Ast Sportwear, Inc. v. Steven R. Hyken

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AST Sportswear, Inc. v. Steven R. Hyken

Case No. D2001-1324

1. The Parties

The Complainant is AST Sportswear, Inc., a New York corporation, represented

by Gail E. Nickols and William C. Wright, Graham, Campaign P.C., 36

West 44th St., New York, NY 10036-8178, United States of America.

The Respondent is Steven R. Hyken, an individual residing in California, represented

by Michael S. Duberchin, 24007 Ventura Boulevard, Suite 115, Calabasas, CA 91302,

United States of America, and Asher Aaron Levin, Law Offices of Levy, McMahon

& Levin, 16830 Ventura Boulevard, Suite 500, Encino, CA 91436, United States

of America.

2. The Domain Name and Registrar

The domain name at issue is <johnnyblaze.com>.

The domain name is registered with Register.com.

3. Procedural Background

Complainant submitted its Complaint to the World Intellectual Property Organization

Arbitration and Mediation Center (the "Center") under the ICANN Uniform

Domain Name Dispute Resolution Policy (the "Policy") via e-mail on

November 20, 2001. On November 27, 2001, the Center formally commenced

this proceeding.

Respondent submitted its Response on December 19, 2001. Complainant submitted

a Reply to the Response on December 20, 2001. On or about January 19, 2002,

Respondent indicated that it was submitting an Objection and Response to the

Reply. The Center received the exhibits to the Objection by fax on January 28,

2002.

Complainant elected to have this dispute decided by a single-member Administrative

Panel. On January 18, 2002, the Center notified the parties that David H. Bernstein

had been appointed as the Panelist. The issuance of this decision was, regrettably,

delayed because of the parties’ delayed submission of the Reply and Objection,

and by subsequent delays in processing the file at the Center.

4. Factual Background

Complainant is the owner of the registered JOHNNY BLAZE trademark, which was

first used in United States commerce in 1998 and was registered for men’s, women’s

and children’s clothing in March 2000. Complainant has also applied for registration

in other classes and has applied for and registered the mark in several other

countries.

Respondent is an individual who has used the stage name "Johnny Blaze"

in past appearances, including appearances on television’s "Gong Show"

in 1977 and 1988. Respondent registered the domain name at issue on or about

February 12, 2001.

5. Parties’ Allegations

Complainant states that the domain name <johnnyblaze.com> is confusingly

similar to Complainant’s mark because the domain name incorporates Complainant’s

mark in its entirety.

Furthermore, Complainant claims that Respondent has no right or legitimate

interest in the domain name because he had constructive notice of Complainant’s

registration and yet registered a confusingly similar domain name. Complainant

alleges that Respondent intentionally infringed Complainant’s trademark by attempting

to lure consumers to his website. Complainant points to Respondent’s claim,

on a version of his website that existed prior to the Complaint, that he was

Complainant’s licensee.

That version of the website also promotes some sort of consumer investment.

Complainant argues that Respondent cannot claim that he has been commonly known

by a name corresponding to the domain name at issue because he has not been

known under the name "Johnny Blaze" as an investment promoter. Under

United States trademark law, Complainant suggests, holding a particular name

does not create an entitlement to use the name to compete with someone else

who holds a registered trademark for the same term.

Complainant also alleges that Respondent has registered and used the domain

name in bad faith. Complainant first argues that the very fact of its mark’s

distinctiveness justifies an inference of bad faith because it is highly improbable

that Respondent selected the domain name without knowledge of Complainant’s

mark. Complainant also maintains that constructive knowledge of the mark based

on its registration supports an inference of bad faith. Finally, Complainant

states that Respondent fraudulently held himself out as Complainant’s licensee,

which cannot be explained except by bad faith.

In its defense, Respondent claims that he has used the stage name "Johnny

Blaze" for over 25 years, beginning in 1977 with a performance on the "Gong

Show." He registered the name "Johnny Blaze" with the American

Federation of Television and Radio Artists (AFTRA) in 1987, and produced t-shirts

with the name "Johnny Blaze" and a flame beginning in 1988. Respondent

states that he has continued to appear as "Johnny Blaze" into 2001,

both for compensation and for free.

Respondent states that Complainant’s trademark registration of JOHNNY BLAZE

is improper, and that he has filed a cancellation petition with the United States

Patent and Trademark Office to pursue that claim. As a result, he argues, Complainant’s

interest in the JOHNNY BLAZE mark is unclear, failing to satisfy the first element

of the Policy. Respondent concedes that the domain name is confusingly similar

to the mark, but argues that it is Complainant that is causing confusion between

Respondent’s stage name and Complainant’s mark because Complainant is advertising

that its website can be found at <www.johnnyblaze.com>.

