DECISION

Bogart, Inc. v. Humphrey Bogart Club

Claim Number: FA0306000162770

PARTIES

Complainant is Bogart, Inc., New York, NY (“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.

PANEL

The undersigned certifies that each of them 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.

Honorable Herman D. Michels, Mark Van Buren Partridge and Anne M. Wallace, Q.C., as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 13, 2003; the Forum received a hard copy of the Complaint on June 16, 2003.

On June 17, 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 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 June 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 8, 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@humphreybogart.com by e-mail.

A timely Response was received and determined to be complete on July 8, 2003.

Complainant submitted an Additional Submission to the Forum on July 16, 2003, which was not in compliance with Forum Supplemental Rule #7.

Respondent submitted an Additional Submission on July 21, 2003 in response to Complainant’s Additional Submission.

On July 21, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Herman D. Michels, Mark Van Buren Partridge and Anne M. Wallace, Q.C., as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Bogart, Inc., is a Delaware corporation. Complainant owns United States trademark registration 1,775,912 for the HUMPHREY BOGART trademark. In addition, Complainant claims extensive common law trademark rights. Complainant presented evidence that the name, image and likeness of Humphrey Bogart has been used extensively by Complainant and others licensed by Complainant. Complainant submitted evidence to show that Complainant uses, promotes, protects and licenses third party use of the name, image or likeness of Humphrey Bogart in all advertising, promotional campaigns of any kind or utilizing any technology or media, and in numerous product categories including, for example, calendars, posters, video recordings, clothing, T-shirts, footwear, advertising, cologne, electronic devices, and publicity and advertising services. Complainant filed an extensive list of permitted licensees. Respondent is not a licensee and is not otherwise authorized to use the HUMPHREY BOGART mark or any other intellectual property owned by Bogart, Inc.

Complainant asserts that it has invested time and energy in the promotion and protection of the name and likeness of Humphrey Bogart and, by virtue of these activities, Complainant has proven to the world at large that it is the sole and exclusive owner of all intellectual property rights relating to the name and image of the late Humphrey Bogart. Complaint further asserts that Complainant has put the public on notice of its existence through broad enforcement of its rights against infringers, through the careful administration of the hundreds of licensed users that it has authorized over the decades since Humphrey Bogart’s death, and through the requisite credit lines that adorn every licensed use of Humphrey Bogart’s name or image, which credit lines function as notice to the general public that Bogart, Inc. owns and claims ownership to the intellectual property rights relating to the name and image of Humphrey Bogart.

Respondent, Humphrey Bogart Club, registered the disputed domain name <humphreybogart.com>. Complainant asserts that this domain name is identical to or confusingly similar to Complainant’s HUMPHREY BOGART mark.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because:

1. Respondent has not been authorized by Complainant to use the HUMPHREY BOGART mark;

2. Respondent has not used, nor has Respondent demonstrated any preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of good or services.

3. Respondent has not been commonly known as <humphreybogart.com>.

4. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue.

Complainant asserts that Respondent registered and is using the disputed domain name in bad faith for the following reasons:

1. Respondent’s administrative and billing contact, Jeff Burgar, has suggested Respondent would be willing to negotiate a transfer of the disputed domain name in exchange for monetary compensation. Specifically, Complainant’s evidence is that in one conversation, Burgar suggested the sale of the domain name in exchange for the amount it would cost Complainant in legal fees to pursue arbitration, which amount Burgar speculated would be between $5,000 and $10,000.

2. Respondent’s representative, Burgar, made the following comments in an e-mail message to Complainant’s counsel on February 4, 2003:

“Your ‘offer’ of $1,100 for this property is blowing hot and cold air at the same time. If the property has such a picayune value, why are you going to such effort to obtain it? Your company has already burned up at least $30,000 in legal fees of my own and your own in this pursuit over the past several years has it not?

The property must be indeed worth more, otherwise you would not be continuing this adventure. Yet, you are now threatening me with UDRP, telling me you “only have to pay $1,100, so why should you offer more?”

Complainant submits that while Respondent has carefully avoided making any outright, firm demand for a sale price, there can be no mistake but that Burgar, who Complainant describes as an experienced cybersquatter, has effectively conveyed his position that he would not sell the disputed domain name for less than an amount greatly in excess of Respondent’s out of pocket costs directly related to the domain.

