Katherine Quinn, The Executrix of the Anthony Rudolfo Quinn Estate v. Konstantinos Zournas
Claim Number: FA0512000610713
PARTIES
Complainant is Katherine Quinn, The Executrix of the Anthony Rudolfo Quinn Estate (“Complainant”), represented by Karl S. Kronenberger, of Kronenberger & Associates, 220 Montgomery Street, Suite 1920, San Francisco, CA 94104. Respondent is Konstantinos Zournas (“Respondent”), 96 Kallidromiou, Athens 11473, Greece.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <anthonyquinn.com>, registered with Enom, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Jonas Gulliksson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2005.
On December 16, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <anthonyquinn.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 30, 2006 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@anthonyquinn.com by e-mail.
A timely Response was received and determined to be complete on January 27, 2006.
On February 1, 2006, an Additional Submission was received from Complainant. The submission was received in a timely manner according to The Forum’s Supplemental Rule 7. On February 6, 2006, an Additional Submission from Respondent was received. Also this submission was received in a timely manner.
On
February 3, 2006, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Jonas Gulliksson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has stated the following in its Complaint:
Anthony Quinn is a renowned artist and a two-time Oscar-winning actor,
and his life clearly reflects parallel careers as both an artist and
actor. He
died on June 3, 2001 at the age of 86. His
fame and success as both an artist and actor have supported the “Anthony Quinn”
name and trademark as a mark that is internationally known in multiple
categories. These categories include
entertainment services, jewelry, watches, award statuettes, and entertainment
awards.
Anthony Quinn as Actor
After beginning his career acting on Broadway, Anthony Quinn turned to
a career in film starting in 1936. Many of his early roles included bandits and
other stereotypical villains and ethnic characters. By the late 1940s, he had finished over fifty films. In 1947, he
returned to Broadway for three years where he played Stanley Kowalski in A
Streetcar Named Desire and other roles.
When he returned to film in the 1950s, he
found wide-spread success and acclaim with Viva Zapata! (1952), in which
he appeared with Marlon Brando. Anthony
Quinn's performance won him his first Oscar, for Best Supporting Actor.
Afterwards he worked on several films in Italy, including Federico Fellini's La
Strada (1954). His second Oscar
came from playing Gaugin in Lust for Life (1956). He was nominated again for an Academy Award
for Best Actor for his role in Wild is the Wind (1957). In the sixties, his more successful roles included Lawrence
of Arabia (1962) and Zorba the Greek (1964). Zorba garnered him yet another Oscar nomination, as well as great
and lasting notoriety in the country of Greece, where Respondent resides. His
last films in the 1990’s include Jungle Fever (1991), The Last Action
Hero (1993), and A Walk in the Clouds (1995).
Anthony Quinn as Artist
In addition to an illustrious acting career spanning nearly
60 years, including more than 150 films and many stage roles, Anthony Quinn was
also an accomplished visual artist. His talent as an artist was evident at an
early age when, at the age of eleven, he won a statewide competition for his
sculpture of Abraham Lincoln. Later, he
was awarded a scholarship to study architecture with Frank Lloyd Wright.
Throughout his life, Anthony Quinn continued to further his
career as an artist. In the early
1980s, Anthony Quinn earned nearly $2 million from the first exhibition of his
artwork. Mr. Quinn went on to generate
over $1 million per year from the exhibition and sale of his artwork and
designs, distributed under the Anthony Quinn name. Through the early 1980s, his artwork was repeatedly featured in
such distinguished publications as Architectural Digest. Quinn Decl., § 6.
Certain Anthony Quinn artwork is scheduled in November 2006 to be placed
into an exhibit that will tour museums in the United States.
The “Anthony Quinn” Trademark
Anthony Quinn’s great fame and notoriety as both an actor
and an artist allowed him to begin offering various products under the ANTHONY
QUINN trademark. Specifically, Anthony
Quinn produced a variety of high-end watches and jewelry based on certain of
his artworks, all under the ANTHONY QUINN trademark. Starting in approximately 1995, the watches were distributed in
fine jewelry stores internationally, and sold to consumers for upwards of
$13,000 each. The watches were also
sold via television on the Shop NBC channel.
Examples of some of the watches sold bearing the ANTHONY QUINN trademark
are attached as Exhibit F to the
Quinn Declaration.
In addition to watches, Anthony Quinn also produced jewelry
and other items under the ANTHONY QUINN trademark, also marketed and sold
internationally in stores, through television advertisements and over the
Internet. Examples of cufflinks,
earrings, bracelets, pendants, rings and other items sold under the ANTHONY
QUINN trademark are attached as Exhibit
G to the Quinn Decl. Sales of watches and jewelry under the ANTHONY
QUINN trademark averaged $100,000 per year throughout the 1990s, and sales
continue today.
In 2001, the Providence Festival of New Latin American Cinema began to
bestow an annual award called ”The Anthony Quinn Award for Outstanding
Achievement in Film,” or “The Anthony Quinn” in short. The statuette given to recipients of this
award is a reproduction of an original sculpture by Anthony Quinn. This award was created pursuant to the
explicit permission of Anthony Quinn and his Estate. In connection with this awards program, the Estate of Anthony
Quinn submitted two applications for federal registration of the trademark “The
Anthony Quinn.” One application
regarded the words “The Anthony Quinn,” and the other application regarded the
statuette presented to recipients of the award. Copies of both applications are attached as Exhibit C to the Quinn Declaration.
The ANTHONY QUINN trademark is representative of high quality watches
and jewelry designed by Anthony Quinn, and integrating his artwork. Mr. Quinn used the ANTHONY QUINN trademark
in connection with the promotion and sale of his line of watches and jewelry
continuously since approximately 1995.
During his lifetime and since his passing, Anthony Quinn and his later
Estate, have continuously and exclusively used the ANTHONY QUINN trademark to
market and sell watches and jewelry internationally. Anthony Quinn and the Estate of Anthony Quinn have vigilantly
policed the use of the ANTHONY QUINN trademark over the years, dispatching
cease and desist letters and taking other legal action as appropriate.
Over the years, the ANTHONY QUINN trademark on watches and jewelry has
garnered much unsolicited media attention and coverage. Examples of such are attached as Exhibit H to the Quinn Declaration.
Mr. Quinn and his Estate themselves draw considerable attention, and
Anthony Quinn is regularly the subject of public interest, to the degree that
it often generates commercial interest.
As an example, in the early 1990’s, Discover Bank licensed the “Anthony
Quinn” name, amongst other celebrities, to be featured on a Private Issue
Discover Card. Mr. Quinn’s artistic
endeavors are the subject of Bristol House Press’ Anthony Quinn’s Eye: A Lifetime of Creating and Collecting Art by
Donald Kuspit, published in 2005 (see
http://www.bristolhousepress.com).
Anthony Quinn’s published memoirs include The Original Sin: A Self Portrait (1972) and One Man Tango (1995).
Offer to Sell the <anthonyquinn.com> Domain Name for $5001
Two years ago, Katherine Quinn contacted the owner of the <anthonyquinn.com>
domain, asserting the rights of Mr. Quinn’s Estate and requesting that the
owner transfer the domain to her as Executrix.
Katherine Quinn and Respondent engaged in a series of emails, in which
Respondent first demanded that Katherine Quinn identify herself as the true
representative of the Estate of Anthony Quinn.
After Katherine Quinn faxed proof of her identity to this individual, he
offered to sell the domain name to Katherine Quinn for $5001. According to the WHOIS database records, the
same person with whom Katherine Quinn corresponded is still in control of the
domain name. EXHIBIT J.
There is not nor has there ever been any license or other business
relationship between either Anthony Quinn, or the Estate of Anthony Quinn, and
Respondent. Accordingly, Respondent has
no permission whatsoever to use the ANTHONY QUINN trademark.
Currently, and for a period of years, Respondent is pointing the
Disputed Domain to a commercial web page that sells products that are in direct
competition to products sold under the ANTHONY QUINN trademark. Respondent also profits from affiliate
pay-per-click advertisements on the Disputed Domain (Affiliate
pay-per-click advertising is where the host webpage receives a referral
commission from the businesses to whom the advertisements or links on the host
webpage refer each time a user clicks on the links or advertisements to access
the commission paying business webpage).
Screen captures of several of the pages at the Disputed Domain are attached as Exhibit I to the Quinn Decl.
A. The
domain name is either identical and/or confusingly similar to a trademark or
service mark in which Complainant has rights.
Common Law Trademark Protection
Under common law principles, a protectable trademark right is
established upon the mark’s acquiring secondary meaning in use with
commerce. "Secondary meaning is
demonstrated where in the minds of the public, the primary significance of a
product feature or term is to identify the source of the product itself." Citigroup, Inc. v. Parvin, D2002-0969 (WIPO May 12, 2003) (citing Sari Rattner Dahl Primo Incense v. Spring.net, FA 96565 (Nat. Arb. Forum Apr. 12,
2001)). Determining factors as to
whether a mark has attained secondary meaning have been held to include the
length of use, exclusivity of use, any copying, and actual confusion.
Additionally, the issue of secondary meaning has been extensively
addressed by the U.S. Federal Courts.
Federal case law explains that the test for secondary meaning requires a
demonstration that the mark, by means of sufficient marketing, sales, usage,
and passage of time, has become identified in the public mind with a particular
source of the goods or services. See Big Star Entm’t, Inc. v. Next Big Star, Inc.,
105 F.Supp.2d 185 (S.D.N.Y. 2000); see also Inwood Labs., Inc. v. Ives
Labs., Inc., 456 U.S. 844, 851, n. 11, 102 S. Ct. 2182 (1982); Bristol-Meyers
Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1040 (2d Cir. 1992). For support of this standard, the Courts
look to the following factors:1) advertising expenditures, 2) consumer surveys
linking the mark to a source, 3) unsolicited media coverage of the service, 4)
sales success, 5) attempts to plagiarize the mark, and 6) length and
exclusivity of the mark’s use. See Centaur
Commc’n Ltd. v. A\S\M\ Commc’ns, Inc., 830 F.2d 1217, 1221 (2d Cir.
1987); Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th
Cir. 1983).
Each of these factors will be addressed in turn as they relate to this
case:
i.
Length of
Use. The name and mark “Anthony Quinn” has been
used continuously by Complainant in connection with dramatic performance and
entertainment services for nearly seventy years, with great success. In addition, Complainant has made continuous
use of the ANTHONY QUINN trademark since approximately 1995 in connection with
the public sale and advertising of its watches and jewelry.
ii.
Exclusivity
of Use. Complainant has vigilantly policed the use
of its trademark, and as a result, the use of the ANTHONY QUINN trademark by
Complainant is and has been exclusive.
iii.
Advertising
Expenditures. Complainant has spent significant sums on
advertising the ANTHONY QUINN trademark and brand to both customers and
distributors worldwide, including print advertising as exemplified in Exhibits
F and G, as well as television advertising on the ShopNBC network. This advertising has directly supported and
enhanced the worldwide recognition of the ANTHONY QUINN brand on watches and
jewelry.
iv. Unsolicited Media Coverage. The
ANTHONY QUINN brand has received unsolicited media coverage in a variety of
media outlets over the years, to include industry publications, general
distribution newspapers, and general distribution fashion or jewelry magazines.
v.
Sales
Success. Sales of watches and jewelry under the
ANTHONY QUINN trademark averaged $100,000 per year throughout the 1990s, and
sales continue today.
Regarding actors, Panels have consistently found that celebrity actors’
names can serve as trademarks that identify the celebrities’ performance
services. Spacey v. Alberta Hot Rods, FA
114437 (Nat. Arb. Forum Aug. 1, 2002); see also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (trademark
registration unnecessary as the name "Julia Roberts" had sufficient
secondary association to establish common law rights); see also Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11,
2000) (common law rights in name “Mick Jagger”). This inherent secondary meaning is also recognized for musical
performers, with UDRP Panels finding common law rights based on the length of
use and public association of celebrity names in conjunction with their products
of music and entertainment services. See, e.g., Frampton v. Frampton Enters.,
Inc., D2002-0141 (WIPO Apr. 17, 2002) (use of name “Peter Frampton” for
thirty years in conjunction with entertainment services clearly established
common law trademark right in name).
Therefore, Anthony Quinn’s status as an internationally known
Oscar-winning actor, with more than 150 film appearances over the span of
nearly sixty years, inheres in that name a common law trade and service mark
right. Furthermore, Complainant’s
rights in the ANTHONY QUINN mark have been extended beyond entertainment
services. By use in connection with
Complainant’s marketing and sales of jewelry, watches, and marketable works of
art, the ANTHONY QUINN mark has acquired further secondary meaning in the mind
of the public as to those markets and goods, and any reasonable extensions
thereof.
