DECISION

 

The Estate of Stevie Ray Vaughan v. Maxory LLC

Claim Number: FA2402002081987

PARTIES

Complainant is The Estate of Stevie Ray Vaughan ("Complainant"), represented by John C. Cain of Munck Wilson Mandala, LLP, Texas, USA. Respondent is Maxory LLC ("Respondent"), Saint Kitts and Nevis.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <stevierayvaughan.com>, registered with NameCheap, Inc..

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Gerald M. Levine as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 1, 2024; Forum received payment on February 1, 2024.

 

On February 1, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <stevierayvaughan.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On February 6, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2024 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@stevierayvaughan.com. Also on February 6, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

A timely Response was received and determined to be complete on February 20, 2024.

 

On February 21, 2024, the Complainant filed an Additional Submission.

   

On February 21, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Gerald M. Levine as Panelist.

 

On February 27, the Respondent filed an Additional Submission which the Panel has not accepted.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

COMPLAINANT'S AND RESPONDENT'S ADDITIONAL SUBMISSIONS 

The 3-member Panel in Akamai Technologies, Inc. v. Cloudflare Hostmaster / Cloudflare, Inc., FA2201001979588 (Forum March 9, 2022) pertinently noted that "Under Paragraph 12 of the Rules, the Panel has the sole discretion to request additional statements or documents from the Parties. Parties have no right to require the Panel to consider supplemental submissions; rather, it is within the discretion of the Panel to accept or consider unsolicited additional submissions." Here, Complainant's Additional Submission repeats its argument. The Panel does not accept this part of the Additional Submission, but it also includes research from Domain Tools that the Panel finds is relevant for deciding this case. Accordingly, the Panel accepts the Additional Submission for the independent research.

 

The Panel does not accept Respondent's Additional Submission as it essentially repeats his rebuttal with variation from the Response.

 

PARTIES' CONTENTIONS

A.       Complainant 

Complainant is the Estate of Stevie Ray Vaughn and the owner of the mark STEVIE RAY VAUGHN registered by the United States Patent and Trademark Office on February 1, 2005. It states that "Stevie  Ray Vaughan was a musician, singer, songwriter, record producer, and guitarist, widely known as one of the most influential blues musicians and guitarists of all time. Prior to his tragic death in 1990, Stevie Ray was the lead singer and guitarist for the nationally-famous band Double Trouble, and he headlined concerts in such internationally famous venues as New York's Carnegie Hall. Over the years, Stevie Ray Vaughan albums have sold over 15 million copies in the United States alone. The six-time Grammy winner was inducted into the Rock n Roll Hall of Fame in 2015 for his impact as 'The second coming of blues.'" 

The Additional Submission informs the Panel that the disputed domain name was created on March 7, 2000 and was initially held through 2012 in the name of "Jimmie Vaughan Productions." Complainant offers no explanation as to why "Jimmie Vaughan Productions" abandoned the disputed domain name. 

Between 2012 and 2013 the disputed domain name was held by several different registrants. It further appears from the Domain Tools research that the Respondent acquired the disputed domain name on or about May 27, 2013. The Complainant alleges that "[a]fter being listed for sale by owner throughout 2013, according to the Internet Archive, since December 18, 2014 the domain name had been used for what owner labels as a 'Stevie Ray Vaughan Fan & Tribute Site.' This featured a single page of Stevie Ray Vaughan facts, links to some Stevie Ray Vaughan videos, and a page generally about the Los Angeles Blues Music Scene." 

Included in Complainant's Annexes are snapshots of successive websites for <stevierayvaughan.com> some of which include advertisements for products unrelated to the fan material of the disputed domain name.  

 

B. Respondent

Respondent denies that it registered or used (and is using) the disputed domain name in bad faith. It states that in "the summer of 2013, Respondent, a long-time blues aficionado desired to build a fan site in tribute to Stevie Ray Vaughan (SRV), who was held in highest esteem." It disputes "Complainant['s] attempt[ ] to illegitimatize Respondent's independent fan site as a bona fide offering through a series of false assertions and selective evidence submissions while inconspicuously omitting key details. Complainant tries to paint a picture of a website that 'functions as a parking page' and in doing so neglects the site's 10 year continuous operating history, 2500+ words of content, videos, original photography, news, and related fan links."

Respondent does not deny that some of the successive websites contain offers to purchase third-party merchandise, but states that the "website is purely informational, does not infringe on the TM or confuse visitors who are seeking to buy these types of artist merchandise."

When Respondent acquired <stevierayvaughan.com> in 2013 it had immediately been held by two earlier holders. The Respondent states that it was being offered for "sale to the public in a large domain marketplace" and as it was of interest to the Respondent as "a long-time blues aficionado," he acquired it.    

  

Respondent openly discusses his current experimentation with Google to optimize <stevierayvaughan.com>. He states that "[a]t the end of the experiment, Google implements the combination that in their analysis provides the best user experience. The site was still in its 90-day experimental phase at the time of the UDRP filing."