3. Respondent’s web site promotes Respondent’s other commercial websites, such as <celebrity1000.com>, and features multiple banner advertisements for websites some of which are of the kind and nature that Complainant objects to in principle because they create an association between the late Humphrey Bogart and those featured advertisements that are undesirable and harmful. Complainant asserts that by doing this Respondent has registered the domain name primarily for the purpose of appropriating the Complainant’s intellectual property rights and to mislead consumers and direct them to Respondent’s unauthorized website.

4. Complainant asserts that there can be no dispute that Respondent registered the domain name with full knowledge of the existence of Complainant and the understanding that Respondent’s registration would prove to be of great interest to Complainant. Respondent knew or should have known, by virtue of Complainant’s diligent activities in licensing and promoting the name and likeness of Humphrey Bogart that Respondent’s act of registering the disputed domain name and using it in this manner would interrupt Complainant’s legitimate business activities, violate Complaint’s intellectual property rights and cause great harm and impediment to Complainant’s interests.

5. Respondent has used the domain name for commercial gain through illegitimate business purposes such as banner advertisements and promotions of his other websites which have no legitimate or legal connection with the late Humphrey Bogart or the intellectual property rights related thereto.

In support of these assertions, Complainant provided evidence that Respondent has registered many celebrity domain names and uses them to point to his <celebrity1000.com> website. Complainant says this shows a pattern of behavior amounting to cybersquatting. Complainant says Respondent’s conduct can only be properly characterized as a stock-piling of the names of famous personalities, their only substantial function being to attract people to view advertising on Respondent’s <celebrity1000.com> website or to hold the names hostage and resell them to the person whose name has been appropriated. Complainant cites several other cases involving Respondent including: Julie Brown v. Julie Brown Club, 2000-16628 (WIPO Feb. 13, 2001); Celine Dion v. Celine Dion Club, D2000-1838 (WIPO Feb. 13, 2001); Stephanie Seymour v. Jeff Burgar, d/b/a Stephanie Seymour Club, NAF Case No. FA 97112 (Nat. Arb. Forum May 29, 2001); Kevin Spacey v. Alberta Hot Rods, FA 114437 (Nat. Arb. Forum Aug. 1, 2002). In all of these cases the panels found in favour of Complainants against Respondent. Complainant also refers to Springsteen v. Jeff Burger and Bruce Springsteen Club, D2000-1532 (WIPO Jan. 25, 20001) in which Respondent was permitted to continue using the disputed domain name because the panel held that a perfunctory biographical sketch and minimal descriptive content relating to Springsteen was sufficient to constitute legitimate use. Complainant points out, however, that by the time of the Kevin Spacey decision, the panel noted that, “the persistent behavior of this Respondent in the registration of celebrity names militated against the ‘benefit of the doubt’ which the Panelist afforded the Respondent in the previous case.”

Complainant asserts that Respondent’s activities registering domain names, in many or most of which he had no legitimate right, are precisely the activities that the UDRP is designed to prevent.

During the course of Complainant’s repeated attempts to secure an amicable domain name transfer from Respondent, Respondent changed the content of its website located at <humphreybogart.com>, which was previously being warehoused, renaming it Humphrey Bogart’s House, and posting perfunctory information as well as a degrading cartoon image of the late Humphrey Bogart. The website now includes a biography, message board, opinion poll and links, but is nothing more than a thinly veiled attempt to legitimize appropriation of Complainant’s rights.

B. Respondent

Respondent asserts that it registered the disputed domain name on March 19, 1997 to use as a fan site about Humphrey Bogart. Respondent is in the business of operating unofficial fan web sites in connection with its <celebrity1000.com> fan web site network. Respondent has developed hundreds of fan cites in honour of actors, actresses, comedians, musicians, directors and other celebrities. The sites offer biographical information on the celebrities and links to other fan web sites. Respondent filed an extensive list of the celebrities of which Respondent has developed fan sites. Respondent has registered hundreds of domain names to use in connection with <celebrity1000.com> and points those domains directly to the <celebrity1000.com>.com site until dedicated celebrity fan pages are developed.

Respondent asserts that Complainant only has one registered trademark for HUMPHREY BOGART and that Respondent had no knowledge that any party claimed trademark rights to HUMPHREY BOGART when it registered the domain name. Respondent denies offering the disputed domain name for sale to Complainant or contacting Complainant to discuss possible sale. When contacted by Complainant, Respondent made it clear the disputed domain name was not for sale. Furthermore, Respondent says discussions with Complainant’s attorney were settlement discussions and therefore are not admissible in this proceeding.

Respondent states there is no evidence that Respondent registered the disputed domain name with the intent to sell it to Complainant or any other party. Respondent has never used the disputed domain name to disrupt Complainant’s business or to prevent it from reflecting a trademark in a corresponding domain name. Respondent has never attempted to confuse users into believing that the site is endorsed by Complainant. No products are offered for sale in connection with the disputed domain name that compete with products offered for sale in connection with the HUMPHREY BOGART trademark.

There are hundreds of thousands of third party users of the name Humphrey Bogart on the Internet and many unauthorized fan web pages devoted to him. Evidence of a Google.com search shows 122,000 web pages with the name Humphrey Bogart and 416,000 web pages containing the name Bogart.

Respondent does not dispute that the disputed domain name is identical to Complainant’s trademark.

With respect to rights or legitimate interests, Respondent asserts that before the initiation of this dispute, Respondent developed a fan web site dedicated to Humphrey Bogart and therefore he has legitimate interests under Policy 4(c)(i) and 4(c)(iii). To support this assertion, Respondent cites the following cases: The Hebrew University of Jerusalem v. Alberta Hot Rods; The Estate of Tupac Shakur v. R.J. Barranc, Case AF-1348 (eResolution Oct. 23, 2000); Bruce Springsteen, supra; Edward Van Halen v. Deborah Morgan, D2000-1313 (WIPO Dec. 20, 2000).

Respondent asserts it is unquestionably engaging in the business of operating fan web sites, as demonstrated by the extensive Celbrity1000 web site network that features hundreds of unofficial celebrity fan sites. Respondent states this is proof he is using the domain name in connection with the bona fide offering of services.

Respondent asserts that those cases cited by Complainant where panels have found against him in the past are wrong and unfair, and that in those decisions the panels have turned a blind eye to his well-designed network of celebrity web sites simply to reach a decision that would transfer the disputed domain names to celebrities by way of ostensibly satisfying the requirements of the Policy. Respondent asserts that <celebrity1000.com> is a legitimate web site network in which Respondent has invested substantial money and effort in developing and that this establishes Respondent’s legitimate interest.

Respondent asserts that Complainant is inconsistent in suggesting that Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services because Complainant also does not dispute that Respondent has operated a fan web site about the actor Humphrey Bogart and has used the web site in connection with the <celebrity1000.com. The <humphreygbogart.com> web site also provides advertisements and links to other goods and services, and there Respondent is operating a bona fide commercial business.

Respondent asserts that the fact Respondent is not licensed to use the HUMPHREY BOGART trademark is irrelevant to this proceeding because in the Springsteen case the Panel suggested that the absence of permission is not conclusive proof that the alleged infringer has no rights of his or her own. Respondent further asserts that there is nothing on the web site that tarnishes Complainant’s mark.

Respondent asserts that here he not only had a plan to create a web site, but had actually created a web site and that this establishes a legitimate interest for purpose of the policy.

With respect to Complainant’s allegations of bad faith, Respondent asserts that there is no evidence that Respondent registered the disputed domain name with Complainant in mind. Unlike the case of a living person, where it can, perhaps, be argued that the registrant registered a domain name incorporating the person’s name to profit from the fame of that person, here Humphrey Bogart has not been alive for over 40 years, so the party claiming trademark rights is not evident from the fact of the domain name. Respondent asserts it had no knowledge that Complainant claimed trademark rights to the HUMPHREY BOGART mark when it registered the disputed domain name. There is no evidence that Respondent registered the disputed domain name with intent to sell it to Complainant, to disrupt Complainant’s business, to prevent Complainant from registering a domain containing the mark or to profit by creating the likelihood of consumer confusion. Respondent simply registered a domain name to use it for a Humphrey Bogart fan site. 

