DECISION

Lawrence Bridges c/o Red Car, Inc. v. Gilbert Kuang a/k/a Sonnet Digital Media Corporation

Claim Number: FA0212000137040

PARTIES

Complainant is Lawrence Bridges c/o Red Car, Inc., Santa Monica, CA (“Complainant”).  Respondent is Gilbert Kuang a/k/a Sonnet Digital Media Corporation, Los Angeles, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <12.org>, <lawrencebridges.com>, <redcar.tv>, <screenplay12.com> and <larrybridges.tv>, registered with Network Solutions, Inc.

PANEL

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.

Paul M. DeCicco, Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 11, 2002; the Forum received a hard copy of the Complaint on December 11, 2002.

On December 12, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <12.org>, <lawrencebridges.com>, <redcar.tv>, <screenplay12.com>and <larrybridges.tv> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names.  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 December 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 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 postmaster@12.org, postmaster@lawrencebridges.com, postmaster@redcar.tv, postmaster@screenplay12.com and postmaster@larrybridges.tv by e-mail.

A timely Response was received and determined to be complete on January 2, 2003.

Complainant’s additional submission was timely received and determined to be complete on January 7, 2003.

On or about January 16, 3003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

 

The Complainant asserts the domain names should be associated exclusively and solely with Lawrence Bridges c/o Red Car, Inc. for the following reasons:

12.org: Lawrence Bridges c/o Red Car, Inc. is the writer/director/producer/editor/cinematographer of the independent film “12.”  It is the first feature film to stream on the Web, marking its debut online screening in 1997.  Since fall 2001, Lawrence Bridges c/o Red Car, Inc. has been self-distributing his film and advertising in the LA Weekly. 12.org not only provides updated information about when and where the film will be screening next, it is a community forum for viewers to e-mail the cast and crew directly, to see press clippings and read more information about the film, and for actors to read scenes from Lawrence Bridges c/o Red Car, Inc.’s new screenplay, serving as an invaluable casting tool. 

12.org has appeared in numerous publications featuring Lawrence Bridges c/o Red Car, Inc. and as the film’s home page, is the official information resource for the film.

Screenplay12.com is a subset of 12.org. Actors went to this site to read Lawrence Bridges c/o Red Car, Inc.’s original script for his film “12.”  Screenplay12.com is a functional and essential component of the 12.org web site, where the screenplay was displayed.

Lawrencebridges.com and Larrybridges.tv are discrete publicity sites for Lawrence Bridges c/o Red Car, Inc.  They serve to promote Lawrence Bridges c/o Red Car, Inc. as a director and filmmaker to producers, agencies, and other film industry talent.

Redcar.tv: Lawrence Bridges c/o Red Car, Inc. is the President/Founder, and sole Shareholder of Red Car, Inc. (A California Corporation Established in 1983), and the Owner/Administrator of <redcar.com>.  As with <redcar.com>, this is a site established for the purposes of conducting and soliciting business.  Advertising agencies, production companies, and artists visit this site to view current editors’ reels, contact any of the regional Red Car Managing Directors, and to gain a richer understanding of the principles behind Red Car.  Lawrence Bridges c/o Red Car, Inc.’s biography is attached as Exhibit I hereto.

The Complainant believes the Respondent should be considered as having no rights or legitimate interests in the domain names based on the following:

Complainant is the creator and owner of the five (5) aforementioned domain names.  In 1997, Complainant delegated to his then-technical consultant Respondent to establish these sites and host them on one of the Sonnet Digital Media Corporation servers. 

Complainant and Respondent had a business relationship at that time, wherein Respondent provided T1 and DSL service to Complainant.  Complainant trusted Respondent to register these sites, without realizing that Respondent would register them in his own name instead of Complainant as Owner/Administrator.  Respondent is currently holding these domains as his own in bad faith.  Respondent has no business, right, or legitimate interest in respect of any of these five domain names. 

The Complainant asserts that the Respondent has acted in bad faith for the following reasons:

The disputed domain names should have been originally registered to Lawrence Bridges c/o Red Car, Inc., and as such are currently being used in bad faith.  Complainant owns the content on each of the five sites, and has either paid directly or has reimbursed Respondent for the annual registration fee for each domain name. 

Respondent has not responded to Lawrence Bridges c/o Red Car, Inc.’s requests to release the domain names to him.  Respondent has also not responded to Lawrence Bridges c/o Red Car, Inc.’s request that he point the DNS to a different server.  Furthermore, Respondent has not returned any phone calls, facsimile correspondence, or e-mails regarding this matter.

B. Respondent

Respondent claims that it is a small Internet Service Provider specializing in sophisticated network solutions and services for small entertainment companies.

Respondent states that is owed over $15,000 for goods and services provided to complainant, including hosting of domains in question, as well as other domains not disputed. 

Respondent further claims that Complainant acted in bad faith, denied receipt of invoices, stalled communications, disputed invoices, and demanded services continue while they secretly changed providers.

According to Respondent, its attempts to collect and negotiate a settlement have been unsuccessful, including Respondent’s offering conciliatory credits.  Complainant still refused to pay, stopped payment on a check for services, and has retained new service providers in lieu of payment to Respondent.

