Screams, LLC v. B S
Claim Number: FA1107001400621
Complainant is Screams, LLC (“Complainant”), represented by Orvis Melvin of Screams, LLC, Texas, USA. Respondent is B S (“Respondent”), represented by John Di Giacomo of Traverse Legal, PLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <screams.com>, registered with Dotster.
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.
Michael Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2011; the National Arbitration Forum received payment on July 27, 2011.
On July 27, 2011, Dotster confirmed by e-mail to the National Arbitration Forum that the <screams.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 July 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 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@screams.com. Also on July 29, 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 August 16, 2011.
Complainant submitted additional submissions on August 19, 2011.
Respondent submitted an additional submission on August 23, 2011
On August 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael Albert as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the domain name <screams.com> is identical or confusingly similar to its registered trademark SCREAMS.
Complainant contends that the Respondent has no rights or legitimate interest in the <screams.com> domain name because it is only used as a redirect to Respondent’s <cuttingedgehauntedhouse.com> website, and the domain name has never been used for any other purpose.
Complainant contends that Respondent has registered and used the domain name in bad faith because Complainant and Respondent are direct competitors in the haunted house business in a small geographical area, and Respondent registered the domain name shortly after Complainant’s first season. Furthermore, Respondent has not used the mark for any purpose other than redirecting to a website for its haunted house. Complainant contends that this is evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
B. Respondent
Respondent contends that Complainant does not have a legitimate SCREAMS trademark because the word SCREAMS is generic or descriptive of haunted houses. Therefore, the domain name is not identical or confusingly similar to a trademark in which Complainant has rights.
Respondent contends that it has rights and legitimate interests in its domain name because it “describes a characteristic of the services provided by Respondent, namely, the screams that are the necessary consequent of Respondent’s haunted house.” By linking its services to the domain name, Respondent has used the domain name in a bona fide offering of services.
Respondent contends that it did not register and has not used the domain name in bad faith. Respondent claims it did not know of Complainant prior to this dispute, and submitted an affidavit stating that Respondent was unaware of Complainant at the time of domain name registration. Respondent further pointed out that it obtained the <screams.com> registration 3 months prior to the registration of the SCREAMS trademark and 2 years prior to Complainant’s use of the SCREAMS mark on the Internet. Furthermore, Respondent has owned the domain name for 14 years without notice of complaint by Complainant.
C. Additional Submissions
Complainant submitted additional submissions contending that it had notified Respondent of its trademark infringement in 1999. Complainant submitted copies of two letters, dated July 28, 1999 and August 18,1999, to support its contention. Complainant also submitted a copy of its principal trademark registration for the SCREAMS mark, and documentation that Respondent, Happy Halloween, Inc., is “not in good standing” with the State of Texas Comptroller’s Office.
Respondent submitted an additional submission reaffirming that it had never heard of Complainant before this dispute, and maintaining that it never received the 1999 letters. Respondent also argued that Complainant accepted the risk of some confusion by choosing a term (SCREAMS) that is generic or descriptive of haunted houses.
Complainant owns the trademark SCREAMS and has been using it in connection with its Screams® Halloween Theme Park, located in Waxahachie, Texas, since 1996.
Complainant filed for the SCREAMS trademark on July 15, 1996 with a claimed first use in commerce date of May 18, 1996. According to the USPTO website, the mark was published for opposition on January 21, 1997. The mark was registered on the principal register on April 15, 1997.
Respondent operates the Cutting Edge Haunted House in Fort Worth, Texas.
Respondent registered the <screams.com> domain name on January 22, 1997.
Respondent does not contest that, at the time that Complainant filed its complaint, <screams.com> redirected to <cuttingedgehauntedhouse.com>. Currently, <screams.com> does not redirect; it resolves directly to a website advertising the Cutting Edge Haunted House.
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.
The Panel must first consider whether the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
It is undisputed that Complainant currently owns the SCREAMS trademark (Reg. No. 2,052,919 filed July 15, 1996; registered April 15 1997) for the following goods and services: “amusement park services, namely, a Halloween theme park including haunted houses, haunted hayrides, drama exhibitions and amusements.”
The disputed domain name includes the entire mark while merely adding a functional generic top-level domain “.com.” The addition of “.com” is immaterial to the identity analysis under Policy 4(a)(i), and thus Respondent’s domain name <screams.com> is identical to Complainant’s SCREAMS mark. See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO Jul. 4, 2000) (finding <gaygames.com> identical to the registered trademark GAY GAMES); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (finding <abt.com> identical to the registered trademark ABT since the addition of a generic top-level domain is irrelevant under Policy 4(a)(i)).
Furthermore, the domain name is used for marketing services that fall squarely within the SCREAMS mark’s statement of goods and services. Complainant has also alleged evidence of actual confusion.
Respondent contests the validity of Complainant’s SCREAMS trademark, or at least its validity at time of registration. A registration with the U.S. Patent and Trademark Office creates a presumption of validity. See Volt Information Sciences, Inc. v. Tushar Dayal, DCO2011-0012 (WIPO Apr. 1, 2011) (“Complainant’s registration of the VOLT mark on the principal register at the United States Patent and Trademark Office establishes a presumption of validity under the American law.”). Although Respondent contends that the word “screams” is generic or highly descriptive of haunted houses, Respondent’s own materials belie this assertion; Respondent does not use the word “screams” or “scream” even once on its extensive website (outside of the domain name). SCREAMS is suggestive of haunted houses, not merely descriptive or generic.
The Panel has noted that Complainant’s registration of the SCREAMS mark on April 15, 1997 occurred about 3 months after Respondent’s registration of the domain name <screams.com> on January 22, 1997. Hence, at the time that <screams.com> was registered, Complainant had not registered the SCREAMS mark in any jurisdiction. However, at the time Respondent registered the domain name, Complainant had already filed for trademark protection (as of July 15, 1996) and its mark was published for opposition (as of January 21, 1997). Previous cases have found that trademark rights date back at least to the time of filing. See Hershey Co. v. Reaves, NAF Case No. FA967818 (finding that Complainant’s rights in the KISSES trademark “date back to the filing date of the trademark application” and predate Respondent’s domain registration that occurred between trademark filing and trademark registration); Planetary Soc’y v. Rosillo, WIPO Case No. D2001-1228 (noting that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Furthermore, the Policy does not contain a restriction that specifically limits its reach to only registered marks. Complainant’s rights to an unregistered mark and hence a protectable interest under the Policy, lies with national trademark law. Under American law, rights accrue in unregistered "common law" marks as a result of usage, though limited by geographic and product markets in which the mark is used.
Numerous panels have upheld the protectable status of unregistered marks in the United States under the Policy. See Bennett Coleman & Co. Ltd. v. Steven S Lalwani and Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company, WIPO Case Nos. D2000-0014 and 2000-0015; SeekAmerica Networks, Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131; Cho Yong Pil v. ImageLand, Inc., WIPO Case No. D2000-0229); American Home Products Corporation v. Healthy Futures, WIPO Case No. D2000-0454; Freedom Flag, Inc., dba Falls Flag & Banner Co. v. Flags Unlimited Case WIPO Case No. D2002-0478.
Here, it is undisputed that Complainant used the mark in offering haunted house services in the Fort Worth, Texas area at least several months before Respondent registered the domain name. The Panel believes that this evidence is sufficient to establish that Complainant had some common law rights in the mark (albeit limited to haunted house services in the Fort Worth area) since at least 1996.
The Panel, therefore, finds in favor of Complainant on Policy ¶ 4(a)(i).
The next prong of the analysis considers whether Respondent has any rights or legitimate interests in <screams.com>. The guiding criteria set forth in Paragraph 4(c) of the Policy include whether:
(i) before any notice to the Respondent, the Respondent was using, or was making 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; or
(ii) the Respondent has been commonly known by the Domain Name, even if the holder has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate or non-commercial fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As the Policy points out, these factors are not exhaustive of all the circumstances that may establish rights or a legitimate interest.
