In two different decisions from the National Arbitration Forum, Improv West Associates, d/b/a Improv Comedy Clubs, was not laughing its way to winning some domain names. Improv West Associates maintain web sites at www.improv2.com, www.improv.com and www.improvclubs.com.
The first dispute was Improv West Associates v. Acimasiz Cocuq (Nat. Arb. Forum 1257098, May 12, 2009) where a single member panel was faced with a dispute over the domain www.improvcomedyclubs.com. In the decision, Complainant claims to have used the IMPROV COMEDY CLUB mark since 1963 in connection with live entertainment by stand-up comedians. The Panel noted that Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Respondent failed to respond to the Complaint. Normally, a Panel will review all three elements in the decision, but this Panel only discussed Complainant’s failure of the third element, bad faith. The Panel explained:
Complainant argues that Respondent has registered and used the disputed domain name in bad faith in that Respondent solely obtained the disputed domain name to sell it to Complainant for value or prevent Complainant from using the disputed domain name. Noticeably missing from the Complaint, however, is any corroborating or supporting evidence to verify this claim. The Complaint must provide more than legal assertions and conclusions of bad faith registration and use in order to qualify for its desired remedy under the Policy, and Complainant has failed in this task. Thus, the Panel cannot, and will not, make a finding of bad faith registration and use on the merits of the case under Policy ¶ 4(a)(iii).
Therefore, the Panel DENIED Complainant’s request for transfer.
The second dispute was Improv West Associates v. Not Applicable a/k/a Kenneth Arnold (Nat. Arb. Forum 1256834, May 13, 2009) where a single member Panel was faced with a dispute over the domain www.improvcomedyclub.com. Unlike the first case above, this Respondent put up a fight and the Panel provided an in-depth analysis of the three UDRP ICANN elements of proof and the parties’ claims.
Although most Panels normally only address the three elements stated above, this Panel created a separate section addressing “rights in a mark” for Complainant. The Panel noted that Complainant does not have any registered marks for IMPROV COMEDY CLUB, and only recently filed trademark applications for IMPROV. Those applications remain pending, and the Panel explained the under the Policy trademark applications do not give rise to trademark rights. Therefore, the Panel was faced with determining whether Complainant had acquired sufficient common law rights. Interestingly, Complainant’s counsel submitted his own affidavit attesting to 25 years of personal experiences attending the IMPROV COMEDY CLUB. Weighing that “evidence” the Panel explained:
Ignoring those parts of the affidavit [by counsel] expressing opinions about the very issue to be determined, the Panel is prepared to accept, for the purposes of this administrative proceeding and despite the slender evidence which that affidavit provides, that Complainant has, through use, acquired common law rights in the mark IMPROV COMEDY CLUB. The Panel is not satisfied that the same can be said in relation to the word IMPROV.
The panel next moved into the full three element analysis, where it quickly agreed that the disputed domain was identical or confusingly similar to Complainant’s mark. Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel explained as follows:
Respondent has provided no evidence to support his contention that he intends to use the domain name for the improvised comedy club services it describes or at all. He does not even identify the other domain name under which he claims to have operated a business with which the present domain name is claimed to be associated….In the absence of any evidence of use or demonstrable preparations to use the domain name since it was registered in 1999, the Panel finds Respondent has no rights or legitimate interests in the domain name.
The Panel then moved to the last element, whether the Respondent registered and used the domain in bad faith. Complainant sought an inference from the Panel that bad faith occurred as a result of a finding of no rights or legitimate interests. The Panel rejected this proposition. The Complainant also alleged that Respondent’s lack of use of the domain for 10 years also inferred bad faith in line with the famous “passive holding” case of Telstra Corp. Limited v. Nuclear Marshmallows (D2000-00003 WIPO Feb. 18, 2000). The Panel disagreed with this proposition and stated as follows:
The present case, however, is on all fours with Alberto-Culver Co. v. Pritpal Singh Channa, D2002-0757 (WIPO Oct. 7, 2002), in which the domain names were <staticguard.com> and <staticguards.com>. The learned panelist said:
…Complainant relies on the idea of “passive holding” as established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This case established the proposition that doing nothing with a domain name may amount to bad faith registration and use. However the Panelist in that case was extremely careful to note that this principle does not apply to every example of passive holding. The specific circumstances in that case included false name information in the WHOIS record, false address information, failing to respond to the Complaint, an extremely famous mark within the geographical region of both Complainant and Respondent, and a mark that was entirely invented. This case has none of those features: Respondent has provided his name, and his address, and has responded within time to the Complaint. Complainant has provided no evidence that its mark is so well known that any registration (without use) of a domain name cannot help but lead to the conclusion that Respondent registered with male fides. And, unlike the mark in Telstra, the mark and the domain names here are the concatenation of two generic English words. I conclude therefore that the Telstra passive holding principle does not apply to the facts in this case.
The same words apply here with equal force, the only exception being that the name under which the domain name was registered was “Not Applicable.” The name and address of Respondent, Kenneth Arnold, were disclosed as the Administrative Contact and Technical Contact. Accordingly, registration in the name “Not Applicable” is insufficient to distinguish this case from Alberto-Culver Co., supra and insufficient to attract the “passive use” doctrine of Telstra Corp. Ltd., supra.
Ultimately, the Panel found that Complainant failed to establish the third element and DENIED the request for transfer. The Respondent also made a request for a finding of reverse domain hijacking, which the Panel rejected.
