[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 Complainants KINGS OF COMEDY Mark, to which
Complainant has legal right and to which Respondent has failed to show
a legitimate right or interest.
If Respondents 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 Respondents 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: [email protected]
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.
Respondents 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 ICANNs 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 Respondents 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 Respondents
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 Respondents 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 Respondents 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 Respondents bad faith in registering
the domain name kingsofcomedy.com:
a. That contrary to ICANNs 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 Respondents documented out of
pocket costs directly related to the domain name.
b. That contrary to ICANNs 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 ICANNs 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.
Complainants 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 Complainants 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 Respondents 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 ICANNs Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as supplemented by the National Arbitration Forums Supplemental Rules to ICANNs Uniform Domain Resolution Policy.