Margaritaville Enterprises,
LLC v. Whapp Innovations
Claim Number: FA0702000921853
PARTIES
Complainant is Margaritaville Enterprises, LLC (“Complainant”), represented by Ronald
D. Green, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jbuffett.com>, <buffettuniversity.com>, <jimmybuffettuniversity.com> and <universityofbuffett.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.
Joel M.
Grossman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 22, 2007; the
National Arbitration Forum received a hard copy of the Complaint on February 23, 2007.
On February 22, 2007, Dotster confirmed by e-mail to the National
Arbitration Forum that the <jbuffett.com>, <buffettuniversity.com>, <jimmybuffettuniversity.com> and <universityofbuffett.com>
domain names are registered with Dotster
and that the 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 23, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 15, 2007 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@jbuffett.com,
postmaster@buffettuniversity.com, postmaster@jimmybuffettuniversity.com and postmaster@universityofbuffett.com by e-mail.
A timely Response was received and determined to be complete on March 15, 2007.
On March 20, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel M. Grossman as Panelist.
On March 20, 2007 Complainant submitted an
Additional Statement and on March 20, 2007 Respondent submitted a Response to
Complainant’s Additional Statement.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges first that all four domain names are identical or
confusingly similar to its trademarks. Complainant,
Margaritaville Enterprises, LLC, is controlled by popular singer Jimmy Buffett,
and Complainant and Mr. Buffett have held trademarks in the Jimmy Buffett name
since 1973. The four domain names
contain either the entirety or a substantial part of the “Jimmy Buffett” mark,
and are all either identical to or confusingly similar to the mark. Complainant next contends that Respondent has
no legitimate rights or interests in the domain names. Complainant points out that Respondent is not
commonly known by any of the names, and has no license or consent from
Complainant or Mr. Buffett to use the names, and does use the names for the bona fide sale of goods or services. Complainant asserts that the domain names are
not for noncommercial fan sites, but instead are being used for commercial
products and to deceive the public (especially Jimmy Buffett fans) into
thinking that the sites are authorized places to buy Jimmy Buffett books,
albums or memorabilia. Finally,
Complainant asserts that the domain names were registered and are being used in
bad faith. Complainant notes that
Respondent was clearly aware of the mark at the time of registration, and
registered the names notwithstanding this knowledge, for the purpose of
confusing the public, especially Jimmy Buffett fans. Again, Complainant asserts that these are not
noncommercial fan sites, because the sites either directly sell merchandise to
the public, in competition with Complainant, or are used for click-through fees
to unrelated websites.
B. Respondent
Respondent does not dispute the validity of Complainant’s trademarks,
or that the domain names are similar to the JIMMY BUFFETT mark. Rather, Respondent contends that its sites are
noncommercial fan sites and that as such the similarity does not lead to
violation of the Policy. Respondent
cites other decisions allowing use of a celebrity’s name in a domain name when
the website is for noncommercial purposes. Second, Respondent asserts that as a Jimmy
Buffett fan it has legitimate rights in a fan website. Respondent further notes that it has operated
a fan website for eight years with no objection by Complainant or Mr. Buffett. In fact, Complainant’s marketing department
sends Respondent e-mails with press releases containing information about Mr.
Buffett. Respondent says that these e-mails show that Complainant in fact has
consented to the domain names. Respondent
further asserts that it is not using the domain names commercially, but only as
a fan website. For the same reasons,
Respondent asserts that the domain names were not registered and are not being
used in bad faith.
C. Additional Submissions
In its Additional Submission, Complainant reviews the history of the
commercial use of the <jbuffett.com>
website, noting that at first it was linked to the commercial CDNow site and
then linked to <amazon.com>. Complainant seeks to refute Respondent’s
assertion that it has made no money from the site, noting that Amazon.com’s
policy is to pay third parties which direct traffic to their site. Complainant also provides evidence of a link
to the purchase of Rolling Stones tickets.
Respondent’s Response to Complainant’s Additional Submission generally
repeats the arguments set forth in the initial response, emphasizing that the
sites are legitimate, noncommercial fan websites.
FINDINGS
The Panel finds as follows:
(1)
all four
domain names are identical to, or confusingly similar to Complainant’s JIMMY
BUFFETT mark;
(2)
Respondent
has no rights or legitimate interests in any of the four domain names; and
(3)
All four
domain names were registered and are 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.
It cannot be, and is not contested that each
of the four domain names contains the entirety or a significant portion of the JIMMY
BUFFETT mark. The domain name <jimmybuffettuniversity.com> contains
the entirety of the mark. The additional
term “university” does not eliminate any confusion. See
Hewlett-Packard Co. v. Posch Software, FA 95322 (Nat.
Arb. Forum Sept. 12, 2000) (addition of the word “software” to the HP mark does
not avoid confusion). See also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (“neither the addition of an ordinary
descriptive word … nor the suffix ‘.com’ detract from the overall impression of
the dominant part of the name in each case, namely the trademark SONY”). The other marks, while they do not contain the
entirety of the JIMMY BUFFETT mark since they omit the name “Jimmy,” are still
confusingly similar, and obviously meant to induce Jimmy Buffett fans to visit
these websites. Thus, <jbuffett.com> clearly indicates
by the initial “j” that the site is related to Jimmy (as opposed to financier
Warren) Buffett. The other two domain
names, <buffetuniversity.com> and <universityofbuffett.com>, while
lacking the name “Jimmy” or the initial “j,” are still confusing enough to
mislead the public, and especially Jimmy Buffett fans, into believing that the
sites were authorized by the singer. Indeed,
in its response, Respondent states that its selection of the domain names <universityofbuffet.com>, <buffetuniversity.com> and <jimmybuffettuniversity.com> was
to: “educate and inform fans about Jimmy Buffett.” Thus, Respondent does not in any way contest
the fact that these domain names are either identical to or confusingly similar
to Complainant’s mark.
Complainant asserts, and Respondent does not
dispute, that Respondent is not commonly known by the names. Second, Complainant asserts, and Respondent
does not dispute, that Respondent is not using the names for the bona fide sale of goods or services. Under the Policy, the only other way
Respondent can prevail is to demonstrate that it is making a legitimate
noncommercial use of the domain names. In
this regard, Respondent contends that its websites are in the same legal
position as other noncommercial fan websites which have been recognized as
legitimate in other decisions. See, e.g., Springsteen v. Jeff Burger and
Bruce Springsteen Club, D2000-1532 (WIPO Jan. 25, 2001). However, the key issue in whether fan websites
will be deemed legitimate and noninfringing is whether they are noncommercial,
and purely tribute sites, or sites to foster discussion about or knowledge
about a celebrity. In the instant case,
Respondent has used, or is currently using, all four domain names for
commercial purposes. Respondent concedes that it has used the <jbuffett.com> mark in the past
to post links to other commercial sites where fans could purchase Jimmy Buffett
materials, such as CDs, books and other Jimmy Buffett merchandise. Respondent claims that this site is no longer
doing so. The Panel has viewed the site
and did not see such links. However, Complainant
points out that until very recently there was a link to a site called
Parrotphernalia, where visitors could purchase Jimmy Buffett paraphernalia, and
as the Panel observed, there is still at least one link—to a website
advertising vacations in
It is clear that Respondent registered these
domain names with full knowledge of Complainant’s mark, evidencing bad faith
registration. See, e.g., TM Acquisition Corp. v.
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 <jbuffett.com>, <buffettuniversity.com>, <jimmybuffettuniversity.com> and <universityofbuffett.com>
domain names be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: April 2, 2007
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum