long professional interest in wargames, a category of military
simulation games originating in the early 20th century that has been a
commercially popular hobby since the 1960s.
In 1995, he created a wargame called Critter Commandos: Riddle of the
Stinx, that was accepted for publication but subsequently cancelled. In
1996, he sold an article to Dragon, a magazine which covers the Dungeons
& Dragons wargame.
Respondent
says he registered the disputed domain name on April 16, 1998 with the goal of
launching a site to sell wargames. In 2004 he learned ecommerce web development
and began preparations to sell wargames via the domain name. In March 2001, he bought the trademarks and
copyrights of the game company Rapport Games and some of its wargames. In May, 2004, he registered the business name
World Readable, obtained a Florida tax permit and subscribed to a database of
wholesale and drop-shipment suppliers for ecommerce businesses. Thereafter he
kept his sales and use taxes current, worked on the site's software, pursued
relationships with potential wargame suppliers and sought advice from retailers
in the wargames industry. In June 2006,
he told Mr. W.W.Parker Jr., president of Borderlands Comics and Games, that he
was launching a wargames store at the disputed domain name. A letter from Mr.
Parker confirms this. Respondent planned
to open his wargames store at the domain name on November 24, 2006, the start
of the Christmas shopping season. On
receipt of Complainant's first letter regarding the domain name on September
11, 2006, Respondent opened his store early to demonstrate that his use was
based on the common descriptive meaning of the term wargames and not the 1983
film. He so notified Complainant.
Thus
Respondent was engaged in numerous preparations to launch his store at the
domain name for two years prior to Complainant's first letter.
Respondent
says Complainant did not apply to register its WARGAMES mark until almost three
years after Respondent registered the disputed domain name. He relies on John Ode d/b/a ODE and ODE –
Optimum Digital Enterprises v. Intership Limited, D2001-0074 (WIPO May 1,
2001) for the proposition that “a trademark that did not exist at the time the
disputed domain name was registered cannot serve as the basis for a claim under
the ICANN Policy, since it is impossible for the domain name to have been
registered in bad faith”.
Respondent
says that over the 24 years since the release of its 1983 movie, Complainant
does not appear to have treated the title of its movie as a trademark. When Respondent registered the domain name in
1998, he had no reason to believe the title of the then 15-year-old film was a
trademark and no reason to anticipate Complainant’s intent to register it as a
trademark in 2001.
Respondent
registered the ‘Rocky’ domain names on a whim to keep them from falling into
the hands of a pornographer and in the hope that he could give them to the
studio that produced the Rocky movies. He simply parked them meantime and
agreed to transfer them to Complainant immediately in response to Complainant’s
letter of September 7, 2006. Having
correctly anticipated the name of Pope Benedict XVI, Complainant offered the
domain name he had registered to the Vatican and, in the absence of a reply,
gave it to a charity. None of these were cases of bad faith.
Complainant’s
sole allegation of bad faith in relation to the domain name at issue is one of
passive holding with no intent to use. However, Respondent has been engaged in
preparations to start his wargames store for two years and has been
professionally involved in the wargames industry since 1995. Respondent is the
author of 21 books on computer programming, web publishing and the Internet
that have sold over 400,000 copies. He uses pop culture references to make an
otherwise dry subject interesting. Amongst those references have been
references to Complainant’s WarGames movie, including facetious references, in
successive editions of one of his books, Sams Teach Yourself Java in 24
Hours, to WarGames 1998, WarGames 2001, WarGames 2003 and WarGames 2006,
the date in each case being a future date at the time of publication.
Respondent
currently publishes sites at 22 domains that received 29.9 million visits in
2006. His launch of a wargames store at the disputed domain name is the latest
in a series of popular sites he has launched. He does not put domain names up
for sale and has never offered to sell the disputed domain name to Complainant.
C.
Additional Submissions
Complainant
says it had common law rights in the WARGAMES mark when Respondent registered
the disputed domain name.