Respondent also argues that it cannot be concluded that Respondent had a bad faith intent at the time it registered the disputed domain name in 1997 because there were no cases at the time indicating that use of the domain name for a fan web site was illegal.

Respondent argues that a fair review of Respondent’s <celebrity1000.com> web site, as well as its <humphreybogart.com> web site, shows that they are genuine web sites with bona fide content, including biographical information on the celebrities and without any information that could seriously be deemed an intent by Respondent to misleadingly divert customers. Respondent spent hundreds of thousands of dollars to develop and operate a celebrity fan site network and has never made an unsolicited offer to sell a celebrity domain name to any party. Respondent has never done anything to suggest that a web site it operates is endorsed by any celebrity, and Respondent has never used a celebrity domain name to tarnish or attack a celebrity.

Respondent asserts that the settlement negotiations initiated by Complainant do not establish bad faith. Respondent asserts that because these were settlement negotiations the evidence of the negotiations is not admissible in this proceeding.

Lastly, Respondent asserts that there is no evidence that Respondent has used the disputed domain name to misleadingly divert Internet users. In support of this argument, Respondent cites the Springsteen and Hebrew University cases, supra,  in which panels found in favour of Respondent. Respondent relies on the following quote from Springsteen:

“The users of the Internet do not expect all sites bearing the name of celebrities or famous historical figures or politicians, to be authorized or in some way connected with the figure themselves. The Internet is an instrument for purveying information, comment and opinion on a wide range of issues and topics. It is a valuable source of information in many fields, and any attempt to curtail its use should be strongly discouraged. Users fully expect domain names incorporating the names of well known figures in any walk of life to exist independently of any connection with the figure themselves, but having been placed there by admirers or critics as the case may be.”

Respondent asserts that Complainant has provided no proof that Respondent has intended any confusion of any kind. There are numerous third party sites on the Internet related to Humphrey Bogart and hundreds of thousands of third party references to Humphrey Bogart or Bogart. Respondent argues this is compelling evidence that users do not expect that all references to the late Humphrey Bogart are associated with or endorsed by Complainant. The issue of consumer confusion is reduced where the celebrity is deceased. Respondent relies on the following quote from the Hebrew University case:

“Because Mr. Einstein died long before the advent of the Internet and was not in his lifetime engaged in the supply of goods or services under his name, this Panel finds that what Internauts are seeking when they enter the disputed domain name is information about Dr. Einstein. That is precisely what Respondent’s site <celebrity1000.com> contains. Accordingly, it was not misleading for Respondent to select and use the disputed domain name to lead to that site nor, for the above reasons, does the use of the disputed domain name for this purpose tarnish Complainant’s trademark.”

C. Additional Submissions

Complainant filed an additional submission without the required fee, but with a photocopy of checks being mailed via UPS. While this means the submission is not in technical compliance with Supplemental Rule #7, the Panel has considered this submission as well as Respondent’s Reply dated July 21, 2003. While we have considered these submissions, we note that nothing in those submissions affected the outcome of the case.

FINDINGS

The Panel finds as follows:

1. The domain name <humphreybogart.com> is identical to or confusingly similar to Complainant’s HUMPHREY BOGART trademark.

2. Respondent does not have rights or legitimate interests in the domain name.

3. Respondent registered and is using the domain name 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

Respondent does not dispute this element. Complainant has provided evidence to establish registered and common law trademark rights in the HUMPHREY BOGART trademark. With the exception of the .com extension, the disputed domain name is identical to Complainant’s HUMPHREY BOGART trademark. Complainant therefore succeeds on the first element.

Rights or Legitimate Interests

The Panel has carefully reviewed the evidence submitted by Complainant and Respondent as well as the cases cited by both Complainant and Respondent. We are mindful that Respondent has been subject to a number of Complaints under the UDRP. We are mindful that Respondent has been successful on some occasions and unsuccessful on others. We acknowledge that each case must be decided on its merits, and having done the extensive review indicated, we have concluded in favour of Complainant on this element.

