Stevland Morris a/k/a Stevie
Wonder v. Enrique Matta
Claim Number: FA0805001189962
PARTIES
Complainant is Stevland Morris a/k/a Stevie
Wonder (“Complainant”), represented
by Stephen J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steviewondertickets.com>, registered
with Domainbank.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 9, 2008; the
National Arbitration Forum received a hard copy of the Complaint on May 12, 2008.
On May 12, 2008, Domainbank confirmed by e-mail to the National
Arbitration Forum that the <steviewondertickets.com> domain name
is registered with Domainbank and that
the Respondent is the current registrant of the name. Domainbank
has verified that Respondent is bound by the Domainbank
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 May 14, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 3, 2008 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@steviewondertickets.com by e-mail.
A four-paragraph electronic communication unaccompanied by any evidence
or other supporting documentation was received from Respondent via the Forum’s
website on June 2, 2008. The
communication was not received in hard copy by fax or mail, as required by the
Forum’s Supplemental Rules 5(c) and 5(d).
Nor did it include the statement certifying its accuracy that is
required by Paragraph 5(b)(viii) of ICANN’s Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”).
An Additional Submission was subsequently received from Complainant,
identifying various procedural deficiencies in Respondent’s communication and
responding in substance thereto.
On June 6, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
On June 9, 2008, the Panel entered a Procedural Order notifying the
Parties that the Panel would not consider the Respondent’s electronic communication. The Order granted Respondent leave to file a
Response no later than July 1, 2008, and stated that such Response would be
considered by the Panel only if it complied with and was submitted in
accordance with the applicable rules.
The Order further stated that any supporting evidence to be considered
by the Panel must be submitted with the Response.
The Panel’s Procedural Order also stated that the Panel would not
consider Complainant’s Additional Submission, but granted leave to Complainant
to file a new Additional Submission in the event that a Response was submitted
pursuant to the Order. The Panel ordered
that such Additional Submission be limited to matters properly within the scope
of such a submission, and clearly identify any grounds warranting consideration
of each matter addressed therein.
On June 24, 2008, Respondent resubmitted its previous communication electronically
and also submitted a copy by fax.
Complainant submitted a response to Respondent’s submission on June 27,
2008.
The Panel declines to consider Respondent’s submission because it lacks
the certification statement required by the rules. Even had the required certification been
included, Respondent’s claims would not be entitled to significant weight, as
they are unaccompanied by any supporting evidence. The Panel also declines to consider
Complainant’s response to Respondent’s submission.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a well-known musical artist who has performed for many
years under the stage name “Stevie Wonder.”
Complainant owns various trademark registrations for the STEVIE WONDER
mark in the
B. Respondent
For the reasons stated supra,
the Panel declines to consider Respondent’s procedurally deficient and
unsubstantiated submissions.
FINDINGS
The Panel finds that Complainant has rights
in the STEVIE WONDER mark; that the disputed domain name <steviewondertickets.com> is confusingly similar to this
mark; that Respondent lacks rights or legitimate interests in respect of the
disputed domain name; and that Respondent registered and is using the disputed
domain name 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.
The disputed domain name incorporates
Complainant’s mark in its entirety, appending the word “tickets,” which merely
describes a product within the scope of Complainant’s mark. The disputed domain name is therefore confusingly
similar to the mark.
Complainant alleges that Respondent is using
the disputed domain name for a website that promotes the sale of concert
tickets. The website appears to be devoted
primarily to the sale of tickets for Complainant’s own concerts, but the
website also enables users to search for tickets to other events as well.
It is not clear to the Panel whether
Respondent actually has tickets for Complainant’s concerts available for sale,
or whether in fact the website is designed merely to attract users seeking such
tickets and then profit from this traffic in some other manner. The prominent presence of a general ticket search
function on the website further suggests to the Panel that the mark is being
used at least in part to promote the sale of tickets to events other than
Complainant’s concerts. In either case,
Respondent’s use of the disputed domain name likely extends well beyond nominative
fair use, and thus would not qualify as bona
fide. See Bank of Am. Corp. v. Beitler,
FA 161463 (Nat. Arb. Forum July 24, 2003) (holding that use is not bona fide where respondent uses the mark
to divert customers to a much broader offering of goods or services, rather
than merely those properly described by the mark).
Complainant has made a prima facie showing that Respondent lacks rights or legitimate
interests in respect of the disputed domain name, and the burden of production
therefore shifts to Respondent to come forward with concrete evidence of such
rights or interests. See e.g. Am. Online, Inc. v. Thricovil,
FA638077 (Nat. Arb. Forum Mar. 22, 2006).
Respondent has not done so, and the Panel accordingly finds that
Respondent lacks rights or legitimate interests.
Complainant alleges that Respondent
registered and uses the disputed domain name in an attempt to purposely attract
Internet users seeking Complainant’s goods and services, and to benefit
commercially thereby. The evidence
before the Panel is consistent with this allegation, and such evidence supports
a finding of bad faith registration and use under
Paragraph 4(b)(iv) of the Policy. The Panel so finds.
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 <steviewondertickets.com> domain name
be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 9, 2008
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