Blind Melon v. KWI 186 a/k/a Mark Makoul
Claim Number: FA0606000741833
PARTIES
Complainant is Blind Melon (“Complainant”), represented by David Rudich, of Law Offices of David Rudich, 9255 Sunset Boulevard, Suite 920, Los Angeles, CA 90069. Respondent is KWI 186 a/k/a Mark Makoul (“Respondent”), represented by Barbara L. Friedman, of Hanson, Bridgett, Marcus, Vlahos & Rudy, 425 Market Street, 26th Floor, San Francisco, CA 94105.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blindmelon.com>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.Com.
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.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 29, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 3, 2006.
On June 30, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.Com
confirmed by e-mail to the National Arbitration Forum that the <blindmelon.com> domain name is
registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that the
Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified
that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a
Directnic.Com registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 7, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 27, 2006 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@blindmelon.com by e-mail.
A Response was received late in hard copy on July 31, 2006 and
therefore the National Arbitration Forum has determined the Response to be
deficient according to Supplemental Rule 5(a).
On August 7, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David S. Safran as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that even though the name BLIND MELON is
unregistered, it has become famous and associated with Complainant as a musical
recording group and thus has common law rights in the BLIND MELON name. Complainant further contends that Respondent
is merely profiting from Complainant’s name and thus has no rights or
legitimate interests in the disputed domain name and is using it in bad
faith. Furthermore, Complainant contends
that Respondent has attempted to resell the disputed domain name to
Complainant.
B. Respondent
Respondent contends that Complainant has failed to establish that the
domain <blindmelon.com> was registered in bad faith. Respondent further contends that it was
Complainant that initiated discussions with respect to sale of the domain name
and that these proceedings are solely the result of Complainant’s inability to
acquire the domain name by purchase.
FINDINGS
Complainant has failed to provide any evidence
which would indicate that the domain name was acquired in bad faith and
Respondent has indicated that it was acquired legitimately from the prior owner
of the domain name <blindmelon.com>. Furthermore, Respondent has provided evidence that at least one
member of the band new of the website using the <blindmelon.com>
domain name, and the band has made use of and benefited from activities at the
<blindmelon.com> website for several years. Additionally, it is common public knowledge
that the band Blind Melon ceased to exist around 1995 after the death of one of
its band members and that surviving band members have and are performing in
differently named bands.
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.
Since the
panel finds that Complainant has not established that the Respondent has no
rights or legitimate interests in respect of the domain name; and that the
domain name has been registered and is being used in bad faith, the panel finds
it unnecessary to determine whether Complainant has rights in a trademark or
service mark relative to which the domain name is identical or confusingly
similar.
Respondent
contends that it has been using the <blindmelon.com>
domain name since 2000 to operate a fan website devoted to Complainant’s
music. Respondent claims that the
website became extremely popular after its registration and that fans of
Complainant posted over 20,000 messages at the website’s message board between
2001 and 2005. Respondent has provided
evidence that at least one member of Complainant has made use of the
Respondent’s website to post messages and provided Respondent CDs of its latest
releases to post on the website and agreed to let Respondent interview
Complainant for the website. As a
result, Respondent maintains, it is using the <blindmelon.com> domain name for a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). The
Panel finds that Respondent has rights or legitimate interests in the <blindmelon.com> domain name because
the operation of a fan website is a legitimate noncommercial or fair use
according to Policy ¶ 4(c)(iii). See
2001 White Castle Way, Inc. v. Jacobs, D2004-0001 (WIPO Mar. 26,
2004) (holding that the respondent had rights or legitimate interests in the
<patbenatar.com> domain name where the respondent was operating a fan
website with information on the complainant, a recording artist); see also
Pearl Jam, A Gen. P’ship v. Streaming Digital Media Dot Com, FA 235831
(Nat. Arb. Forum Mar. 29, 2004) (“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 Panel also
finds that such use of the domain name in association with Respondent’s fan
website was with the knowledge and at least tacit consent of Complainant which
made use of the website for Complainant’s benefit.
Respondent alleges that it registered the <blindmelon.com> domain name in good faith in order to maintain a fan website devoted to Complainant’s music. The Panel holds that Respondent’s operation of a fan website at the <blindmelon.com> domain name does not provide evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Van Halen v. Morgan, D2000-1313 (WIPO Dec. 20, 2000) (finding that the respondent did not register the <edwardvanhalen.com> domain name in bad faith where she had a desire to use the domain name for a fan site devoted to the complainant); see also Stuart. v. Marty Stuart Fan Page, FA 192600 (Nat. Arb. Forum Oct. 22, 2003) (finding that the respondent’s registration and use of a domain name to host a fan website was not bad faith because the domain name was registered in support of the complainant). The Panel finds the Stuart. v. Marty Stuart Fan Page case particularly relevant in view of the evidence that Complainant made repeated use of the website to further Complainant’s interests and in effect encouraged Respondent’s activities. Moreover, the Panel finds that having made use of the activities at Respondent’s website for Complainant’s own benefit, it is inconsistent for Complainant to then assert that such activities were adverse to its interests and in bad faith.
DECISION
Complainant having failed to establish two of the three elements
required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David S. Safran Panelist
Dated: August 21, 2006
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