Applications for Registered Trademark
Pending: “The Anthony Quinn”
Complainant has applied for two federal trademarks on the words “The
Anthony Quinn” for the categories of (1) statuettes of non-precious metal; and
(2) educational services, namely providing recognition and incentives by the
way of awards to demonstrate excellence in the field of acting in theater,
film, and on television; entertainment services, namely an awards show for
presentation of awards to recognize achievement in acting in theater, film, and
on television; entertainment services, namely organizing and conducting awards
programs to recognize achievements in the field of acting in theater, film, and
on television (Serial Numbers 76/489440 and 76/489439 respectively). Exhibit C to Quinn Decl. These trademark
applications were filed as “intent to use” trademarks, and both applications
have been fully published for opposition.
While these marks have not registered as of yet due to their intent to
use status, the marks have passed initial muster with the trademark office and
completed the publication period.
Accordingly, these applications are further evidence in support of the
strength of Complainant’s common law trademark. See La Vision Gmbh v. Computers, Parts & Repairs Inc.,
FA 306695 (Nat. Arb. Forum Oct. 25, 2004) (use of mark for a little over ten
years combined with pending USPTO and German trademark applications was sufficient
to recognize rights in mark in a UDRP proceeding), (citing SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
ICANN Rules do not require trademark registration with a government authority
for rights to exist; rights in the mark can be established by pending trademark
applications)); British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar.
23, 2000) (noting that the Policy also applies to "unregistered trademarks
and service marks"); Great Plains Metromall, LLC v. Creach, FA
97044 (NAF May 18, 2001) ("The Policy does not require that a trademark be
registered by a governmental authority for such rights to exist.").
Domain Identical to Mark – AnthonyQuinn.com
The Disputed Domain, <anthonyquinn.com>, contains the exact
trademark of Complainant, without the addition of any other words or
letters. Accordingly, Complainant has
submitted sufficient information to satisfy the first prong of the analysis
under the Policy regarding the <anthonyquinn.com> domain name.
B. Respondent
has no rights or legitimate interests in the Disputed Domain.
i) Respondent's registration of the Disputed Domain does not
establish any rights in the Domain.
A domain name registrant generally lacks rights or legitimate interests
in a domain name where a complainant has prior rights in a mark which precede a
respondent's registration of the domain name. Oki Data Americas, Inc. v.
Jackson, D2004-0087 (WIPO Mar. 24, 2004); Rockport Co., LLC v. Powell,
D2000-0064 (Apr. 6, WIPO 2000). Anthony
Quinn is an internationally known actor who has appeared in over 150 films over
almost sixty years, and who received two Oscar awards. Complainant began using its mark to market
and sell watches and jewelry in approximately 1995 and filed its two federal
trademark applications on February 12, 2003.
Respondent only registered the Disputed Domain on April 13, 2003 – after
decades of international notoriety of Anthony Quinn, after ten years of
Complainant’s use of the ANTHONY QUINN trademark in selling watches, jewelry,
and artwork, and one month after Complainant’s federal trademark applications
were filed. Thus, Respondent's domain registration cannot give Respondent
rights in the Mark due to Complainant’s clear prior rights in the mark.
ii) Respondent has never been known by the Domain name and has
never used the name in association with a bona fide offering of goods or
services.
Respondent is not nor has he ever been known by the name "Anthony
Quinn" and does not have any legitimate interest in being associated with
the <anthonyquinn.com> domain name. Accordingly, there is no evidence to establish that Respondent
has rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii). See Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because Respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use); 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).
Furthermore, there is no evidence that Respondent intended to use the
Disputed Domain in conjunction with a bona fide offering of goods or
services. Instead, Respondent is using
the Disputed Domain to link to competitor services (discussed in more detail,
infra at § 6(C)(i)), from which Respondent likely receives "pay-per-click"
commissions.
Importantly, Respondent cannot argue that its use of the web page
resolving to <anthonyquinn.com> to advertise or promote the
products of Complainant's competitors is a legitimate offering of goods or
services to establish rights under the UDRP.
See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001)
(domain name holder's unauthorized use of confusingly similar domain name in
connection with offering of goods and services competitive with those of
trademark owner Pitney Bowes "cannot be legitimate"); see also
Koppers Chocolate Specialty Co., Inc. v. Leonard, D2001-0822 (WIPO Aug. 24,
2001) (no bona fide offering of goods or services where domain name established
link to website where not only the complainant's products but also those of the
complainant's competitors were marketed).
iii) Respondent's awareness of Complainant's mark prior to
registration evidences Respondent’s lack of rights or legitimate interest in
Disputed Domain.
Respondent was aware of Complainant's mark before Respondent registered
the Disputed Domain as detailed, infra
at § 6(B)(i), 6(B)(ii) and pp. 3-4 of this Complaint. Respondent's prior awareness of another's mark is evidence that
Respondent lacks rights and legitimate interest in the Disputed Domain. See
Bayer Aktiengesellschaft v. Dangos & Partners, D2002-1115 (WIPO Feb. 3,
2003).
iv) Respondent's
use of Disputed Domain is not for any legitimate fair use.
Respondent is not making any legitimate, non-commercial or fair use of
the <anthonyquinn.com> domain.
No non-commercial, fair use information is offered at the website
resolving to <anthonyquinn.com>.
Instead, Respondent's website for the Disputed Domain contains primarily
of commercial information, including advertisements for products competitive to
Complainant's and from which Respondent likely receives pay-per-click
commissions. Simply put, Respondent is
profiting on the substantial Internet traffic to the <anthonyquinn.com>
domain that exists due to the fame and trademark of Complainant. Since Respondent's website is commercial in
nature, it cannot qualify under the safe harbor of Policy ¶ 4(c)(iii) as a
legitimate noncommercial fair use without intent for commercial gain.
In the above-cited UDRP decision of Frampton
v. Frampton Enters., Inc., D2002-0141 (WIPO Apr. 17, 2002), concerning
facts compellingly similar to the present case, the Panel found that where a
respondent registers and uses a famous celebrity’s name to his financial
benefit, “[s]uch use, which at its heart relies on exploiting user confusion, can not and does not constitute bona
fide commercial use, sufficient to legitimize any rights and interests
the Respondent might have in the contested domain name.” (emphasis added) (citing Ciccone v. Parisi,
D2000-0847 (WIPO October 12, 2000).
Additionally, Respondent has no license or other official relationship
with the Estate of Anthony Quinn. In
fact, in the only series of communication between Complainant and Respondent,
Respondent demanded $5001 for control of the domain name, as is detailed at p.
4 of this Complaint.
Importantly, Complainant does not bear the burden of producing evidence
showing that Respondent lacks rights or legitimate interests in respect to the
domain names. See Citigroup,
Inc. v. Parvin, D2002-0969 (WIPO May 12, 2003). However, the evidence submitted by Complainant in this Complaint
is compelling evidence that Respondent lacks any rights or legitimate interests
in the Disputed Domain.
C. The domain name was registered and is
being used in bad faith.
Respondent’s use of the <anthonyquinn.com> domain
constitutes an opportunistic attempt to trade off Complainant's fame. It is clear that Respondent purchased the
domain with the knowledge of Complainant’s prior fame and commercial success;
that Respondent is profiting from the Internet traffic to the domain; that
Respondent is selling products that compete with products sold under
Complainant’s mark; and that Respondent offered to sell the domain to
Complainant for $5001.
As mentioned above, the obvious inferences as to Respondent’s
motivations have been addressed under the UDRP before. Incorporating its determination (cited
above) regarding the inherent illegitimacy in registering and using a
celebrity’s name, the Panel in Frampton
found such acts to establish unquestionably bad faith registration and
use:
There can be no question that the Respondent having absolutely no
association, relationship or affiliation whatsoever with the Complainant,
clearly chose to include the Complainant's mark in the contested domain name
with a goal of creating opportunities, to commercially benefit itself. . . .
The Panel views such opportunistic registration of the contested domain name as
indicative of bad faith registration
and the subsequent . . . bad faith
use, both collectively actionable under paragraph 4(b)(iv) of the
Policy. (emphasis added).
See, e.g., Novus Credit Servs. Inc. v.
Personal, D2000-1158 (WIPO
Nov.29, 2000) and Guinness UDV N. Am. v.
Lewis, D2001-0621 (WIPO Aug. 3, 2001).
i) Placement of advertisements and links to competitors at the
Disputed Domain demonstrates that the domain is being used in bad faith.
Respondent's web page for the Disputed Domain contains links to
products competitive to those of Complainant, including links to competing
jewelry companies like Tiffany.com and discount jewelry sellers like
Overstock.com. See screen shots of
competing links at Exhibit I of
the Quinn Decl. Per the UDRP,
use of a domain name to attract Internet users to your web site by creating a
likelihood of confusion of the mark owner's services with those of its
competitors constitutes bad faith. See Staples, Inc. v. Morgan,
D2004-0537 (WIPO Sept. 20, 2004) (the respondent's linking of the disputed
domain to the complainant's main competitor's web site constituted bad faith
use of the domain and warranted transfer).
Thus, Respondent's promotion of Complainant's competitors is a clear bad
faith use under Policy ¶ 4(b)(iv).
ii) Respondent was aware or should have been aware of
Complainant's prior use of the ANTHONY QUINN mark.
Registration and use in bad faith will be found if a respondent had
knowledge of a complainant's prior use of the mark when the respondent
registered the mark. Network
Solutions, LLC v. Wang, D2004-0675 (WIPO Oct. 25, 2004); Christian Dior
Couture S.A. v. Liage Int’l Inc., D2000-0098 (Mar. 24, 2000). Anthony Quinn is known internationally, and
especially in Greece, where Respondent resides. In light of Complainant's over ten years of use of the Mark,
including the distribution of products internationally in stores and over the
Internet, it is nearly impossible to conceive how Respondent did not have
knowledge of the ANTHONY QUINN trademark at the time of registration of the
Disputed Domain.
iii) Respondent's
attempt to sell the domain constitutes bad faith use.
Per the Policy ¶ 4(b)(i), bad faith will be found based upon evidence
that a domain name was registered with the intent to sell it to the owner of
related rights. Respondent has offered
to sell the Disputed Domain to Complainant for $5001. See, Exhibit J. The actions of Respondent are conclusive
evidence of bad faith under Policy ¶ 4(b)(i), and the intended culmination of
his initial bad faith acquisition and holding of the Domain (see supra).
For the forgoing reasons, Respondent’s registration of the Disputed
Domain was clearly in bad faith for the purposes of the ICANN Policy.
B. Respondent
Respondent has stated the following in its Response:
(a) Reply to Exhibit C of the complaint
Complainant applied to register a design and not the name "Anthony Quinn". The two trademarks were "Published for Opposition" on May 18, 2004 and on May 11, 2004. This date is after the registration of the <anthonyquinn.com> domain name that was made on April 13, 2003.
Complainant failed to point out that these two ITU (Intent To Use) trademarks have not been registered yet. Instead Complainant has filed for two extensions (six months each) as shown in the "PROSECUTION HISTORY." (Exhibit B of the response.)
One can file an ITU application for a mark one is planning to use, in order to save a spot in line to do pre-marketing development. The application will be examined and, if allowable, it will be allowed.
It will NOT proceed to registration, however, until a statement of use is submitted, showing a specimen of how the mark is used in commerce. The deadline can be extended after allowance generally as a matter of course up to a year. After that, the USPTO will want a reason why the mark has not been used.
Here, the fact that Complainant has filed two extensions shows that Complainant hasn't used the mark, because if she had been making actual use, then she would have filed her statement of use by now, instead of filing for the two extensions.
Anthony Quinn is only known in Greece as an actor. I had no knowledge at all of these trademarks, especially since these trademarks have never been used in commerce or in any other application.
For the reasons above I ask the Panel to find that these Trademark applications are irrelevant to this administrative proceeding.
(b) Reply to Exhibits F,G and H of the complaint
Anthony Quinn is only known in Greece as an actor. He has never been known in Greece, where I reside, as an artist or sculptor. Almost all of this material presented in these exhibits is taken from a Canadian website at <mytime.ca> that is NOT online at the moment. I have never visited the before mentioned website, not even after it was brought to my attention in the Complaint, as it is not currently operational. I was never aware that Anthony Quinn was an artist. I am only a fan of his work as an actor in the 200 movies he has appeared in.
(c) Reply to Exhibit I of the complaint
I own the <anthonyquinn.com> domain name without making any profit from it commercially or in any other way. I paid $5000 in 2003 to buy this domain and I am losing money every year by paying renewal fees for this domain name at my current registrar, Enom, Inc.