Respondent’s
actions after notice of this dispute cannot be relied on to establish rights
and legitimate interest in the disputed domain name. Respondent offers
self-serving and largely unverifiable claims.
His inability to present objective and clear evidence of his legitimate
interests and lack of bad faith are fatal to his defense. None of Respondent’s documentary evidence
relates to or even mentions the disputed domain name and does not demonstrate
plans to use it.
More
than six years elapsed before his first claimed steps to develop a functional
website. This alone would support a
finding of bad faith under the Policy.
He claims to have spent over 1,000 hours developing the site yet the
website is rudimentary. It defies credulity to believe that Respondent could
have nothing to show for his years and thousand hours of effort in developing
the <wargames.com> website other than a hastily erected website,
general business documentation which does not even refer to the domain name and
an unsworn letter recounting an alleged conversation with Mr. Parker in June
2006.
Respondent
did not advertise the website when he launched it and only began to publicize
it after the Complaint was filed, in the context of this dispute, thereby
further suggesting opportunistic bad faith.
As
to his motive for registering the ‘Rocky’ domain names, there is no ‘Robin
Hood’ defense to a claim for cybersquatting: Island Air, Inc. v. Flanders,
FA96098 (Nat. Arb. Forum Feb. 1, 2001).
As
in Franzus Co. v. Cotner, FA125365 (Nat. Arb. Forum Nov. 7, 2002),
“unsupported, self-serving allegations alone are insufficient to establish that
the Respondent has rights or legitimate interests in respect of the domain name
at issue”. Here, Respondent passively held the domain name for more than eight
years and has not offered any concrete evidence that would establish rights or
legitimate interests in it or eviscerate his prior actions, all of which
demonstrate that, prior to receiving notice of this dispute, Respondent
registered and used the domain name in bad faith.
Over
an eight-year period, Respondent never offered to sell the disputed domain name
to Complainant or anyone else and never attempted to trade on Complainant’s
film. He used the domain name in only
its generic sense - to sell wargames. He used accurate contact information. In
addition, he took concrete steps to develop an ecommerce web site prior to
being contacted by Complainant, as has always been his intent.
Mr.
Parker’s letter has now been sworn and notarized. Respondent’s wife has also
sworn an affidavit that she contacted gaming distributors in 2004, seeking
partners to distribute games on the disputed domain name.
Respondent
has located date-stamped file transfer logs and source code files that document
the extent of his effort required to develop his online store and establish
that he began intensely working on his store months before Complainant ever
contacted him. Respondent’s store is an application tailored directly to his
business that was developed over the span of months.
Respondent’s
Florida sales and use tax permit and Drop Ship Source Directory database
subscription were acquired in 2004 for the sole purpose of establishing his
wargames store in connection with the disputed domain name. Respondent had
never sold retail products on the web before opening his online store, which
uses two drop shipment suppliers found in that directory. The legal operation
of the store requires the sales and use tax permit. Neither drop shipping nor the collection of
sales tax is required for any of the numerous other web sites that Respondent
publishes.
Respondent’s
use of the business name World Readable to operate a network of different web
sites that includes the disputed domain name is neither questionable nor
unusual.
Respondent
did publicise the website upon its launch by providing links to the site on
13,800 pages of three high-traffic sites that he publishes, a technique to
improve the store's position in Google search results that takes months to bear
fruit.
Complainant
possesses no rights in the WARGAMES mark for the sale of war-themed games.
Although
Respondent acknowledges seeing Complainant’s film during the original 1983
release, the movie had nothing to do with his desire to register the domain
name 15 years later. Respondent had a genuine interest in playing wargames and
a desire some day to develop a web site to sell such games. The notion that he
sat on the domain name for eight years — 24 years after the release of the
original film and long after it was culturally relevant — in the hopes that
Complainant would release a sequel of the film would make him just about the
worst cybersquatter ever.
