DECISION

TIYL Productions v. Luther Williams

Claim Number: FA0405000281614

PARTIES

Complainant is TIYL Productions (“Complainant”), represented by H. Christopher Boehning, of Paul,Weiss, Rifkind,Wharton & Garrison LLP, 1285 Avenue of the Americas, New York, NY 10019-6064.  Respondent is Luther Williams  (“Respondent”), 212 Lincolnway, Valparaiso, IN 46383.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <4thisisyourlife.com> and <forthisisyourlife.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that 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.

Linda M. Byrne as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 28, 2004; the Forum received a hard copy of the Complaint on June 1, 2004.

On May 28, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <4thisisyourlife.com> and <forthisisyourlife.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 24, 2004, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax.  The Notification was also sent to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@4thisisyourlife.comand postmaster@forthisisyourlife.comby e-mail.

A timely Response was received and determined to be complete on June 23, 2004.

Complainant filed an Additional Submission on June 28, 2004; and Respondent filed an Additional Submission on July 5, 2004. Complainant's Additional Submission addresses several issues raised in Respondent's Submission.  Respondent’s Additional Submission addresses several issues raised in Complainant’s Additional Submission. 

On June 30, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Linda M. Byrne as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent's domain names <4thisisyourlife.com> and <forthisisyourlife.com> are confusingly similar to its trademark THIS IS YOUR LIFE; that Respondent does not have any rights or legitimate interest with respect to the domain names; and that the infringing domain names were registered and are being used by Respondent in bad faith.

B. Respondent

Respondent does not dispute that <4thisisyourlife.com> and <forthisisyourlife.com> are confusingly similar to Complainant's THIS IS YOUR LIFE mark.  Respondent contends, however, that it registered the domain names <4thisisyourlife.com> and <forthisisyourlife.com> in connection with a bona fide business opportunity, and that Respondent did not register and use the domain names in bad faith.

FINDINGS

Complainant (or its corporate affiliate, Ralph Edwards Productions) is the owner of the trademark THIS IS YOUR LIFE, which it has registered in the United States and in other countries in association with the production and distribution of television programs.  Complainant alleges that it has been using the THIS IS YOUR LIFE trademark continuously since 1948.  Complainant maintains a website at <www.thisisyourlife.com> that features information regarding its television program.

Complainant first learned of Respondent in January 2004, during a trademark watch search.  On January 23, 2004, Complainant’s counsel sent a cease and desist letter to Respondent asking Respondent to transfer the two domain names to Complainant.  Respondent refused in an email dated February 25, 2004, stating that he was involved in a legal dispute with a third party:  Beryl Martin, LLC and its president, Frank Brummett (collectively “Beryl”).  Respondent stated that he had lost over $50,000 in business dealings with Beryl and spent at least $20,000 in legal fees.  Respondent’s email stated, “I have no intention of walking away from any rights that I might have (including the rights to the domain names obtained by my partner) unless I am compensated for my time, my efforts, and the attorney’s fees I have incurred during this painful process.”  The email also stated the following:

We secured the domain names in question during our efforts to protect my interests in [Beryl’s] business obtained through the courts when I sued his business and was granted a lien against the assets of [Beryl’s] business.  I was also involved in a process to purchase the remaining assets of [Beryl’s] business from the Federal Bankruptcy Court, which included his intellectual properties and the material related to the “This is Your Life” funeral tributes.

Respondent stated that he had spent $50,000 developing a “video production business and print development and design company” in his efforts to produce materials to service [Beryl] and the funeral tribute business.

Beryl is not a party in this controversy, but is an integral player.  According to the record, Beryl developed a series of funeral tributes under the name THIS IS YOUR LIFE and Beryl used this name for several years, including sales materials and industry trade shows, pursuant to a national marketing plan dated August 2000.  Respondent at some point entered into a five-year “exclusive supply agreement to provide video tributes to the funeral industry serviced by [Beryl].”  Respondent did not make a copy of the supply agreement of record. 

On February 12, 2003, Beryl assigned the THIS IS YOUR LIFE mark to Complainant, including U.S. Reg. No. 2,455,379 for THIS IS YOUR LIFE.  Respondent was never notified of this assignment.  Evidently, Complainant had challenged Beryl for trademark infringement, and the matter was resolved pursuant to a settlement agreement that was not made of record.  The date of the settlement agreement was not made of record either, but the agreement evidently predated April 2, 2003. 

On April 2, 2003, Beryl filed for bankruptcy.  Pursuant to the settlement agreement, Complainant made a $20,000 payment to Beryl on October 8, 2003; and that payment was set aside for the bankruptcy conservator.  Respondent was one of the creditors notified of developments in Beryl’s bankruptcy proceedings.

On November 30, 2003, Respondent registered the domain names <4thisisyourlife.com> and <forthisisyourlife.com>.  No active website is associated with either of these domain names.  Rather, the domain names resolve to a site promoting the services of GoDaddy.com, with headlines at the top stating, “www.4thisisyourlife.com coming soon! and “wwwforthisisyourlife.com coming soon!”

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

           

Respondent does not argue that there is no confusing similarity between Complainant’s mark THIS IS YOUR LIFE, as compared to <4thisisyourlife.com> and <forthisisyourlife.com>.  Complainant’s mark THIS IS YOUR LIFE is the subject of a U.S. trademark registration and is therefore presumed to be valid.  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, such that Respondent has the burden of refuting this presumption).

The domain names incorporate Complainant’s mark in its entirety. The only difference is the mere addition of the prefix “4” or “for,” which does not significantly distinguish the domain names from the mark.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark).

The Panel concludes that the domain names <4thisisyourlife.com> and <forthisisyourlife.com> are confusingly similar to Complainant’s THIS IS YOUR LIFE mark.

Rights or Legitimate Interests

Once Complainant makes a prima facie case to establish that Respondent has no rights or legitimate interests, then the burden of proof shifts to Respondent to establish rights or legitimate interests in the domain names.  This Panel concludes that Complainant made a prima facie case by submitting arguments relating to its ownership of the THIS IS YOUR LIFE trademark, the existence of the trademark assignment from Beryl to Complainant, and the argument that Respondent is not operating a business associated with the name THIS IS YOUR LIFE.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent argues that it acquired the domain names pursuant to a supply agreement it had with Beryl to distribute funeral tribute videos.  Respondent implies that it had obtained rights via an agreement with Beryl and that Respondent was preparing to conduct a business that would use the two domain names.  However, Respondent does not present any concrete evidence to support this argument, such as contracts, business plans, mockup packaging, draft promotional materials, etc.  See Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish rights and legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).  Several cases have found Respondent to have rights or legitimate interests in a domain name where Respondent presented concrete evidence of an intention to conduct business in association with the domain name.  See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that Respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services);  AutoNation Holding Corp. v. Rabea Alawneh, D2002-0058 (WIPO May 1, 2002) (finding that prior to having received notice of the dispute, Respondent had made demonstrable preparations to use the disputed domain name by submitted “substantial, overwhelming and undisputed evidence” of those preparations).  However, the latter two cases are distinguishable from the present situation, where the Respondent has not presented similar convincing evidence.

For the above reasons, this Panel concludes that Respondent has no rights or legitimate interest in respect to the domain names <4thisisyourlife.com> and <forthisisyourlife.com>.

. 

Registration and Use in Bad Faith

Complainant argues that Respondent’s bad faith is demonstrated by the email dated February 25, 2004, which stated that Respondent was not willing to walk away from his rights without being paid tens of thousands of dollars.  However, the Respondent was not the party to make an initial contact with Complainant with an offer to sell the domain names, Respondent’s email did not make a clear offer, and the email did not specify that Complainant, rather than Beryl, should compensate Respondent.  See  Coca-Cola Co. v. Svensson, FA0 103933 (Nat. Arb. Forum Feb 27, 2002) (finding that Respondent was not acting in bad faith when it engaged in discussions to sell its domain name registration to Complainant after Complainant initiated the discussion).

Complainant also argues that Respondent’s bad faith is demonstrated by the fact that Respondent has made no actual use of the domain names.  However, Respondent argues that its business associated with the domain names is on hold pending the outcome of Respondent’s dispute with Beryl and Beryl’s bankruptcy proceeding.  Respondent states that it is “continuing to wait for the conclusion of their legal proceedings currently in the courts prior to determining how to proceed with their print and video business for which the Domain Names were obtained.”

Complainant also argues that Respondent was aware of Complainant’s trademark rights because of the fact that the trademark assignment from Beryl to Complainant was a part of the bankruptcy proceeding’s documents.  Complainant therefore takes the position that Respondent’s registration of the domain names was in bad faith.  However, Respondent disputes the legal validity of the trademark assignment in the context of the bankruptcy proceedings. 

In any event, this case appears to involve issues of trademark infringement, bankruptcy law, and contract interpretation.  These issues are beyond the scope of this proceeding.  White Pine Software, Inc. v. Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to transfer the domain name where a full factual record has not been presented to the Panel such that a conclusive determination can be made regarding the parties’ respective claims to the contested domain name); see also Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that Complainant has failed to prove that the domain name <ezstreet.com> was registered and is being used in bad faith or held passively for use by Respondent in bad faith).

The existence of Respondent’s bad faith may depend upon the above issues, which are inappropriate for resolution through an ICANN proceeding.  See AutoNation Holding Corp. v. Alawneh, D2002-0581 (WIPO May 2, 2002) (“[T]he scope of an ICANN proceeding is extremely narrow:  it only targets abusive cybersquatting, nothing else.”).

This Panel concludes that Complainant has not met its burden of proof in establishing that Respondent registered and used the domain names <4thisisyourlife.com> and <forthisisyourlife.com> in bad faith.  Respondent has not created websites that cause confusion or indicate bad faith, or with the intention of attracting internet users who were actually seeking information about Complainant.  Respondent did not make a clear offer to sell the domain names to Complainant.  See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that Respondent did not register or use the domain name <metagen.com> in bad faith where Respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created).

In summary, this Panel finds that <4thisisyourlife.com> and <forthisisyourlife.com> are confusingly similar to Complainant’s THIS IS YOUR LIFE trademark, that Respondent has no rights or legitimate interest in the <4thisisyourlife.com> and <forthisisyourlife.com> domain names, and that Complainant has not sufficiently established that Respondent used and registered <4thisisyourlife.com> and <forthisisyourlife.com> in bad faith.

DECISION

In view of the holding that Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Linda M. Byrne, Panelist
Dated: July 15, 2004

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