On the evidence before us, it appears  that before notice to Respondent of this dispute, Respondent was using the disputed domain name solely as a link to his commercial site at <celebrity1000.com>. After notice of the dispute, Respondent created a Humphrey Bogart fan site. On this point, we agree with the panel in Spacey, supra, that Respondent’s creation of a fan site after notice of a dispute is not a bona fide offering of goods or services under Policy ¶ 4(c)(i).

We also find lack of a bona fide offering of goods or services for another reason. Respondent asserts that he is operating a legitimate business at <celebrity1000.com>, and that he has spent hundreds and thousands of dollars developing that site and the related celebrity fan sites. The inference the panel draws from all the evidence, including Respondent’s own admissions, is that Respondent is not using the celebrity fan sites, including <humphreybogart.com>, primarily as fan sites, but as a means of attracting users to his unrelated business at <celebrity1000.com>. We have concluded that the link to the commercial site has the primary purpose of furthering Respondent’s commercial interests including the profit derived from the banner ads. We therefore conclude that, in so far as Respondent is using Complainant’s trade mark in this manner, Respondent is not engaged in the bona fide offering of goods or services. Respondent’s primary purpose here is not to provide an informational site about Humphrey Bogart, but rather to link to his business site.

With respect to Policy ¶ 4(c)(i), there is no evidence before the panel that Respondent has been commonly known as <humphreybogart.com>.

With respect to Policy ¶ 4(c)(iii), Respondent cannot establish that he is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. As we have already noted, Respondent’s use of the disputed domain name is not, in fact a noncommercial use because his primary purpose is to link to another site for commercial gain. His purpose is not to provide Internet users with information about Humphrey Bogart, but to increase his profits in his business at <celebrity1000.com>.

Based on the foregoing, the panel has concluded that Respondent does not have rights or legitimate interests in the disputed domain name.

We also note that our conclusions in this respect are consistent with trademark law as applied in the recent case of The Taubman Company v. Webfeats, [2003] USCA6 49; 319 F.3d 770 (6th Cir. 2003). The court in that case indicated that a domain name <taubmansucks.com> used only for critical commentary was fully protected by the First Amendment and “not subject to scrutiny under the Lanham Act.” However, the same conclusion was not reached for <shopsatwillowbend.com> where the site had links to the defendant’s business site. When the commercial link was included in the site, the court stated “we believe the advertisement on Mishkoff’s site, though extremely minimal, constituted his use of Taubman’s mark “in connection with advertising” of the goods sold by the advertisers. This is precisely what the Langham Act prohibits.”

Registration and Use in Bad Faith

Complainant contends  that Respondent’s registration of <humphreybogart.com>, among other things, violates Policy ¶ 4(b)(iv), which states that the following shall be bad faith:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product or service on your web site or location.”

We have already noted our conclusion that Respondent’s primary purpose in acquiring and using the disputed domain name was to attract Internet users to the <celebrity1000.com> commercial web site for commercial gain. Again, Respondent has admitted that he has spent hundreds of thousands of dollars developing this commercial venture, including the celebrity fan sites, including the one in dispute here. This evidence is sufficient to establish the intent for commercial gain required under Policy ¶ 4(b)(iv). Whether the subject of the disputed domain name is alive or deceased, there are still established intellectual property rights in the mark HUMPHREY BOGART. By using the entirety of the mark in the disputed domain name, there can be no question that Respondent intended to create confusion as to the source, sponsorship, affiliation or endorsement of his web site and the <celebrity1000.com> link. Respondent admits he chooses celebrity names for his fan sites to then link them to the commercial site.  It is inevitable that a substantial number of Internet users will mistakenly believe that the owners of the rights in the HUMPHREY BOGART name have licensed or authorized Respondent's use of the disputed domain name, when in fact the owners of the HUMPHREY BOGART name and mark object to Respondent's site.  In this Panel’s opinion, this is precisely the kind of activity Policy ¶ 4(b)(iv) was designed to address.

We have therefore concluded that Respondent registered and is using the disputed domain name in bad faith.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <humphreybogart.com> domain name be TRANSFERRED from Respondent to Complainant.

Anne M. Wallace, Q.C.,  Panel Chair
Dated: August 4, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/816.html