Respondent claims it has suffered severe financial hardship. Respondent states it has always served in good faith on behalf of Complainant, even to Respondent's own disadvantage. 

C. Additional Submissions

Complainant submits supplemental material pursuant to NAF Supplemental Rule 7.   The material takes the form of a letter Reply to the Response.  Much of this “reply” rehashes the allegations and conclusions found in the Complaint. Additional material merely details the dispute between the parties.

 

Respondent also submits materal pursuant to NAF Supplemental Rule 7, in the form of a letter Surreply. This material too expounds on the parties’ dispute.

Additionally, Respondent submited an untimely second additional submission which was not considered by the panel.

FINDINGS

The parties had a business relationship whereby Respondent was to perform Internet related services for the Complainant. In conjunction with such services Respondent registered the at-issue domain names on behalf of the Complainant. However, Respondent registered the domain names in its name rather than Complainant’s. The Complainant neither expressly nor impliedly consented to the Respondent registering the at-issue domain names as it did.  Complainant established business related websites at the domain name addresses. The registration fees were paid for by the Complainant either directly or through Respondent.

When the parties became adverse because of a dispute over the work being performed by Respondent. Respondent denied the control of Complainant’s domain names. The dispute did not concern the act of registering the domain names. 

The Panel finds that the domain names are substantially similar to names in which the Complainant has rights; that the Respondent has no legitimate interest in the names; and that the Respondent used the domain names in bad faith by taking control of the domain names and maintaining such control after Complainant notified Respondent that it desired that the domain names be transferred and their DNS associations changed. Respondent refused to make such changes, thereby interfering with Complainant’s business. In light of Respondent’s actions, the Panel likewise finds Respondent registered the domain names in bad faith.

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.

Identical and/or Confusingly Similar

The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required –unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000). 

The at-issue domain names were registered for the purpose of sponsoring various commercial activities of the Complaint. Although the Complainant fails to specifically articulate the legal relationship between the at-issue domain names and Complainant’s trademark rights, such a relationship is implied. The Complainant shows that he used each of the names in commerce and that he has colorable trademark rights in the names. Moreover, Respondent does not challenge the proposition that the domain names are confusingly similar to Complainant’s trademarks.

Rights or Legitimate Interests

Respondent has no legitimate rights in the domain names. Respondent facilitated the registration of the at-issue domain names at the request of, and for the benefit of, the Complainant. However, rather than register the domain names in the Complainant name it registered the domain names in its own name.  The record is without evidence showing that the Complainant intended that the domain names be registered in the name of its consultant (Respondent) rather than its own name; or that the Complainant intended to relinquish or share any of its rights in the domain names with Respondent.

 

Respondent’s claim that the Complainant owes Respondent for services rendered, assuming that it is true, does not give Respondent rights in the at-issue domain names.  Respondent has not shown nor can it show that it has perfected a valid lien in the domain names or that any other legal or equitable device gives it any right or legitimate interest in any of the at-issue domain names.

     

Registration and Use in Bad Faith

Finally, to prevail a Complainant must prove that the Respondent registered and used the at-issue domain in bad faith. The bad faith element is actually two elements, requiring the Complainant to show both bad faith registration and bad faith use. World Wrestling Federation Entertainment, Inc. v. Brosman, Case No. D99-0001 (WIPO Jan . 14 2000). The parties’ submissions show that the Respondent registered and used the domain names in bad faith.

When Complainant asked that it be given control of its domain names, Respondent refused. Respondent’s claim that Complaint owes it money is not a justification for holding Complainant’s domain names hostage. Assuming for argument that Complainant does owe Respondent for services rendered, such services were only tangentially related to the at-issue domain names. 

Respondent position regarding the domain names can be likened to that of a trustee. As such it had a duty to act in the best interest of Complainant --the trust’s beneficiary. But instead it acted to use the corpus of the trust (the domain names) to its own advantage and against the Complainant’s best interest. In doing so, Respondent intentionally interfered with Complainant’s business and made bad faith use of the domain names.

Bad faith registration may be shown by a party’s actions subsequent to registration such as those discussed above. Although Respondent physically registered the at-issue domain names, Complainant is their equitable registrant. Respondent could have and should have registered the domain names using Complainant’s name as registrant. The Panel finds no legitimate reason why Complainant would desire or consent to listing the Respondent as the registrant of the at-issue domain names. Therefore, the Panel concludes that in registering the domain names as its own, Respondent intended to give itself a mechanism for interfering with Complainant’s business interests. This practice is tantamount to registering a domain name solely for the purpose of offering it for sale to a trademark holder.

Given the forgoing, the Respondent has both registered and used the domain names in bad faith.

DECISION

Based upon the above findings and discussion and pursuant to Rule(4)(a) of the Rules of Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum Supplemental Rules of ICANN’s Uniform Domain Name Dispute Resolution Policy, the Panel, consisting of  Paul M. DeCicco hereby directs that the domain names <12.org>, <lawrencebridges.com>, <redcar.tv>, <screenplay12.com> and <larrybridges.tv>, registered with Network Solutions, Inc. be transferred to complainant Lawrence Bridges.

Paul M. DeCicco, Panelist
Dated: January 29, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/109.html