National
Arbitration Forum
DECISION
The Estate of Marlon Brando v. thewordbank twb
Claim Number: FA0506000505502
PARTIES
Complainant is The Estate of Marlon Brando (“Complainant”), represented by Kevin Costanza of Seed IP Law Group PLLC, 701 Fifth Avenue, Suite 6300,
Seattle, WA 98104. Respondent is thewordbank twb (“Respondent”),
wickhams, roadtown, tortola 81818,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <marlonbrando.net>, registered with Go Daddy Software, Inc.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2005; the National Arbitration Forum received a hard copy of the Complaint on July 1, 2005.
On June 27, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <marlonbrando.net> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 July 5, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 25, 2005 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@marlonbrando.net by e-mail.
A timely Response was received and determined to be complete on July 25, 2005.
On August 1, 2005, a timely Additional Submission was received from Complainant.
On
August 3, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Houston Putnam Lowry, Chartered
Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
[i.] Marlon Brando was arguably the most well known actor and movie personality, worldwide, who ever lived.
[ii.] Marlon Brando was a successful actor, director and producer. His biography includes the following roles and awards (a list that is well short of his public accomplishments):
·
Viva Zapata!
(
·
Julius Caesar
(
· The Wild One;
· On the Waterfront (New York Film Critics Circle, Best Actor; Golden Globe, Best Actor, Drama; British Film Academy, Best Foreign Actor; Oscar, Best Actor; Cannes Film Festival, Best Actor);
· The Godfather (Oscar, Best Actor; Golden Globe, Best Actor in a Motion Picture, Drama);
·
Last Tango in
Paris (National Society of Film Critics, Best Actor;
· Roots: The Next Generations (Emmy, Outstanding Supporting Actor in a Limited Series or a Special);
· Superman;
· Don Juan DeMarco; and
[iii.] In addition, Marlon Brando received the following honors:
· 1955: Golden Globe, World Film Favorite, Male;
· 1972: Golden Globe, World Film Favorite, Male; and
· 1973: Golden Globe, World Film Favorite, Male.
[iv.] Through his prominent public presence and recognition on stage, on screen, in print, and elsewhere, the name “Marlon Brando” long ago—at least as long ago as the 1960’s—became famous in the minds of the entertainment-consuming public. As a result, the relevant marketplace immediately associates the name, trademark and service mark MARLON BRANDO with the services that Marlon Brando provided—i.e., services as an actor, entertainer, director and producer. Accordingly, the trademark and service mark MARLON BRANDO have acquired common law protection, rights that qualify for protection under the Policy. See Brosnan v. Network Operations Ctr., D2003-0519 (WIPO Aug. 27, 2003).
[v.] Marlon Brando passed away on July 1, 2004.
[vi.] By operation of law, immediately upon Mr. Brando’s death, Complainant, the estate of Marlon Brando, assumed ownership and control of Marlon Brando’s assets, including the rights in his name, trademark, service mark, likeness and personality, and including his rights in the subject domain name registration.
[vii.] Complainant is also the owner of the following trademark and service mark applications, which were filed after Mr. Brando’s death:
· U.S. Trademark Application No. 78/462,068 for “MARLON BRANDO” (the ’068 Application), filed by the estate August 4, 2004 for a wide variety of products and services; and
· U.S. Trademark Application No. 78/582,102 for “MARLON BRANDO,” filed by the estate March 7, 2005 for hotel, resort, restaurant and spa services.
[viii.] Complainant has subsequently executed license agreements granting third parties limited rights in the name, trademark and service mark MARLON BRANDO, and/or to Marlon Brando’s likeness.
FACTUAL
AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix). NAF Supp. Rule 4(a). This dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide this dispute. The subject domain name was registered with GoDaddy.com on January 7, 2004, and continues to be registered with GoDaddy.com as of the time of this filing. Under the Paragraph 4 of the Registration Agreement, entitled “Dispute Resolution Policy,” the domain name registrant “agree[s] to be bound by our current Dispute Resolution Policy.”
[a.] The subject domain name is identical or confusingly similar to a trademark in which Complainant has rights. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
[i.] As
explained in Section 4[c.] above and as supported in the corresponding
documents, Complainant holds exclusive rights in at least the
[ii.] It is a sufficient showing if Complainant satisfies the Administrative Panel that it has rights in a common law trademark or service mark; the Policy does not require that Complainant have rights in a registered trademark or service mark. Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000).
[iii.] Complainant’s rights in the MARLON BRANDO name, trademark and service mark were created under the common law long prior to registration of the subject domain name by Respondent (i.e. January 7, 2004), and Complainant’s rights subsist to the present day.
[iv.] The top-level domain name, i.e. the .NET suffix, is not relevant in determining whether a domain name is identical or confusingly similar to a mark; rather, one looks to the second-level domain name for such a determination. See Experience Hendrix, L.L.C. v. Hammerton, D2000-0364 (WIPO Aug. 2, 2000).
[v.] The second-level domain name, i.e. “MarlonBrando”, is identical to Complainant’s trademark and service mark MARLON BRANDO, but for the space between the first and last name, and is certainly confusingly similar thereto.
[vi.] The above establishes that the subject domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, satisfying Paragraph 4(a)(i) of the Policy.
[b.] Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the present Complaint. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).
[i.] Respondent, “thewordbank twb,” is not named, recognized, or commonly known as “Marlon Brando;” nowhere on the web site does it purport to be owned or operated by Marlon Brando or an individual or entity named or commonly known as Marlon Brando. On the contrary, the web site attempts to disclaim all association with Marlon Brando. Accordingly, Respondent cannot satisfy the exception in Paragraph 4(c)(ii) of the Policy.
[ii.] Neither Mr. Brando nor the Estate granted a license, consented to, or otherwise authorized Respondent or anyone else associated with the <marlonbrando.net> domain name to use of the MARLON BRANDO mark or the <marlonbrando.net> domain name.
[iii.] To the extent Respondent nonetheless attempts to assert any
right or legitimate interest in the name Marlon Brando, that interest did not
exist prior to Respondent having actual knowledge of Mr. Brando’s and
Complainant’s exclusive rights in the MARLON BRANDO name, trademark and service
mark. As provided in Section 4[c],
above, Marlon Brando was one of the most famous actors who ever lived; his
name, trademark and service mark were universally known and recognized at least
as early as the 1960’s. Consequently, it
can be assumed that Respondent knew of Marlon Brando prior to registering the
subject domain name. Indeed, the only
reason Respondent could have selected the subject domain name was precisely BECAUSE
Respondent was aware that the domain name was identical to the famous MARLON
BRANDO name, trademark and service mark.