The links, shown in this exhibit, are not chosen or controlled by me as I haven't used the domain name yet. These links are provided by default by my registrar. Nearly all ICANN registrars are doing the same for domain names that are not used by the owner. Network Solutions (www.networksolutions.com) (one of Complainant's registrar) is doing the same. There are thousands of domain names in the same "inactive/coming soon" state. E.g. http://www.url.com (Exhibit F of the response)
Complainant has similar links in two of the domain names that she is not currently using. The domain names are <anthonyquinn.org> and <anthonyquinn.biz>. (Exhibit D of the response)
(d) Reply to Exhibit J of the complaint
I never asked Katherine Quinn to buy the <anthonyquinn.com> domain name. I clearly stated that I bought the <anthonyquinn.com> domain for $5000 from www.namewinner.com after winning an auction for the domain name and gave proof for that by email to Complainant. Complainant contacted me first about this domain name. It can be seen in this exhibit that in my first reply to the complainant I wrote "I am willing to give you this domain name but not for free as I paid a significant amount to win it at the auction." I asked Complainant to compensate me for this purchase. At $5001,I was losing money, as http://www.escrow.com (a secure online escrow service) would charge me $40 to send me the funds by International wire transfer.
Furthermore, Complainant does not show in the exhibits that she asked me proof that I paid $5000 and that I provided with that proof. After I sent her the proof by email at her email address, katherinequinn@fctvplus.net, she decided not to compensate me. The proof was an invoice send by Dotster, Inc. dated May 30, 2003. The $5001 was not an offer to sell but a request to compensate me for my out of pocket costs.
Please note that Complainant FAILED to present this particular email (Exhibit E of the response) showing proof for the amount I paid to buy the domain name from www.namewinner.com. Namewinner is a Dotster, Inc. company (www.dotster.com).
All these emails in this exhibit (together with Exhibit E of the response) show that my clear intention was only to get compensated for my out of pocket costs and not profit from selling this domain name. This domain has not been offered for sale to anyone.
Also, the following quote is from the Federal Rules of
Evidence, which applies to any federal lawsuit in the United States:
http://www.law.cornell.edu/mles/fre/mles.htrMRule408
Rule 408. Compromise and Offers to Compromise
Evidence of (1) furnishing or offering or promising to furnish, or (2) accepting or offering or promising to accept, a valuable consideration in compromising or attempting to compromise a claim which was disputed as to either validity or amount, is not admissible to prove liability for or invalidity of the claim or its amount. Evidence of conduct or statements made in compromise negotiations is likewise not admissible. This rule does not require the exclusion of any evidence otherwise discoverable merely because it is presented in the course of compromise negotiations. This rule also does not require exclusion when the evidence is offered for another purpose, such as proving bias or prejudice of a witness, negativing a contention of undue delay, or proving an effort to obstruct a criminal investigation or prosecution.
Response in compliance with the rules of procedure
According to the Rules Paragraph 4(a) the complainant has to prove that each of the following elements are present:
(i) my domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) I have no rights or legitimate interests in respect
of the domain name; and
(iii) my domain name has been registered and is being used in bad faith.
I will prove the contrary for each element;
(i) The domain name is identical to the name of Anthony Quinn but the complainant has no trademark or service mark. Please also refer to Reply to Exhibit C of the complaint.
Furthermore the complainant failed to note that "Common Law Trademark Rights" are subject to geographical constraints.
Geographic limitation of common law marks (www.bitlaw.com/trademark/common.html):
"Common law trademark rights are limited to the geographic area in which the mark is used. Thus, if a coffee blend is sold under the name BLASTER in California only, the trademark rights to that name exist only in California. If another coffee retailer begins to market a different blend in New York under the same name (assuming they had no knowledge of the California company), then there would be no trademark infringement. However, if the New York company attempted to sell their coffee blend nation-wide, they would discover that the California company's common law rights to the mark would prevent them from entering the California market."
There is no common law trademark in this case since common law rights require a secondary meaning in commerce and because common law rights extend only to the geographical areas that the party is known by that mark. Anthony Quinn might have been known as an artist in the United States or Canada but he was only known in Greece, where I reside, as an actor.
It should be noted that no evidence has been given of the name "Anthony Quinn" having acquired a secondary meaning in the geographical area that the respondent resides; in other words, a recognition that the name should be associated with activities beyond the primary activities of Anthony Quinn as an actor.