Respondent argues that he satisfies 4(c)(i) of the Policy, -- which states

that a respondent has rights or legitimate interests in a domain name if, before

any notice of the dispute, the respondent uses, or demonstrates preparations

to use, the domain name or a domain name corresponding to the domain name in

connection with a bona fide offering of goods or services -- because he has

used a name corresponding to the domain name continuously since 1987. Respondent

also argues that the same conduct satisfies 4(c)(ii) of the Policy, which states

that a respondent has rights or legitimate interests if it (as an individual,

business, or other organization) has been commonly known by the domain name.

Finally, Respondent argues that there is no evidence of any bad faith on his

part. With respect to the false claim that Respondent was Complainant’s licensee,

Respondent argues that Complainant itself violated ethical rules by sending

a cease and desist letter directly to Respondent, when Complainant knew that

Respondent was represented by counsel because Respondent’s counsel had previously

sent Complainant a letter alleging that Complainant was violating Respondent’s

rights in the "Johnny Blaze" name. As a result of this conduct, Respondent

states, Complainant panicked and added the license claim to the website, but

removed it within 48 hours.

Complainant’s supplementary submission argues that, because it received notice

of Respondent’s trademark cancellation petition only after it filed its Complaint

under the Policy, it should be allowed to respond to Respondent’s arguments

with respect thereto. Substantively, Complainant maintains that Respondent’s

trademark cancellation petition does not detract from its rights in the JOHNNY

BLAZE mark because the mark remains on the Principal Register. The supplementary

submission also argues that Respondent withdrew from AFTRA in 1991 and has presented

no evidence of current use, and that an Internet search reveals no current uses

of the name. Complainant also argues that Respondent’s delay in registering

the domain name at issue until three years after Complainant began using its

mark evidences Respondent’s lack of legitimate interest. Finally, Complainant

states that the false claim that Respondent was Complainant’s licensee was present

on Respondent’s website for fifteen days, not 48 hours, as evidenced by the

date stamped on Complainant’s exhibit showing the website’s appearance.

Respondent’s Objection and Response to Complainant’s Reply argues that Complainant

should have been aware of the trademark cancellation proceeding at the time

it filed its Complaint and that Respondent warned Complainant that it would

file such a proceeding. The Objection and Response also attaches Respondent’s

answers to Complainant’s Interrogatories in the trademark cancellation proceeding

as evidence of Respondent’s continuing use of the "Johnny Blaze" stage

name, as well as an advertisement in the June/July 2001 edition of "Karaoke

Scene" offering Respondent’s Elvis impersonation services under that name.

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, Complainant must establish each of the

following elements in order to state a claim for transfer of a domain name:

(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) that Respondent has no rights or legitimate interests in respect of the

domain name; and

(3) that Respondent has registered and used the domain name in bad faith.

A. The Supplemental Submissions

The Rules for Uniform Domain Name Dispute Resolution Policy ("Rules")

do not provide the parties with any right to file replies on their own volition.

Rather, Rule 12 provides that only the Panel may request further

submissions. Plaza Operating Partners, Ltd. v. Pop Data Technologies,

WIPO Case No. D2000-0166 (June 1, 2000).

Nevertheless, Panels have accepted supplemental submissions in limited circumstances,

such as when a party cites new and highly relevant legal authority not previously

available, presents new evidence not reasonably available at the time of its

initial submission, or rebuts arguments by an opponent that could not reasonably

have been anticipated. Id.; CRS Technology Corp. v. CondeNet, Inc.,

File No. FA0002000093547 (NAF March 27, 2000); Universal City Studios, Inc.

v. G.A.B. Enterprises, WIPO Case No. D2000-0416

(June 29, 2000); Wal-Mart Stores, Inc. v. Richard MacLeod, WIPO

Case No. D2000-0662 (September 19, 2000); Electronic Commerce

Media, Inc. v. Taos Mountain, File No. FA0008000095344 (NAF October 11,

2000); Parfums Christian Dior S.A. v. Jadore, WIPO

Case No. D2000-0938 (November 3, 2000).

In this case, Complainant’s Reply addresses one issue in the Response that

Complainant could not reasonably have anticipated: Respondent’s filing of a

cancellation petition and its argument that this filing undermines Complainant’s

rights in the JOHNNY BLAZE mark. The Panel accepts the Complainant’s representation

that it was unaware of the trademark cancellation petition at the time it filed

the Complaint; though Respondent may have threatened such action, threat is

not reality. Accordingly, the Panel accepts that portion of the Reply.

The Panel does not accept any other portion of the Reply. It expressly disregards

Complainant’s evidence concerning Respondent’s AFTRA membership (which, in any

event, is ambiguous because there is no explanation in the record of what it

means when AFTRA says both that "Johnny Blaze is a member of AFTRA"

and that "he is on honorable withdrawal") or his lack of current use

of the stage name Johnny Blaze. Both of those assertions were contained in Respondent’s

counsel’s May 16, 2001 demand letter, and thus Complainant should have anticipated

these issues in its October 31, 2001 Complaint. As for the rest of the

Reply, it is essentially argument, and thus it, too, will not be considered.

The Rules contemplate that a respondent has the right to respond to a complaint,

Rule five, and direct the Panel to treat the parties "with equality."

Rule 10(b). It is thus appropriate to grant Respondent a right to submit a sur-reply

limited solely to the issue of the cancellation petition. Pacific Fence &

Wire C. v. Pacific Fence, WIPO Case No. D2001-0237

(June 11, 2001). The Panel thus has considered the Respondent’s Sur-Reply to

the extent it addressed that issue.

B. Identical or Confusingly Similar to Complainant’s Trademarks

Respondent argues that, because he has filed a trademark cancellation petition,

Complainant has not shown that it has rights in the JOHNNY BLAZE mark. Pending

the outcome of that proceeding, however, Complainant’s registration is still

valid and justifies a finding that Complainant has rights in the mark. In addition,

Respondent has not rebutted Complainant’s evidence of extensive advertising

and sales under the mark, which, at the minimum, creates common law rights under

U.S. law (which applies to these two U.S.-based parties). Moreover, Respondent

has not alleged any challenge to Complainant’s trademark registrations for JOHNNY

BLAZE in Canada, England, Australia, Japan, Norway, Denmark, France or Germany,

or in the Benelux registry; each of these registrations is itself sufficient

to provide trademark rights for purposes of the policy. The Panel thus finds,

for purposes of these proceedings, that Complainant owns rights in the trademark

JOHNNY BLAZE. As there is no dispute as to the fact that the domain name is

identical to that mark, Complainant has satisfied its burden on the first factor.

C. Rights or Legitimate Interests

This case raises an unusual question: If Respondent was previously known as

"Johnny Blaze" in the entertainment field, does he have a legitimate

interest (for purposes of the Policy) in the <johnnyblaze.com> domain

name if he uses that domain name to advertise an unrelated business?

The only copy of the website’s contents provided to the Panel – a version that

existed after Complainant’s cease and desist letter but before the Complaint

was filed – promotes the "USWITCH security system" using the "Johnny

Blaze" name, and states that "johnny blaze(tm)" is licensed from

Complainant and <www.licensingworld.com>. Even today, the website appears

to promote a variety of unrelated goods and services, and says nothing about

Respondent’s stage career as Johnny Blaze. The Panel is hard pressed to see

how this particular use of the domain name <johnnyblaze.com> can constitute

a "legitimate interest" in the normal understanding of those words

[1].

The Policy, though, is a limited tool for acting against certain types of cybersquatting,

and provides a contractual-based remedy. If there is a "legitimate interest"

as that term is defined in the Policy, the Policy precludes transfer of the

domain name, even if the use does not seem "legitimate" in the broader

understanding of that word. Cf. e-Duction, Inc. v. Zuccarini, WIPO

Case No. D2000-1369 (February 5, 2001); The Thread.com, LLC v. Poploff,

WIPO Case No. D2000-1470 (January 5, 2001).

To determine whether Respondent has a "legitimate interest," as those

words are used in the Policy, one must look to the actual language of the Policy.

It provides that, if Respondent "proves" that he has "been commonly

known by the domain name, even if [he has] acquired no trademark or service

mark rights," the Panel "shall" find that Respondent has a legitimate

interest. Policy 4(c)(ii). Significantly, that section of the Policy contains

no restrictions on the type of use of the domain name that is acceptable or

legitimate. In contrast, the other examples of legitimate interest include an

analysis of market-based factors: paragraph 4(c)(i) applies only if there is

a "bona fide offering of goods and services," and paragraph 4(c)(iii)

applies only if there is "noncommercial or fair use of the domain name,

without intent for commercial gain." Thus, even if Respondent were selling

Johnny Blaze clothing on the site in a way that infringed Complainant’s trademark

rights (which would vitiate any claim of legitimate interest under paragraph

4(c)(iii)), the Policy would not provide a remedy if Respondent could prove

a legitimate interest under paragraph 4(c)(ii); rather, Complainant would have

to pursue its claims (whether of trademark infringement or cybersquatting) under

the applicable national laws.

