Carlos Santana v. Domain Sales a/k/a
########## This Domain Name is For Sale ##########
Claim
Number: FA0312000222189
Complainant is Carlos Santana, San Rafael, CA
(“Complainant”) represented by Eric W.
Doney, Esq., of Donahue Gallagher Woods LLP, 591 Redwood Highway, Suite 1200, Mill
Valley, CA 94941. Respondent is Domain Sales a/k/a ########## This
Domain is For Sale ##########, WEI 35-B, Da-Dong, Jung-gu 100-180, Korea
283-4937 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <carlossantana.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
The
undersigned certify 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.
Estella
Gold, Esq., Presiding Panelist, and Hon. Paul A. Dorf (ret.) and
Peter L. Michaelson, Esq. as Panelists.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on December 26, 2003; the Forum received a hard copy of the
Complaint, together with Exhibits A-M, on December 29, 2003.
On
January 2, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the Forum that the domain name <carlossantana.com> is
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com
has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com
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
January 7, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 27, 2004 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@carlossantana.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
February 12, 2004, pursuant to Complainant's request to have the dispute
decided by a three-member Panel, the Forum appointed Estella Gold, Esq. as
Presiding Panelist, and Hon. Paul A. Dorf (ret.) and Peter L. Michaelson, Esq.
as Panelists.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the disputed domain name be transferred from Respondent to
Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <carlossantana.com>
domain name is identical to Complainant’s CARLOS SANTANA mark.
2. Respondent does not have any rights or
legitimate interests in the <carlossantana.com> domain name.
3. Respondent registered and used the <carlossantana.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, who
was inducted into the Rock and Roll Hall of Fame in 1998, is prominently known
worldwide for musical talents and abilities.
Since 1969, Complainant has utilized the birth name and mark, CARLOS
SANTANA, to promote and sell 37 commercial music albums. Additionally, Complainant has contributed
his talents to 45 commercial releases by other artists, as well as having
appeared in eight motion pictures. All
told, Complainant has sold over 42.5 million record albums in the United States
under the CARLOS SANTANA mark.
Complainant has
also attained significant international prominence via live musical
performances. In 2003 alone,
Complainant performed for audiences in New Zealand, Australia, Germany, Italy,
Japan, China, England, Switzerland, Sweden, Finland, Norway, France, Spain, and
the Netherlands. Over 30 million people
have been entertained around the world by Complainant and an estimated 800
million international viewers observed Complainant perform during the National
Football League’s Super Bowl XXXVII Pregame Show.
Besides musical
recordings and live performances, Complainant also uses its CARLOS SANTANA mark
in conjunction with the promotion and sale of books, clothing, various
accessories and souvenirs.
Respondent
registered the disputed domain name, <carlossantana.com>, on March
13, 1999. The domain’s attached website
directs Internet users to <clubhongkong.com>, which displays the
following warning:
“NO
CHILDREN ALLOWED! You must be at least
18 years old to enter! Click here if
you are 18 years old or older!”
Upon entering
this website, the user is confronted with a series of pornographic links, as
well as a link to a domain registry that offers 667 different domain names for
sale with asking prices ranging from $1,000 to $50,000.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of the
Rules.
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.
Under the
Policy, a mark need not be registered by a governmental authority to be
afforded protection. See McCarthy on Trademarks and Unfair Competition,
§ 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in
scope” in that “the reference to a trademark or service mark ‘in which the
complainant has rights’ means that ownership of a registered mark is not
required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy); see also
British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”);
see also Great Plains Metromall,
LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the
Uniform Domain Name Dispute Resolution Policy does not require “that a trademark
be registered by a governmental authority for such rights to exist”).
However,
to be afforded protection, an identifying mark must be distinctive. A mark is defined as distinctive and capable
of being protected if it either (1) is inherently distinctive or (2) has
acquired distinctiveness through secondary meaning. See Restatement (Third)
of Unfair Competition § 13, pp. 37-38, and Comment a (Tent. Draft
No. 2, Mar. 23, 1990). Personal names,
such as CARLOS SANTANA, acquire secondary meaning if a substantial segment of
the public understands the designation as an indication of the source of a
product or service. See McCarthy on Trademarks and Unfair
Competition, § 13:2 (4th
ed. 2002) (stating that secondary meaning grows out
of long association of the name with the business, and thereby becomes the name
of the business as such; is acquired when the name and the business become
synonymous in the public mind; and submerges the primary meaning of the name as
a word identifying a person, in favor of its meaning as a word identifying that
business).
Names used in
conjunction with celebrity personalities have been consistently held under the
Policy to maintain common law trademark rights. See Roberts v. Boyd,
D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not
necessary and that the name “Julia Roberts” has sufficient secondary
association with Complainant that common law trademark rights exist); see
also Ciccone v. Parisi & madonna.com, D2000-0847 (WIPO Apr. 17, 2002); see
also Marino v. Video Images Prod., D2000-0598 (WIPO Aug. 2, 2000).
In
this case, the Panel concludes that Complainant has established secondary
meaning in its CARLOS SANTANA mark based on the extent of use, the quantity of
musical productions and performances and the qualitative nature therein,
evidenced by the induction into the Rock and Roll Hall of Fame. See Jagger
v. Hammerton, FA 95261
(Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights
in his famous name MICK JAGGER); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution
Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or
her own name as to give rise to trademark rights in that name at common law”); see
also Garnett v. Trap Block Technologies, FA 128073 (Nat. Arb. Forum Nov.
21, 2002) (holding that Complainant had accrued common law rights in the KEVIN
GARNETT mark).
The disputed domain name, <carlossantana.com>, is identical
to Complainant’s CARLOS SANTANA mark because the name incorporates the mark in
its entirety and merely affixes a top-level domain, which is irrelevant under
the Policy. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The
fact that a domain name incorporates a Complainant’s registered mark is
sufficient to establish identical or confusing similarity for purposes of the
Policy.”). See also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO
Feb. 26, 2000) (holding that confusing similarity under the Policy is decided
upon the inclusion of a trademark in the domain name); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); and Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding
that the addition of a top-level domain is without legal significance).
Therefore,
Complainant has established Policy ¶ 4(a)(i).
Having
failed to respond to the Complaint, the Panel may deduce from such failure that
Respondent lacks rights to and legitimate interests in the disputed domain name
and may accept Complainant’s assertions as true. See Pavillion Agency, Inc. v.
Greenhouse Agency Ltd.,
D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond
can be construed as an admission that they have no legitimate interest in the
domain names); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where Respondent fails to respond); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”).
No evidence has
been advanced to suggest that Respondent is, or ever has been, commonly known
by the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information,
and its failure to imply that Respondent is commonly known by the disputed
domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
Evidence has been advanced indicating that Respondent uses the disputed
domain name to market pornographic material.
Such use has consistently been held to be neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26,
2003) (stating that the “use of the disputed domain name in connection with
pornographic images and links tarnishes and dilutes [Complainant’s mark]” and
is evidence that Respondent had no rights or legitimate interests in the
disputed domain name); see also Isleworth Land Co. v. Lost In Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of
its domain name to link unsuspecting Internet traffic to an
adult-oriented website, containing images of scantily clad women in provocative
poses, did not constitute a bona fide offering of goods or services, nor a
noncommercial or fair use); see also McClatchy Mgmt. Servs., Inc. v.
Carrington a/k/a Party Night Inc., FA 155902 (Nat. Arb. Forum June 2, 2003)
(holding that Respondent’s use of the disputed domain names to divert Internet users
to a website featuring pornographic material, has been “consistently held” to
be neither a bona fide offering of goods or services, nor a legitimate
noncommercial or fair use).
Moreover, the
fact that Respondent incorporated Complainant’s mark in its entirety and used
the name to host material unrelated to the mark, naturally suggests that
Respondent was using the name in a parasitic fashion to attract Internet users
to its site, presumably for profit. Such use does not confer rights or
legitimate interests in the name under the Policy. See eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s
entire mark in infringing domain names makes it difficult to infer a legitimate
use"). See also WeddingChannel.com
Inc. v. Vasiliev a/k/a Free Domains Parking, FA 156716 (Nat. Arb. Forum
June 12, 2003) (finding that Respondent’s use of the disputed domain name
to redirect Internet users to websites unrelated to Complainant’s mark,
websites where Respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or services as
contemplated by the Policy); and U.S. Fran. Sys., Inc. v. Howell,
FA 152457 (Nat. Arb. Forum May 6, 2003) (holding
that Respondent’s use of Complainant’s mark and the goodwill surrounding that
mark as a means of attracting Internet users to an unrelated business was not a
bona fide offering of goods or services).
Therefore, Complainant has established Policy ¶ 4(a)(ii).
Respondent’s
registration of a domain name, which is identical to Complainant’s name and
mark, in order to provide pornographic material unrelated to Complainant
demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that
Respondent’s use of Complainant’s mark to post pornographic photographs and to
publicize hyperlinks to additional pornographic websites evidenced bad faith
use and registration of the domain name); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding
that absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith); Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000)
(finding bad faith where Respondent attracted users to his website for
commercial gain and linked his website to pornographic websites); and Wells
Fargo & Co. v. Party Night Inc. & Carrington, FA 144647 (Nat. Arb. Forum
Mar. 18, 2003) (finding that Respondent’s tarnishing
use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith).
Furthermore,
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(iv) because it intentionally attracted Internet traffic to its
website by creating a likelihood of confusion with Complainant’s mark for
commercial gain. See Perot Sys.
Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad
faith where the domain name in question is obviously connected with
Complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain); Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that
Respondent intentionally attempted to attract Internet users to his website for
commercial gain by creating a likelihood of confusion with Complainant’s mark
and offering the same services as Complainant via his website); and Scholastic Inc. v. Applied Software
Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under
Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to
resolve to a website offering similar services as Complainant into the same
market).
Therefore,
Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
unanimously concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <carlossantana.com> domain name be TRANSFERRED
from Respondent to Complainant.
__________________________________________________________________
Estella Gold, Esq., Presiding Panelist
Dated: February 24, 2004