Almost all of the material presented in exhibits F, G and H of the complaint is taken from a Canadian website www.mytime.ca that is NOT online at the moment and that I have never visited before.
McCarthy on Trademarks and Unfair Competition (2nd Edition) at pages 578 and 579 states the U.S. position thus: "Personal names (surnames and first names) have been placed by the common law into that category of non-inherently distinctive terms which require proof of secondary meaning for protection. Thus, since personal names are not regarded as being inherently distinctive marks, they can be protected as trademarks only upon proof that through usage, they have acquired distinctiveness and secondary meaning that is, the public has come to recognize the personal name as a symbol which identifies and distinguishes the goods or services of only one seller." Turner v. Fahmi, D2002-0251 (WIPO July 4, 2002).
(ii) I have been a fan of Anthony Quinn since I was 10 years old and first saw him in Viva Zapata starring alongside Marlon Brando. I have never been "commonly known by the domain name" but that doesn't mean I don't have rights to the domain as I am a big fan of Anthony Quinn. I have watched most of the 200 movies he acted in.
It is my intention to put up a fan website and I am already preparing it. The website is also ready. A draft of the designed website is shown in Exhibit H of the response.
Quinn's signature character was Zorba, a zesty Greek peasant who teaches a stuffy British writer to find joy in the subtle intricacies of everyday life in Zorba the Greek (1964). This movie turned Anthony Quinn into a Greek forever. Based on the book by Nikos Kazantzakis (one of the most famous Greek authors) and filmed in black and white the movie documents a Greece that has almost completely disappeared. With an inspiring soundtrack by Mikis Theodorakis (the best work he has ever done) and the greatest performance of Anthony Quinn's career. The role won him an Oscar nomination and he reprised variations of Zorba in several subsequent roles. This movie made Anthony Quinn an icon in Greece and turned him into a Greek in the hearts of the Greek people.
Anthony Quinn is best known playing Greek characters in movies like The Guns of Navarone, The Greek Tycoon, The Richest Man in the World: The Aristotle Onassis Story and Zorba.
The fact that the name Anthony Quinn is used in the domain name does not in and of itself defeat the legitimate noncommercial fair use of the trademark in question. Springsteen v. Burgar, D2000-1532 (WIPO Jan. 25, 2001); Falwell v. Cohn, D2002-0184 (WIPO June 3, 2002); Estate of Jennings v. Submachine, D2001-1042 (WIPO Oct. 25, 2001).
The following decisions under the Policy are in support of my position that I am engaging in legitimate noncommercial or fair use the disputed domain name: Van Halen v. Morgan, D2000-1313 (WIPO Dec. 20, 2000), 2001 White Castle Way, Inc. v. Jacobs, D2004-0001 (WIPO Mar. 26, 2004), Estate of Jennings v. Submachine, D2001-1042 (WIPO Oct. 25, 2001), and Stuart v. Marty Stuart Fan Page, FA 192600 (Nat. Arb. Forum October 22, 2003).
(iii) There is no evidence of registration and use in bad faith according to the Rules Paragraph 4(b)(ii and iv):
(i) As I discussed in "Reply to Exhibit J of the complaint" earlier in my response I never asked Katherine Quinn to buy the <anthonyquinn.com> domain name. She contacted me first and then I asked the complainant to compensate me for the purchase of this domain name. After I gave her evidence for my documented out of pocket costs she refused to provide compensation.
Please note again that the complainant failed to present the email (Exhibit E of the response) that is evidence for my documented out of pocket costs.
(ii) I have not registered the domain name in order to prevent anyone from using the name Anthony Quinn.
Katherine Quinn owns the following domain names since: (Exhibit A of the response) <anthonyquinn.org> 13-Mar-2003, <anthonyquinn.biz> 13-Mar-2003 and <anthonyquinn.us> 13-Mar-2003.
Also, the Estate of Anthony Quinn (Anthony Quinn Studio) claims to own <anthonyquinn.net> (Exhibit C of the response) since 06-Dec-2002. Katherine Quinn claims to be "The Executrix of the Anthony Rudolfo Quinn Estate". So I will assume she owns <anthonyquinn.net>. The domain name <anthonyquinn.net> is currently operating as the official Anthony Quinn website.<