Music Plus Television Network, Inc. v. Dennis Tzeng
Case No. D2007-1486
1. The Parties
Complainant is Music Plus Television Network, Inc., Los Angeles, California, United States of America, represented by the law firm Hawley Troxell Ennis & Hawley LLP, United States of America.
Respondent is Dennis Tzeng, Los Angeles, California, United States of America, represented by Chris Ayayo, United States of America.
2. The Domain Name and Registrar
The disputed domain name <musicplustv.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2007. On October 12, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On October 12, 2007, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 9, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 of the Complaint, and the proceedings commenced on October 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2007. The Response was filed with the Center on November 11, 2007.
The Center appointed Richard G. Lyon as the sole panelist in this matter on November 19, 2007. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On November 19, 2007, Complainant submitted two supplemental filings consisting of three additional affidavits in support of the Complaint. On November 20, 2007, the Panel, in the exercise of its jurisdiction under paragraph 12 of the Rules, requested an affidavit from Respondent, which Respondent submitted on November 22, 2007. These supplemental affidavits are discussed in Section 5, Parties’ Contentions.
4. Factual Background
This proceeding turns on disputed assertions by the parties on one factual issue in particular. This is discussed in the following two sections of the Panel’s opinion. Here the Panel sets out only undisputed facts.
In April 2004 Complainant filed a fictitious business name statement1 in Los Angeles County, California, for “Music Plus Television Network” and “MusicPlusTV.com”. This document was signed by its co-founders, Dennis Tzeng, Respondent in this proceeding, and Marc Anthony Cubas. Since its establishment Complainant has used the <musicplustv.com> domain name for a website at which, among other things, on-line consumers may purchase videos or recordings. Complainant continued this business at this website through mid-September 2007. After that date, because of the dispute discussed below, Complainant set up a new website at “www.vlaze.com”.
As noted, Respondent was a co-founder of Complainant. He continued as an employee of Complainant until August 2007. Respondent registered the disputed domain name in March 2004, in anticipation of the Complainant’s corporate formation. In October 2006 Complainant became the registrant of the disputed domain name. In August 2007 the disputed domain name was transferred to Respondent, who is now listed as its sole registrant.2 Respondent arranged this last transfer without Complainant’s knowledge or consent. Following his re-acquisition of the disputed domain name, Respondent caused traffic directed to that site to be diverted to a “coming soon” page entitled “incoming.tv.com”, a new venture that Respondent intends to pursue.
5. Parties’ Contentions
A. Complainant.
Complainant contends as follows:
Rights in a Mark. Complainant has common law trademark rights in MUSIC PLUS TV and MUSICPLUSTV.COM by virtue of its continuous use of these names in commerce since the company was formed in 2004. Complainant submits several Google® searches indicating that this name is commonly associated with Complainant.
Respondent lacks rights or legitimate interests in the disputed domain name.
In June 2006 Respondent signed an assignment of the disputed domain name to Complainant. Complainant submits a form of assignment of the disputed domain name from Mr. Cubas and Respondent to Complainant. This document, Annex 3 to the Complaint, is a form document entitled “INTERNET DOMAIN NAME ASSIGNMENT AGREEMENT,” and is said to have been signed by Mr. Cubas and Respondent before a California notary public. This document is referred to in this decision as the “Transfer Agreement.” Following this assignment of the disputed domain name to Complainant, Respondent lacks any rights or legitimate interest in it.
In its supplemental filings3 Complainant has submitted affidavits (a) from Mr. Cubas that he and Respondent signed the Transfer Agreement before the notary public, and (b) from the notary public who attested to the Transfer Agreement, stating that Respondent executed that document in his presence on the date specified.
Bad Faith. Respondents unilateral re-transfer of the disputed domain name from Complainant to himself, which Complainant describes as “fraudulent,” constitutes bad faith in registration and use of the disputed domain name, as does Respondent’s breach of the earlier Transfer Agreement. Using Complainant’s established name and common law mark to deflect traffic to Respondent’s new or forthcoming site is also bad faith under Paragraph 4(b)(iv) of the Policy.
B. Respondent
Respondent contends as follows:
Rights in a mark. Because Respondent assisted in founding Complainant, and because Respondent initially registered the disputed domain name in his own name, Respondent has rights or legitimate interests in it. These were never surrendered, as the 2006 assignment annexed to the Complaint is a forgery.
Rights or legitimate interests. These same facts give Respondent a right or legitimate interest in to the disputed domain name. Respondent has submitted his sworn statement categorically denying transfer of the disputed domain name to Complainant and asserting that Complainant forged the purported assignment. In support of this charge Respondent submits evidence that the notary who attested to Respondent’s signature is an employee of Mr. Cubas’s sister. Respondent in his sworn statement denies ever meeting this notary. Respondent further claims that forgery was a regular part of Complainant’s business. He cites four practices, each with reference to a document Respondent claims bears out his charges. Respondent also furnishes names of and contact information for individual third parties whom Respondent claims can attest to these practices.4
Bad Faith. Respondent denies any bad faith, asserting that Complainant’s misconduct is the only bad faith present in this proceeding. Respondent does confirm that it was he who arranged the re-transfer of the disputed domain name in August 2007, stating that he informed the registrar that the Transfer Agreement was fraudulent and that upon such notification the registrar retransferred the disputed domain name to Complainant.
6. Discussion and Findings
A. Identical or Confusingly Similar.
A common law mark may be used as the basis for a Policy proceeding if the complainant can show that an identifiable segment of the relevant public identifies that mark with it. E.g., James Good o/a Pornreports.com v. Mark Anderson,
WIPO Case No. D2004-0391; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.7. Complainant here has shown continuous use of MUSICPLUSTV and MUSICPLUSTV.COM to establish common law rights with evidence showing public identification of this phrase with Complainant sufficient to invoke the Policy. Furthermore, given his three years of employment by Complainant Respondent cannot deny knowledge of the mark and Complainant’s use of it. See Respiratorius AB v. Dr. Bengt Skogvall, WhoisGuard,
WIPO Case No. D2007-1447; Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist,
WIPO Case No. D2001-0653. Those rights reside in the company that provided the services, not in either or both of its founders, regardless of who actually registered the disputed domain name.
B. Rights or Legitimate Interests; Bad Faith.
Resolution of these two Policy elements turns on who’s lying and who’s telling the truth. If the Transfer Agreement is genuine, as Complainant’s principal Mr. Cubas asserts in sworn testimony, then Respondent at that time intentionally forwent any right or legitimate interest he may once have had in the disputed domain name, and his subsequent re-registration5 and use of the disputed domain name is obviously in bad faith. If the Transfer Agreement is forged, as Respondent asserts in his sworn statement, Respondent has set out a claim that he retains or should retain some ownership interest in the disputed domain name. While his initial registration of the disputed domain name, standing alone, might not give Respondent the right under applicable law to reclaim it from Complainant following the fraudulent (as Respondent would have it) transfer, in this proceeding it might suffice to establish a legitimate interest under paragraph 4(c)(ii) of the Policy. Certainly it would bring into this case issues of property law, contract law, and conversion that would put the matter beyond the Policy’s limited jurisdiction, requiring in this Panel’s view a decision denying the Complaint. See, e.g., Patrick Pawlicki v. The Plastiform Company,WIPO Case No. D2007-1206; Clover Gifts Inc. v. Airs Fragrance Products,
WIPO Case No. D2005 0776.
The Panel lacks the resources and access to testimony necessary to determine with any certainty whether or not the Transfer Agreement is genuine or forged. Except in perhaps the most obvious cases of manufactured documentary evidence where there may be implications for a finding under the UDRP, the assessment of a forgery claim is not a suitable matter for UDRP panels.6 A certainty is not required, for a serious factual dispute alone may defeat a complaint, as the Panel has little means of judging credibility or obtaining and probing third party evidence. Even when one party’s version of what occurred may be more likely than the other’s, a panel should hesitate to choose between genuinely contested factual presentations. ElectronicPartner Handel GmbH v. Antonio Loffredo, WIPO Case No. D2007-0380.
But a party’s allegations alone do not create a factual controversy that requires the Panel to defer to the courts. As in Greyson International, Inc. v. William Loncar,
WIPO Case No. D2003-0805, the Panel examines the objective evidence to decide if a genuine factual dispute exists, or whether one party’s allegations are unsupported by any objective evidence or even fabricated for purposes of thwarting a claim, see Linsky, supra n.3,
WIPO Case No. D2006-0706 (concurring opinion). A panel in proper circumstances may discount evidence, even sworn testimony, as self-serving or incredible based on other evidence in the case. Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino,
WIPO Case No. D2007-0416.
In undertaking this analysis here, it is important to note that while Complainant bears the burden of proof on each Policy element, Respondent, the party who raised the claim of forgery, has the burden of persuasion to sustain this charge. Respondent’s claim of forgery is in the nature of an affirmative defense in United States civil practice and comparable to establishing (for example) one of the safe harbors under paragraph 4(c) of the Policy, and it is Respondent who must persuade the Panel with competent evidence that the defense applies. While the Panel will not presume the Transfer Agreement to be genuine, its vitality is also backed by sworn statements. It is Respondent who must demonstrate that it is forged or otherwise suspect. Furthermore, the nature of Respondent’s allegations mandates very convincing proof. Forgery is a crime, usually considered more serious than perjury or false statements (themselves no laughing matter), a charge not to be made lightly and not to be accepted absent compelling evidence.7
The available objective evidence, and common sense too, point to Complainant’s version of events. On its face the Transfer Agreement appears to be a standard form for transfer, with appropriate specifics (domain name, transferee) included. As is common with such documents, the signatures are attested by a notary public. To the Panel’s eye the photocopy of Respondent’s signature on the Transfer Agreement and notary log appear quite similar to those on photocopies of two documents submitted by Respondent, the 2004 fictitious business certificate and his affidavit in this proceeding.
In 2004 Messrs. Cubas and Tzeng established a company and registered a corporate name and domain name that incorporates that company’s name and suggests its business objective. Two years later, after some business success, these two men jointly transferred the domain name from their individual ownership to that of the Company. The Whois database and contact information were changed accordingly. Both parties knew that this was the status quo at the time Respondent re-registered the disputed domain name just after he left Complainant’s employ. Respondent, as an employee and co-founder, almost certainly had access to company (Complainant) records indicating the Company’s ownership of the domain name.8 He certainly knew of Complainant’s continued use of it. Following transfer of the domain name to Complainant in June 2006 Respondent also certainly had access to his own account at the same registrar (to which he later added the disputed domain name) that then showed that he no longer owned it. He took no action for fourteen months, acting only after he parted ways with Complainant.
The one piece of evidence contemporaneous with the Transfer Agreement supports Complainant. It comes from a third party, the notary who attested the transfer agreement. This man’s log,9 which includes several other entries of unrelated attestations, includes the attestation of signatures of Messrs. Cubas and Tzeng on the date the transfer agreement was executed.
Respondent counters with little more than his word. The documentation that Respondent claims to show regular forgeries in the ordinary course of Complainant’s business is not easy even to understand, much less to see how it demonstrates forgery. On their face these documents show nothing irregular. Supplying names of third parties who will explain the documents or otherwise back up his charges adds little to Respondent’s argument; the Panel has no means of contacting these people and no brief to do so. General criticism of Mr. Cubas and the notary public related to the transfer agreement is supported here by Respondent’s word alone and Respondent’s assumption that because the notary public is employed by Mr. Cubas’s sister he has participated in criminal conduct.10 Such talk is cheap. Without real supporting evidence it becomes scurrilous. It is an insufficient basis for impeachment of the Transfer Agreement in the present proceeding.
The Panel repeats that it is not making a finding that the document in question is genuine and not forged; indeed it would be beyond the Panel’s jurisdiction to do so. Should these matters ever be at issue in litigation the fact-finder will have the benefit of a fully developed record, live testimony, and cross-examination, and may well reach a conclusion at odds with the foregoing. The Panel’s decision is not binding in subsequent litigation, and the Policy, paragraph 4(k), expressly provides Respondent a means of litigating these matters in a court of law. The Panel holds only that on the record in this administrative proceeding Complainant has shown that Respondent lacks rights or legitimate interests in the disputed domain name and registered and used it in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <musicplustv.com> be transferred to Complainant.
Richard G. Lyon Sole Panelist
Dated: November 28, 2007
1 Filing a fictitious name certificate is a common means of reserving a business name under the laws of many states of the United States of America.
2 All three registrations of the disputed domain name (two to Respondent, one to Complainant) were made at the same registrar, Dotster, Inc.
3 Strictly speaking (Rules, paragraph 12) filings in addition to the Complaint and Response may be made only upon the Panel’s request, but prevailing practice is to treat such a filing as a request for leave to submit. As a claim of forgery is not something that Complainant could reasonably have anticipated, see Edward G. Linsky v. Brian Valentine,
WIPO Case No. D2006-0706, the Panel allowed the supplemental affidavits in the exercise of its discretion.
4 For example, “This can be verified through former Music Plus Television employees [name and contact information] and [name and contact information].”
5 The registration at issue in this proceeding is Respondent’s August 2007 registration, accomplished by transferring ownership to him from Complainant. This was not a renewal of an existing registration, which does not ordinarily amount to a registration for the purpose of determining bad faith in a Policy proceeding (Overview, paragraph 3.7) but was rather a new registration in Respondent's name.
6 Yandex Technologies Ltd (1), Comptek International Ltd (2), Yandex Inc (3) v. Law Bureau of Moscow City Collegium of Advocates,
WIPO Case No. D2001-1486; see also concurring opinions in Linsky, supra n.3,
WIPO Case No. D2006-0706.
7 Compare Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith,
WIPO Case No. D2007-1033 (Panel and separate opinions) (Similar standard for respondent’s allegation of copyright piracy).
8 He was certainly able to submit company documents as attachments to the Response.
9 In most states of the United States of America a notary public is required by law to enter each attestation into a register that is available for inspection by the state. In California the notary log is also signed by the persons whose signatures were attested.
10 Compare Respondent’s meager evidence against the evidence offered to support the charge of forgery in the Linsky case, supra: two affidavits from experts; internal inconsistencies in the other party's written evidence; a signature and wire instruction suspicious on their face.
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