The
phrase "war games" existed in the vernacular for centuries before
Complainant made a film. Respondent's knowledge of Complainant’s film in no way
establishes his intent to make a bad faith or competitive use of Complainant’s
trademark.
The
Rocky domain names do not establish a pattern of cybersquatting. The 'Robin Hood' analogy is completely inapt
since Respondent gave the names to Complainant. Neither in the case of the Pope
Benedict domain name, which was not even in use as a name at the time of its
registration, nor the Rocky domains, which similarly were not in use, did
Respondent ever offer to sell or attempt to profit off of those domain names.
Complainant
argues that the six years between Respondent’s registration of the domain name
and his first documented step toward the launch of his ecommerce store, by
itself, would support a finding of bad faith under the Policy. The hole in this
reasoning is that the six-year period of non-use was followed by two years of
documented efforts to launch the current site. In any event, passive use alone
is not evidence of bad faith or a lack of legitimate rights. It can take years
before people act on their business ideas — before they have the resources, the
time or the gumption to put an idea into practice. That does not illegitimize
their conduct nor make them bad faith actors.
The
doctrine of passive holding seems to have been established in the default
decision, Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003
(WIPO Feb. 18, 2000), where the Panelist was careful to note that the principle
should not apply to every example of passive holding and that "the
question [of bad faith passive holding] can only be answered in respect of the
particular facts of a specific case," noting that in that case the
trademark was particularly well known, the respondent took active steps to hide
his identity and he did not provide any evidence of current or planned good
faith use. All three of those factors are missing from this case.
FINDINGS
Complainant has failed to establish all
the elements required to entitle it to the relief sought.
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.
By
the time it filed this Complaint, Complainant had registered service mark
rights in WARGAMES. That is sufficient to serve as the basis for its claim
under the Policy, for the purposes of the first element.
There is no dispute that the domain name
is similar to Complainant’s registered WARGAMES service mark. The Panel finds
the domain name to be identical to that mark, the gTLD ‘.com’ being
inconsequential.
Complainant has established this element
of its case.
Under
the Policy, paragraph 4(a)(ii), the Complainant has the burden of establishing
that the Respondent has no rights or legitimate interests in respect of the
domain name. However, once a complainant has made a prima facie showing,
the burden of proof shifts to the respondent to show by providing concrete
evidence (i.e. more then mere personal assertions) that it has rights to or
legitimate interests in the domain name at issue. Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000).
Here,
Complainant has established a prima facie case: as the Panel finds, the
box office success of its 1983 movie WARGAMES was such as to give rise to
common law rights in Complainant with respect to that mark in the field of
movies and similar forms of entertainment; Respondent had seen the movie as a
teenager; Complainant did not authorize Respondent to register the disputed
domain name and Respondent is not known by that name. Thus the burden of proof
shifts to Respondent to demonstrate its rights and legitimacy in the disputed domain
name by concrete evidence.
Respondent relies on paragraph 4(c)(i) of the
Policy:
“before any notice to you [Respondent] of the dispute,
your use of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods or services”
Although the Response contains much
personal assertion, it also contains inter alia a declaration by his
representative, Mr. Duchene, made under penalty of perjury, annexing
Respondent’s sales and use tax permit dated May 21, 2004; Respondent’s receipt
for a subscription to the Drop Ship Source Directory, dated May 20, 2004; a
copy of Mr. Parker’s unsworn letter; the manuscript to Critter Commandos:
Riddle of the Stinx, a wargame created by Respondent in 1995; a May 1996 Dragon
Magazine article written by Respondent; a contract dated March 2001 by
which Respondent purchased trademarks, copyrights and several games.
Respondent’s supplemental filing contains
a sworn affidavit of Respondent, a sworn affidavit of his wife, and a sworn and
notarized version of Mr. Parker‘s letter.