The fact that Respondent is selling Marlon Brando merchandise through
the site only confirms this fact. Such advance
awareness is evidence of prior notice, defeating exception 4(c)(i) of the Policy. Experience
Hendrix, L.L.C. v. Hammerton, D2000-0364 (WIPO Aug. 2, 2000). Accordingly, Respondent cannot satisfy the
exception in Paragraph 4(c)(i) of the Policy.
[iv.] Respondent also cannot assert that it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain. The web site located at <marlonbrando.net> offers to sell books, movies, posters and other MARLONG BRANDO memorabilia, and links the Internet users to Amazon.com and other web sites where related products are sold. Indeed, despite references in the web site referring to it as a “fan site,” the primary, if not sole, purpose of the web site is the sale of MARLON BRANDO memorabilia. Accordingly, Respondent cannot satisfy the exception in Paragraph 4(c)(iii) of the Policy.
[v.] The above facts establish that Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the present Complaint, satisfying Paragraph 4(a)(ii) of the Policy.
[c.] The domain name should be considered as having been registered and being used in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
[i.] Respondent registered and is using the subject domain name solely and intentionally to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with Complainant’s trademark and service mark, as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. The web site located at <marlonbrando.net> offers to sell books, movies, posters and other MARLON BRANDO memorabilia, and links the Internet users to Amazon.com and other web sites where related products are sold. Such action is per se evidence of bad faith use and registration under Paragraph 4(b)(iv) of the Policy.
[ii.] In addition, Respondent registered the subject domain name in order to prevent Complainant from reflecting the mark in its own, corresponding domain name, and Respondent has engaged in a pattern of such conduct. According to an article published in Artnet Magazine, by Giovanni Garcia-Fenech, thewordbank is a “mega-squatter” that “seems to specialize in registering the proper names of artists and other celebrities,” including <CindySherman.com> (Cindy Sherman being a famous photographer), <JeanDubuffet.com> (Jean Dubuffet being a famous painter), Basquiat.com (Jean-Michel Basquiat being a famous painter) and <DamienHirst.com> (Damien Hirst being a famous artist). By reviewing WHOIS records for each of these domain names, it appears clear that “thewordbank” indeed engaged in a pattern of registering domain names associated with recognized artists and celebrities. Such action is per se evidence of bad faith use and registration under Paragraph 4(b)(ii) of the Policy.
[iii.] Respondent buries a disclaimer in small text on the “contact” page of the web site, a page most Internet users are not likely to see—and definitely will not see first—and a page that is not necessary to access the web site and purchase MARLON BRANDO memorabilia through <marlonbrando.net>. Registrant provides no disclaimer anywhere else on the web site. The use of a disclaimer, however, does not avoid a finding of bad faith, as the disclaimer may be missed, ignored or misunderstood by Internet users, and does nothing to dispel initial interest confusion inevitable from Respondent’s actions. Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000).
[iv.] The above actions of Respondent, alone and in combination, clearly evidence bad faith registration and use of the subject domain name, satisfying Paragraph 4(a)(iii) of the Policy.
B. Respondent
Respondent specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for Respondent to retain registration and use of the disputed domain name. ICANN Rule 5(b)(i).
Respondent respectfully requests
the Panel to deny the remedies requested by Complainant. Under Policy Paragraph 4(a), for a complainant to succeed, it must
establish that the following three conditions are satisfied:
(1) that the domain is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in
respect of the domain name; and
(3) that the domain name has been registered and is being used
in bad faith.
Further,
Complainant bears the burden of the proof on each of these elements, and must
produce credible evidence to support its claim. Policy
Paragraph 4(a). Complainant here
has failed to meet its burden of proof and has not produced credible evidence.
Respondent hereby responds to the statements and allegations in the Complaint
and respectfully requests the Panel to deny the remedies requested by
Complainant.
- The
domain name is not identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; ICANN Rule
3(b)(ix)(1); ICANN Policy ¶ 4(a)(i)
Glaringly absent is any evidence to
support Complainant's contention that it holds enforceable rights in a
trademark that is identical or confusingly similar to the disputed domain name
in the territory of the domain registration and place of business. Marlon
Brando died on July 1, 2004
and he did not bequeath the rights to his name or alleged
trademark to use for a tribute website based in the
Therefore, Respondent requests
that the Complaint be dismissed because the Complainant is not the owner of a
registered trademark that is identical or confusingly similar to the disputed
domain name <marlonbrando.net> in the British Virgin Islands and
because it has produced no evidence of common law trademark rights in the
British Virgin Islands. Presumably, the true owner of such rights would be able
to produce documentary evidence of its acquisition of such rights, such as
contracts, assignments, copyright records, etc.
According to the Complaint, the
MARLON BRANDO trademark is protected for the following goods and services:
IC 006. US 002 012 013 014 023 025 050. G & S: metal statues and figurines not of precious metal; metal key chains; license plates and frames therefore; bottle openers; non-luminous and non-mechanical metal signs; and tins and cans sold empty
IC 009. US 021 023 026 036 038. G & S: a series of audio/video recordings, pre-recorded performances and acting lessons; musical juke boxes; sunglasses; decorative refrigerator magnets; computer peripheral mouse pads; telephone cards; and magnetically encoded credit cards and debit cards
IC 015. US 002 021 036. G & S: musical instruments; drums; percussion instruments and accessories therefore; and music boxes
IC 016. US 002 005 022 023 029 037 038 050. G & S: posters; post cards; address books; holiday cards; greeting cards; art prints; art reproductions; paper gift bags; writing instruments; loose leaf binders; bookends; non-fiction and reference books about Marlon Brando; children's activity books; gift wrapping paper; bumper stickers; calendars; credit cards; non-magnetically encoded telephone calling cards; bank checks; debit gift cards; checkbook covers; comic books; commemorative stamps that are not issued by the US Postal Office; confetti; decals; letter openers; paper merchandise bags; pictures; photographic prints; picture books; playing cards; recipe books; rubber stamps; stationery; stickers; temporary tattoos; trading cards; metal trading cards; chalk boards for home and/or school use; photo albums; note pads; paper doll books; coloring books; stamps and philatelic goods, namely, pre-stamped postal cards; and mint sets and coin books
IC 025. US 022 039. G &
S: clothing, namely, shirts, sweatshirts, pants, shorts, jackets, caps,
neckwear, belts, coats, underwear, socks, bath robes, pajamas, and kimonos;
gloves; and footwear
IC 035. US 100 101 102. G
& S: historical figure licensing services
IC 043. US 100 101. G & S: hotel, resort hotel, and restaurant services
IC 044. US 100 101. G &
S: health spa and day spa services
These trademarks do not include domain names or website publishing. The current U.S. Trademark Law, as it pertains to names of individuals, stipulates that the Trademark Act does not apply to deceased persons. Copyright laws do not implicate any other intellectual property rights since copyrights do not encompass any additional trademark, patent, domain or other rights by association. The mark <marlonbrando.net> is not registered by Complainant and therefore Complainant should not be a party to this Complaint as Complainant has neither the right nor the grounds on which to institute or otherwise initiate any injunction of complaint against Respondent. It is not even clear whether Complainant is authorized by all the successors of Marlon Brando to be the sole owner and the manager of the intellectual property rights in Marlon Brando’s work, as well as intellectual property rights related to the writer’s work, life and his name.
