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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie

Case No. D2000-1772

 

1. The Parties

Complainant is Tribeca Film Center, Inc., a company with an address at 375 Greenwich Street, Suite 511, New York, NY 10013, represented by Greenberg Glusker Fields Claman & Machtinger LLP.

Respondent is Lorenzo Brusasco-Mackenzie, an individual with an address at 529 Broome Street, New York, NY 10013, represented by O’Brien & Associates.

 

2. Domain Name and Registrar

The domain name at issue is "tribecafilmcenter.com". The domain name is registered with Network Solutions, Inc ("NSI").

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received Tribeca Film Center’s complaint (the "Complaint") by e-mail on December 21, 2000, and in hardcopy on December 22, 2000. Prior to commencing this proceeding, the Center reviewed the Complaint to determine whether it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Center thereupon notified Complainant of certain deficiencies in its Complaint. Complainant remedied those deficiencies and, on January 16, 2001, filed an amendment to the Complaint. This administrative proceeding was formally commenced on January 17, 2001, when the Center notified Respondent Lorenzo Brusasco-Mackenzie of the Complaint, as amended.

Brusasco-Mackenzie’s Response was timely received by the Center by e-mail on February 2, 2001, and in hard copy on February 6, 2001. On February 8, 2001, after clearing for potential conflicts, the Center appointed David H. Bernstein as the sole panelist in this matter.

On February 12, 2001, the Panel received the case file from the Center by overnight courier. On February 14, 2001, after reviewing the case file, the Panel issued an Interim Order pursuant to Rule 12 requesting an additional submission from each party. The Interim Order instructed:

The Complainant’s submission shall be limited to the following:

a. A copy of the office action issued by the United States Patent and Trademark Office ("PTO") in response to Complainant’s application to register "Tribeca Film Center," Serial No. 75/924,774 (see Complaint, Annex 3), and any response filed with the PTO by Complainant; and

b. One or more affidavits providing complete details about the two telephone calls mentioned in paragraph twenty of the Complaint, including but not limited to the date or approximate date of the calls (or, failing these, the timing of these calls in relation to the correspondence between the parties dated January 27, 2000, to June 13, 2000), the person by whom each call was made, the person to whom each call was made, and, to the best of the affiant’s recollection, the specific discussion had or messages left (please attach as an exhibit any contemporaneous notes or memoranda regarding those telephone calls).

and

The Respondent’s submission shall be limited to the following:

a. One or more affidavits describing in full the relationship, if any, between Respondent and Dara McQuillan; and

b. One or more affidavits providing complete details about the two telephone calls mentioned in paragraph twenty of the Complaint, including but not limited to the date or approximate date of the calls (or, failing these, the timing of these calls in relation to the correspondence between the parties dated January 27, 2000, to June 13, 2000), the person by whom each call was made, the person to whom each call was made, and, to the best of the affiant’s recollection, the specific discussion had or messages left (please attach as an exhibit any contemporaneous notes or memoranda regarding those telephone calls).

The Panel ordered Complainant to file its submission by March 1, 2001, and Respondent to file its submission by March 16, 2001. Upon Complainant’s request and Respondent’s consent, the Panel extended the filing date for Complainant’s submission to March 15, and adjusted Respondent’s filing deadline accordingly. The Center

received the Complainant’s submission by facsimile on March 15, and the Respondent’s submission by e-mail on March 29 and in hard copy on April 2, 2001. (Footnote 1)

 

4. Factual Background

Complainant Tribeca Film Center was founded in 1989, by Jane Rosenthal and Academy Award-winning actor, director and producer Robert DeNiro. Complainant provides facilities for entertainment companies and filmmakers including office space, office services, equipment rentals, screening rooms, a production suite, banquet halls, kitchen facilities and conference rooms.

Respondent Lorenzo Brusasco-Mackenzie worked as an unpaid intern at Tribeca Film Center for four months in 1997. He was recommended for a full-time job at Tribeca Film Center by Trina Wyatt, its Chief Financial Officer, but instead enrolled as a student in the Lee Strasberg Theater Institute in New York.

Complainant has applied for federal registration of the "Tribeca Film Center" mark. Complainant filed its application on February 22, 2000. The United States Patent and Trademark Office (the "PTO") issued a non-final office action on August 28, 2000, refusing to register the mark because (i) it is geographically descriptive, and (ii) there may be a likelihood of confusion between Complainant’s mark and the mark in another party’s pending, earlier-filed application ("Tribeca Records"). On February 28, 2001, Complainant amended its application to include a claim of acquired distinctiveness under Section 2(f) of the Lanham Act, and requested that the PTO suspend decision on its application pending the outcome of the earlier-filed application. The PTO has not yet issued another office action.

Complainant’s web site is located at "tribecafilm.com". The site’s home page displays a number of photographs, including ones of Robert DeNiro and of a building that, presumably, houses Complainant’s facilities. It also bears several internal links such as "Robert DeNiro," "Tribeca Film Center / Screening Room," "Tribeca Productions," and "neighborhood." The internal web page at "Tribeca Film Center" emphasizes that Tribeca Film Center combines the Tribeca neighborhood’s charm with cutting edge services in a "state-of-the-art" building. Complainant’s web page also features the slogan, "More than a place. An environment."

Respondent registered the domain name "tribecafilmcenter.com" on November 10, 1999. Respondent has made no use of this domain name. As of December 18, 2000, the domain name provided access to a standard NSI web page stating: "This site is currently under construction." (Footnote 2)

Respondent alleges that he aims to use the domain name "tribecafilmcenter.com" in connection with a "fan site" for commentary on and critique of Tribeca Film Center. Attached as Exhibit D to the Response is a copy of Respondent’s proposed home page. That home page reads:

tribecafilmcenter.com

Established in 1989, Tribeca Film Center is the industry’s standard [] setter for multichannel film, video and interactive services. With an impressive list of satisfied long term clients, Tribeca Film Center has repeatedly proven it can and does deliver the highest level of support services in high energy, high intensity environments. Unique in its ability to offer premium workplace services in one of New York’s most popular neighborhoods.

Tribeca Film Center has long been the choice of global entertainment companies seeking to provide the most enjoyable working experience. With global corporate offices in New York City, Tribeca Film Center is more than a state of the art office facility [-] it is a state of mind.

The home page contains two photographs: one featuring Robert DeNiro and the other displaying the same building that appears on Complainant’s site. The home page has what appear to be internal links that are similar to those on Complainant’s website, including "home," "deniro," "center," "productions," "links," "tribeca," "news," and "search"; copies of the pages at each of these links were not submitted and thus the Panel assumes that no such pages have yet been created. The bottom of the home page reads: "This website is not connected to or affiliated with the Tribeca Film Center, New York City. For the official tribeca film center website, please click here – tribecafilm.com."

Complainant claims that, in or about Spring 2000, when it began to look into registering domain names using its mark, it first learned that Respondent had registered "tribecafilmcenter.com". Complainant alleges that, at the direction of Chief Financial Officer Trina Wyatt, one of Complainant’s temporary employees (whom Wyatt identified as John Benincasa) left a telephone message for Respondent to discuss transfer of the "tribecafilmcenter.com" domain name. Complainant claims that it received in response a telephone message stating that "they" were "willing to entertain an offer." Wyatt and another of Complainant’s employees, Sandra O’Hearen (Vice President of Finance / Controller), listened to the message and have sworn in affidavits that they identified its voice as that of Dara McQuillan, a former employee of Tribeca Film Center who used to share an apartment with Respondent. McQuillan was terminated by Tribeca Film Center two and one-half years earlier, in 1997.

Respondent has submitted an affidavit from Joseph Benincasa, who identifies himself as an employee who worked under Wyatt in January and February 2000, – the same time the parties’ correspondence indicates that Complainant first learned of the "tribecafilmcenter.com" domain name. Benincasa states that he personally talked to Respondent about the domain name (though he studiously avoids disclosing the content of the conversation) and that Respondent made no mention of selling the web site. Benincasa further states that he never received any voicemail message concerning Respondent’s web site. Respondent Lorenzo Brusasco-Mackenzie also has submitted an affidavit himself confirming these details, and further stating that he explicitly told Benincasa he was not interested in selling, but rather, that he intended to create a fan site.

Respondent also has provided an affidavit from Dara McQuillan stating that McQuillan has had no contact with Tribeca Film Center or any of its employees since September 1997, and that McQuillan did not leave a voicemail message with Complainant seeking to sell the domain name.

 

5. Parties’ Contentions

A. Complainant

Complainant claims that "tribecafilmcenter.com" is identical or confusingly similar to "Tribeca Film Center," a trademark in which Complainant has common-law rights. Complainant contends that the "Tribeca Film Center" mark has acquired widespread fame and has become synonymous with Robert DeNiro and his films. Complainant alleges that it has expended significant resources developing the mark and that it has diligently protected the mark to prevent confusion in the marketplace.

Complainant maintains that Respondent has no rights or legitimate interests in the domain name "tribecafilmcenter.com". Complainant argues, first, that Respondent has neither used nor made any plans to use the domain name in connection with the offering of goods or services. Complainant argues, second, that Respondent has never been known by the domain name or the trademark contained therein. Complainant argues, third, that Respondent’s proposal to use the domain name in connection with a fan web site does not constitute a legitimate noncommercial or fair use of the domain name within the meaning of the Policy. Complainant argues, fourth, that Respondent lacks rights or legitimate interests in the domain name because he "has made absolutely no use of it."

To establish bad faith, Complainant argues that registering a domain name primarily for the purpose of commenting on and critiquing a trademark holder disrupts the business of a competitor for web site traffic, evidencing bad faith within the meaning of the Policy. Complainant contends also that Respondent’s true purpose in registering the domain name was to sell it to Complainant or to prevent Complainant from using it. Complainant alleges that Dara McQuillan is working in conjunction with Respondent to extract an offer for purchase of the domain name, and that Respondent’s thirteen-month period of non-use of the domain name is evidence that Respondent’s real purpose is not to develop a web site, as it claims.

B. Respondent

Respondent concedes that his domain name is similar to Complainant’s mark. Respondent also admits that "Tribeca Film Center" is known to people in New York and persons involved in the film industry, though he disputes that "Tribeca Film Center" has acquired either widespread fame or sufficient secondary meaning to establish common-law trademark rights. Respondent argues that Complainant’s claim to trademark rights is defeated by its failure to register domain names based on variations of "Tribeca Film Center," "Robert DeNiro" and "Canal Productions," and by Complainant’s failure to take action against persons registering domain names based on variations of "Robert DeNiro" and "Canal Productions."

Respondent maintains that use of the domain name "tribecafilmcenter.com" to critique or offer information on Complainant is a legitimate noncommercial or fair use within the meaning of the Policy. Respondent argues, in the alternative, that he has a legitimate interest in the domain name "tribecafilmcenter.com" because he "lives close to Tribeca in New York City and selected the name in good faith for a fan site dealing with film and film related interests, including films in which Mr. Robert DeNiro is involved."

Respondent contends that Complainant cannot establish bad faith on the theory that Respondent’s domain name disrupts the business of a competitor because Complainant and Respondent do not compete commercially. Respondent argues that neither McQuillan nor Respondent attempted to extract an offer from Complainant for the purchase of the domain name, and that any message left with Complainant was not left on Respondent’s behalf. Respondent argues also that it could not have acted in bad faith in registering the domain name because it did not and could not have known of Complainant’s claim to trademark ownership. Respondent points out that Complainant did not apply for federal trademark registration until February 2000, after Respondent had registered "tribecafilmcenter.com" with NSI. Finally, Respondent argues that his proposal to use on his web site a disclaimer of affiliation with or sponsorship by Complainant mitigates against a finding of bad faith.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following to obtain transfer of a domain name:

(1) that 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) that the respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the domain name was registered and is being used in bad faith.

The complainant must carry its burden of proof by a preponderance of the evidence. Madonna Ciccone v. Parisi, WIPO Case No. D2000-0847 (Decided October 12, 2000).

A. Respondent’s Domain Name is Identical to Complainant’s Trademark

The Panel finds that the first element of Complainant’s claim is satisfied because Respondent’s domain name is identical to a trademark in which the Complainant has rights.

By a preponderance of the evidence submitted, the Panel finds that "Tribeca Film Center" is a mark in which Complainant has common law rights. Although "Tribeca Film Center" is potentially a geographically descriptive mark, Respondent has conceded that this mark is known within New York and within the film industry. Renown amongst such prospective purchasers of Complainant’s services suffices to establish the existence of common-law trademark rights. See Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999); 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15.46 (4th ed. 2000), (secondary meaning "need not be proven among the general public if a product is targeted at only a specific segment of the general public"). (Footnote 3) Moreover, Complainant has submitted both to the Panel and the PTO evidence that the mark has acquired distinctiveness, and Respondent has not refuted that evidence.

Respondent alleges that Complainant nevertheless has no trademark rights because it has failed to police its mark. However, Respondent only points to a failure to take action against persons registering the domain names "robertdeniro.com", "robertdeniro.net", "robertdeniro.org" and "canalproductions.com". Even if Complainant had standing to challenge those domain names (which is not shown on this record), inaction in the face of potential infringement of these dissimilar terms does not bear upon Complainant’s claim to trademark rights in "Tribeca Film Center."

Having concluded that Complainant has trademark rights in Tribeca Film Center, it is not disputed that the domain name "tribecafilmcenter.com" is identical to Complainant’s mark for purposes of the Policy. The Panel therefore finds that Complainant has satisfied the first element of its claim under the Policy.

B. Respondent Has No Rights or Legitimate Interests in Respect of the Domain Name

The Panel finds that the second element of Complainant’s claim also is satisfied: Respondent has neither rights nor legitimate interests in respect of the domain name "tribecafilmcenter.com".

Paragraph 4(c) of the Policy states that a respondent may have rights or legitimate interests in a domain name if:

(i) before notice of the dispute over the domain name, the respondent has made "use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services";

(ii) the respondent has been "commonly known by the domain name"; or

(iii) the respondent is "making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

In this case, there is no evidence that conditions (i) or (ii) are met. Respondent has claimed, however, that he intends to make a legitimate noncommercial or fair use of the domain name within the meaning of Paragraph 4(c)(iii) of the Policy –namely, that he intends to use the domain name in connection with a "fan site" that critiques and comments on Complainant. (Footnote 4)

Mere assertions of intent are not enough to satisfy Paragraph 4(c)(iii) of the Policy. Van Halen v. Morgan, WIPO Case No. D2000-1313 (Decided December 20, 2000), (mere intent to develop a fan site not sufficient to show legitimate interest). The only evidence supporting Respondent’s claim is the unpublished home page attached as Exhibit D to the Response. That home page, though, has never been used, and thus Respondent has not made any use, fair or otherwise, as required by Paragraph 4(c)(iii). Moreover, even if Respondent had posted this home page on his site, this home page looks confusingly like an official home page for Tribeca Film Center, and not like a site that critiques or comments upon Complainant and its activities. Accordingly, the Panel concludes that Complainant has demonstrated the absence of Respondent’s rights or legitimate interests in respect of the domain name, and thereby established the second element of its claim.

C. Complainant Has Not Established Bad Faith Registration and Use

The third and final element of a claim under the Policy is registration and use of the domain name in bad faith. Complainant has failed to carry its burden of proving this element of its claim.

Paragraph 4(b) of the Policy lists the following circumstances as examples of bad faith:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark . . . for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such contact; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor . . . ."

Complainant argues that all three of these circumstances are present. (Footnote 5) The evidence and the law do not support Complainant’s position.

The parties have submitted conflicting affidavits regarding whether Respondent offered to sell the domain name. Two of Complainant’s employees, Trina Wyatt and Sandra O’Hearen, swear that, after Complainant contacted Respondent to discuss transfer of the domain name, Dara McQuillan left a message with Complainant stating that "they" were "willing to entertain an offer." Although it would seem unlikely that both Wyatt and O’Hearen are wrong, McQuillan swears that he never left any such message. This leaves open the question of whether someone else left the message (which, if left by Respondent or his agent, would constitute an offer to sell that would support a finding of bad faith). Complainant, though, has not proven who else could have left the message and Respondent swears both that he did not and that he told Benincasa that "he was not interested in selling." Given the truncated nature of this proceeding, the lack of live testimony to facilitate credibility findings, and the lack of any documentary evidence to support either side’s version of the events (such as contemporaneous notes, recordings of messages, or memoranda to the parties’ files), it is impossible to reconcile the affidavits or to determine which report of the facts more likely than not is correct. The Panel thus is unable to determine whether or not an offer to sell was made. The burden of this uncertainty falls upon Complainant because, pursuant to Paragraph 4(a) of the Policy, it is Complainant who bears the burden of proving bad faith. Although it is a close decision, the Panel is constrained to find that Complainant has not met its burden of proving by a preponderance of the evidence that an offer to sell was made. See TABCORP Holdings Ltd. v. Hertzberg, WIPO Case No. D2000-0566 (Decided September 20, 2000). (Footnote 6)

Complainant’s argument under Paragraph 4(b)(ii) of the Policy fares no better. Paragraph 4(b)(ii) provides that registration of a domain name in order to prevent a trademark owner from reflecting its mark in a corresponding domain name shall be evidence of bad faith, "provided that [the respondent] has engaged in a pattern of such conduct." There is no evidence of a pattern of such conduct in this case. Complainant’s argument under Paragraph 4(b)(ii) therefore fails.