 

FINDINGS  

Panels have pertinently noted as does the Panel in LIBRO AG v. NA Global Link Limited, WIPO Claim No. D2000-0186 that "[t]he UDRP is very narrow in scope; it covers only clear cut cases of 'cybersquatting' and 'cyberpiracy', and does not cover every dispute that might rise over domain names." 

There is in this dispute a claim that when the Respondent acquired the disputed domain name it offered it for sale. Standing alone that would condemn the Respondent as a cybersquatter, but in 2014 it posted a fan site that on inspection appears to fulfill the expectations of such an undertaking and has been continually active since that date as a fan site. It is unclear to the Panel whether the 2013 snapshots were leftovers from the immediate prior registrant, but given the later history of the website it is not prepared to draw a negative inference.

On these grounds, and as more fully set forth in the sections below, the Complaint is denied and the disputed domain name shall remain with the Respondent. It is the Panel's view that this dispute is outside the scope of the Policy and that its ultimate  resolution belongs in a court of competent jurisdiction that affords parties the opportunity of developing a more complete record of the facts surrounding the acquisition of the disputed domain name and the Respondent's intentions for acquiring it. This decision does not constrain Complainant from pursuing this matter further.

 

With regard to Complainant's evidence that an anonymous someone in 2008 complained that Respondent was a cybersquatter is of no account since it was never pursued. In respect to those contentions, the Panel has taken account of the fact that the database of decisions which exceeds 100,000 includes none that would implicate the Respondent as a cybersquatter. The Panel draws no inferences from the fact that the Respondent uses a privacy shield, holds over 100 domain names, and is conscious of SEO issues that with adjustments increases visibility of <stevierayvaughan.com>.     

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 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.

 

Identical and/or Confusingly Similar

Complainant must satisfy two requirements to maintain a UDRP proceeding. First that it has a trademark in which it has rights; and second, that the disputed domain name is either identical or confusingly similar to that mark.

Complainant has shown that it owns a trademark for STEVIE RAY VAUGHN registered on February 1, 2005 with the USPTO Registration No. 2,922,066. WIPO Overview (3.0), Sec. 1.2.1 "Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case." 

The second requirement of paragraph 4(a)(i) calls for a side-by-side comparison of domain name and mark. The disputed domain name <stevierayvaughan.com> is identical to Complainant's mark. As such Complainant also satisfies the second of the two requirements. 

Accordingly, Complainant has standing to maintain this UDRP proceeding.

Rights or Legitimate Interests

In addressing the issue of rights and legitimate interests for fan sites identical to a complainant's duly registered trademark the determination must be based on its content as originally presented and its maintenance over time. WIPO Overview (3.0), Sec. 2.7.1 states: "As with criticism sites [. . .] for purposes of assessing fair use under UDRP paragraph 4(c)(iii), a respondent's fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant site." 

 

Complainant contends that the disputed domain name was offered for sale upon its registration, and this point is confirmed by the snapshots from <archive.com> which are in the record. Then, in 2014 Respondent posted the fan site that the Complainant argues "there is no active use" and is simply "a static information sheet." Nevertheless, these snapshots from <archive.com> through to the present confirm the longevity of what Complainant alleges is only a "purported" fan site.

 

Complainant cites a number of cases in support of its contention that overall are consistent with the consensus views set forth in the WIPO Overview. The Panel in Jeem, Inc. v. Barto Enterprises, Inc., Philip Barto, WIPO Case No. D2007-1841 citing earlier authority, held that "legitimate fan site requires an active use, not simply a static information sheet. Panels have described legitimate noncommercial fan sites as those that 'provided current information and often the opportunity for fans to learn about and discuss various topics related to their subject. They typically included non-commercial activities, not a static information sheet. As such these fan sites functioned similarly to a noncommercial business, often with activities that were independent of the website,'" 

 

But where the record reflects that "before any notice to Respondent of the dispute [. . .] [it] appears that Respondent was using the Domain Name in connection with a bona fide goods or services [. . .] in connection with a web site to share information on the author Gary Jennings [,] [t]he Panel finds on this basis that Respondent has a legitimate interest in the Domain Name," Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross, WIPO Claim No. D2001-1042.

 

The Panels in these cases do not reflect different views as they underscore that the determination rests on the facts of the case. Here, as the Complainant states a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to explain its registration and use of <stevierayvaughan.com>.

 

This Panel visited <stevierayvaughan.com>, as it may, to assess the genuineness of the Respondent's "independent fan site" and whether it is "genuinely noncommercial." In addition to the landing page that offers a one-page biography of Stevie Ray Vaughan there are interior pages titled SRV Contemporaries, Austin Music TX Scene, Double Trouble (that is, the name of SRV's band ), and The Los Angeles Blues Music Scene. Altogether. The format has remained constant since 2014. It appears to the Panel to provide "the opportunity for fans to learn about and discuss various topics related to their subject" and fulfils the expectations of such a website.

