27th May 2003
CMG Worldwide, Inc. v. Humphrey Bogart Club
Claim Number: FA0302000144631
Complainant is CMG Worldwide, Inc., Indianapolis, IN (“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.
The undersigned panel certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as the Panel in this proceeding.
The Panel: Dawn Osborne (Chair), the Honourable Bruce E Meyerson Esq and Mr Alan L. Limbury.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 5, 2003; the Forum received a hard copy of the Complaint on February 6, 2003.
On February 7, 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 the 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 February 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 3, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 24, 2003.
On April 2, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Dawn Osborne (Chair), the Honourable Bruce E Meyerson Esq. and Mr. Alan Limbury as the Panel.
On April 15, 2003 the Panel requested additional information from the Complainant as to the rights it claims in the mark HUMPHREY BOGART. Supplemental information was provided by the Complainant on April 24, 2003. An additional statement was then filed by the Respondent on May 12, 2003.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant is in the business of representing living and deceased celebrities and their heirs, families, and estates of deceased celebrities for the purposes of licensing to third parties permission to commercially utilize the names, likenesses, voices, rights of publicity and endorsement and other visual and aural depictions of such celebrities, together with the trademarks and related rights associated with same.
The Complainant is the exclusive, worldwide licensing agent for Bogart Inc. who is the owner of trademark 1,775,912 for the mark HUMPHREY BOGART and proprietary rights, including the right of publicity, right of association, sponsorship, and/or endorsement, in and to the name and likeness of the late and very famous and accomplished actor Humphrey Bogart and is charged with enforcement of these rights.
The Complainant alleges that the domain name at issue <humphreybogart.com> is identical or confusingly similar to the registered and common law trademarks and other intellectual property issues in which Bogart Inc. has exclusive rights.
In view of the decision of the Panel below, other submissions made by the Complainant in the Complaint need not be considered relevant here.
The Respondent contends that the Complaint must be dismissed because the Complainant is not the owner of a registered trademark that is identical or confusingly similar to the disputed domain name <humphreybogart.com> and has produced no evidence of common law trademark rights.
In view of the decision of the Panel below, other submissions made by the Respondent in its Response need not be considered relevant here.
C. Additional Submissions
In its Supplementary Information submitted on May 24 2003, the Complainant states it has authority from Bogart Inc. to pursue the Complaint, but confirms that Bogart Inc. was the exclusive owner of the trademark rights HUMPHREY BOGART and the common law rights associated with Humphrey Bogart, the actor, in commerce. An affidavit of Stephen Bogart, the son of the actor Humphrey Bogart, was exhibited confirming this. A representation agreement between Bogart Inc. and the Complainant (with its date of execution and date of termination unhelpfully redacted) was exhibited which contained a clause that the Complainant shall not obtain or claim ownership to the Humphrey Bogart name and trademarks. The Respondent did not contest this additional information.
The owner of the trademark HUMPHREY BOGART has been shown to be Bogart Inc., an entity which is not a party to this Complaint. The Complainant may have contractual rights with respect to the trademark, but does not have “rights” in the trademark HUMPHREY BOGART within the meaning of the UDRP Policy.
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.
Identical and/or Confusingly Similar to a trademark in which the Complainant has rights
The owner of the HUMPHREY BOGART registered trademark is Bogart Inc. The Respondent does not contest this, nor that Bogart Inc. is the owner of unregistered common law rights in the HUMPHREY BOGART name.
The Complainant has not shown any “rights” in the trademark HUMPHREY BOGART within the meaning of the UDRP policy. Whilst it may have contractual rights to represent Bogart Inc. the owner of the rights in HUMPHREY BOGART, the Complainant does not own these rights or have any rights in the trademark itself. This is confirmed by both the affidavit of Stephen Bogart and the representation agreement submitted with the Complainant’s supplementary information.
This is a case similar to the cases NBA Properties Inc v Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) and Backstreet Boys Prod. V. Zuccarini,D2000-1619 (WIPO Mar. 27, 2001) where the wrong Complainant filed the Complaint. Accordingly, the Complainant failed to satisfy Paragraph ¶ 4(a)(1) of the Policy. As pointed out in the Backstreet Boys case the only option open to the Panel in this type of case is to dismiss the Complaint “without prejudice.”
Rights or Legitimate Interests/ Registration and Use in Bad Faith
Given the Panel’s findings above there is no need to make any further determinations in this decision.
The Complainant having failed to satisfy all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dawn Osborne Panelist (Chair)
Dated: May 27, 2003