The domain name is <screams.com>. Respondent is Happy Halloween, Inc. offering services under the name Cutting Edge Haunted House. Therefore, the domain name does not reflect the name of Respondent’s corporate identity or any product or service it offers. Moreover, Respondent does not appear to have any rights to any trade names or trademarks consisting in whole or in part of the mark. There is nothing to show that Respondent is commonly known by the domain name. As noted above, Respondent does not use the word “screams” or “scream” even once on its extensive website.
Respondent does not contest that the <screams.com> domain name automatically redirected the Internet user to Respondent’s own web site, <cuttingedgehauntedhouse>, as of the time the complaint was filed. At <cuttingedgehauntedhouse>, Respondent markets its haunted house, which operates in direct competition to Complainant. This is in no way a legitimate non-commercial or fair use of the disputed domain name. While Respondent is certainly offering goods and services, namely haunted house services, such offering of goods and services is not bona fide. See Ameritrade Holdings Corp. v. Polanski , FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the domain name to redirect Internet users to a financial services website, which competed with the Complainant, was not a bona fide offering of goods or services).
A number of other panel decisions have considered the question of bona fide use. See First American Funds Inc v. Ult.Search, Inc., D2000-1840 (WIPO May 1, 2001). The majority in First American noted, "[a]lthough the Policy draws a clear distinction between the requirement of showing absence of legitimate right or interest in paragraph 4(a)(ii), and the showing of bad faith registration and use in paragraph 4(a)(iii), in reality it is difficult to separate the consideration of the one from the other. Absence of any right or interest on the part of Respondent may be of assistance in determining bad faith registration and use, and bad faith registration and use may be of assistance in determining the legitimacy of the claimed right or interest".
The parties disagree about Respondent’s awareness of Complainant at the time of registration and in the years prior to this dispute, and both have submitted evidence to support their positions. The Panel does not accept that Respondent was unaware of Complainant's use of the mark SCREAMS in connection with haunted houses in the Fort Worth area, either at the time of the domain name registration or in the years preceding this dispute. Both Complainant and Respondent are in the business of operating haunted houses within a 45 minute drive of one another. Furthermore, the timing of the registration indicates that there was at least some prior knowledge on the part of Respondent when it began to offer goods and services through the domain name: the registration was sought immediately after Complainant’s first season, and only one day after Complainant’s trademark application for the SCREAMS mark was published for opposition. It is well-settled under the Policy that knowingly infringing use of a trademark to offer goods and services is not a bona fide offering under the Policy. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum Jun. 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). The Panel finds that in registering the domain name, Respondent was motivated by a desire to disrupt the business of a competitor or attract Complainant’s customers on the Internet.
The Panel therefore concludes that Respondent's adoption and use of the domain name was not bona fide and did not constitute use of the domain name in the bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Panel, therefore, finds in favor of the Complainant on Policy ¶ 4(a)(ii).
Finally, the Panel must decide whether Complainant has demonstrated Respondent’s registration and use in bad faith.
As discussed above, the timing of the registration, in combination with the parties’ direct competition in small geographical area, are strong evidence that Respondent registered the domain name to either disrupt Complainant’s business or attract its customers on the Internet. See DatingDirect.com Ltd. V. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The panel finds this diversion is evidence of bad faith registration and use pursuant to Policy 4(b)(iii).”); see also Sparks Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (finding that Respondent registered a domain name confusingly similar to Complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website, and this supported a finding that Respondent registered and used the domain name to disrupt the Complainant’s business).
Furthermore, Respondent’s use of the domain name solely to redirect to its other website indicates use in bad faith. See Freedom Flag, Inc., dba Falls Flag & Banner Co. v. Flags Unlimited Case, D2002-0478 (WIPO July 30, 2002) (“It is well-settled that registration and use of a domain name to re-direct Internet users to websites of competing organizations constitutes bad faith use and registration.”).
The Panel, therefore, finds in favor of the Complainant on element (iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <screams.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael Albert, Panelist
Dated: August 31, 2011
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