The question of whether trademark infringement might result from use of the domain name is beyond the scope of the Policy and should not be addressed by this decision. In this case, it cannot be concluded that Respondent has no “rights or legitimate interests” in the domain as is required under the Policy. While Respondent does not own <marlonbrando.net> as a trademark, it cannot be stated that Complainant legally acquiesced in Respondent’s registration and use of the domain, at least initially. Respondent’s use is a nominative fair use. Acquiescence and fair use are principles of trademark law, each requiring full analysis of the underlying facts. These are issues for the courts. See Adaptive Molecular Techs., Inc. v. Woodward, D2000-0006 (WIPO Feb. 28, 2000); see also Credit Mgmt. Solutions, Inc. v. Collex Res. Mgmt., D2000-0029 (WIPO Mar. 17, 2000).
Respondent is not using
Complainant’s mark as a trademark. Complainant
owns rights solely to trademarks for works by Marlon Brando. Complainant has no
rights to the domain name registered by Respondent which is the subject of
this Complaint. These are divergent
intellectual property rights that do not overlap and encompass each other in
any way and which are mutually exclusive.
Ownership under trade mark laws does not implicate any rights within the
realm of domain names.
Complainant challenges Respondent’s use as an attempt to create
confusion in the market place, relying heavily on the traditional likelihood of
confusion test. The materials submitted
by the parties, however, present significant factual issues as to whether
Respondent’s use is or is not an infringement of Complainant’s trademark
rights, particularly with respect to the scope of Complainant’s alleged rights
and the proximity of the services offered by the parties. The existence of a dispute concerning
likelihood of confusion can make a case inappropriate for resolution under the
Policy. See Adaptive Molecular Techs., Inc. v. Woodward, D2000-0006 (WIPO Feb. 28, 2000).
Complainant states it has
authority to pursue the Complaint, and that it is the exclusive owner of the
trademark MARLON BRANDO; however, as stated earlier, these trademarks are
not registered for protection in the
Complainant makes reference to the
case of Brosnan v. Network
Operations Ctr., D2003-0519
(WIPO Aug. 27, 2003). In
that case, the respondent had registered the <piercebrosnan.com>
domain name and was using it to divert traffic to a commercial website at
<celebrity1000.com>. This site
claimed to be the “Ultimate Entertainment Source” and contained banner advertisements,
and links to online retailers and used the services of Engage “for serving
and/or targeting of ads, promotions and other marketing messages.” The respondent in that case had clearly
used the domain name to divert Internet traffic to a commercial website with no
relevance to Pierce Brosnan. The respondent had not filed a
response to the complaint and so had not made any representations concerning
any rights or a legitimate interest in the domain name; thus, this case is
inapposite to the dispute in question.
Complainant also makes reference to Roberts v. Boyd, D2000-0210
(WIPO May 29, 2000). Here, the website
<juliaroberts.com> featured a photograph of a woman named “Sari Locker”.
Respondent had placed the domain name up for auction on the commercial auction
website, “eBay,” specifically at http://cgi.ebay.com/aw-cgi/eBayISAPI.dll?ViewItem&item=285891617. Respondent was offered US$2,550 in the eBay
auction for the domain name registration. The original content posted on the
website <juliaroberts.com> had little if anything to do with Julia
Roberts. It was not until this dispute
arose that her likeness was posted.
Respondent admitted having placed the disputed domain name
<juliaroberts.com> for auction on eBay.
This dispute is clearly different
from the case in question since that registrant publicized his
intention to sell the domain names in issue within days of having
registered them and his aim was to extort the complainant for
necessary venture capital for his schemes.
Such action constitutes evidence of bad faith which is
distinguishable from our case.
- The Respondent has rights or
legitimate interests in respect of the domain name; ICANN Rule
3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii)
Before Respondent received any
notice of the dispute, there was evidence of Respondent's use of the domain
name in connection with a bona fide offering of goods or services.
Respondent is a registered affiliate of Amazon.com, Art.com, AllPosters.com, and
SheetMusicPlus.com (Distributors), for the authorized sale and representation
of Marlon Brando films, books, recorded music, posters, and any other item
which these authorized Distributors may sell through their websites. These distributors are authorized to sell
these products by the Complainant.
Respondent has legitimate rights
and interest in the domain name <marlonbrando.net>. Respondent is using
this domain name to offer tribute to Marlon Brando's works and life. The
website features a biography of the actor.
Visitors can consult the archives and contribute new information,
images, comments, tributes and general knowledge. They can also peruse the online film catalog
and filmography which only features films with Marlon Brando. This is a classic fair use of the phrase <marlonbrando.net>.
Contrary to Complainant's assertions, Respondent has permission to make use of
the name Marlon Brando by its legal affiliation with Amazon.com,
Art.com, AllPosters.com, and BarnesAndNoble.com (Distributors), for the
authorized sale and representation of Marlon Brando films, books
recorded music, posters and any other item which these legitimate Distributors
may sell through their websites. It would be difficult to
imagine presenting these books and products for sale on a
website without including the name Marlon Brando in the offerings.
Respondent has sufficient interest in the
domain name to avoid a transfer. The
evidence submitted by Complainant, including screen shots from Respondent’s web
site <marlonbrando.net>, and the Lycos search results, show that
Respondent used the domain name in connection with the bona fide offering of goods or services prior to the dispute. Complainant should not be entitled to
relief on the record presented under the standards applicable to this
proceeding.
Complainant refers to Experience
Hendrix, L.L.C. v. Hammerton, D2000-0364 (WIPO Aug. 2, 2000). The respondent in that case chose the domain
name in issue not arbitrarily but intending to misappropriate and use the
goodwill in the complainant’s marks for his own commercial benefit by
advertising vanity e-mail addresses for sale on a Web page located at
<http://www.jimihendrix.com> .
That respondent was a domain name speculator who registered and sold
domain names for no legitimate purpose other than to profit from the
names. A front page article in the San
Francisco Chronicle quoted him as saying “some people like it, some people
don’t - that’s tough…. It’s real estate is what it
is. If I buy land that somebody wants,
then lucky me.” The respondent tried to
benefit commercially by offering to sell the domain name to complainant for “an
exorbitant amount of money” by advertising the domain name
<jimihendrix.com> on domainsmart.com, a domain name reseller site, for $1
million dollars as “the most unique domain/jimi was a ‘hit’ maker.” That respondent made it clear to the
complainant and the world that the respondent intended to prevent the
complainant from reflecting the complainant’s mark in a corresponding domain
name based on comments posted on the Web site located at
<johnlennon.com>. The respondent
also advertised to sell the domain names <elvispresley.net> for $39,000,
<jethrotull.com> for $8,000, <lindamccartney.com> for $15,000
-$25,000, <mickjagger.com> for $25,000, <paulmccartney.com> for
$25,000 - $51,000, <ringo.com> for $15,000 -$21,000,
<rodstewart.com> for $15,000 -$21,000, and <twiggy.com> for $10,000
on different domain name reseller sites.
Therefore, contrary to our case, that respondent’s use of the domain
name cannot be characterized as non-commercial or fair use based on: (i) the
creation and use of the Site located at <http://www.jimihendrix.com> for
selling vanity e-mail addresses incorporating the <jimihendrix.com>
domain name; (ii) the offering for sale of the domain name itself for
$1,000,000 on a domain name reseller site; and (iii) a news article identifying
the respondent as a domain name speculator and quoting him as the owner of the
rights to some 2,000 domain names for sale including <jimihendrix.com>.
The above is clearly a case of bad faith registration and use since that respondent's statements to the media show that he deliberately registered and used the domain name to direct traffic to his site based on confusion with complainant's name. Traffic to that respondent’s site increased dramatically after he adopted the confusing domain name, proving that he deliberately registered the domain name to derive benefit from complainant's rights.
Respondent wishes to emphasize
that it never initiated or made contact with Complainant with an offer to sell
the domain name. See
Car toys Inc., v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000); Gen. Mach. Prods. Co., Inc. v. Prime Domains, FA
92531 (Nat. Arb. Forum Mar. 16, 2000).
The contention by Complainant that the commercialization of Marlon Brando works is making a counterfeit of those rights and/or an unfair competition has no bearing on this case since Respondent has legitimate and authorized affiliation agreements. In this case, Respondent is continuously researching new facts, information, books, learning tools, and products which can be added to the website. Internet users appreciate portals which group information on one subject matter; thus facilitating their research and/or shopping experiences.
The other contention by Complainant that Respondent has attempted to use the domain name for commercial profit without Complainant's authorization is absurd, since it would mean that whenever website developers offer a film, book, CD-ROM or other authorized products featuring Marlon Brando sold via an affiliation with online distributors such as Amazon.com, the developers would be required to also obtain permission from Complainant in order to offer these products for sale on their websites. It is of critical importance to note that the books, films and other products presented on the <marlonbrando.net> website, respect copyright laws and eventually generate royalties and other incomes for Complainant, heirs and/or the estate of Marlon Brando and other rightful holders of his work. Respondent is only contributing to their wealth. Respondent agrees with Complainant’s assertion that Respondent is selling products valued for their connection with Marlon Brando. Respondent’s activities are for a good cause since the memory of this great man is being kept alive and his works are now accessible to everyone on the planet through a well-designed and dedicated portal on the internet. The information provided on <marlonbrando.net> and the products sold on the web site are genuine, accurate and authorized. The efforts and hard work of website designers such as Respondent will benefit authors, artists and publishers with new sources of profits derived from websites offering their works and products (known and unknown). Respondent has always held such agreements with Distributors during it's tenure as an affiliate. Respondent would be happy to continue using the <marlonbrando.net> domain name to host the tribute website that presents digital representations provided by the authorized distributors, a biography, a film catalog, a bookstore, a poster gallery, and much more. The site also features for its visitors the following useful links and information on the subject of Marlon Brando and his work. The above clearly demonstrate that Respondent is using the Domain Name <marlonbrando.net> in connection with a bona fide offer of goods and services.
The website at <marlonbrando.net>
also features the following links to sites which offer information on Marlon
Brando:
A
Tribute to Marlon Brando http://brando.crosscity.com/
A
Private Affair TFL.org Approve Marlon Brando Fanlisting http://www.last-exit.org/marlon/
Meredy’s
Marlon Brando Trivia Mania
http://www.meredy.com/brandotriv.htm
Hollywood
Unmasked – Marlon Brando
http://www.goodfight.org/hwmbrando.html
Fansite
for Marlon Brando http://members.aol.com/donbrndo/marlon_brando.html
Welcome
to BrandoLand http://home.comcast.net/~brandoland/streetcar.html
Brando
at IMDB.com http://www.imdb.com/name/nm0000008/
Marlon Brando Rejects Godfather? http://news.bbc.co.uk/1/hi/entertainment/film/4228497.stm
As described above and in the previous pages, the numerous links featured on Respondent's website take visitors to sites which concern only Marlon Brando and Respondent's website does not publish any advertisements, commercial links or other offerings or information which are irrelevant to Marlon Brando.
The list of
circumstances in Paragraph 4(c) of the Policy in which a respondent can
show legitimate rights and interest is non-exhaustive. In our case, Respondent
has shown a sufficient interest in the Domain Name or, to be more accurate,
Complainant has failed to show that Respondent does not have legitimate rights
and interests in the Domain Name <marlonbrando.net> as is required
under Paragraph 4(a)(ii) of the Policy.
Contrary to Complainant's
assertions, Respondent is making a legitimate fair use of the Domain Name <marlonbrando.net>
without intent for commercial gain misleadingly to divert consumers or to
tarnish the trademarks or service marks at issue. As the reasons for
using the Domain Name <marlonbrando.net> were in no means related with Complainant’s
business and trademarks, Respondent never intended to divert consumers, and is
not likely to either. This tribute
fan website is elegant and produced professionally and is a Tribute
to Marlon Brando only. Respondent seeks to praise Marlon Brando and his
work. Respondent's aim was to produce a professional tribute
fan website which offers information on Marlon Brando, to learn more about
Marlon Brando and his work, to facilitate customer searches for his films,
books, quotes and other works and to make purchases simpler. The website was
never intended to take away business or deliberately mislead customers and
tarnish the author or any of Complainant’s marks through its use. The site also
features products
(books, films, posters etc.) which are distributed by companies (ex. Amazon.com
which is a leading seller of books online), which are authorized to sell Marlon Brando products. All of the companies
concerned were flattered. The above
demonstrate Respondent’s fair use of the domain name <marlonbrando.net>.
Respondent also features a
disclaimer on its website which states that:
"*By using this website,
you are agreeing to the following: this website is privately owned and
maintained and in no way affiliated with Marlon Brando and/or his
representatives, nor is it implied to be or should be interpreted as such. His
representatives cannot be reached through this site and we cannot forward
messages to them. This website is an unofficial tribute/fan site and has been
created solely for entertainment, news and education purposes. Use of
copyrighted images and information is covered under the fair use section of the
Copyright Law. This website is not responsible for any content, off this site,
to which it links. This website and its contents do not constitute official
information. Although the information is believed to be accurate when
presented, this site is under constant revision, and no warranty of any kind
including accuracy, completeness, reliability, or otherwise is made. The
website registrant will not be responsible for any damages of any nature
resulting from use of or reliance upon the information provided herein."
Respondent has never previously
had a legal or other complaint about its website located at <marlonbrando.net>.
Respondent does not wish to mislead or divert customers into thinking they are dealing with Complainant, which is why it uses a disclaimer on its site. The only benefit Respondent stands to gain from the domain name is that some search engines tend to favor domain names with the search term in them. This also tells the retail customer that they have found what they are looking for.
Moreover,
Complainant has not submitted sufficient evidence to prove its claim that
Respondent’s use of the Domain Name <marlonbrando.net> is a
deliberate attempt to create confusion. Complainant,
for example, has not provided advertising materials or screens from its own web
site to show the exact nature of its use of its trademark and has not submitted
any materials showing the dates of its actual use of the trademarks. No evidence has been submitted to support its
claim that the Domain Name <marlonbrando.net> is a famous mark
entitled to broad protection, and there is insufficient evidence on the various
other factors to be considered in determining a likelihood of confusion.
Respondent has shown that he has not only made demonstrable preparations to use the domain name in connection with a bona fide offering of services prior to the dispute but has also proven a fair use of the domain name. Respondent is engaged in serious activities to use the domain name for the bona fide offering of services. Thus, Respondent has not registered the domain name for merely speculative reasons. It is irrelevant whether Respondent uses the domain name in a serious commercial manner and whether Respondent has any reasonable economical interest, as the Rules do not talk about a serious business or a reasonable economical use but about a "legitimate" interest.
Thus, pursuant to Paragraphs 4(c)(i) and (iii), Respondent has a legitimate interest in the domain name <marlonbrando.net> for the purpose of Paragraph 4(a)(ii).
C. Whether the domain name had been
registered and is being used in bad faith. (Policy Para. 4(a)(iii))
In addition to not satisfying the second requirement,
Complainant does not prove the requisite "bad faith" of Paragraph
4(a)(iii) of the Policy since Complainant has not
shown that Respondent registered and used the <marlonbrando.net> domain
name in bad faith, nor can it. The Policy established by ICANN clearly requires
a domain name to be (1) registered and (2) used by the respondent in bad faith.
Please see Policy Paragraph 4(a)(iii). Complainant
fails to provide evidence of either.
Complainant has proven none of these circumstances. In LIBRO
AG v. NA Global Link Ltd., D2000-0186
(WIPO May 16, 2000), the panel found that the Policy is very narrow in
scope and that it covers only rather clear cut cases of "cyber
squatting" and "cyber piracy". In that case, the panel held that
the explanation given by the respondent why it selected the domain name, namely
it was the Spanish and Italian word for "book", was acceptable. In this case, Respondent thought that naming
a website dedicated to a great actor in the actor’s name was also acceptable and
reasonable.
Respondent has not engaged in a pattern of conduct involving
the registration and sale of domain names, and has never engaged in the sale of
other domain names. It should also
be noted that the information that a respondent holds other domain names and
that some happen to correspond to the names or marks of others is inconclusive
on the basis for finding bad faith and cannot be relied upon as evidence for
transfer of the domain name <marlonbrando.net>. See Ciccone v. Parisi,
D2000-0847 (WIPO Oct. 12, 2000). Respondent
did not register or acquire the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to
Complainant since Respondent did not know (and does not know) anyone had rights
in the <marlonbrando.net> mark at the time of registration, and
since Respondent was unaware of the existence of Complainant at the time of
registration since Complainant did not exist at the time of registration of the
Domain Name <marlonbrando.net>. Complainant has not
provided any evidence of facts which might indicate that Respondent knew or
should have known of Complainant’s trademarks since they were registered more
than one year after Respondent registered the domain name <marlonbrando.net>;
therefore, Respondent was unaware of Complainant’s existence when he registered
the Domain Name since Complainant did not exist at the time and Respondent has
not heard of Complainant’s existence until this Complaint. Marlon Brando died two years ago and
Respondent simply wanted to honor his favorite actor with an elegant website
and, thus, encourage the propagation of his film
work. It seemed only natural to
Respondent to name the website by the name of the actor himself. The domain name was available and Respondent
saw no reason to not pursue this dream. Respondent did not register the descriptive <marlonbrando.net>
Domain Name in an attempt to secure valuable consideration from Complainant in
excess of its out-of-pocket costs directly related to the domain name.
Respondent registered the domain name long before this dispute was commenced.
Respondent did not register the domain name to sell it, nor did it register the
domain to hold it hostage for any reason nor did it ever contact Complainant or
any other entity to offer this domain name for sale or rent.
Again, Complainant falsely accuses
Respondent of preventing Complainant from reflecting its mark in corresponding
domain names. It is difficult
to believe that Complainant's organization is prevented from using the
only available domain name by which Complainant's organization is commonly
known and referred to in the whole world since Complainant could register the
domain names <marlonbrando.com>,
<marlonbrando.org>, etc.
The Domain Name <marlonbrando.net>
was not registered in order to prevent Complainant from reflecting its mark in
a corresponding domain name. As stated previously, Respondent has in no way
attempted to capitalize on whatever trademark rights Complainant owns, or to
profit from Complainant's business, since Respondent did not know (and does not
know) anyone has rights in the <marlonbrando.net> mark at the time
of registration and since Respondent was unaware of the existence of
Complainant at the time of registration and Complainant can provide no direct
evidence of an illegitimate purpose because none exists.
In addition, Complainant's
purported registration of the alleged mark did not begin until more
than one year after Respondent registered the domain name in good faith.
No evidence is provided by the Complainant of the use of the mark <marlonbrando.net>
in the
Being a great fan of Marlon
Brando, Respondent registered the Domain Name <marlonbrando.net>
before any kind of trademark rights in the term <marlonbrando.net>
were established. Furthermore, Respondent was not aware of Complainant
or of any other entity using <marlonbrando.net> or any mark
similar thereto at the time of registration and use. The trademark MARLON
BRANDO was registered in the
Bad
faith registration and use is negated by a finding that the domain name owner
registered the domain name prior to the development of trademark rights by
another party in the British Virgin Islands, and/or that the domain name owner
did not know of or could not have known of Complainant and/or the trademark
rights at the time of registration. See Allocation Network GmbH v. Gregory,
D2000-0016 (WIPO Mar. 24, 2000); Gen. Mach. Prods.
The Domain Name <marlonbrando.net> was not registered by Respondent in an intentional attempt to attract for commercial gain Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location. There is no evidence whatsoever that Respondent has sought to pass himself off as having any connection or association with Complainant and no evidence of any actual confusion or damage resulting from Respondent's use of the domain name <marlonbrando.net>. As described in item (B) of the Response, the website's disclaimer clearly notifies its users of this. Under these circumstances, it is absurd to hold that Respondent has chosen the domain name with the intent to profit or otherwise abuse Complainant’s trademark. Complainant refers to Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000). In this case, that name was thought by the respondent to be valuable as an attraction for a sexually explicit web site. This is clearly not the situation with the website located at <marlonbrando.net>, which has never contained any sexually explicit content.
Complainant accuses Respondent of
acting in a manner to unfairly trick consumers and otherwise attract them for
Respondent’s financial and commercial gain; Respondent offers a website which
features a digital tribute museum to Marlon Brando 's works
and life. It is an online Catalog Raisonné and virtual store where visitors can
consult the archives and contribute new information, images, comments, tributes
and general knowledge. That Complainant
suffers commercial harm when transactions on Respondent's websites generate
royalties for Complainant is a manifest fallacy.
Respondent has
never used <marlonbrando.net> as a trademark and believes that the
name of Marlon Brando belongs to the public domain as a name of a deceased
public figure after he died in 2004.
Therefore, since it has not been demonstrated that the domain name <marlonbrando.net>
was chosen by Respondent at the time of registration with the intent to profit
or otherwise abuse Complainant’s trademark rights, it is clear Complainant has
not met its burden of proof under Paragraph 4(a)(iii) of the Policy. The aim of the
Policy is to stop bad-faith registration of domain names. The
Policy does not cover non-bad faith trademark infringements.
Respondent is not using Complainant’s mark as a trademark. Complainant owns rights to solely trademarks for goods featuring MARLON BRANDO. Complainant has no rights to the Domain Name <marlonbrando.net> registered by Respondent, which is the subject of this Complaint. These are divergent intellectual property rights that do not overlap and encompass each other in any way and which are mutually exclusive. Ownership under trademark laws does not implicate any rights within the realm of domain names.
Respondent denies that it is
making a counterfeit and is creating an unfair competition and that the domain
name <marlonbrando.net> was registered and being used in bad faith.
There has been no pattern of such conduct. Complainant clearly knows the
accusation is untrue.
Complainant here has failed to meet its burden of proof and has not produced credible evidence. Respondent hereby responds to the statements and allegations in the Complaint and respectfully requests the Panel to deny the remedies requested by Complainant.
C. Additional Submissions
[I.] Complainant has established that the
subject domain name is identical or confusingly similar to a trademark in which
Complainant has rights.
Complainant established in its Complaint and
supporting exhibits that it has rights in the mark MARLON BRANDO, which long
ago acquired secondary meaning and fame as a common-law trademark and service
mark in connection with, at least, entertainment services. Respondent does not
dispute this fact. Indeed, at page 5 of its Response, Respondent admits,
"Complainant owns rights to solely trademarks for works by Marlon
Brando." While Complainant asserts that it holds more than only those rights
admitted to by Respondent, there now exists no issue
as to whether Complainant has at least some affirmative, common law trademark
rights in the mark MARLON BRANDO.
Complainant established that the domain name <marlonbrando.net>
is identical to the mark
MARLON BRANDO. Respondent has not challenged this fact.
Accordingly, Complainant has established the
first element in its Complaint.
Respondent asserts that Complainant has failed to establish that it
holds enforceable rights in a trademark that is identical or confusingly
similar to the disputed domain name "in the territory of the domains'
registration and place of business." Respondent misstates the standard. If
Complainant can show that "its common law mark has become distinctive
through use in any country, it will be accepted that it has rights to
satisfy the first requirement in these proceedings." OuakeAID
v. Solid Domains. com, Inc.,
D2002-0815 (WIPO Nov. 13, 2002). Thus, common law rights to the mark MARLON
BRANDO in the
Respondent asserts that the mark MARLON
BRANDO is not registered specifically for a domain name or web site publishing.
Again, this is not the standard; Policy ¶ 4(a)(i) only
requires that "the subject domain name is identical or confusingly similar
to a trademark in which the Complainant has rights." There is no
requirement that the mark be registered for any particular goods or services.
Respondent asserts, without explanation or citation, that the Trademark Act "does not apply to
deceased persons." Complainant does not understand what Respondent means
by this statement. In any case, the
statement is incorrect. Trademark rights are intangible assets that pass
through probate, along with the decedent's other assets, according to the
decedent's will. Complainant has established on the record that such rights
transferred to the Brando Living Trust under Mr. Brando's will. Complainant is
charged with managing and controlling the Brando Living Trust, to the benefit
of the beneficiaries, and in that position has the right to license the
trademarks (as Complainant already has, as evidenced in the Complaint) and to
enforce the rights, to maximize the value and revenue of the assets to the
beneficiaries. Thus, Complainant is a "living" entity with rights in
a trademark or service mark, and has the right to bring this action.
Nothing Respondent asserts refutes the fact
that Complainant has established the first element in its Complaint.
Accordingly, this Panel should hold that Complainant has established this first
element.
[2.] Respondent should be considered as
having no rights or legitimate interests in respect of the domain name that is
the subject of the present complaint.
In its Complaint, Complainant established and
supported with documentary evidence the facts that Respondent: is not known as
MARLON BRANDO; has not been authorized to use the mark MARLON BRANDO; selected
the domain name with knowledge that it conflicted with the existing, famous
MARLON BRANDO trademark; and is using the domain name primarily for commercial purposes,
which cannot be considered "fair use." Complainant has, thus, made a prima
facie showing that Respondent has no rights or legitimate interest in the
domain name <marlonbrando.net>. The burden now shifts to
Respondent to prove that it has rights or a legitimate interest in the domain
name <marlonbrando.net>. De Agostini S.p.A. v. Cialone,
DTV2002-0005 (WIPO Sept. 9, 2002). Respondent has failed to meet its burden.
Respondent asserts that "there was
evidence" of its use of the domain name in connection with a bona fide
offering of goods or services before it received notice of the dispute.
Respondent has provided no such "evidence," so this unsubstantiated
assertion should be disregarded.
Notwithstanding, to the extent the Panel is willing to consider
Respondent's unsupported assertion, Complainant has provided evidence that its
mark was world-famous well before Respondent registered and began using the
subject domain name, and established that the subject matter of the
Respondent's web site confirms that Respondent had actual knowledge of the fame
of the MARLON BRANDO mark prior to registering the domain name for his
commercial web portal. Knowingly
registering another's famous trademark for the purpose of selling merchandise
associated with that famous trademark is not a legitimate use.
Respondent asserts that the products it sells
through its distributors were authorized by Complainant. Again, however,
Respondent provides no evidence in support of this assertion; thus, the
statement should be given no consideration. Notwithstanding, this statement is
wholly false. Complainant has never licensed or otherwise authorized anyone to
sell the products offered through the Respondent's web site.
Respondent asserts that the web site is a
tribute to Marlon Brando's works and life and, thus, is not a commercial
portal, but "classic fair use." Respondent bases this assertion on
the facts that the web site includes a biography, a filmography, and that visitors can consult and contribute to archives. Based
on the record (as provided by Complainant because, again, Respondent does not
support this assertion with evidence), the fair use assertion is disingenuous
at best. The site is a commercial portal for selling movies, books and posters.
In addition to pages dedicated to product sales, there is a short bio and a
filmography, neither of which is uncommon or unexpected on a web site dedicated
to selling films in which a famous actor had a role. There is no evidence that
the site includes an archive.
Respondent asserts that it has permission to
use the name MARLON BRANDO by its legal affiliation with Amazon.com, Art.com,
AllPosters.com, and BarnesAndNoble.com. Again, Respondent provides no evidence
of such permission; accordingly, this assertion should not be considered. Complainant would be extremely surprised if
any of these companies would grant permission to use a name in which they have
no rights themselves.
Respondent asserts that it is “difficult to
imagine” not being able to use the name MARLON BRANDO in connection with its
offer to sell such products. Complainant does not assert that Respondent may
not use the name MARLON BRANDO to accurately describe its products, such as by
using the phrase, “starring Marlon Brandon” in connection with a product
advertisement. Respondent does not explain, however, why it must use the domain
name <marlonbrando.net>.
In summary, Respondent has placed no evidence
on the record supporting its opposition to Complainant's prima facie case
on this second element. Unsupported assertions are not sufficient to satisfy
Respondent's burden of proving rights or a legitimate interest. Even
considering the merits of Respondent's unsupported assertions, Respondent fails
to establish rights or a legitimate interest in the domain name <marlonbrando.net>.
Accordingly, this Panel should hold that Complainant has established this
second element.
[3.] The domain name should be considered as
having been registered and being used in bad faith.
Complainant has provided evidence, under this
third element, establishing that Respondent acted in bad faith under at least
Paragraphs 4(b)(ii) and 4(b)(iv) of the Policy.
Respondent, for most of this section of the
Response, identifies many other ways in which a complainant could
possibly establish bad faith in a UDRP action, and systematically explains why
it did not act in bad faith according to these other standards. In each
case, Respondent makes only self-serving statements, never supporting any of
the assertions with evidence. In any case, these grounds were not raised by
Complainant.
In an attempt to counter Complainant's
evidence of bad faith under Paragraph 4(b)(ii),
Respondent grossly mischaracterizes the panel's decision in Ciccone v.
Parisi, D2000-0847 (WIPO Oct. 12, 2000). In that case, the complainant
alleged that the respondent's registration of <madonna.com> prevented the
complainant from reflecting her mark in the corresponding “.com” domain name,
and placed evidence on the record showing that the respondent had engaged in a
pattern of such conduct. The panel found
the record on the issue inconclusive; and it did not rely on that evidence for
its conclusion (i.e. to order a transfer of the domain name), presumably
because it was not necessary. Respondent in the present proceeding, however,
characterizes that statement as, "information that a Registrant holds
other domain names and that some happen to correspond to the names or marks of
others is inconclusive on the basis for finding bad faith and cannot
be relied upon as evidence for transfer of the domain name." This
assertion could not be more inaccurate. Paragraph 4(b)(ii)
of the Policy provides that the following, if found, shall be evidence
of bad faith registration and use:
(ii) you
have registered the domain name in order to prevent the owner of the trademark
or service mark from reflecting the mark in a corresponding domain name, provided
that you have engaged in a pattern of such conduct (emphasis added).
Thus, the conduct Respondent asserts cannot
be relied upon is expressly called out in the Policy. Complainant in its Complaint and exhibits
provided evidence that Respondent has established a pattern of registering many
domain names associated with famous individuals, preventing each of those
individuals from registering the domain names themselves. This is strong
evidence of bad faith use and registration.
In an attempt to counter Complainant's
evidence of bad faith under Paragraph 4(b)(iv),
Respondent asserts that his web site is not for financial and commercial gain.
Respondent asserts the web site is, instead, "a digital tribute museum to
Marlon Brando's works and life .... It is an
online Catalog Raisonné and virtual store where visitors can consult the
archives [which, again, do not exist] and contribute new information.. .." These assertions
just aren't credible.
Nothing Respondent asserts refutes the fact
that Complainant has established the third element in its Complaint.
Accordingly, this Panel should hold that Complainant has established this third
element.
FINDINGS
I make the following findings:
(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.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Procedural Issue: Policy applies
The Panel finds this dispute is within the scope of the Policy and within the Panel’s jurisdiction. See Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000):
This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ . . . Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.
Respondent cannot divest this Panel of jurisdiction by attempting to characterize this matter as simply a “trademark dispute.” Trademark issues are not only routinely considered in the context of Policy matters, but these issues must be considered in all Policy matters under the terms of the Policy. If Complainant did not have rights in some mark, the inquiry must end there and the requested relief cannot be granted.
Preliminary Issue: Standing
“Immediately upon Mr. Brando’s death, Complainant . . . assumed ownership and control of Marlon Brando’s assets, including the rights in his name, trademark, service mark, likeness and personality, and including his rights in the subject domain name registration.” Thus, the Panel concludes Complainant has standing to bring this claim. See CMG Worldwide, Inc. v. Page, FA 95641 (Nat. Arb. Forum Nov. 8, 2000) (finding that Princess Diana had common law rights in her name at her death and that those common law rights have since been transferred to the complainant, the representative of Princess Diana’s estate); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (transferring the <tupacshakur.org> domain name to the complainant, where the dispute was brought by the complainant’s estate on the complainant’s behalf).
Identical and/or Confusingly Similar
The Policy does not require Complainant to show that it has rights in a registered mark. Rather, it is sufficient to show common law rights in a mark for the purposes of Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); 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”).
Complainant has established common law rights in the MARLON BRANDO mark. The MARLON BRANDO mark became famous in the minds of the public at least as early as the 1950s when actor Marlon Brando began his career. While this Panel need not decide if Marlon Brando was indeed the “most well known actor…who ever lived…,” suffice to say he was well known to the public as an actor. The MARLON BRANDO mark became associated with the services provided by the individual Marlon Brando, including acting, entertaining, directing and producing. This Panel finds Complainant has established common law rights in the mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).
The <marlonbrando.net>
domain name is identical to Complainant’s MARLON BRANDO mark, because the
omission of the space between the words “Marlon” and “Brando” and the addition
of the generic top-level domain (gTLD) “.net” are irrelevant to determining the
similarity of a domain name to a mark under Policy ¶ 4(a)(i). See Croatia Airlines v. Kijong,
AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name
<croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES
trademark); see also Little Six, Inc. v. Domain For
Rights or Legitimate Interests
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Respondent is not commonly known by the <marlonbrando.net> domain name or the MARLON BRANDO mark. Neither Complainant nor Marlon Brando licensed Respondent to use the MARLON BRANDO mark in any way. Respondent’s attempts to disclaim all association with Marlon Brando on its website are not effective because they are not conspicuous. See AltaVista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that the respondent wishes to trade on the fame of the complainant’s trademark, regardless of the presence of a small-print disclaimer that is unavailable to Internet users until they have already entered the gambling site, because the disclaimer fails to remedy initial confusion). The WHOIS information for the disputed domain name lists Respondent as “thewordbank twb” – whose business model is to register the names of famous entertainers as domain names (a practice this Panel believes is prohibited under the Policy).
Respondent
has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001)
(finding that the respondent was not commonly known by the <mobilitytrans.com>
domain name because it was doing business as “Mobility Connections”).
Respondent lacks rights and legitimate interests in the <marlonbrando.net> domain name. While the web site links to other web sites, presumably selling authorized MARLON BRANDO memorabilia (such as Amazon.com), selling authorized memorabilia does not give the seller the right to use Complainant’s common law trademark generally. Respondent presumably gets a commission from such sales (such as through the Amazon.com Associates program). Respondent is using a domain name that contains Complainant’s mark to operate a commercial website that offers to sell products that display Complainant’s mark. Such use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(a)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
This Panel finds Respondent was not operating as a fan site. Even if Respondent was operating as a fan site, that does not establish rights or legitimate interests in the <marlonbrando.net> domain name under Policy ¶ 4(c). See Marino v. Video Images Prods., D2000-0598 (WIPO Aug. 2, 2000):
In fact, in light of the uniqueness of the name [<danmarino.com>], which is virtually identical to the Complainant’s personal name and common law trademark, it would be extremely difficult to foresee any justifiable use that the Respondent could claim. On the contrary, selecting this name gives rise to the impression of an association with Complainant, which is not based in fact.
Id.; see also Van Halen v. Morgan, D2000-1313 (WIPO Dec. 20, 2000) (finding that the respondent’s “expectation of developing a legitimate interest in the domain name,” which was used in connection with a fan-based website, was insufficient to establish rights or legitimate interests in the domain name); see also Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding that because a “Complainant has the right to decide how its mark will be used in the context of the product or products associated with the mark,” the unauthorized use of an identical domain name within that very context is not legitimate). To hold otherwise would be to invite a plethora of “fan” sites to take advantage of this exception.
Registration and Use in Bad Faith
Respondent registered the <marlonbrando.net> domain name to prevent Complainant from reflecting its MARLON BRANDO mark in a corresponding domain name. Furthermore, based on an article published in Artnet Magazine, Respondent has engaged in a pattern of such conduct by registering several domain names with the proper names of artists and celebrities. These circumstances are evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has a history of registering domain names that infringe on other trademark holders' rights; therefore, Respondent's registration and use of the <yourbigbackyard.com> domain name constitutes bad faith pursuant to Policy ¶4(b)(ii) because the domain name is identical to Complainant's YOUR BIG BACKYARD mark and prevents Complainant from reflecting its mark on-line.”); see also Société Air France v. Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the complainant provided evidence of a pattern of registration of “numerous other domain names” by the respondent).
Respondent is using the <marlonbrando.net> domain name to attract Internet users to Respondent’s website that offers to sell products featuring Complainant’s MARLON BRANDO mark and that contains links to third-party websites that sell related products. This is evidence that Respondent has registered and used the domain name in bad faith to attempt to divert Internet users for commercial gain by attracting users to Respondent’s website through a likelihood of confusion with Complainant’s MARLON BRANDO mark. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv).”); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the respondent registered the domain name <statefarmnews.com> in bad faith because the respondent intended to use the complainant’s marks to attract the public to the web site without permission from the complainant); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
Respondent provides a disclaimer in small text on the “contact” page of the website of the <marlonbrando.net> domain name, where most Internet users are not likely to see it. This disclaimer is not conspicuous. Internet users do not need to access the disclaimer to purchase MARLON BRANDO items from the website and there is no other disclaimer anywhere else on the website. Respondent’s use of such a disclaimer is not sufficient to negate a finding of bad faith registration and use pursuant to Policy ¶ 4(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to the complainant’s website on the respondent’s website).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlonbrando.net> domain name be TRANSFERRED from Respondent to Complainant.
Dated: August 16, 2005
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum