DECISION

Jerry Seinfeld, Castle Rock Entertainment and Warner Bros. Entertainment Inc. v. Carlos Fernandez

Claim Number:  FA0403000243510

PARTIES

Complainant is Jerry Seinfeld, Castle Rock Entertainment and Warner Bros. Entertainment Inc. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, 450 N. Brand Blvd., Suite 600, Glendale, CA 91203-2349.  Respondent is Carlos Fernandez (“Respondent”), Libertad 1661, 7 G, Capital Federal, Buenos Aires 1016, AR.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <seinfeld.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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 3, 2004; the Forum received a hard copy of the Complaint on March 4, 2004.

On March 5, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <seinfeld.tv> 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 March 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 29, 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@seinfeld.tv by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 9, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <seinfeld.tv> domain name is identical to Complainant’s SEINFELD mark.

2. Respondent does not have any rights or legitimate interests in the <seinfeld.tv> domain name.

3. Respondent registered and used the <seinfeld.tv> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Castle Rock Entertainment, co-produced the world famous and widely broadcast television series under the name of its star, Jerry Seinfeld.  The television series, “Seinfeld,” was produced in 1989 and began being regularly broadcast during the spring 1990 television season.  Complainant, Warner Bros. Entertainment Inc., is the distributor of the “Seinfeld” series.

The “Seinfeld” series has been honored with more than twenty major awards and nearly sixty nominations including an Emmy, Golden Globe, three People’s Choice, a Screen Actors Guild, two Writers Guild and three Directors Guild Awards.  The stars of the series received additional awards, including four Emmys.

On November 30, 1993, Complainant, Castle Rock Entertainment, successfully registered the SEINFELD mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,808,076).  The mark has been used in commerce since 1990 in connection with “entertainment services; namely, a television series.”

On January 1, 2002, Complainant, Jerry Seinfeld, also successfully registered the SEINFELD mark with the USPTO (Reg. No. 2,524,199).  The mark has been used in commerce since 1990 in connection with “entertainment services in the nature of live comedic performances, and entertainment services in the nature of offering information relating to performances of Applicant offered via a global computer network.”

Complainant, Warner Bros. Entertainment Inc., owns the domain name registration for <seinfeld.com>.

Respondent registered the disputed domain name <seinfeld.tv> on December 26, 2003.  The domain name is not attached to an operable website.  Respondent contacted Complainant through Complainant’s domain name administrator to encourage the Complainant to buy the disputed domain name.  Respondent offered to sell the domain name for $750,000.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant has established rights in the SEINFELD mark as a result of its U.S. trademark registrations with the USPTO and the mark’s continuous use in commerce since 1990. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that the 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; see also 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.”).

A domain name that entirely incorporates a third-party’s mark and merely adds a generic top-level domain has consistently been found to be identical or confusingly similar to the mark under Policy ¶ 4(a)(i).  In the instant case, the domain name incorporates Complainant’s SEINFELD mark in its entirety and has merely added the top-level domain “.tv.”  Consistent with previous decisions, the Panel concludes that the disputed domain name is identical to Complainant’s SEINFELD mark, in which Complainant has rights. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; 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; see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) finding that the addition of a top-level domain is without legal significance.

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not provided the Panel with any evidence of any rights or legitimate interests in the domain name by failing to respond to the Complaint.  Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name.  Without the benefit of a response, Complainant’s assertion stands uncontested.  As a result of Respondent’s failure to respond to the Complaint, the Panel finds that Respondent has implicitly admitted that it lacks rights and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interests in the domain names; see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) finding no rights or legitimate interests where Respondent fails to respond.

There is no evidence before the Panel that indicates Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply; see also 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.

To the contrary, Respondent stated the following in a letter to Complainant:

“This Domain Name is currently for sale and ready for immediate use and development.”

This statement demonstrates that the domain name is not currently being used and, more importantly, Respondent is not planning to use the domain name because its purpose in registering the name was to sell the name for profit, not to connect it to a bona fide offer of goods or services.

Complainant has established that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Registering a domain name primarily for the purpose of selling the name to a complainant is evidence of bad faith under Policy ¶ 4(b)(i).  In this case, Respondent is hung by its own words.  In the letter to Complainant, Respondent states:

           

“I figured [the domain name] most suitable for your company use since the Domain Name applies for the use of the name SEINFELD and all its logic (sic) business activities.”

This statement demonstrates that Respondent had Complainant on its mind when it registered the domain name.  Respondent also states in his letter:

            “I am asking for the sum of US $ 750,000.00.”

This statement shows that Respondent registered the domain name <seinfeld.tv> primarily for the purpose of selling the name to Complainant for $750,000, clearly in excess of any out-of-pocket expense incurred on behalf of Respondent.  Therefore, Respondent registered the name in bad faith pursuant to Policy ¶ 4(b)(i). See CBS Broadcasting Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”; see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) finding that bad faith existed where Respondent offered the domain name for sale to Complainant for $125,000; see also Step2 Co. v. Softastic.com Corp., D2000-0393 (WIPO June 26, 2000) finding that Respondent’s attempt to sell the domain name in question on <greatdomains.com>, a domain name auction site, for $100,000 constitutes bad faith; see also VARTEC TELECOM, INC. v. Olenbush, D2000-1092 (WIPO Sept. 28, 2000) finding bad faith registration where Respondent registered the domain in order to sell it “for far more than he paid for it” by sending a general email to Complainant offering the domain name for sale.

The Panel finds that Respondent registered a domain name that it knew to be identical to the SEINFELD mark, in which Complainant had rights, which also evidences bad faith under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) (“Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).

Complainant has established Policy ¶ 4(a)(iii).

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 <seinfeld.tv> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  April 23, 2004

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