The Heirs of Bruce Lee and Concord Moon
LP v. Martin Eng
Claim Number: FA0506000491647
PARTIES
Complainant
is The Heirs of Bruce Lee and Concord
Moon LP (“Complainant”), represented by Jill M. Pietrini, of Manatt, Phelps & Phillips LLP, 11355 W. Olympic Blvd., Los Angeles,
CA 90064. Respondent is Martin Eng (“Respondent”), represented
by Sherry H. Flax, of Saul Ewing LLP, 100
South Charles Street, Baltimore, MD 21201.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <brucelee.com>,
registered with Bulkregister, Llc.
PANEL
The
undersigned certifies that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Joel
M. Grossman, David E. Sorkin and Terry F. Peppard as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 8, 2005.
On
June 6, 2005, Bulkregister, Llc. confirmed by e-mail to the National
Arbitration Forum that the domain name <brucelee.com>
is registered with Bulkregister, Llc. and that the Respondent is the current
registrant of the name. Bulkregister,
Llc. has verified that Respondent is bound by the Bulkregister, Llc.
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 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 11,
2005 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@brucelee.com by e-mail.
A
timely Response was received and determined to be complete on July 12, 2005.
Complainant
timely filed an Additional Submission under date of July 18, 2005, and
Respondent timely filed an Additional Submission under date of July 25, 2005.
On July 25, 2005, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Joel M. Grossman, David E. Sorkin and Terry F. Peppard as
Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends, among other things, that:
Complainant
consists of the heirs of Bruce Lee and the exclusive owners of all rights
connected with the name, likeness, persona, materials and writings of Mr. Lee,
a famous martial arts and entertainment figure, now deceased.
Complainant
has exclusive common law rights in the mark BRUCE LEE for entertainment
services relating to martial arts performances and associated acting and
writing, as well as for educational services relating to the dissemination of
information about and the teaching of martial arts and philosophy, and for
books, motion pictures and audio and video recordings touching these subjects,
as well as for related video games, clothing and other items.
This
mark has been used in commerce continuously since at least 1963.
In
April, 2000, Respondent offered to go into business with Complainant via the
web site associated with the subject domain name and to share with Complainant
20% of the revenues from sales of merchandise on that site.
Respondent
gains financially by the misleading diversion of consumers from the subject web
site to other commercial web sites operated by him for the marketing of such
things as photographic services, real estate and ballroom dancing instructional
videotapes.
The
same web site also offers for sale Bruce Lee memorabilia, including an
autographed photo of Mr. Lee and nanchuka fighting sticks purportedly used by
him.
B.
Respondent
Respondent
contends, among other things, that:
Respondent
has operated the web site associated with the subject domain name since 1995,
and, by virtue of that fact, he has acquired rights in that domain name.
Respondent
maintains links to other commercial web sites on the site associated with the
disputed domain name, but he does not operate that web site as a commercial
site.
The
site in question displays photos of Bruce Lee, a chronology of his life, images
of various martial arts paraphernalia used by him, a list of movies that
feature him, and text from a book authored by him.
This
constitutes nothing more than fair use of the mark claimed by Complainant.
Because
Respondent registered the subject domain name in 1995, while Complainant was
aware of Respondent’s use of the subject domain name at least as early as April
of 2000, when the associated web site became operative, but waited until June
of 2005 to file a complaint in this proceeding, the claim is barred by the
doctrine of laches.
C.
Additional Submissions
In
its Additional Submission, Complainant alleges, inter alia, that:
Linda
Lee Cadwell, the widow of Bruce Lee, and Shannon Lee Keasler, the daughter of
Bruce Lee, are the legitimate heirs of Bruce Lee and the principals of
Complainant Concord Moon LP.
Concord
Moon LP owns the rights to the BRUCE LEE mark, and that entity manages the
exclusive merchandise license for that mark.
In
2002 and 2004, Complainant attempted on three occasions to send to Respondent
cease and desist letters relating to his use of the subject domain name on his
web site.
In
his Additional submission, Respondent alleges, inter alia, that:
Respondent
did not have any knowledge of Complainant’s purported rights in the BRUCE LEE
mark when he registered the disputed domain name in 1995.
The
web site associated with the subject domain name contains a disclaimer which
reads as follows:
With
due respect to Bruce and his family, and fellow fans. This is a non-profit web site.
The fans’ products aren’t for sale if there are any, and I receive no
financial benefits before, now and whatsoever.
FINDINGS
a.
the domain name
registered by Respondent is identical or confusingly similar to a mark in which
Complainant has rights;
b.
the Respondent has
no rights or legitimate interests in respect of the domain name; and
c. the domain name has been registered and
is being used by Respondent in bad faith.
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:
(i) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(ii) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and
is being used in bad faith.
Respondent does not deny that the
disputed domain name is identical or confusingly similar to Complainant’s
claimed mark BRUCE LEE. Indeed he could
not conscionably do so, inasmuch as the mark and the domain name are each
comprised entirely of the personal name of Mr. Lee. The addition to the mark of the required generic top-level domain
“.com” does not affect the outcome of this question. See Pomellato S.p.A.
v. Tonetti, D2000-0493 (WIPO July 7, 2000)). Instead Respondent questions whether, given that the mark in
issue is not registered, Complainant has demonstrated ownership in the mark
sufficient for purposes of Policy ¶ 4(a)(i).
