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Shelton J. Lee (a.k.a. Spike Lee) v. Mercedita Kyamko [2004] GENDND 1124 (17 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Shelton J. Lee (a.k.a. Spike Lee) v. Mercedita Kyamko

Case No. D2004-0483

1. The Parties

The Complainant is Shelton J. Lee (a.k.a. Spike Lee), Brooklyn, New York State, United States of America, represented by Jonathan A. Land, United States of America.

The Respondent is Mercedita Kyamko, Angeles City, Philippines.

2. The Domain Names and Registrar

The disputed domain name <spikelee.com>is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (the ”Center”) on June 30, 2004, by email and on July 1, 2004, by hard copy. On July 1, 2004, the Center transmitted by email to iHoldings.com, Inc. d/b/a dotregistrar.com’s Whois database a request for registrar verification in connection with the subject domain names. On July 1, 2004, iHoldings.com, Inc. d/b/a dotregistrar.com’s Whois database transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for a Response was July 27, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2004.

After he had submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7, the Center appointed Edward C. Chiasson Q.C. as the sole panelist in this matter on August 4, 2004.

The Administrative Panel finds that it was properly constituted.

4. Factual Background

The following information derives from the Complaint.

On March 3, 1999, the Respondent registered the subject domain name. It resolves to a pornographic Website located at <clubhongkong.com>.

The Complainant has common law trademark rights in a mark corresponding to his name and has filed the following trademark applications for SPIKE LEE:

Country of Registration	Mark	App. # / Date	Class	Goods/Services	Status
United States	SPIKE LEE	76448575/9/11/02	I 25	Goods and Services: T-shirts, shorts, tank tops, shirts, vests, blouses, nightshirts, pajamas, boxer shorts, under garments, infant wear, bathing suits, rain coats and rain wear, bathrobes, aprons, jackets, scarves, sweaters, wrist bands, head bands, bow ties, neck ties, belts, sneakers, shoes, skirts, socks, hats and caps	Pending
United States	SPIKE LEE	75369954/10/8/97	I 14	Goods and Services: fine gold and costume jewelry, namely, earrings, rings, bracelets, necklaces and chains	Abandoned 2/11/00
United States	SPIKE LEE	75369955/10/8/97	I 25	Goods and Services: T-shirts, shorts, tank tops, shirts, vests, blouses, nightshirts, pajamas, boxer shorts, under garments, infant wear, bathing suits, rain coats and rain wear, bathrobes, aprons, jackets, scarves, sweaters, wrist bands, head bands, bow ties, neck ties, belts, sneakers, shoes, skirts, socks, hats and caps	Abandoned 8/11/02
United States	SPIKE LEE	75369956/10/8/97	I 09	Goods and Services: eyeglasses, eyeglass cases, eyeglass frames, eyeglass chains, eyeglass lenses and sunglasses	Abandoned 4/7/00

The Complainant is an acclaimed filmmaker, writer, producer, director and actor. He is repeatedly referred to as a prominent and important filmmaker. For example, he has been called "the most important African-American filmmaker of his generation" ("Spike Lee: Looking Back," Boston Review, December 1994/January 1995), "not only one of the best filmmakers in America, but one of the most crucially important" ("Malcolm X," Chicago Sun-Times, November 18, 1992) and one of a handful of celebrities who is a "household name . . . a trademark." ("Son of Sam Spiked!" Interview, July 1999).

The Complainant has directed and produced more than twenty-five films, including She's Gotta Have It, School Daze, Do The Right Thing, Jungle Fever, Malcolm X, Crooklyn, Clockers, Girl 6, 4 Little Girls, He Got Game, Summer of Sam, The Original Kings of Comedy, Bamboozled, 25th Hour, and the soon to be released She Hate Me. He has received numerous film awards, including Academy Award nominations. For nearly every one of the Complainant's films, he has received substantial media attention.

The Complainant also is well known for his public person and image, both as an actor and as a person. The Complainant has appeared as an actor in numerous films, both directed by the Complainant and by others. He appears regularly in films and on television, often not as a character, but as himself.

In addition, the Complainant has appeared as the lead character in numerous television commercials, as well as in print advertising, for companies such as Nike, AT&T, ESPN, Levi's, American Express, Snapple, Taco Bell and Phillips. For Nike, in a widely disseminated advertising campaign beginning in 1988 promoting Nike's Air Jordan basketball shoe, the Complainant was featured with the basketball star Michael Jordan. This advertising campaign was one of Nike's most popular advertising campaigns and has resulted in substantial public recognition of the Complainant and his public persona.

The Complainant is well-known for his work in television as a director and producer. He has directed and produced a number of widely acclaimed television shows, films and segments, including: 4 Little Girls, an Emmy and Oscar-nominated documentary the Complainant produced and directed for HBO, about a well-known incident during the civil rights movement ― the bombing of a church in Birmingham, Alabama, in which four African-American girls were killed; an HBO/Real Sports segment on Georgetown's John Thompson, produced and directed by the Complainant, which received an Emmy award; an HBO/Real Sports segment on Mike Tyson; comedian John Leguizamo's one-man Broadway show, Freak directed by the Complainant for HBO (1998); Pavarotti & Friends directed by the Complainant for PBS' Great Performances (1999); A Huey P. Newton Story directed by the Complainant for BET cable channel (2001); several Art Spot Shorts for MTV; a short film featuring Branford Marsalis and Dianne Abbott for Saturday Night Live; and public service announcements featuring Michael Jordan for the United Negro College Fund, called Two Michaels.

The Complainant is well-known as a director and producer of music videos, which are regularly shown on television. He has directed and produced music videos for famous artists such as Miles Davis, Michael Jackson, Tracy Chapman, Anita Baker, Chaka Khan, Public Enemy, Bruce Hornsby and Naughty by Nature.

The Complainant is also well-known as an author of seven books on filmmaking and other subjects. There are numerous books written about the Complainant and his work.

As a result of the Complainant's long involvement in the motion picture and television industry, his participation in extensive advertising and media and public interest in the Complainant and his works, the name “Spike Lee” has become famous and is unquestionably associated in the public's mind with the Complainant.

The Respondent is not using the domain name to host a Website but is using it to forward users to the Respondent’s Website located at <clubhongkong.com>.

The Respondent’s pornographic Website does not contain any reference to “Spike Lee” or the subject domain name. It is used as a referring link.

The Respondent has a history of registering domain names to prevent an owner of a trademark or service mark from reflecting the mark in a corresponding domain name. At least once before the Respondent registered a famous celebrity’s name and redirected it to the same pornographic Website. In Santana v. Domain Sales, No. FA0312000222189 (Nat. Arb. Forum February 24, 2004) Respondent registered <carlossantana.com> and pointed it to <clubhongkong.com>. The panelist found that Respondent did not have rights or legitimate interest in the domain name but instead was “using the name in a parasitic fashion to attract Internet users to its site”. The domain name was transferred to the complainant.

The Respondent did not participate in the proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant relies on a common-law trademark of the words “spike lee”, a name used by the Complainant in his business and professional life. He also notes that an application for registration presently is pending in the United States. It is asserted that the subject domain name is identical or confusingly similar to the Complainant’s mark.

At the time the Respondent registered the subject domain name, the Complainant had three pending trademark applications for use of his name on various merchandise. Though these registrations were later abandoned, the Respondent may well have been aware of the Complainant’s rights in the SPIKE LEE common law trademark. The Complainant has filed a new application for a registered trademark bearing his name that is currently pending approval by the United States Patent and Trademark Office.

The Complainant challenges the legitimacy of the Respondent’s interest in the subject on several grounds including the fact that the subject domain name resolves to a pornographic website and appears to be used for nothing more.

The Respondent has not used and is not using the subject domain name in connection with a bona fide offering of goods or services as defined in paragraph 4(c)(i) of the Policy.

The Respondent has not presented any legitimate reason for his use of the Complainant’s mark in the subject domain name. At no time has the Respondent’s Website had anything to do with “Spike Lee”. In fact, it does not even mention the term.

The Respondent has not provided any evidence that the Respondent has been “commonly known by the subject domain name”, as an individual, business, or otherwise as described in paragraph 4(c)(ii) of the Policy. The Whois information for the subject domain name does not identify the Respondent as “Spike Lee.” The Website never purported to be owned or operated by an individual or entity named “Spike Lee”.

Bad faith is said to derive from the fact that the Respondent replicated the Complainant’s mark and used it for commercial gain in circumstances where users would be confused. They may believe that the Internet site to which the subject domain name resolves is owned or condoned by the Complainant. In addition, by registering the subject domain name the Respondent has blocked the Complainant from doing so. It also is asserted that the use made of the subject domain name will tarnish the reputation of the Complainant and his mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Common-law rights are recognized in domain name disputes. It is clear that the Complainant has a significant use of and investment in the words “spike lee”. The subject domain name differs only by the addition of .com, which is not significant.

There is a distinction in what must be shown to establish that a domain name is identical to a complainant’s mark and what is required to show that it is confusingly similar. The Complainant appears not to make the distinction. The test for both is objective. To establish confusing similarity, actual confusion need not be established.

The subject domain name is identical to the Complainant’s mark.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

A respondent is not obliged to establish that it has a legitimate interest in a domain name. Complainants have the obligation of establishing that respondents do not have a legitimate interest

Respondents also are not obliged to participate in a domain name dispute, but if they were to fail to do so, they would be subject to the inferences that flow reasonably from the uncontroverted facts alleged by a complainant, which are not unreasonable on their face.

The Respondent is not known by the words “spike lee” or by the subject domain name. The subject domain name is used simply to direct users to a pornographic website, which has no apparent connection with the Complainant’s mark or the subject domain name.

Using a domain name to attract users to a pornographic site is not per se an illegitimate use, but using a domain name that incorporates completely the mark of another is not legitimate use. Prima facie, it supports the conclusion that a respondent does not have a legitimate interest in the domain name.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

A conclusion that a respondent does not have a legitimate interest in a domain name that is identical to the mark of another does not establish bad faith, but the facts that lead to the conclusion are relevant to the bad faith inquiry.

It is usual for a Complainant to ask a Respondent to cease and desist using a domain name which is under contest. It usually is of assistance to a domain name dispute panel that this is done. In this case, it appears that no attempt was made to avoid this proceeding, which , in the absence of any explanation for the omission, is regrettable.

It is difficult to ascertain any good faith use by the Respondent of the subject domain name and the actual use raises a clear inference of bad faith. The subject domain name replicates the Complainant’s mark and is used solely to attract users to a pornographic website. Paragraph 4(b)(iv) of the Policy states that bad faith can occur when the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.

The Respondent has not participated in this proceeding.

In the circumstances of this case, there is no basis for concluding that the registration of the subject domain name was other than in bad faith. It is identical to the Complainant’s mark and the subsequent use of the subject domain supports the further conclusion of bad faith use.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

7. Decision

Based on the material provided to it and on its conclusions of fact, the Administrative Panel is satisfied that the Complainant has established its case.

The Complainant asks that the subject domain name be transferred to him. The Administrative Panel so orders.

Edward C. Chiasson Q.C.
Sole Panelist

Dated: August 17, 2004