Respondent annexes to his affidavit
extracts of computer code dated June 2006 which include references to
wargames.com, consistent with his sworn testimony that he was then designing
the website at <wargames.com> through which he intended to sell
wargames over the Internet.
Respondent’s wife attests to having
assisted Respondent in 2004 during preparations of his business at
Wargames.com. She swears that on May 22, 2004 she began contacting several
wargames publishers and a distributor in Orlando to inquire about selling their
products on the site. They were reluctant to work with an online store that had
no physical presence. Eventually, she
and the Respondent decided to focus on drop-shippers and wholesalers who were
actively soliciting online stores.
Mr. Parker’s letter, now in sworn and
notarized form, attests to a conversation on June 29, 2006 in which Respondent
discussed stocking and shipping board games and informed Mr. Parker that he had
made a final choice to name his business Wargames.com.
The picture that emerges from this material
is of the Respondent, having seen Complainant‘s WARGAMES movie as a teenager in
or about 1983 and having developed a professional interest in computer
programming and wargames, to the extent of writing about them, creating them
and publishing material on numerous websites, registered the disputed domain
name <wargames.com> in 1998 with the idea of one day using it to
sell wargames over the Internet. That idea remained in abeyance for six years
until Respondent began to prepare to open his online store. Meantime the domain name resolved to a
website which, inter alia, contained advertising links which most likely
generated PPC revenue. By the time Complainant complained by letter of
September 7, 2006, preparations to open the online store had advanced
sufficiently to enable Respondent to advance his plans and to open the store on
September 14, 2006.
Complainant rightly submits that what
Respondent did after receiving the letter of September 7, 2006 cannot be taken
into account in determining legitimacy. However, the speed with which
Respondent was able to open his online store after having received that letter
lends support to Respondent’s contention that much work by way of preparation
to use the disputed domain name for the purpose of selling wargames over the
Internet had already been done by the time that letter was received. The sworn
statements mentioned above cannot be dismissed as ex post facto attempts
to concoct a defense to this Complaint. Indeed, they explain the
acquisition in 2004 of the sales and use tax permit and the subscription to the
Drop Ship Source Directory as being related to Respondent’s intended online
wargames store.
The ‘Rocky’ domains were registered some seven
years after the disputed domain name. Even if they were cases of cybersquatting
(as to which the Panel makes no finding), they can hardly bear upon the
question whether Respondent has a legitimate interest in the disputed domain
name. The same applies to the
circumstances surrounding the <benedictxvi.com> domain name.
In
the result, the Panel finds that Respondent has demonstrated that he has rights
and a legitimate interest in the disputed domain name, since the sale of
wargames over the internet under the domain name <wargames.com> is
a bona fide offering of goods, irrespective of Respondent’s knowledge of
Complainant and its mark, since that mark is not distinctive in the field of
selling wargames:
“…
it is legitimate to build a service mark out of the highly suggestive and
diluted mark “Gold Line” for products or services not the same as or closely
related to those covered by any existing registrations. CRS Technology Corp. v. CondeNet, Inc.,
File No. FA0002000093547 (NAF March 27, 2000)”: Goldline International, Inc.
v. Gold Line, D2000-1151 (WIPO Jan. 8, 2001).
Had this Complaint been brought in early
2004, the result might have been different, since there then had been six years
of use by way of directing traffic to PPC advertising, hardly a bona fide
offering of goods or services. However, the sworn evidence since early 2004 and
prior to notice to Respondent of this dispute of Respondent’s preparations to
use the disputed domain name to sell wargames over the Internet displaces any
adverse finding that might otherwise have been drawn.
Complainant has failed to establish this
element of its case.
Having regard to the Panel’s finding on
the previous element, it is unnecessary to determine this issue.
DECISION
Complainant
having failed to establish all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Alan L. Limbury (Presiding)
Sandra J. Franklin, G. Gervaise Davis and
as Panelists.
Dated: January 31, 2007
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