Stanley Jacobs Productions, Ltd. v. Name
Administration, Inc. (BVI)
Claim Number: FA0502000425410
PARTIES
Complainant
is Stanley Jacobs Productions, Ltd. (“Complainant”),
represented by Fritz L. Schweitzer III, of Schweitzer, Cornman, Gross and Bondell LLP, 292 Madison Avenue-19th Floor, New York, NY 10017. Respondent is Name Administration, Inc. (BVI) (“Respondent”), represented by John B. Berryhill, of Dann, Dorfman, Herrell, and Skillman P.C., 1601 Market Street,
Suite 2400, Philadelphia, PA 19103.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <sjpl.com>,
registered with Domain Name Sales Corp.
PANEL
The
undersigned certifies 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.
Hon.
Jerry Kaufman
David
A. Einhorn, Esq.
Paul
M. DeCicco, Esq.
as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 22, 2005.
On
February 21, 2005, Domain Name Sales Corp. confirmed by e-mail to the National
Arbitration Forum that the domain name <sjpl.com>
is registered with Domain Name Sales Corp. and that the Respondent is the
current registrant of the name. Domain
Name Sales Corp. has verified that Respondent is bound by the Domain Name Sales
Corp. 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
February 24, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 16, 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@sjpl.com by e-mail.
A
timely Response was received and determined to be complete on March 16, 2005.
On March 29, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Hon. Jerry Kaufman,
David
A. Einhorn, Esq. and Paul M. DeCicco, Esq. as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends as follows:
Complainant,
Stanley Jacobs Productions, Ltd. (“SJPLtd”), used the domain name, <sjpl.com>,
for over six (6) years and then inadvertently allowed it to lapse in early
November 2003 due to an accounting error. At no time did Complainant intend to
abandon the domain or the mark.
Immediately
after the domain name lapsed, Respondent registered the domain name (on
November 6, 2003). The domain name is now being used to redirect Internet
traffic to other commercial sites, for profit.
At the request of the Registrant, STPLtd provided proof
of trademark rights to Respondent. SJPLtd also requested that Respondent
transfer the domain; however, Respondent failed to reply.
Identity or Confusing Similarity
The domain name, <sjpl.com>, is identical to the
Complainant’s SJPL mark. Complainant,
Stanley Jacobs Productions, Ltd., has substantial common law rights in the
SJPL, SJPL FILMS, and SJPL PRODUCTIONS marks
(“the SJPL Marks”). SJPLtd has used the SJPL marks in commerce continuously
since no later than March 8, 1997. Since that date, SJPLtd has used the SJPL
marks as source identifiers in connection with the production of feature films,
documentary films, infomercials and direct response spots. Specifically, the
SJPL Marks, including SJPL, SJPL FILMS and SJPL PRODUCTIONS have appeared in
numerous national and local television broadcasts thousands of times. In
addition, SJPLtd has retained counsel to apply for a Federal registration of
the SJPL mark for the foregoing goods and services.
The SJPL Marks are also used in Complainant’s literature and
business stationary, through which it advertises, offers and provides its
services as <sjpl.com>. Due to its extensive commercial use of the
SJPL Marks, SJPLtd has substantial rights in the SJPL, SJPL FILMS and SJPL
PRODUCTIONS marks.
The <sjpl.com> domain name is identical or
substantially similar to the SJPLtd Marks because the second-level domain,
“SJPL,” is identical to the SJPL mark. Further, the second-level domain,
“sjpl,” is identical to the dominant portions of the SJPL PRODUCTIONS and SJPL
FILMS marks, namely, the dominant portion SJPL.
Legitimate
Rights or Interests
Respondent has no rights or legitimate interests to the <sjpl.com>
domain name.
Respondent, Name Administration Inc., is making no use of the
domain name, <sjpl.com>, for a bona fide offering of goods or
services. Respondent is using the domain to host a website which merely
redirects visitors to the sites of third parties. On information and belief,
Respondent receives monetary or other compensation based on the redirected
traffic and/or commerce generated therefrom.
Respondent is not known by the domain name, and is not making a
legitimate non-commercial or fair use of the domain name. Further, Respondent
has no trademark rights in the domain name. The token presence of the <sjpl.com>
domain name in the body of the website does not create common-law or Federal
trademark rights. Therefore, Respondent has no rights or legitimate interests
in respect of the domain name of issue.
