Walter Latham v. Todd Shurn

[Indexed as:  Latham v. Shurn]
[Indexed as:  kingsofcomedy.com]

The National Arbitration Forum
Administrative Panel Decision   

Case No.  FA0002000094184
Commenced:  23 February, 2000
Judgment:   31 March, 2000

Presiding Panelist:  Judge Carolyn Marks Johnson (Ret.)

Domain name - Domain name dispute resolution policy - Trademark - Identical - Confusingly similar - Bad faith - Legitimate right - Constructive notice - Prior Use - Use and development - 
Complainant is the owner of U.S. trademark, THE KINGS OF COMEDY, since January 18, 2000, and has used the name commercially since 1997.  On January 25, 1999, Respondent registered the domain name “kingsofcomedy.com” with Network Solutions, Inc.
Respondent registered the domain name with knowledge that others were entertaining under the umbrella of “The Kings of Comedy.” This name was inspired by Complainant and possibly others before Respondent came on the scene.  
Both Respondent and Complainant knew the Comedian Steve Harvey, attended some of the same concerts, and did work with and for Harvey prior to Respondent's registration of the domain name.  By his own contention Respondent “was authorized to pursue a media strategy including web related projects for Steve Harvey and in this capacity registered the domain name kingsofcomedy.com.” (Emphasis added.)
The parties differ as to which one of them initiated discussion about the sale of the domain name but it is undisputed that Complainant offered to purchase the domain name for $5,000, and Respondent offered to sell it for $50,000. 
Held, Name Transferred to Complainant.
The domain name “kingsofcomedy.com“ is so close as to be identical or confusingly similar to Complainant’s “KINGS OF COMEDY“ Mark, to which Complainant has legal right and to which Respondent has failed to show a legitimate right or interest.
If Respondent’s recitation as regards registration of the domain name for Steve Harvey is accurate, it should follow that any registration by him in that capacity would have benefited Harvey or others rather than Respondent. 
Notwithstanding Respondent’s first-in-time-registration of the domain name, Respondent filed the domain name kingsofcomedy.com in bad faith in order to pursue a profit by selling it to Complainant or a competitor of Complainant for a consideration in excess of the investment that Respondent had in it
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
--
Johnson, Panelist: -