 

While the website does display commercial offerings, it is modest and from evidence Respondent submits modest too the financial benefits: "Advertising has been used to help offset the costs of maintaining the website. The nominal revenue generated by the ads was not enough to cover costs however and the site has operated at an operating loss since launch. The Panel is not in a position to determine the truth of these assertions or whether they impugn the Respondent or undermine the alleged good faith in creating a fan site for Stevie Ray Vaughan.  

 

The basis for Complainant's criticism of Respondent's fan website appears to be that it does not offer enough to justify it as a genuine fan website. Complainant is also critical of Respondent's attempt to make the <stevierayvaughan.com>. It sees it as a subterfuge for commercializing the website. This is not supported by the evidence. The Respondent points out that the website has been improved over the years: "[T]he website was launched in early 2014. It started with just a single content page. The idea was to get it published ASAP so the search engines could start indexing it [. . .]. By [November 19, 2014] it had 2 content pages and a curated list of YouTube videos. Th[e] 2015 snapshot[ . . .] shows the site had posted news of the artist's posthumous induction into the Rock & Roll Hall of Fame. In 2018, viewer comments were enabled on the site pages in an attempt to make the site more interactive. Combating comment spam proved too burdensome however and the feature was later disabled. Fans could still interact with the site through the online contact form which remains active and monitored to this day."

 

The issue is not size of content but that the content is presented genuinely to honor the subject. There is no reason to discredit Respondent's assertion he was "a long-time blues aficionado who desired to build a fan site in tribute to Stevie Ray Vaughan (SRV), who was held in highest esteem.". As I previously noted, "Maxory LLC" has no history of being a cybersquatter.

 

In criticizing Respondent's content, there appears to be a contradiction in Complainant's argument that "[N]o where in its response does Respondent explain how it has attempted to reach fans of Stevie Ray Vaughan or provide valuable content on the website to establish a true fan site. [. . .]. Respondent clearly seeks only to optimize the website's SEO to increase its value." The evidence, rather, supports Respondent's attempt to reach other "aficionados".

 

Accordingly, for the purposes of the UDRP, the Complainant has not satisfied its burden of proving that the Respondent lacks rights or legitimate interests in <stevierayvaughan.com>.

 

Registration and Use in Bad Faith

The issue of bad faith registration and use is intention to take advantage of an  owner's goodwill and reputation of its mark. This assumes more than the evidence establishes in this case. The Respondent states that "[i]n the summer of 2013, Respondent, a long-time blues aficionado, desired to build a fan site in tribute to Stevie Ray Vaughan (SRV), who was held in highest esteem." 

 

Although there may be suspicion that this was not Respondent's true intention given the 2013 snapshots offering the disputed domain name for sale, the Panel is not prepared to question Respondent's credibility. The 2013 snapshots could as equally be leftovers from the immediate prior registrant or even landing pages created by the registrar awaiting content for the newly registered domain name.  

 

There is no supporting evidence that Respondent has violated any of the circumstances set forth in paragraph 4(b)(i -iv). Complainant's view that the resolving website is not a true fan site, that it is does not offer enough, that it is only a place holder, is merely contention not proof. Whether this is so or not depends on one's perspective, but for the purposes of the UDRP there is not sufficient evidence to establish conjunctive bad faith. If as Complainant argues Respondent is in the process of grooming <stevierayvaughan.com> as a commercial enterprise, and that is the reason for Respondent experimenting with new SEO models that is a claim better pursed in a court of competent jurisdiction. It is outside the scope of the UDRP.

 

It is in regard to these issues that the claim is not a clear cut case of cybersquatting and outside the scope of the Policy. Accordingly, Complainant has not satisfied its burden in proving that the Respondent registered and is using the disputed domain name in bad faith.

 

REQUEST FOR RDNH

The Respondent urges the Panel to sanction Complainant for reverse domain name hijacking. The Panel in Breazy Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / VR PRODUCTS I LLC., WIPO Claim No. D2021-1486 held that "[A] request for a finding of Reverse Domain Name Hijacking is an equitable remedy, and equitable relief should only be available to a party who comes before a panel with clean hands."

 

A question of unclean hands based on the 2013 offers to sell the disputed domain name cannot be dismissed as though it makes no difference in assessing Respondent's intentions at that time. The consensus is that bad faith is measured at the time of registration and that later attempts to "launder" past infringement does not cure the infringement, Nintendo of America Inc. v. Sebastian Pozzi, FA2302002030700 (Forum March 27, 2023) ("The Respondent cannot launder his prior illegitimate use of the Disputed Domain Name by reforming his ways and converting all of his use to an alleged fair use.")

 

While Respondent denies bad faith intentions, and even though the Panel has found that <stevierayvaughan.com> meets the minimal requirements for a fan site, there is nevertheless the 2013 offers to sell <stevierayvaughan.com>. For this reason, the request for reverse domain name hijacking is denied.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <stevierayvaughan.com> domain name REMAIN WITH Respondent.

 

 

Gerald M. Levine Panelist

Dated: February 29, 2024