Given that a showing of a "legitimate interest" can defeat a charge

of cybersquatting under the Policy, a Panel must be careful to ensure that a

Respondent’s claim that he or she has "been commonly known by the domain

name" is legitimate. See Penguin Books Ltd. v. Katz, WIPO

Case No. D2000-0204 (May 20, 2000) (finding legitimate interest where Respondent

produced evidence that he "has for many years been known by the nickname

‘Penguin’"). Mere casual nicknames or other unsubstantiated assertions

of past use are insufficient. See, e.g., DIMC, Inc. v. Phan, WIPO

Case No. D2000-1519 (February 20, 2001) (rejecting claim that

Respondent was known by nickname "Krylon" given absence of evidence

of when alleged nickname was adopted and how it was used); Red Bull GmbH

v. Gutch, WIPO Case No. D2000-0766

(September 21, 2000) (rejecting claim that Respondent was known by nickname

"Red Bull" since childhood because Respondent did not provide any

evidence to support contention); Gambro AB v. Family Health & Wellness

Center, WIPO Case No. D2001-0447 (May 25,

2001) (Respondent did not submit any evidence to support suggestion that its

employee was known by nickname "Gambro"); see also Sumner v. Urvan,

WIPO Case No. D2000-0596 (July 24, 2000)

(Respondent’s evidence that his nickname is "Sting" is "at the

weaker end of the spectrum of such evidence" and thus did "not establish

that he has been ‘commonly known’ by the domain name as contemplated by"

the Policy). Rather, particularly when there are not insubstantial allegations

of bad faith, a Panel should require a persuasive showing of a bona fide use

of the name.

Here Respondent has satisfied that burden. He has submitted conclusive documentary

evidence that he used the stage name Johnny Blaze as a professional stage name

during his career. He appeared on network television as "Johnny Blaze"

starting in 1977 (long before the start of the commercial internet). He applied

to join the American Federation of Television and Radio Artists ("AFTRA")

under the stage name "Johnny Blaze" in 1987. And he sold T-shirts

emblazoned with the "Johnny Blaze" stage name beginning in 1988. Regardless

of whether Respondent is making any current use of the "Johnny Blaze"

stage name, there is no question but that, at least in the past, Respondent

was "commonly known by the domain name." Indeed, Complainant concedes

that "Respondent . . . has been using the mark before notice of the dispute."[2]

Thus, under the literal terms of the Policy, Respondent has established a "legitimate

interest" for the limited purposes of this proceeding. Accordingly, however

strange the content on Respondent’s website may seem (including the "panicked"

posting of the false and subsequently-deleted license language), the Panel determines

that the Complaint fails under the second element of the Policy.

D. Bad Faith

In light of the Panel’s conclusion with respect to the second factor of the

Policy, there is no reason to consider the parties’ allegations concerning bad

faith. Moreover, those issues are so complex in this case that they likely need

to be resolved by a fact finder, with the benefit of live testimony, who can

better assess the parties’ credibility and facts like why Respondent falsely

claimed to be a licensee of Complainant and why Complainant has falsely advertised

that its website can be found at <www.johnnyblaze.com>.

7. Decision

For all of the foregoing reasons, the Panel decides that Complainant has not

met its burden of proof under the Policy. Accordingly, this Panel concludes

that the domain name at issue should not be transferred to the Complainant.

David H. Bernstein

Sole Panelist

Dated: March 26, 2002

Footnotes:

1. If the domain name were only used as an

email address for emails to Respondent, or if the website discussed Respondent’s

stage career and continued availability as an entertainer, that would raise

a different issue because that current use would be tied directly to the past

use, and thus would be more obviously legitimate (in a common sense understanding

of that term).

2. Complainant correctly notes that not all

prior use can qualify as a legitimate interest, citing World Wrestling Federation

Entertainment, Inc. v. Rift, WIPO Case

No. D2000-1499 (December 29, 2000), and Madonna v. Parisi, WIPO

Case No. D2000-0847) (October 12, 2000). As those decisions hold, when a

prior use itself infringed the Complainant’s rights, the use is not legitimate.

See also Universal City Studios, Inc. v. G.A.B. Enters., WIPO

Case No. D2000-0416 (June 29, 2000). These cases are inapposite because

Respondent’s professional use of the Johnny Blaze stage name long proceeds Complainant’s

first use of the Johnny Blaze mark in 1998.