Stevland Morris a/k/a Stevie Wonder v. BUZZerk! Marketing
Claim Number: FA1008001339314
Complainant is Stevland
Morris a/k/a Stevie Wonder (“Complainant”),
represented by Stephen J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <steviewonderfest.com> and <steviewonderfestival.com>, registered with GoDaddy.com, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2010.
On August 6, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <steviewonderfest.com> and <steviewonderfestival.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 August 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@steviewonderfest.com and postmaster@steviewonderfestival.com by e-mail. Also on August 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <steviewonderfest.com> and <steviewonderfestival.com> domain names are confusingly similar to Complainant’s STEVIE WONDER mark.
2. Respondent does not have any rights or legitimate interests in the <steviewonderfest.com> and <steviewonderfestival.com> domain names.
3. Respondent registered and used the <steviewonderfest.com> and <steviewonderfestival.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Stevland Morris a/k/a Stevie Wonder, is an entertainer and musical artist who performs under the distinct stage name and mark: STEVIE WONDER. Complainant’s music career spans forty years, during which time Complainant won more than twenty-five Grammy awards and numerous other recognitions. Complainant owns trademark registrations for the STEVIE WONDER mark with trademark offices around the world, including the Australian Trademarks Office (“ATO”), the United States Patent and Trademark Office (“USPTO”), and the European Union Office for Harmonization in the Internal Market (“OHIM”):
ATO
Reg. No. 892,736 issued October 22, 2001;
USPTO
Reg. No. 2,600,739 issued July 30, 2002;
Reg. No. 2,604,279 issued August 6, 2002; and
OHIM
Reg. No. 002406338 issued March 17, 2003.
Respondent, BUZZerk! Marketing, registered the <steviewonderfest.com> and <steviewonderfestival.com> domain names on May 10, 2010. Respondent’s disputed domain names resolve to directory websites featuring listings of pay-per-click links to third-party websites that relate to music and other unrelated websites.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
Complainant owns trademark registrations for the STEVIE WONDER mark with trademark offices around the world, including the ATO, the USPTO, and the OHIM:
ATO
Reg. No. 892,736 issued October 22, 2001;
USPTO
Reg. No. 2,600,739 issued July 30, 2002;
Reg. No. 2,604,279 issued August 6, 2002; and
OHIM
Reg. No. 002406338 issued March 17, 2003.
The Panel may find that Complainant’s protection of its STEVIE WONDER mark through registration with trademark offices around the world is sufficient to establish that Complainant possesses rights in the mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues that Respondent’s <steviewonderfest.com> and <steviewonderfestival.com> domain names are confusingly similar to Complainant’s mark because the disputed domain names consist of only minor variations to Complainant’s mark: the space between the two names is deleted, the generic terms “fest” (abbreviation for “festival”) or “festival” are added, and the generic top-level domain (“gTLD”) “.com” is attached. The Panel finds that the addition of generic terms like “festival” or “fest” to Complainant’s mark to create the disputed domain names is insufficient to create distinct domain names that are not confusingly similar. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel also finds that deleting the space between terms and adding a gTLD do not differentiate the disputed domain names from Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel finds, therefore, that Respondent’s <steviewonderfest.com> and <steviewonderfestival.com> domain names are confusingly similar to Complainant’s STEVIE WONDER mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
In arguing that Respondent lacks rights and legitimate interests in the disputed domain names, Policy ¶ 4(a)(ii) requires that Complainant first present a prima facie case against Respondent before the burden transfers to Respondent to demonstrate rights and legitimate interests. The Panel finds that Complainant satisfied its burden to put forth a prima facie case but that Respondent failed to satisfy its burden due to its lack of a Response. As a result, the Panel finds that Complainant’s allegations may be regarded as true and that Respondent has not demonstrated any rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). In the interest of making a complete determination on the issue, however, the Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors.
Complainant asserts that it has no relationship with Respondent and has not given Respondent permission or authorization to use Complainant’s STEVIE WONDER mark in the <steviewonderfest.com> and <steviewonderfestival.com> domain names. Complainant argues that Respondent is also not commonly known by the disputed domain names. The Panel finds that the WHOIS information for the disputed domain names lists the registrant as “BUZZerk! Marketing,” evidencing no association between Respondent and the disputed domain names. The Panel thus finds that Respondent is not commonly known by the disputed domain names and lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant contends that the only function of the <steviewonderfest.com> and <steviewonderfestival.com> domain names is to direct Internet users to websites displaying pay-per-click links to third-party websites related to music and other unrelated websites. The Panel finds that using the disputed domain names in connection with a scheme to profit from a pay-per-click directory is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant alleges that Respondent uses the <steviewonderfest.com> and <steviewonderfestival.com> domain
names in order to capitalize on the fame of Complainant’s STEVIE WONDER mark and
drive Internet traffic to Respondent’s pay-per-click website. Complainant argues that Respondent uses
Complainant’s mark to profit from the pay-per-click links and click-through
fees generated when the misled Internet traffic clicks on any of the
links. Complainant contends, therefore,
that Respondent’s use of Complainant’s mark is intended to confuse Internet
users and create profit, revealing bad faith registration and use under Policy
¶ 4(b)(iv). The
Panel finds accordingly. See
The Panel finds Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <steviewonderfest.com> and <steviewonderfestival.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 22, 2010
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