Respondent
registered and is using the <sjpl.com> domain name in bad faith.
The domain name at issue, <sjpl.com>, is an arbitrary sequence of
letters having no meaning other than possibly the initials of an entity or
organization. This domain name is not a generic or descriptive word or phrase
suitable for use by any registrant. Respondent, Name Administration Inc., never
had, nor does it now have, any legitimate business interest in the arbitrary
domain name, <sjpl.com>. Its only interest in the domain was and
is to redirect traffic to the commercial sites of others or to sell the domain
name registration for profit.
On information and belief, this is a pattern of behavior (and
likely the business model) of Respondent. Respondent’s website at
<nameadministration.com> shows that the Respondent is an “internet
traffic syndicator” that targets advertising content to generic domain names
through an “advertiser network.” Respondent receives traffic to its domain
primarily because, as it states, many generic domain names receive “organic”
browser type-in traffic.
This may be a legitimate business practice for generic domain
names where visitors use generic or highly descriptive terms to find general
information. However, this is not a legitimate practice for arbitrary domains,
where visitors use arbitrary terms to find information about a specific source.
Where, as in the present case, a speculative registrant uses an arbitrary
domain to redirect traffic, the registrant is necessarily trading on the
goodwill of another entity. Otherwise, there would be no traffic to the domain
(or market to re-sell the domain) and the speculative registrant would have no
interest in registering and maintaining the domain.
Respondent registered the domain immediately after Complainant
inadvertently allowed the registration to lapse in November 2003. On
information and belief, it is Respondent’s business practice to monitor expired
registrations for this purpose.
Respondent has not substantially developed or invested in a
website at the domain. Respondent’s website merely has a token presence of <sjpl.com> and is otherwise
merely a collection of various, unrelated links which lead to commercial sites
of third parties. On information and belief, this website is essentially a copy
of other websites of Respondent.
The lack of a legitimate interest in the arbitrary domain name,
coupled with Respondent’s pattern of conduct and its failure to substantially
develop any website related to the arbitrary domain, demonstrate the
Respondent’s bad faith in the registration and use of the domain name.
B.
Respondent
Respondent
contends as follows:
Identity or Confusing Similarity
Trade or
service mark rights may be based on a common law claim. However a claim of common
law right, in contrast to a claim based on registration, does not enjoy a
presumption of distinctiveness, and the burden remains on Complainant to prove
secondary meaning in the alleged term in association with particular goods or
services.
Complainant’s evidence consists of two exhibits of unknown date.
Neither of these pieces of evidence supports Complainant’s bare assertion of
“extensive commercial use of the SJPL marks.”
The letters “SJPL” are the initials of Complainant’s corporate name “Stanley
Jacobs Productions, Ltd.” First, such a corporate or trade name does not
provide an automatic trademark claim to the initials thereof. Second, even
if “SJPL” were a trade name of
Complainant, it would not be subject to a claim of right cognizable under the
Policy. The Policy is intentionally limited to “trade or service mark” rights,
and is not intended to address trade names in the absence of a trade or service
mark claim:
Complainant
in this dispute makes no attempt to prove distinctiveness of any mark. It makes
no effort to show a secondary meaning such that consumers would be likely to
associate the domain name with Complainant. The fact that Complainant has used
the letters in connection with other letters as a domain name does not change
the conclusion that must be drawn.
Turning again to Complainant’s undated business card and
stationery, and assuming, arguendo, that these two items have ever been
seen by the public, it is clear that the term “SJPL” is used thereon to
indicate an address, and is not used in a trademark
Mere use of a domain name as an Internet address, and to indicate
an address on a business card or letterhead does not constitute use of a term
as a distinctive indicator of the source or origin of goods emanating from the
bearer of such stationery.
There is no trade or
service mark use of the term “SJPL” to be found. The term “SJPL” appears in a
copyright notice as a trade name, but is not used as a mark in association with
any goods or services.
Complainant has not shown evidence of a trade or service mark and
that Complainant does not use “SJPL” as a trade or service mark. Respondent
specifically sought to investigate Complainant’s claim, requested documentation
from Complainant, and received similar materials from Complainant indicating
the absence of trademark use of the term “SJPL.”
There are reasons to believe that Complainant would not be able to
establish distinctiveness in “SJPL” even for the limited area of multimedia or
audiovisual materials in California. For example, the San Jose Public Library,
which lends such materials and provides screenings of audiovisual materials,
refers to itself as “SJPL.”
The only result available in the database of the United States
Patent and Trademark Office indicates that there is an SJPL Products Inc. of
Sherman Oaks, California, which is the registrant of an unrelated mark.
However, there are at least two other entities identified as SJPL even within
Complainant’s home state. Hence, the implicit allegation of exclusive rights or
distinctiveness cannot be taken here at face value.
Complainant, styled as “Stanley Jacobs Productions Ltd.,” notes in
the Complaint that “SJPLtd has used the SJPL Marks in commerce continuously
since no later than March 8, 1997.” The record of the California Secretary of
State showing formation of an “SJPL Films Ltd.” on July 13, 1999.
Mere registration of a corporate name does not confer trade or
service mark rights, but Complainant’s unsupported allegation does not appear
to withstand even casual investigation.
Although common law rights are not excluded from consideration
under the Policy, in the absence of any prima facie evidence as would be
available from a registration of some kind Complainant bears the burden of
proving the ownership of such rights. Complainant has failed to do so here, and
Complainant’s allegations are not supported by the evidence.
Legitimate
Rights or Interests
In the absence of a trademark claim, Respondent was entitled to
register the domain name and use it for any purpose whatsoever. Respondent does
claim an equitable right in its use of the domain name for general advertising
purposes.
Complainant does not allege infringing use of the domain name
relative to the Complainant’s asserted trademark, even if Complainant had
established the existence of such a mark (or a class of goods and services
associated therewith). In the absence of an infringing use, there is no reason
to conclude that Respondent’s use of the domain name is not legitimate.
The present Respondent indeed has an established history of
obtaining defunct domain names for such a purpose. So long as such use does not
infringe a trademark, then it remains the case that use of any term or
combination of letters may be used by any party for such non-infringing purposes.
There is no basis to conclude that Respondent is not entitled to use the domain
name for any purpose it desires.
Bad
Faith
Respondent has not sought to sell the domain name, nor has
Respondent registered a pattern of marks designed to prevent Complainant from
registering its alleged mark as a domain name. Indeed, the <sjpl.net>
domain name is, at the time of this writing, unregistered and available to any
party for mere dollars.
Complainant’s main allegation here rests on the assertion that
“bad faith” is evident upon the mere registration of an expired domain name.
Registration of an available, arbitrary sequence of letters capable of multiple
non-infringing uses does not amount to a showing of bad faith.
There is no allegation that Respondent’s website links to any
competitor or potential competitor of Complainant.
The mere fact that Complainant claims it did not renew its
registration does not confer any greater claim to the domain name.
As of the November 6, 2003 registration date of <sjpl.com>,
and the manner in which the “.com” registry functioned, and still functions, it
is not possible for the domain name to have expired in early November and been
immediately re-registered as Complainant alleges.
Unlike many other proceedings where Complainant’s correspondence
is unanswered, Respondent actually went to some length to actively seek out (a)
the identity of the complaining party, since Complainant was not even
identified in the initial correspondence, and (b) the basis of a trademark
claim. In response, after spending time and effort seeking to understand
Complainant’s claim, Respondent was provided with the same home page print-out,
and other similar undated material in which there was no evidence of “SJPL”
being used as a trademark, along with the same unsupported and suspect
contentions in the Complaint. Additionally, Respondent diligently investigated
trademark databases, Internet search engines, and other sources for evidence of
secondary meaning in Complainant’s claimed mark and found none. Ultimately, Respondent determined that
it had spent enough time and money on sincerely attempting to understand
whether there was a claim here. Because the Policy does not permit declaratory
actions to be brought by a domain registrant, Respondent decided to await this
opportunity to put the matter to an impartial Panel.
FINDINGS
The Panel finds Complainant has not shown
by a preponderance of the evidence that it has trademark rights in the at-issue
domain name sufficient to sustain its complaint.
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.
In an administrative proceeding under the
UDRP the first question, which every panel must answer, is whether or not the
complainant has sufficient trademark rights in the at-issue mark to advance its
complaint. It is the complainant’s burden to “prove” that the at-issue domain
name is identical or confusingly similar to “a trademark or service mark in
which the complainant has rights.”
Policy ¶ 4(a)(1). This threshold issue concerning a complainant’s
trademark often proves to be a thorny one.
For one, UDRP procedures limit the scope
of evidence both in kind and amount.
For another, there is no clear guide by which a complainant may be
reasonably assured of what particular evidence available to the complainant
will be required to persuade a Panel.
Unfortunately, the complainant may select evidence that it believes
supports it position, but which instead leads to an unintended or unforeseen
inference. In some cases had other evidence, equally available to Complaint,
been proffered instead of what was actually produced, such evidence might have
succeeded.
And so it goes that panels often struggle
to determine which testimony and/or documentary evidence should be taken as
true; and from such truth what inferences may be made, what legal conclusion
follow, and finally how such conclusions apply to the matter at hand. The
process is not a mathematical one and is complicated by the abbreviated nature
of the UDRP process. Panelists may, and do, disagree on the ultimate
conclusions after independently considering the same data.
Certainly the complainant must plead that
it has trademark rights in the at-issue domain name. But simply saying so is
not enough. Mere conclusion will not do.
If it is to sustain its burden, the complainant must evidence sufficient
trademark facts to independently lead the panel to complainant’s intended
conclusion.
Complainant’s “evidence” may take the
form of written testimony and/or documents.
Personal knowledge of trademark facts may be evidenced by declaration.
Since the complaint is itself a signed declaration, it is permissible for a
panel to give the statements in a complaint evidentiary value. Therefore the panel may, and often does,
treat appropriate statements in a complaint as evidence.
In the instant case the Complaint states:
·
SJPLtd has
used the SJPL Marks in commerce continuously since no later than March 8, 1997.
·
Since that
date, SJPLtd has used the SJPL marks as source identifiers in connection with
the production of feature films, documentary films, infomercials and direct
response spots.
·
Specifically,
the SJPL Marks, including SJPL, SJPL FILMS and SJPL PRODUCTIONS have appeared
in numerous national and local television broadcasts thousands of times.
·
The
SJPL Marks are also used in Complainant’s literature and business stationary,
through which it advertises, offers and provides its services as <sjpl.com>.
·
Due
to its extensive commercial use of the SJPL Marks, SJPLtd has substantial
rights in the marks SJPL, SJPL FILMS and SJPL PRODUCTIONS.
Complainant thus pleads and declares more
than mere conclusion and sets out at least some underlying facts grounding
common law rights. In particular, Complainant declares that “SJPL” was
continuously used in commerce for over six years as source identifiers for
Complainant’s goods/services. If these
trademark facts are found to be credible, then the Panel might infer, without
more, that Complainant has trademark rights in the identical at-issue domain
name and that Complainant has met its burden under the Policy.
However, Complainant’s documentary
submissions tell a different story. The
exhibits annexed to the Complaint show little or no use of the SJPL mark.
Rather these documents primarily reflect use, although not necessarily
trademark use, of Complainant’s business name --Stanley Jacob Productions
Limited. As Respondent points out, the
Panel may not deduce that Complainant has trademark rights in “SJPL” from documents
showing merely an occasional unqualified diminutive appearance of the letters
“SJPL.”
On the other hand the Panel may, and
does, infer from the lack of documentary evidence directly supporting
Complainant’s having common-law rights in the at-issue mark, that such rights
are lacking. See, e.g., Weatherford Int’l, Inc. v. Wells, FA 153626
(Nat. Arb. Forum May 19, 2003); see
also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001). The fact that the exhibits are only
trivially concerned with the “SJPL” mark urges that Complaint has not met its
burden under the Policy. Had Complainant selected exhibits that harmonized with
the declaration of trademark facts contained in the Complaint (if such exist),
the Panel might have found more favorably for Complainant, at least on the
threshold issue.
Since the Panel finds that Complainant
has not shown it has trademark rights in the at-issue mark, the Panel may end
its analysis without going any further.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Paul M.
DeCicco, Presiding Panelist
Dated: April 18, 2005
Hon. Jerry Kaufman & David Einhorn,
Panelists
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