Complainant’s claim under Paragraph 4(b)(iii) of the Policy – that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor – also fails. The Panel acknowledges that there is a split in authority as to how broadly to interpret the phrase "disrupting the business of a competitor." Compare Mission KwaSizabantu v. Rost, WIPO Case No. D2000-0279 (Decided June 7, 2000), (holding that respondent who did not compete with complainant for goods or services acted as "competitor" when he published web site criticizing complainant because "[t]he natural meaning of the word ‘competitor’ is one who acts in opposition to another") with Compusa Management Co. v. Customized Computer Training, File No. FA0006000095082 (NAF Aug. 27, 2000), (holding that respondent was not "competitor" of complainant merely because it published noncommercial web site criticizing complainant). The Panel respectfully disagrees with the theory of Mission KwaSizabantu and similar cases that any form of oppositional interest (such as that between a trademark owner and the publisher of a criticism site) may transform the complainant and respondent into "competitors" as that term is used in Paragraph 4(b)(iii) of the Policy. (Footnote 7) Rather, a respondent can "disrupt[] the business of a competitor" only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner. If Paragraph 4(b)(iii) were given the meaning advanced by Complainant, respondents would be found to have disrupted the business of competitors in far too many cases, and the Policy’s bad faith requirement would be diluted beyond recognition. Accordingly, the Panel concludes, on this record, that Respondent did not register the domain name to disrupt the business of a competitor.

 

7. Decision

Although Complainant has proven that Respondent registered a domain name identical to its mark and that Respondent has no legitimate interest in respect of that domain name, Complainant has failed to meet its burden of proving that Respondent registered and used the domain name in bad faith. Accordingly, the Panel declines to order the transfer of the domain name "tribecafilmcenter.com" to Complainant.

David H. Bernstein
Sole Panelist

Dated: April 10, 2001

 

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Footnotes:

1. The hard copy version of one of the affidavits in Respondent’s additional submission contains a paragraph not included in the e-mailed version. Because this discrepancy is not relevant to the Panel’s decision, the Panel does not consider whether the information presented for the first time in the hard copy submission was timely.
2. Respondent alleges that NSI improperly placed the domain name "on hold" on January 4, 2001, but has submitted no documentary evidence to substantiate that assertion and no such indication appears in NSI’s WHOIS information. In any event, this issue is irrelevant to the resolution of the instant proceeding.
3. Because both parties are United States residents, it is appropriate to consider United States law in resolving issues such as the existence of trademark rights. EAuto, L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047 (Decided March 24, 2000).
4. Respondent also argues that he has a legitimate interest in the domain name because, while he does not live in Tribeca, he lives "close to" this neighborhood. This is hardly sufficient to establish rights in the domain name "tribecafilmcenter.com". See Document Techs., Inc. v. International Elec. Communications Inc., WIPO Case No. D2000-0270 (Decided June 6, 2000) (once complainant makes prima facie showing that respondent lacks rights in domain name, burden of production shifts to respondent to come forward with evidence showing it has rights in domain name).
5. Complainant does not argue that Respondent has intentionally attempted to attract Internet users to its web site for commercial gain, as would be required (along with other facts) to demonstrate bad faith under Paragraph 4(b)(iv) of the Policy.
6. As stated in Paragraph 4(k) of the Policy, the Panel’s decision does not prevent the presentation of this dispute to a court of competent jurisdiction. If Complainant wishes, it may pursue its claim in a forum that provides for discovery, live testimony and credibility determinations. Lopez v. Irish Realty Corp., Case No. FA0005000094906 (NAF Aug. 8, 2000); TABCORP, supra.
7. This Panel also disagrees with Mission KwaSizabantu’s conclusion that the respondent’s domain name and web site in that case did not constitute a fair use, but that is an issue for another day.