DECISION

Greater Houston Convention and Visitors Bureau v. John Alden a/k/a DotTags.com

Claim Number: FA0407000298292

PARTIES

Complainant is Greater Houston Convention and Visitors Bureau (“Complainant”), represented by Winstead, Sechrest & Minick P.C., 100 Congress, Ste. 800, Austin, TX 78701.  Respondent is John Alden a/k/a DotTags.com (“Respondent”), Box 81, League City, TX 77574.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <houstonfilmcommission.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hon. Richard B. Wickersham, Judge (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 20, 2004; the Forum received a hard copy of the Complaint on July 22, 2004.

On July 21, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <houstonfilmcommission.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 July 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 16, 2004 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@houstonfilmcommission.com by e-mail.

An Additional Submission was received on Aug. 18.  The Additional Submission does not comply with Supplemental Rule 7, a proper extension of time request, stating any exceptional circumstances, was not received, a hard copy was not received, and the submission was received without the required fee, thus the Additional Submission will not be further considered by Panel.

On August 24, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Richard B. Wickersham, Judge (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Greater Houston has used the mark HOUSTON FILM COMMISSION for more than eighteen years in connection with its services concerning motion picture film production.  Through Greater Houston's extended usage and promotion of the HOUSTON FILM COMMISSION mark, the mark has become known and recognized to consumers.  As a result of these efforts, Greater Houston has developed valuable goodwill, as well as strong and enforceable trademark rights, in its HOUSTON FILM COMMISSION " mark.  In addition to Greater Houston's common law rights in the HOUSTON FILM COMMISSION mark, Greater Houston owns trademark registrations for the HOUSTON FILM COMMISSION mark with the United States Patent and Trademark Office (Reg. No. 2,680,964 and Reg. No. 2,746,514).  These registered marks have become incontestable pursuant to 15 U.S.C. § 1065.

B. Respondent

1) Premiere Media Group/DotTags is a recognized news and information source. Our viewers represent over 14.2 million people worldwide. The <houstonfilmcommission.com> domain name was purchased after our discovery of fraud, corruption, bribes, and other financial misconduct by the complainant under the umbrella of a community service(s).

2) The dissemination of factual information using the <houstonfilmcommission.com> domain name is a guaranteed right as per several US Federal Court rulings over the past 2 years. The ability to voice opinions, facts and other relevant information about fraud and corruption is a mainstay of our constitution. (See US Constitution).

3) Premiere Media Group and it’s undercover investigations have a legitimate interest in the domain to be used for factual information including fraud, corruption and other facts to be published as a news story protected by the First Amendment to the US Constitution.

4) HoustonFilmCommission.com is not offering goods or services but factual information about fraud and corruption in this organization. Our legitimate use is to expose this corruption to our community of concerned citizens.

5) The <houstonfilmcommission.com> domain name has never been used for commercial purposes and was never intended for such use. No money or revenue has ever been made by the owning of this domain.

6) Premiere Media Group uncovered fraud and corruption after a 3 year investigation that included several schemes including the WorldFest- (Houston Film Festival) scam where everyone wins whether they entered the festival or not. The collusion between these two events is what lead Complainant to research and file this Complaint. Our research of WorldFest and a union leader led directly to Complainant
and it’s corruption.

7) Respondent did contact Complainant’s attorney and requested a video interview with several of the key members of their group. When the questions were explained in depth and the allegation of fraud and corruption were mentioned the complainants decided to avoid the subject of fraud and other felonies and proceed with this complaint to hinder the dissemination of information gathered.  (See above seven paragraphs of contentions provided by Respondent’s News Director, John Alden).

Preliminary Procedural Matters

Respondent failed to submit its Response by the deadline set forth in accordance with ICANN Rule 5(a). Moreover, Respondent did not submit a hard copy of the Response in accordance with ICANN Rule 5(b).  See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panelist); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (holding that Respondent’s failure to submit a hard copy of the Response and its failure to include any evidence to support a finding in its favor placed Respondent in a de facto default posture, and the Panel draws all appropriate inferences stated in 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; and

(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  Policy ¶ 4(a)(i).

Complainant asserts that it has established common law rights in the HOUSTON FILM COMMISSION mark. The Panel finds that through Complainant’s continued use of the mark in commerce for the last eighteen years, Complainant has established secondary meaning in the mark. A common law mark is established when a Complainant’s goods or services become distinctive and acquire secondary meaning. The Panel finds that Complainant has established secondary meaning in the HOUSTON FILM COMMISSION mark, and the Panel concludes that Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“On account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law”).

Complainant further asserts that it holds registrations for the HOUSTON FILM COMMISSION mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,680,964, issued Jan. 28, 2003 and Reg. No. 2,746,514, issued Aug. 5, 2003). The Panel finds that Complainant has established rights in the HOUSTON FILM COMMISSION mark due to its registrations with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).  

Complainant argues that Respondent’s <houstonfilmcommission.com> domain name is identical to Complainant’s HOUSTON FILM COMMISSION mark pursuant to Policy ¶ 4(a)(i) because the domain name fully incorporates Complainant’s mark and merely removes the spaces between the words and adds the top-level domain “.com.” See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Rights or Legitimate Interests  Policy ¶ 4(a)(ii).

Complainant asserts that Respondent has no rights and legitimate interests in the <houstonfilmcommission.com> domain name because the disputed domain name functions as a portal website to redirect Internet users to a commercial website that hosts unrelated links, a search engine and advertisements. The Panel finds that Respondent is using a domain name identical to Complainant’s mark to redirect Internet users to a commercial website that hosts unrelated links, a search engine and advertisements, thus the Panel concludes that Respondent’s practice of diversion does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Furthermore, Complainant asserts that Respondent is not commonly known by the <houstonfilmcommission.com> domain name and therefore lacks rights and legitimate interests in the domain name.  The Panel finds that Respondent is not commonly known by the disputed domain name, thus the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Registration and Use in Bad Faith  Policy ¶ 4(a)(iii).

Complainant asserts that Respondent registered and used the <houstonfilmcommission.com> domain name in bad faith because Respondent is using the domain name to intentionally attempt to attract Internet users to Respondent’s portal website for commercial gain by creating a likelihood of confusion between Complainant’s HOUSTON FILM COMMISSION mark and Respondent’s <houstonfilmcommission.com> domain name. Therefore, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (“Since the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

Furthermore, Complainant asserts that Respondent is using the <houstonfilmcommission.com> domain name for the purpose of disrupting Complainant’s business because Respondent’s website offers motion picture film services that compete with Complainant. The Panel finds that Complainant and Respondent are competitors, thus the Panel concludes that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business).

DECISION

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

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

___________________________________________________

Hon. Richard B. Wickersham, Judge (Ret.), Panelist
Dated:  September 6, 2004

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