Elvis Presley Enterprises, Inc. v. Simon Higgs
Claim Number: FA1401001540234
Complainant is Elvis Presley Enterprises, Inc. (“Complainant”), represented by Gregori D. Mavronicolas of Mavronicolas Mueller & Dee LLP, New York, USA. Respondent is Simon Higgs (“Respondent”), represented by Michaela M. Barry, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <graceland.com> ("the Domain Name"), registered with Gandi SAS.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
Dawn Osborne of Palmer Biggs Legal as Chair, The Honourable Neil Anthony Brown QC and Sebastian Matthew White Hughes as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2014; the National Arbitration Forum received payment on January 22, 2014.
On January 24, 2014, Gandi SAS confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@graceland.com. Also on January 24, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 12, 2014.
On February 18, 2014 an Additional Submission compliant with Supplemental Rule 7 was submitted by the Complainant.
On February 22, 2014 an Additional Submission compliant with Supplemental Rule 7 was submitted by the Respondent.
On February 20, 2014 pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed <<Dawn Osborne of Palmer Biggs Legal as Chair, The Honourable Neil Anthony Brown QC and Sebastian Matthew White Hughes>> as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant's submissions can be summarised as follows:
The Complainant is the owner, inter alia, of registered trade marks in the USA for GRACELAND for a wide variety of goods and services. It operates a licensing program granting the right to manufacture and sell Elvis Presley related merchandise worldwide. It owns over 30 domain names containing GRACELAND including <graceland.org> and <gracelandtours.info>.
The Domain Name is identical to the Complainant's trade mark.
The Respondent has been involved with domain name registrations since the mid 1990s and is the owner of over 40 domain names. He has owned <graceland.com> since 1994 and to date has never used the registration for a legitimate purpose. Almost since its inception the website has shown bible quotes and advertisements for travel, tours and merchandise relating to Elvis Presley, specifically Graceland and related to goods and services covered by the Complainant's trade mark registrations.
Respondent is not commonly known by the Domain Name and has not acquired any trade mark rights in the name. It has no connection with the name Graceland and has no business attached to the Domain Name. It is not commonly known by the name Graceland and as such has no rights in the Domain Name. The Respondent is utilizing the Domain Name to unfairly capitalize on the intellectual property rights of the Complainant.
The Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant. It has not been used for a proper website having been parked for over 20 years. Passive holding is use of a domain name in bad faith. Further, the page is parked with a banner of Elvis Presley related advertisements on the top and the bottom. This is purposely designed to generate income and benefit from the intellectual property rights of the Complainant. Additionally, when contacted by the Complainant, the Respondent offered to sell the Domain Name to the Complainant for over $200,000 USD which is clearly well above the Respondent's documented out of pocket costs related to the Domain Name.
Respondent has registered the Domain Name to prevent the Complainant from reflecting its trademarks in a corresponding domain name.
Respondent is benefiting from the likelihood of confusion between the Complainant's trade marks and the Domain Name. Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the website. Customers who go to the site at the Domain Name thinking they are going to an authorised or official site are provided with a series of unauthorised links to services provided by third parties including links to the Complainant's competitors. The nature of the advertisements shows that the value of the site is perceived to be for its association with Graceland and Elvis Presley. GRACELAND is a famous mark and the Respondent must have known this at the time of registration and registered the Domain Name in bad faith and in breach of its registration agreement.
B. Respondent
The Respondent's submissions can be summarised as follows:
The Complainant is not the only entity to own GRACELAND as a registered trade mark. The Domain Name is identical to the Complainant's mark, but it is also identical to the other registrations for GRACELAND owned by other third parties.
There are also generic uses of the name such as the Respondent's use as a non-commercial Christian biblical site signifying a state of God's grace. Grace is derived from the Latin 'gratia' meaning God's favour. The Graceland Christian Church existed on the Graceland property prior to its purchase by the Respondent.
Graceland is associated with several churches, a university, an inn and conference centre, a chiropractor, a poem, an album, a TV show, a movie, a long term health provider, a funeral service, a cemetery, a financial newsletter, a vineyard, an equestrian centre, a portable building supplier, a collagen peel, a play, and jewellery, none of which are owned by the Complainant. Some uses predate the Complainant's use, e.g. the university used the name for over 90 years before the Complainant registered its trade marks.
Respondent has used the Domain Name as a Christian biblical site since his registration of the Domain Name in 1994 almost 20 years prior to this action. Respondent put considerable investment into the site to spread God's word. Graceland is made up of "Grace" as in the Lord's Grace and "land" as in the desire for the Lord's Grace to encompass the land. The website provides complete texts of the bible in English (protestant and catholic), Spanish, French, German, Italian, Dutch, Romanian, Hungarian, Korean, Chinese, Indonesian and Afrikaans as well as commentary, significant quotes and analysis.
Respondent denies that he has no rights to the Domain Name, having provided significant added value to the name he has cultivated for the past 19 years. Respondent questions the motivations of Complainant in attempting to reverse domain name hijack a name in continuous non-commercial use for almost 20 years. Respondent's use is of a religious nature and entirely non-commercial. Respondent noted that its site was not associated with the Complainant and in the past sought to provide links to the Complainant's sites. Respondent does allow Google Ads on his site hoping to defray some of the costs of hosting, however the Respondent attempted to block any keyword he reasonably thought to be associated with the Complainant's goods and services prior to filing of this action and painstakingly added to the list any new ads that were discovered that were related. The Respondent does not profit from the site nor does he wish to. If the ads were to change the demeanour of the website attached to the Domain Name to commercial rather than non-commercial, the remedy would be removal of the ads not transfer of the Domain Name. The Complainant has not proven that the Respondent has no legitimate rights.
Respondent administers various domains and has pursued various top-level domains as a reseller of the ICANN-approved registrar Gandi. As the holder of a Gandi reseller account Respondent obtains domain names for clients; the domains are not owned by Respondent, but managed on behalf of clients. The report provided by the Complainant does not allow the Respondent to comment with more specificity on the allegation that he is the owner of more than forty domain names. The Complainant has attempted to disparage the Respondent by painting him as a cybersquatter in order to negatively influence this panel. The Complainant has failed to prove circumstances proving a pattern of conduct.
Respondent has never offered the Domain Name for sale for any price to anyone. When Complainant offered the Respondent USD $200,000, Respondent declined indicating the Domain Name was not for sale. When Complainant pressed for a valuation of the Domain Name, Respondent provided an estimated value, but maintained it was not for sale at that or any price. The allegation that Respondent offered to lower the price in exchange for an ongoing revenue stream is false and further evidence of bullying and bad faith on the part of the Complainant.
There was little Internet traffic at the time the Domain Name was registered and browsers were in their infancy. The allegation that the Respondent knew that the Internet would take off and registered the Domain Name in case the Complainant came along and wanted it later is far-fetched.
Respondent is not a competitor of the Complainant.
Respondent has not used the Domain Name to attract for commercial gain Internet users to its site by creating a likelihood of confusion with the Complainant's trade mark.
The Complainant has not proven any of the required elements of bad faith necessary to prevail in this action.
Respondent asserts the defences of laches and/or estoppel as Complainant has had almost twenty years to bring action against the Defendant and did not do so until now.
C. Additional Submissions
Additional Submissions made by the Complainant can be summarised as follows:
Respondent does not challenge the Complainant's trade mark registrations or the fact that the Domain Name is identical to the Complainant's trade marks. The reference to other domain names containing "graceland" and added matter should have no bearing on these proceedings. <graceland.com> by itself is confusingly similar to the Complainant's trade mark rights.
Panels have generally declined to apply the doctrine of laches. The Complainant underwent a number of restructures which delayed taking action. The Respondent would not suffer undue prejudice by relinquishing the Domain Name or moving its content as most of its traffic is generated by use of the Complainant's goodwill. However Complainant would suffer undue prejudice if Respondent were allowed to continue to the prejudice of the Complainant's trademarks and their enforcement.
The Respondent's website has essentially remained the same since inception without updates or changes. The Respondent would not have needed to put much effort to produce its content and has not produced any evidence of monetary investment. At the time the name was registered some of the most famous cybersquatting cases took place. When the Complainant tried to purchase the name none of the links on the website supposed to go to bible passages were, in fact, working. The website only evolved into a working site with links and new content after the Complainant’s offer to purchase, an indication of bad faith.
One of the metadata keywords for the site was 'Graceland' which was clearly an attempt to disrupt the business of the Complainant by diverting traffic to sites which clearly compete with the Complainant.
Respondent does not substantiate how much money he has made from the site attached to the Domain Name. He does not explain his relationship with the hosting service or whether he receives pay-per-click income.
The Respondent does not prove when he tried to block advertisements related to Elvis and Graceland. Indeed as of February 2014 they were still appearing.
The Respondent's own resume declares he is a pioneer in domain names and DNS. He has not provided any evidence that he does not own multiple registrations as alleged.
The Respondent did offer to sell the Domain Name to the Complainant for $200,000 and showed an interest in a revenue stream. Why would he send an appraisal of its value if he was not interested in selling, especially as it supported a figure in the region of that requested? In fact the high value is only attributable to the intellectual property rights of the Complainant and the revenue from ads attributable to confusion with the Complainant's marks.
Additional Submissions made by the Respondent can be summarised as follows:
Previous panels have accepted laches as a defence. The delay exceeds any other previously cited case at 20 years. No valid excuse for the delay has been asserted or proven.
The Complainant has attempted to reverse domain name hijack the name through bad faith efforts of misrepresenting conversations with the Respondent and fabricating a claim that Respondent requested a revenue stream.
Respondent would be unduly prejudiced by a transfer. Revenue is not the sole measure on which prejudice can be drawn especially regarding a non-commercial site. Respondent does not have access to all its records over 20 years. Prejudice to the Complainant should not be a defence to laches.
If 'Graceland' were driving traffic the Complainant would not have parked its domain name <graceland.org>. The Complainant's site does not even appear in the top five search results for Graceland, save for a sponsored link. <graceland.org> contains pay-per-click links and Complainant has done nothing to use <graceland.org> to identify itself or any source for the products and services listed on that parking page.
By offering various texts of the bible, having done so since 1994 and the inception of the site the Respondent is making legitimate non-commercial and fair use of the Domain Name, without intent for commercial gain and without intent to misleadingly divert customers or to tarnish the Complainant's trade mark. There is nothing misleading about the source or sponsorship of the Respondent's site. An Internet user would not believe the Complainant sponsors or endorses the site. The site does not try to confuse customers into purchasing anything from the Respondent and it is clear the Respondent is the creator of the site. Respondent is not tarnishing the Complainant's mark by associating it with unwholesome activities, indeed the opposite, it provides truthful information, biblical text and commentary.
The Respondent hand coded at least 68 pages of html, one page for each book of the bible, a bible index page and the home page, a major effort amounting to hundreds of hours of time. At the time the Respondent charged $100 an hour for his time. This was not the sort of thing he would have done if he intended to sell, as the time could have been spent earning money from clients.
Links in the Wayback archive worked on the page showing time and place of Dwelling Place meetings. Links may or may not appear in any given Wayback snapshot and their evidentiary weight should be determined accordingly.
Respondent went through various incarnations of database development over the years requiring completely rebuilding the back end of the site from scratch around the same basic content and subsequently adding translations and additional content. The site has been constantly updated, upgraded and kept working over a twenty year period, although occasionally unavailable due to periodic maintenance.
The Respondent did see the value of Domain Names in the 1990s, but he was one of the earliest proponents of protecting trade mark holders from confusion through domain name use and designed several global solutions enabling trade mark holders to enjoy their protected marks on the Internet while allowing for entrepreneurial innovation to flourish. Respondent's emphasis was on Internet growth and stability through orderly expansion of the domain name space and he has been heavily involved in ICANN work to pursue the same. It is misguided for the Complainant to characterise him as a cybersquatter.
Pay-per-click advertising does not automatically create a commercial purpose. It is a stretch to claim that a religious site is somehow commercial because of the use of it to defray costs and not to make a profit.
It would have been more effective and appropriate to use the Google policy regarding Google Adwords than to use the ICANN Policy. It would have eliminated any use of the Complainant's marks in the Respondent's pay-per-click advertising.
Respondent never offered to sell the Domain Name at any price or requested anything in exchange for the Domain Name. Respondent provided a valuation to the Complainant to show the third-party value of the Domain Name so the Complainant would leave him in peace.
Respondent cannot identify the 44 names that the Complainant alleges he owns in order to be able to comment. Even if he owns them all this is not evidence of bad faith. Respondent does not have a pattern of registering names to deprive trade mark owners of their rights as alleged by the Complainant.
As Respondent has never contemplated using the Domain Name for a commercial purpose he could not have registered it for the purpose of disrupting the Complainant's business or any other business. Further since the Domain Name was registered prior to the UDRP this should not retrospectively be determined to be a factor.
Respondent has never at any time sought to cause any confusion between God's work and the life or legacy of Elvis Presley. Since Elvis was known as "The King" the phrase "King of Kings" on the Respondent's website distinguishes it and informs the visitor that the website does not originate from the Complainant or its predecessors in interest. Further Respondent is not using and has never used the Domain Name for commercial gain.
The Complainant is the owner, inter alia, of registered trade marks in the USA for GRACELAND for a wide variety of goods and services. It operates a licensing program granting the right to manufacture and sell Elvis Presley related merchandise worldwide. It owns over 30 domain names containing GRACELAND including <graceland.org> and <gracelandtours.info>.
The Domain Name was registered in 1994. It has been connected to a website and used to display extracts from the bible relating to 'grace,' as well as text such as "Elvis Graceland" which implies that it is an official site connected with Elvis Presley and advertisements. These advertisements have related to tours of Graceland in Memphis where Elvis Presley used to live, being offered by third-party enterprises that compete with the Complainant.
Paragraph 15(a) of 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 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.
The Domain Name consists of a name identical to GRACELAND plus the gTLD designation “.com.” See ABT Elecs., Inc. v. Ricks, FA 904239 (Nat Arb Forum Mar 27, 2007) ("addition of a generic top level domain ("gTLD") is irrelevant when conducting a Policy 4 (a)(i) analysis"). The Respondent admits that the Domain Name is identical to the Complainant's mark for the purposes of the Policy. This is not controversial and the Panel holds that the Complainant satisfies this first limb of the Policy.
Complainant maintains that the Respondent is not commonly known by the Domain Name, is not using it to make a bona fide offering of goods or services, and is not making a legitimate non-commercial or fair use of the name. The Complainant maintains that the content of the site has not altered significantly over twenty years of use. It maintains that the site is set up for commercial benefit, bearing advertisements which compete with the Complainant using the latter's intellectual property rights to make a profit, and that the primary purpose for registration of the name was to sell the Domain Name to the Complainant.
The Respondent denies this and contends that it uses the Domain Name to operate a legitimate, non-commercial Christian biblical site, that he has put considerable effort and investment into the site and that the revenue received from Google Ads on the site is used to defray expenses only and not to provide any profit. Respondent alleges that he has sought to block any advertisements that compete with the Complainant.
The Respondent alleges that "Graceland" is descriptive of the religious content on the site used to signify a state of God's grace and unrelated to the Complainant or Elvis Presley, similar to use of the name by various churches and a university which existed before the property where Elvis Presley resided was named. He also points to third-party registrations for trade marks containing "Graceland" which are not associated with the Complainant. He maintains that the site could not cause confusion with the Complainant.
Whilst the Panel has dismissed the Complainant's allegations that the Respondent has sought to sell the Domain Name to the Complainant whether for cash or in conjunction with a participation in revenue for lack of evidence (see below) the Complainant provides evidence of references on Respondent's website such as "Elvis Graceland" which imply that the website is an official Graceland site and also advertisements of services related to Elvis Presley and the property Graceland that have been displayed on the Respondent's site and suggests that the Respondent has used the site to promote goods and services in competition with those of the Complainant. It points out that the Respondent has not provided figures to demonstrate his claims of a non- profit site. The advertisements are very prominent and almost dominate the site where they appear. They appear to be a much more dynamic and vital part of the site than the biblical quotes which also appear on the site. The Respondent does not deny that he was aware of the significance of the name "Graceland" vis a vis Elvis Presley at the time of registration or that most people would view use of that name to probably mean the property where Elvis Presley lived rather than a website bearing biblical quotes. The Panel is of the opinion that the claims that the Respondent makes that his site is purely non-commercial and that the name was innocently adopted cannot, in the light of the evidence of the content of the site, be maintained. Nor is the usage fair as it does capitalise on the well-known significance of the name "Graceland" as the home of Elvis Presley, offering travel and touring services related to that property, and does not make clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Int’l Group Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) finding that the respondent's use of a confusingly similar domain name to advertise real estate services which competed with the complainant's business did not constitute a bona fide offering of goods and services. As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Complainant also alleges that the Respondent's use of the site is commercial and he is using it to make profit from advertisements which compete with the Complainant in a confusing manner. Despite the Respondent's claims that it has tried to block such advertisements, the Complainant has provided several examples of such advertisements which are in the opinion of the Panel a significant purpose of the site and are confusing in that visitors to the site might reasonably believe they were connected to or approved by the Complainant offering services such as 'visit Graceland in Memphis' and 'choose from two amazing Graceland packages.' Respondent does not deny knowledge of the Complainant at the time of registration or that despite some use of the name by others that most people would probably associate the name with the Graceland property and, therefore, the business of the Complainant or its predecessors. He maintains the use on the site is not confusing, but the Panel does not agree. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the website. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Nat. Arb Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use.
In view of the well-known meaning of the "Graceland" name and the obvious use of the site to promote competing services relating to the same the Panel also finds on the balance of probabilities that the Respondent registered the Domain Name to prevent the Complainant from reflecting its trademarks in a corresponding domain name, thereby disrupting Complainant’s business.
The Panel understands the arguments made by the Respondent about <graceland.org>, but the “.com” space is far more successful and the most widely recognised and used commercial space. The suffix '.org' is much less used and carries non-commercial connotations such that no adverse inferences can be made from the non development of this domain name by the Complainant.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <graceland.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne of Palmer Biggs Legal as Chair, The Honourable Neil Anthony Brown QC and Sebastian Matthew White Hughes, Panelists
Dated: March 6, 2014
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