1.  The Parties
Mr. Walter Latham
LATHAN ENTERTAINMENT
7B Corporate Center Court
Greensboro, NC 27408
USA
Telephone: (336) 545-7648
Fax: (336) 545-7649
COMPLAINANT,
vs. 
Mr. Todd Shurn
8560 Second Avenue, Number 1407
Silver Springs, MD 20910
USA
Telephone: (301) 495-5575
Fax: (202) 806-4531
E-mail Address: shurn@imappl.org 
RESPONDENT.
2.  Decision
The above entitled matter came on for an administrative hearing on March 31, 2000 before the undersigned on the Complaint of WALTER LATHAM, LATHAM ENTERTAINMENT, hereafter “Complainant”, against TODD SHURN, hereafter “Respondent”. Jack D. Todd, Esq. represents Complainant. Carl I. Brundidge, Esq. represents Respondent. Upon the written submitted record, the following decision is made:
3.  Procedural Findings
Domain Name: kingsofcomedy.com                                                                             Domain Name Registrar: Network Solutions, Inc.                                                             Domain Name Registrant: Todd Shurn                                                                               8560 Second Avenue, # 1407                                                                                                        Silver Springs, MD 20910                                                                                                  USA                                                                                                                                        Date of Domain Name Registration: January 25, 1999.                                                            Date Complaint filed: February 22, 2000                                                                               Date of Commencement of Administrative Proceeding in Accordance with Rule
2(a)[1] and Rule 4(c):
Due date for a Response: February 23, 2000.                                                         Respondent’s Response was filed March 17, 2000.
After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent on February 23, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified NETWORK SOLUTIONS, INC., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced. Respondent submitted a response to the Forum within twenty (20) days pursuant to Rule 5(a).
On January 25, 1999, Respondent registered the domain name “kingsofcomedy.com” with Domain Name Registrar NETWORK SOLUTIONS, INC., the entity that is the Registrar of the domain name. On February 23, 2000, the Domain Name Registrar NETWORK SOLUTIONS, INC., verified that Respondent is the Registrant for the domain name “kingsofcomedy.com,” and that further by registering its domain name with NETWORK SOLUTIONS, INC., Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.
4.  Findings of Fact
1. That Complainant first used THE KINGS OF COMEDY in commerce, December 26, 1997.
2. That Complainant applied to register THE KINGS OF COMEDY as a Trademark June 24, 1998. The United States Patent & Trademark Office approved the mark for publication January 18, 2000.
3. That Respondent registered the domain name “kingsofcomedy.com” January 25, 1999. 
4. That sometime thereafter--either the Summer of 1999, according to Complainant, or September 1999, according to Respondent--both parties were “backstage” with Steve Harvey, a comedian both knew and had worked with or for, when Complainant learned that Respondent had registered kingsofcomedy.com as a domain name.
5. That the parties differ as to which one of them initiated discussion about the sale of the domain name but that it is undisputed that Complainant offered to purchase the domain name for $5,000. And that Respondent offered to sell it for $50,000. 
6. That the parties admit that they exchanged contracts drafted by their respective attorneys but that Respondent maintains that his attorney erred when he included a price of $5,000. Rather than $50,000. in the draft he sent to Complainant.
7. That both Respondent and Complainant knew the Comedian Steve Harvey, attended some of the same concerts, and did work with and for Harvey prior to Respondent’s registration of the domain name. 
8. That Respondent had actual or at least constructive notice of the prior use of the mark The Kings of Comedy by others, since by his own admission he had “been backstage at shows and performances of Steve Harvey on numerous occasions” and by his contention that he “was authorized to pursue a media strategy including web related projects for Steve Harvey and in this capacity registered the domain name kingsofcomedy.com.” (Emphasis added.) If Respondent’s recitation is accurate, it should follow that any registration by him in that capacity would have benefited Harvey or others rather than Respondent. 
9. That Respondent registered the domain name with knowledge that the comedian and others were entertaining under the umbrella of “The Kings of Comedy,” an inspiration that was the inspiration of Complainant and possibly others before Respondent came on the scene.
10. That Respondent’s “Power Points” do not show use and development of the domain name by inspiration, money or labor that would be worth the $50,000. Respondent admits he demanded from Complainant for the domain name.
11. Notwithstanding Respondent’s first-in-time-registration of the domain name, Respondent filed the domain name kingsofcomedy.com in bad faith in order to pursue a profit by selling it to Complainant or a competitor of Complainant for a consideration in excess of the investment that Respondent had in it. 
12. That the following is evidence of Respondent’s bad faith in registering the domain name “kingsofcomedy.com“:
a. That contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(i) Respondent wrongfully registered or acquired the domain name “kingsofcomedy.com” for the purpose of selling it to the complainant who is the owner of the trademark or to a competitor of Complainant for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the domain name.
b. That contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(ii) Respondent wrongfully registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name; Respondent admits a course of similarly registering other names.
c. That contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(iii) Respondent wrongfully saw a good name that he knew was the creative product of other people and registered the domain name “kingsofcomedy.com” in his own name although he was acting for another at the time. Respondent knew or should have known that the domain name registration by him would disrupt the business of those already using the name in their comedy enterprise and that it would keep them from developing that creative product to its fullest potentiality. 
Complainant’s prayer for relief requests that the domain name “kingsofcomedy.com“ be transferred from Respondent to Complainant.
5.  Conclusions
The undersigned certifies that she has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:
1. The domain name “kingsofcomedy.com“ registered by Respondent on January 25, 1999, is so close as to be identical or confusingly similar to Complainant’s “KINGS OF COMEDY“ Mark, to which Complainant has legal right and to which Respondent has failed to show a legitimate right or interest.
2. Respondent acted in bad faith by registering or acquiring the domain name “kingsofcomedy.com“ primarily for the purpose of selling or otherwise transferring the said domain name registration to the Complainant who is the owner of the trade mark or service mark, or to a competitor of the Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name.
6.  Decision
Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:                                       
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME “kingsofcomedy.com” REGISTERED BY RESPONDENT TODD SHURN BE TRANSFERRED TO COMPLAINANT LATHAN ENTERTAINMENT.
DATED: March 31, 2000 by Judge Carolyn Marks Johnson (Ret.), Arbitrator.
Honorable Carolyn Marks Johnson
        Name Transferred
 

[1] Any reference to “Rule” or “Rules are to ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as supplemented by the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy.