DECISION

Pearl Jam, A General Partnership v.

Streaming Digital Media Dot Com c/o Brian J. Spencer

Claim Number: FA0402000235831

PARTIES

Complainant is Pearl Jam, A General Partnership (“Complainant”), represented by Gerard A. Taylor, of Stokes Lawrence, P.S., 800 Fifth Avenue, Suite 4000, Seattle, WA 98104. Respondent is Streaming Digital Media Dot Com c/o Brian J. Spencer (“Respondent”), P.O. Box 9043, London, Ontario N6E 3P3, Canada. Respondent is represented by Brian J. Spencer.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pearljamlive.com>, registered with Dotster.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Robert A. Fashler as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 5, 2004; the Forum received a hard copy of the Complaint on February 9, 2004.

On February 6, 2004, Dotster confirmed by e-mail to the Forum that the domain name <pearljamlive.com> is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 February 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 2, 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@pearljamlive.com by e-mail.

A timely Response was received and determined to be complete on March 1, 2004.

A timely Supplemental Submission was filed by Complainant (“Complaint’s Supplemental Submission”) on March 5, 2004, in accordance with the Forum’s Supplemental Rule No. 7.

A timely Supplemental Submission was filed by Respondent (“Respondent’s Supplement Submission”), in accordance with the Forum’s Supplement Rule No. 7.

On March 15, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Robert A. Fashler as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant’s Primary Submissions

Complainant asserts that:

(a) Complainant:

(i) is one of the most popular and widely-known American music bands in the world,

(ii) has sold over 30 million albums and performed in a series of sold-out concert tours all over the world,

(iii) has been nominated for, and has won many music industry awards;

(b) Complainant has performed and sold albums under the trademark PEARL JAM (the “Trademark”) since at least 1991;

(c) Complainant has registered the Trademark in the United States, Canada, the European Community, Mexico, Australia and New Zealand;

(d) Complainant offers products and services through its website located at <pearljam.com>.

(e) The Domain Name is substantially identical and confusingly similar to the Trademark;

(f) Respondent has no rights or legitimate interests in respect of the Domain Name because:

(i) the words “pearl jam” has no common meaning other than as an indicator of the source of Complainant’s products and services,

(ii) Respondent registered the Domain name after the Trademark became known throughout the world, and more than nine years after Complainant began using the Trademark,

(iii) Respondent’s website offers downloads of Complainant’s concerts (initially, Complaint alleged that these downloads were illegal and unauthorized, but Complainant’s Supplemental Submission softened that allegation considerably),

(iv) Respondent has no legitimate trademark or service mark rights in the Domain Name,

(v) Respondent is not authorized to use the Trademark;

(vi) Respondent selected the Domain Name to generate business and divert traffic to its website for financial gain, and

(vii) Respondent is using the Domain Name to redirect users to a website that falsely suggests an association between Respondent and Complainant;

(g) Respondent registered the Domain Name in bad faith because:

(i) the Trademark is known worldwide,

(ii) Complainant’s website, which is accessed via the domain name <pearljam.com>, is widely known and heavily used,

(iii) Respondent registered the Domain Name to divert traffic and attract consumers to its website for commercial gain by creating a likelihood of confusion with the Trademark,

(iv) Respondent’s website offers downloads of Complainant’s concerts,

(v) Respondent has attempted to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website,

(vi) Respondent has constructive or actual notice of the Trademark because the Trademark is distinctive and well-known; and

(vii) Consumers are likely to believe that Respondent’s website is authorized or endorsed by Complainant.

B. Respondent’s Primary Submissions

Respondent admits that the Domain Name is “substantially identical” to the Trademark

Respondent asserts that:

(a) Respondent has legitimate rights to use the Domain Name because Respondent is a long-standing fan who created a non-commercial website as a tribute to Complainant;

(b) Respondent has attended many of Complainant’s shows and is a paid-up member of Complainant’s fan club;

(c) Respondent’s website is dedicated to Complainant’s music and fans, and is intended to increase Complainant’s popularity;

(d) Respondent’s website is profit-free and is not commercial;

(e) There are no commercial links or commercial popup advertisements on Respondent’s website;

(f) Respondent’s website contains a “links” section, the first link of which is Complainant’s website, which is identified as the only official website;

(g) Complainant has publicly stated that fans are permitted to record any of Complainant’s shows and to trade full live concerts or songs online;

(h) Respondent allows any member of the public to access and download recordings of Complainant’s live shows from Respondent’s website using streaming technology in accordance with the public authorization given by Complainant,

(i) Respondent has not engaged in a pattern of registering domain names and has never sought to sell the Domain Name;

(j) Respondent has not mentioned this dispute on its website;

(k) The similarity between the Domain Name and the Trademark is necessary for the site to function as a fan site;

(l) Respondent has acted in good faith in all its dealings with Complainant, which has been recognized by Complainant by sending Respondent backstage passes and autographs.

C. Complainant’s Supplemental Submission

Complainant further asserts that:

(a) Complainant’s policies regarding taping and distributing Complainant’s shows are irrelevant because Respondent can conduct such activities in association with domain names that are not confusing with the Trademark;

(b) Respondent has no relationship with Complainant that would allow Respondent to use the Trademark as part of the Domain Name;

(c) The fact that Respondent is a good fan does not mean Respondent registered and is using the Domain Name in good faith; and

(d) The fact that Respondent’s website does not make a profit does not disprove the site’s commercial value.

D. Respondent’s Supplemental Submission

Respondent further asserts that:

(a) Complainant’s management sent Respondent emails praising Respondent’s website.

(b) The Parties entered into settlement negotiations, part of which involved an offer by Complainant to license Respondent’s use of the Domain Name.

FINDINGS

The Domain Name is confusingly similar to a trademark or service mark in which Complainant has rights.

Complainant has not proven that Respondent has no rights or legitimate interests in respect of the Domain Name.

Complainant has not proven that the Domain Name was registered or is being used by Respondent in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;

(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.

Preliminary Issue: Without Prejudice Communications

Respondent has sought to tender into evidence various communications between Respondent and Complainant. None of these communications were marked “without prejudice”. Nonetheless, the communications were all made during settlement negotiations.

There is a strong policy reason for not considering such communications as part of these proceedings. The Parties should be encouraged to settle disputes amicably without fear that their good faith negotiations will be used against them.

However, some panels have noted good reasons for considering “without prejudice” communications during the course of UDRP proceedings. For a comprehensive list of such reasons see The Vanguard Group, Inc. v. Emilio Sa, D2001-1453 (WIPO, April 7, 2002).

In the present case it is not necessary to decide whether communications between the parties directed to settlement are admissible because the Panel’s decision does not turn on those communications.

Confusingly Similar

Complainant has established rights in the Trademark by virtue of registering the mark in Canada, the United States and other countries.

The Domain Name is confusingly similar to the Trademark. The addition of the word “live” does not significantly distinguish the domain name from the Trademark. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000), in which the Panel found that <shopllbean.com> was confusingly similar to Complainant’s registered trademark L.L.BEAN.

Respondent has not disputed Complainant’s trademark rights or the fact that the Domain Name is substantially identical and confusingly similar to the Trademark. On the contrary, Respondent admits that the Domain Name is substantially identical to the Trademark.

Complainant has satisfied the requirements of Paragraph 4(i) of the Policy.

Rights or Legitimate Interests

It is difficult for any complainant to prove that a respondent has no rights or legitimate interests in a domain name. For the most part, that information is known to and within the control of the respondent. Accordingly, the burden on a complainant in respect of this element must be relatively light. Nonetheless, a complainant still bears the burden of proving the presence of this element.

In this case, Complainant must provide some evidence tending to show that Respondent has no rights or legitimate interests in the Domain Name. Complainant has made the following assertions:

(a) the words “Pearl Jam” have no common meaning in the Internet context other than as an indicator of the source of Complainant’s services and products;

(b) Complainant has offered its services and products in connection with its well-known PEARL JAM marks and domain name since at least as early as November, 1991, and Respondent registered the Domain Name more than nine years after Complainant began using its PEARL JAM marks and domain name;

(d) Respondent has no relationship to Complainant and is not authorized to use the Trademark;

(e) Respondent has selected the Domain Name for the purpose of generating business and diverting traffic to a commercial website by capitalizing on the public’s familiarity with the Trademark;

(f) Respondent is using the Domain Name to redirect Internet users to a website that falsely suggests an association between Respondent and Complainant;

(g) Respondent has taken advantage of the Trademark by diverting Internet users to its own commercial website for financial gain.

The Panel accepts Complainant’s assertions about Complainant’s own use of the Trademark, the renown of the Trademark, and the fact that Complainant has not authorized Respondent to incorporate the Trademark within the Domain Name. However, the Panel finds that Complainant has not provided any factual basis, other than mere assertions, from which the Panel can conclude the truth of any of the other allegations made by Complainant in relation to Paragraph 4(a)(ii) of the Policy.

In the Panel’s view, it is not sufficient for Complainant merely to point to the existence and reputation of its own trademarks and to the fact that Complainant has not authorized the activities of Respondent. The existence of a complainant’s trademark rights is the subject of Paragraph 4(a)(i) of the Policy. The fact that a complainant has not authorized Respondent’s registration and use of a domain name is really implicit in most proceedings brought under the Policy.

Paragraph 4(a)(ii) of the Policy acknowledges that a respondent may have rights or legitimate interests in a domain name that are distinct from a complainant’s legal monopoly in a particular trademark. Marks and names can co-exist with identical and confusingly similar registered trademarks in certain circumstances.

As well, not all uses of a registered trademark by another will constitute infringement. Moreover, the Policy is not designed to police infringement. It is a summary procedure directed to certain specific circumstances. In this Panel’s view, paragraph 4(a)(ii) of the Policy would be rendered meaningless if a complainant could satisfy its requirements merely by repeating what it has already proven in relation to Paragraph 4(a)(i) and pointing to respondent’s lack of authorization from the complainant. That approach would presume that it is impossible for a respondent to have any rights or legitimate interests in a domain name that is identical or confusingly similar to an enforceable trademark other than by way of license from the owner of that trademark.

Complainant’s evidentiary burden in relation to paragraph 4(a)(ii) of the Policy is relatively light and can be satisfied with minimal effort, such as conducting relevant searches. In the absence of some additional evidence on point, the Panel cannot find that Complainant has proven its case under paragraph 4(a)(ii) of the Policy.

As well, Respondent asserts that he has rights and legitimate interests in the Domain Name as contemplated in Paragraph 4(c)(iii) of the Policy because he is making a legitimate noncommercial or fair use of the Domain name without intent for commercial gain, without intent to misleadingly divert consumers and without intent to tarnish the Trademark. Respondent bears the burden of establishing his rights and legitimate interests under this Paragraph of the Policy.

The first issue to consider in relation to Respondent’s reliance on Paragraph 4(c)(iii) of the Policy is whether Respondent is making a “noncommercial” use of the Domain Name without intent for commercial gain. Complainant originally claimed that Respondent’s activities were commercial in nature. However, Complainant softened this assertion considerably after receiving the Response. Complainant’s Supplemental Submission appears to concede that Respondent use is not commercial in the usual sense. Instead, Complainant suggests that Respondent’s website nonetheless has commercial value and asserts that Respondent bears the burden of disproving that commercial value.

In support of that assertion, Complainant refers to Universal City Studios, Inc. v. Burns, D2001-0784 (WIPO Oct. 1, 2001). However, that case does not support Complainant’s assertion. There, the Panel ruled that the complainant had demonstrated sufficient active commercial activity to satisfy its burden. The Panel found that the respondent was attempting to generate revenues through the sale of a book. The Panel noted that the sale and distribution of the book was being made at cost but concluded that the failure to make a profit from sales of the book was not sufficient to avoid the commercial nature of the activity.

In this case, Respondent is not purporting to sell any product or service or to generate any revenues at all. Accordingly, the Panel is of the view that Respondent’s evidence and Complainant’s admissions support the conclusion that Respondent is making a noncommercial use of the Domain Name.

The next point that Respondent must prove is that his noncommercial use of the Domain Name is “legitimate”. Other UDRP panels have ruled that operation of a noncommercial fan site can constitute a legitimate noncommercial or fair use of a domain name. See Halen v. Morgan, D2000-1313 (WIPO Dec. 20, 2000); see also Springsteen v. Burgur, D2000-1532 (WIPO Jan. 25, 2001); see also Smith v. DNS Research, Inc., FA 220007 (Nat. Arb. Forum Feb. 21, 2004).

There appears to be nothing illegitimate about the content of Respondent’s site. Complainant initially claimed that Respondent was offering illegal and unauthorized downloads of concerts on its site. However, the evidence submitted by Respondent, and not denied by Complainant, shows that Complainant has publicly authorized members of the public to make copies of Complainant’s live shows and to trade them online. Complainant has provided no other evidence regarding such allegedly illegal and unauthorized downloads. To the contrary, Complainant’s Supplemental Submission confirms that:

“Complainant does not seek to bar Respondent from offering free live music in streaming format (which could be offered under a different domain name), but rather seeks to bar unauthorized use of the PEARL JAM trademark within his domain name.”

Complainant says that Respondent could easily operate a website using any other domain name that does not incorporate the Trademark. However, if that argument were correct, paragraph 4(c)(iii) of the Policy would have little purpose. As noted by other panelists, the purpose of the UDRP is not to prevent registrants from incorporating third parties’ trademarks into their domain names. Rather, the Policy is only intended to combat abusive, bad faith cybersquatting. See Van Halen, supra.

The Panel is of the view that Respondent’s evidence and Complainant’s admissions support the conclusion that Respondent’s noncommercial use of the Domain Name in association with Respondent’s fan site is “legitimate”.

The final question to be determined in connection with Paragraph 4(c)(iii) of the Policy is whether Respondent’s use of the Domain Name is being carried on without intent to misleadingly divert consumers or tarnish the Trademark.

Respondent claims to be a fan of Complainant. This claim is confirmed by Complainant’s Supplemental Submission where Complainant says, inter alia:

“Complainant appreciates and respects its fans, especially Respondent Brian. J. Spencer…”

Respondent says that his site is dedicated to promoting Complainant. Complainant does not deny this. Furthermore, Respondent claims he has included Complainant’s website at the top of his “links” page and has clearly identified Complainant’s site as the only authorized Pearl Jam website. Complainant does not deny this. Respondent does not compete in business with Complainant. There is no evidence that anything about Respondent’s website tarnishes the Trademark.

Respondent does not directly address the issue of whether or not its use of the Domain Name is without intent to misleadingly divert consumers in the context of Paragraph 4(c)(iii) of the Policy. However, Respondent does distinguish his activities from those of cybersquatters who have been found to be engaging in “blatant attempts to entrap Internet users”. Respondent says that a GOOGLE search he conducted using the words “Pearl Jam” returned 1,430,000 hits. Of those hits, Respondent says that his own website appeared at position No.323 and that Complainant’s website appeared at position No.1. Respondent says that if he intended to “redirect” or “divert” Internet users away from Complainant, or to falsely suggest association with or capitalize in some way on the public’s familiarity with Complainant, Respondent would have elected to alter its coding and design in order to increase its search engine ranking.

Although Respondent’s submissions on this point are not particularly compelling, they constitute some evidence of Respondent’s subjective intent. Complainant’s Supplemental Submission did not refute Respondent’s assertion of his subjective intent. Complainant merely asserts that Respondent must have had an improper intention merely by virtue of registering and using a domain name that included the well known trademark PEARL JAM. On balance, the Panel concludes that there is no evidentiary basis for calling into question Respondent’s assertion of an innocent intention.

The Panel is satisfied that Complainant has failed to prove that Respondent does not have any rights or legitimate interests in respect of the Domain Name as of the date of this Decision.

Registration and Use in Bad Faith

Complainant must prove that the Domain Name was registered and is being used in bad faith. Complainant has not done so.

There is no evidence that any of the circumstances in paragraph 4(b) of the Policy apply to Respondent. In particular, there is no evidence that Respondent wishes to sell the Domain Name, or that Respondent has engaged in a pattern of registering domain names to prevent trademark owners from registering such domain names, or that Respondent is attempting to disrupt a competitor’s business, or that Respondent is attempting to attract users for commercial gain.

Complainant referred to the decision in Pearl Jam, A General Partnership v. Lyn, FA 221238 (Nat. Arb. Forum Feb. 16, 2004) to support the argument that there is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant’s marks. However, in that case the Panel concluded from the respondent’s admissions that respondent had used the domain name <jampearl.com> improperly to derive commercial benefit from Complainant’s mark. As well, a careful reading of that decision reveals that the Panel had concerns about the credibility of the respondent based on his submissions. This case is different in both of those respects.

Furthermore, the fact that Respondent in this case had notice of the Trademark is not, in and of itself, determinative of bad faith in circumstances where Respondent is operating a noncommercial site in tribute of Respondent. See Van Halen, supra; see also Springsteen, supra; see also Smith, supra. The evidence in this case supports the conclusion that Respondent is operating such a website.

Complainant has not provided any other evidence tending to show that Respondent has ever acted in bad faith in respect of the Domain Name or Complainant. Accordingly, Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy.

DECISION

Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <pearljamlive.com> domain name NOT be TRANSFERRED from Respondent to Complainant.

Robert A. Fashler, Panelist
Dated: March 29, 2004

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