The Complainant is International Driver Training, Inc. of Irving, Texas, United States of America, represented by The GigaLaw Firm, United States.
The Respondents are Web Integrations, LLC and Comedy Driving Inc., both of Houston, Texas, United States, represented by Arnold & Knobloch, L.L.P., United States.
The disputed domain names <comedydriving.com> and <comedyoffensivedriving.com> are registered with Tucows, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2009 by email and on February 6, 2009 in hardcopy. On February 2 and 6, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Names. On February 2 and 6, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent Web Integrations, LLC is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent Web Integrations, LLC of the Complaint, and the proceedings commenced February 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response March 1, 2009. A Response was filed with the Center on February 28, 2009 on behalf of both Web Integrations, LLC and Comedy Driving Inc. The Complainant and the Respondents submitted supplemental filings on March 6, 2009 and March 11, 2009.
The Center appointed W. Scott Blackmer, David Perkins and Diane Cabell as panelists in this matter on March 26, 2009. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a Texas business corporation that offers “defensive driving” classes. The classes are advertised for individuals who are learning to drive or who must complete an accredited driver safety course in order to obtain a reduction in automobile insurance premiums or dismissal of a recent citation for a traffic offense.
According to the Complaint, Richard Schiller began operating a “Comedy Defensive Driving School” in Texas in 1986, using local and nationally recognized stand-up comedians to teach the classes in an entertaining fashion. The business was incorporated in 1993, and it is licensed by the Texas Education Agency. According to the Complaint, Mr. Schiller remains the owner and president of the corporation, which is the Complainant in this proceeding and continues to do business as “Comedy Defensive Driving School”.
The Complainant currently offers classes at 63 locations (some of them comedy clubs) in 14 cities in Texas. It also offers courses online to individuals in other states that accept online driver safety training certificates, through its website at “www.comedydefensivedriving.com”. The Complaint states that in 2004 “the Comedy Defensive Driving School trained its 2 millionth student.” The Complaint also states that the school has been featured in newspaper stories and on national and local television and radio news programs in the United States and other countries, attaching a transcript of one such story that was broadcast on National Public Radio in the United States in December 1992. The Complainant's Supplemental Filing adds printouts of stories about the school in Dallas and Houston newspapers, dating from 1991 to 1998.
As confirmed by printouts from the trademark database operated by the United States Patent and Trademark Office (USPTO), the Complainant currently owns two registered United States trademarks that consist of the words COMEDY DEFENSIVE DRIVING SCHOOL in stylized form, Registration Nos. 1798916 and 1798917, both registered on October 12, 1993. The registrations expressly disclaim exclusive rights to the phrase “defensive driving school”.
In its Supplemental Filing, the Complainant claims as well a common law trademark, since 1986, in the words COMEDY DEFENSIVE DRIVING SCHOOL. The Complainant cites in support of this assertion the training of two million students by 2004 under that name, the news stories submitted with the Complaint and Supplemental Filing, and “significant sums of money” expended on advertising, online marketing, promotional mailings, and coupon programs.
The Complainant also attaches to its Supplemental Filing evidence of a Texas state trademark registration for COMEDY DEFENSIVE DRIVING SCHOOL, number 800176149, registered on March 31, 2003. The registrant is shown as Mr. Schiller.
The Response explains that another individual in Texas, Jeffrey Bitner, has taught “comedy oriented defensive driving courses” since “at least 1999”. Mr. Bitner's affidavit states that he discovered a “market niche” for a defensive driving course with “offensive” comedy “comedy that may tend to offend.” The affidavit recites that Mr. Bitner hired the Respondent Web Integrations, LLC to register the Domain Name <comedyoffensivedriving.com> and to develop and host a website associated with that Domain Name advertising Mr. Bitner's defensive driving courses. That Domain Name was registered on July 11, 2002 in the name of the Respondent Web Integrations, LLC.
According to the Response, Mr. Bitner formed the Respondent Comedy Driving Inc. as a Texas business corporation in September 2003. He remains the sole shareholder. Mr. Bitner's affidavit indicates that the Respondent Web Integrations, LLC registered the Domain Name <comedydriving.com> on December 2, 2003, on behalf of the newly formed Comedy Driving Inc.
Mr. Bitner's affidavit indicates that both Domain Names have been used to advertise his comedy-oriented defensive driving courses, which have trained “over 45,000 students in the last three years”. On January 14, 2004, the Respondent Comedy Driving Inc. filed certificates in Harris County, Texas (Houston) listing COMEDY DRIVING and COMEDY OFFENSIVE DRIVING as assumed names under which it does business. Mr. Bitner has been licensed by the Texas Education Agency to operate a driving safety school named “Comedy Offensive Driving” since April 2003, and the Complainant currently holds a license to operate a school and offer courses under the name Comedy Driving Inc.
The Domain Name <comedyoffensivedriving.com> currently resolves to the Respondent's website advertising its licensed driver safety courses offered in several Texas locations, while the Domain Name <comedydriving.com> resolves to the Respondent's website offering animated, online driver safety courses. The home pages of both websites are headed “Comedy Driving”.
The Complainant argues that the Domain Names are confusingly similar to its COMEDY DEFENSIVE DRIVING SCHOOL marks and cites several recent instances in which consumers have expressed confusion over source or affiliation.
The Complainant contends that the Respondents have no rights or legitimate interests in the Domain Names, not being known by those names or using them in connection with a bona fide offering of goods or services.
The Complainant posits the Respondents' knowledge of the Complainant's long-established marks, which the Respondents do not deny, and argues that the Domain Names were registered and used in a bad-faith attempt to disrupt the business of the Complainant and mislead Internet users for commercial gain.
The Respondents argue against confusing similarity because the Domain Names are comprised of generic words and the Complainant's rights extend only to the stylized text of its registered trademarks.
The Response states that the Respondent Comedy Driving Inc. has used the Domain Names for more than five years in connection with a bona fide offering of driver training services, without any intent to infringe on the Complainant's marks or mislead consumers. The Response asserts that the Respondent Comedy Driving Inc. is the beneficial owner of the Domain Names and uses corresponding names in its business.
The Response characterizes the Complainant's marks as weak and generic and points out that the Texas Education Agency licensed the Respondent's course and school under the name “Comedy Driving Inc.” despite the Complainant's existing license; the agency did not consider the names to be confusingly similar. Thus, the Respondents argue, they had no reason to believe that the Domain Names would engender confusion to their commercial advantage.
The Respondents observe that the Complaint fails to mention that the registered trademarks are not standard-character marks and include a disclaimer. They challenge the Complainant's claims concerning the number of students it has trained and the purported “renown” of the Complainant's marks. The Respondents argue that the Complaint was disingenuous in naming only the web hosting company that registered the Domain Names and ignoring the beneficial ownership of the Respondent Comedy Driving Inc., which does use names corresponding to the Domain Names in its business. The Respondents urge the Panel, therefore, to consider making a finding of reverse domain name hijacking by the Complainant.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Names, the Complainant must demonstrate each of the following:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Rules do not explicitly provide for supplemental filings. Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence.” Therefore, UDRP panels are reluctant to encourage delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.
In its Supplemental Filing, the Complainant responds to the charge of reverse domain name hijacking and new issues raised in the Response concerning the beneficial interest of Comedy Driving Inc., its motivations for directing that the Domain Names be registered on its behalf, and the relevance of the Texas Education Agency licensing the Respondent Comedy Driving Inc. with a name similar to the Complainant's trade name. The Panel considers it fair to accept the Complainant's filing to address these new facts and arguments.
However, the Complainant's Supplemental Filing also introduces new (and inadequately supported) claims for a common-law mark and a more recent state trademark registration obtained by the Complainant's principal in Texas. The Complainant was certainly aware of its own trademark claims and should have established these in the Complaint. In any event, it is not necessary for the Panel to discuss these additional trademark claims for purposes of this Decision.
The Panel also accepts the Respondents' Supplemental Filing for the limited purpose of replying to the Complainant's challenge to the inclusion of Comedy Driving Inc. as a party in this proceeding.
Mr. Bitner's affidavit and the content of the websites associated with the Domain Names indicate that they were registered on behalf of Comedy Driving Inc. and that Comedy Driving Inc. uses them in its business. Hence, the Panel accepts Comedy Driving Inc. as a Respondent in this proceeding, while retaining as well the web design and hosting company, Web Integrations, LLC, because it remains the registrant of record.
The Complainant indisputably holds registered marks consisting of the stylized words COMEDY DEFENSIVE DRIVING SCHOOL. These are relatively weak marks, since they are not standard-character marks, they are essentially descriptive, and they expressly disclaim exclusive rights to the phrase “defensive driving school”. The Panel notes that newspaper articles from the 1990s furnished by the Complainant refer to “comedy defensive driving courses” taught in California and elsewhere by other companies.
The Policy does not expressly address the application of paragraph 4(a)(i) to marks that include stylized or figurative elements. UDRP panels have found that domain names may be confusingly similar to the dominant textual elements of such marks, if they are sufficiently distinctive. See, e.g., Borges, S.A., Tanio, S.A.U. v. James English, WIPO Case No. D2007-0477. The Panel finds it unnecessary to make this determination in the present case, however, because of its disposition of the second element of the Complaint.
The Complainant asserts, and the Respondents do not deny, that the Complainant has not authorized the Respondent's use of a Domain Name identical to the Complainant's marks.
The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including the following:
“(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; ”
The Response does not suggest that the Respondent Web Integrations, LLC has any rights or legitimate interests in the Domain Names other than acting as a contractor on behalf of the Respondent Comedy Driving Inc.
The Respondent Comedy Driving Inc. claims to be using the Domain Names “in connection with a bona fide offering of goods and services”. It is undisputed that the Respondent Comedy Driving Inc. is in the business of offering driver safety education for a fee. The question is whether this is a bona fide offering; the Complainant suggests that it is not, because the intent is to infringe and exploit the Complainant's marks.
UDRP panels have often addressed this issue in the context of domain names comprised of dictionary words or descriptive phrases that are used for pay-per-click advertising portals. Many panels have found such use legitimate if the domain names were used for their generic or descriptive value, advertising relevant goods or services, but not if the evidence suggested that the domain names were selected and used instead for their trademark value. See, e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 (and cases cited therein).
Applying this reasoning to the present case, the Panel observes that the Domain Names are descriptive and that the websites associated with the Domain Names have offered relevant services. “Defensive driving” and even “comedy defensive driving” are commonly used terms, as indicated by the trademark disclaimers and the news articles submitted with the Complaint and the Complainant's Supplemental Filing. “Comedy driving” and “comedy offensive driving” appear to the Panel to be playful variations. In the face of sworn statements and evidence of the actual use of the names offline as well as in the Domain Names, this Panel finds insufficient evidence on the provided record to establish the probability that the Domain Names have been used for their trademark rather than generic value. Hence, the Complainant has not established in this proceeding that the Domain Names are not used in connection with a “bona fide” offering of services.
Moreover, the Respondent Comedy Driving Inc. has produced evidence that it has been known by names corresponding to the Domain Names. Comedy Driving Inc. was incorporated in Texas in 2003. In January 2004, it filed certificates of operation under the assumed names “Comedy Offensive Driving” and “Comedy Driving” in Harris County, Texas, where the company is located. These are precisely the names incorporated in the Domain Names. This Respondent also furnished evidence that it has been licensed by the Texas Education Agency since 2006 to operate a driver safety school called “Comedy Driving Inc.” and to offer driver safety courses with that title. The record shows in addition that Mr. Bitner, the Respondent's predecessor and sole shareholder, has been licensed since 2003 to operate a driver safety school under the name “Comedy Offensive Driving.” The websites associated with the Domain Names currently refer to the business as “Comedy Driving”. Thus, the available record indicates that the Complainant and Mr. Bitner have used both of these names in connection with driver safety classes and online driver education courses for several years.
To summarize, the relevant names and marks are all similar, and they all appear to be predominantly descriptive and not particularly distinctive:
Complainant's marks (stylized text): Comedy Defensive Driving School
Complainant's licensed course name Comedy Defensive Driving School
Complainant's domain name <comedydefensivedriving.com>
Respondents' domain name <comedyoffensivedriving.com>
Respondents' domain name <comedydriving.com>
Respondent's company name: Comedy Driving Inc.
Respondent's d/b/a Comedy Driving
Respondent's d/b/a Comedy Offensive Driving
Respondent's licensed course name Comedy Driving Inc.
Respondent's licensed school name Comedy Driving Inc.
Mr. Bitner's licensed school name Comedy Offensive Driving.
The Domain Names are similar to the Complainant's domain name, course name, and marks. But they also correspond to the Respondent's company name, registered trade names, and licensed course and school names. On the current record, the Panel cannot conclude that the disputed domain names were registered and used with the Complainant's trademark rights specifically in mind. The Panel is therefore unable to conclude on the present facts that the Respondents' use of the domain names does not give the Respondents a legitimate interest in those Domain Names. That is a matter that might be better addressed to a court, which is not an impractical alternative where the parties are located in the same state of the United States.
The Panel concludes that the second element of the Complaint has not been established.
In view of the Panel's finding on the second element of the Complaint, it is unnecessary to address the issue of bad faith registration and use.
The Respondents request a finding of Reverse Domain Name Hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides as follows:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Complainant has not prevailed, but the Panel is not persuaded on this record that the Complainant brought the Complaint in bad faith or primarily to harass the Respondents. The Complainant's alleged factual misstatements are debatable and in any event immaterial to the decision. The Complainant is entitled to make arguments concerning the strength of its marks and the Respondents' inferred motivations, even if the Panel does not agree with the Complainant's conclusions.
Accordingly, the Panel denies the Respondents' request for a finding of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer | |
David Perkins | Diana Cabell |
Dated: April 9, 2009