It may first
be noted in this connection that the Policy does not distinguish between
registered and unregistered (i.e.:
common law) marks in recognizing mark-holders’ rights under Policy ¶ 4(a)(i). See, e.g., British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000).
Likewise, Respondent does not dispute
that the mark BRUCE LEE has acquired secondary meaning, as asserted by
Complainant, by virtue of Mr. Lee’s worldwide fame in the fields of
entertainment and martial arts performance.
This is sufficient to establish a complainant’s rights under the Policy
notwithstanding the absence of mark registration. See, e.g., Julia Roberts v. Boyd, D2000-0210 (WIPO
May 29, 2000).
Therefore, and in light of the undisputed
evidence that the mark in question has been used continuously in commerce since
1963, as well as the proof submitted as to Complainant’s succession to the
rights in that mark, Complainant must be found to have satisfied its obligation
to show that it has rights in the mark.
Accordingly, Complainant has met the
proof requirements of Policy ¶ 4(a)(i).
In his defense under Policy ¶ 4(a)(ii), Respondent relies entirely upon the
assertion that his use of the disputed domain name constitutes legitimate
non-commercial fair use of the BRUCE LEE mark within the meaning of Policy ¶ 4(c)(iii).
However, while
Respondent’s web site contains some noncommercial content, it also includes
substantial commercial components. The
site both directly offers for sale Bruce Lee-related merchandise and displays
links to Respondent’s other commercial sites.
Because Respondent’s web site contains substantial commercial content,
it cannot be said that the site makes a “legitimate noncommercial or fair use
of the domain name” within the meaning of Policy
¶
4(c)(iii). See Aventis Pharmaceutical Products Inc. v.
Merrel Pharmaceuticals Inc., D2002-0343 (WIPO Jun. 12, 2002); see also Dixons Group Plc v. Abu Abdullah, D2000-1406 (WIPO Jan. 18, 2001).
Furthermore,
Respondent does not deny Complainant’s assertion that he once approached
Complainant with a proposition that they join together in the commercial
exploitation of the <brucelee.com>
web site.
For all of
these reasons, the Panel concludes that Respondent has no rights or legitimate
interests in respect of the disputed domain name.
Policy ¶ 4(a)(iii) requires Complainant to
prove, in support of its claim, both that Respondent has registered and that he
is using the disputed domain name in bad faith.
As to the first prong of this
requirement, there is ample reason to believe that Respondent knew, at the time
he registered the subject domain name, that Mr. Lee had heirs and that those
heirs had rights in the mark here in question.
Indeed the disclaimer displayed on the <brucelee.com> web site makes explicit reference to “Bruce
and his family.” There is also sound
reason to believe that Respondent intended from the outset to put the web site
associated with the subject domain name to commercial use. The concurrence of this knowledge and intent
demonstrates bad faith registration of the disputed domain name.
On the point of use of the domain name in
bad faith, Policy ¶ 4(b)(iv)
recites, as an example of bad faith use, a respondent’s intentional attempt, by
means of a contested domain name, to attract Internet users to a web site for
commercial gain by creating a likelihood of confusion with a complainant’s mark
as to its source, sponsorship, affiliation or endorsement. In the opinion of the Panel, the conduct of
Respondent in this instance provides a virtual model of the behavior at which
Policy ¶
4(b)(iv) is aimed.
Respondent has
appropriated the famous name of Mr. Lee and attached it to a web site which
functions principally to advance Respondent’s commercial interests. In this regard, Respondent’s conduct is, in
all material aspects, on all fours with the behavior of the respondent in Bogart, Inc. v. Humphrey Bogart Club, FA
162770 (Nat. Arb. Forum, Aug. 4, 2003).
There the panelist found that:
[b]y using the entirety of the mark in
the disputed domain name, there can be no question that Respondent intended to
create confusion as to the source, sponsorship, affiliation or endorsement of
his web site…. It is inevitable that … Internet users will mistakenly believe
that the owners of the rights in the…[mark-holder’s]…name have licensed or
authorized Respondent’s use of the disputed domain name, when in fact …[they]…
object to Respondent’s site…. This is precisely the kind of activity Policy ¶ 4(b)(iv) was designed to address.
We agree with the reasoning of Bogart, Inc., and we therefore conclude that
Respondent has registered and is using the subject domain name in bad faith.
Laches
In addition to the other arguments advanced
by Respondent, he asserts that Complainant has waited too long to commence this
proceeding, and that its claim is therefore barred by the doctrine of laches.
Some administrative panel decisions have
determined that laches is not an available defense in UDRP cases. See, e.g., E.W. Scripps Co. v.
Sinologic Ind., D2003-0447 (WIPO Jul. 1, 2003); see also Square Peg Interactive Inc. v. Naim
Interactive Inc., FA 209572 (Nat. Arb. Forum, Dec. 29, 2003). However, because Respondent has made no
effort in this proceeding to show any prejudice to him resulting from
Complainant’s delay in asserting its rights, we need not reach this
question. We therefore decline to
consider Respondent’s laches defense.
DECISION
All
three elements required to be proven under the ICANN Policy having been
established to its satisfaction, the Panel concludes that the relief requested
shall be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <brucelee.com>
domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist, Chair
Joel M. Grossman, Panelist
David E. Sorkin, Panelist
Dated: August 3, 2005