Stevland Morris a/k/a Stevie Wonder v.
Unofficial Fan Club c/o Web Master
Claim Number: FA0504000453986
PARTIES
Complainant
is Stevland Morris a/k/a Stevie Wonder (“Complainant”), represented by Stephen J. Strauss of Fulwider Patton Lee & Utecht, LLP, 6060 Center Drive, Tenth Floor, Los
Angeles, CA 90045. Respondent is Unofficial Fan Club c/o Web Master (“Respondent”),
JaLan Cempaka, Block B4, No #35, Pamulang, Indah, Jakarta Selatan 11530.
REGISTRAR AND DISPUTED DOMAIN NAME
The
disputed domain name is <steviewonder.com>,
which is registered with Enom, Inc.
(“Enom”).
PANEL
The
undersigned, David H. Tatham, 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 11, 2005.
On
April 11, 2005, Enom confirmed by e-mail to the National Arbitration Forum that
the disputed domain name <steviewonder.com>
is registered with Enom and that Respondent is the current registrant of the
name. Enom has verified that Respondent
is bound by Enom’s registration agreement and has thereby agreed to resolve
domain name disputes brought by third parties in accordance with the Uniform
Domain Name Dispute Resolution Policy (the “Policy”) of the Internet
Corporation fort Assigned names and Numbers (“ICANN”).
On
May 4, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 24,
2005 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@steviewonder.com by e-mail.
Respondent
requested an extension of the response period and this was granted by the
National Arbitration Forum on May 24, 2005 extending the period until May 31,
2005. A Response was received and determined to be timely and complete on May
31, 2005.
Timely
Additional Submissions were filed by Complainant on June 6, 2005 and by
Respondent on June 11, 2005. In accordance with the National Arbitration Forum
Supplemental Rule 7 these were deemed to be acceptable. They are summarized
below and, so far as they are relevant, the Panel has taken them into account.
On June 8, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David H. Tatham as Panelist.
The Panel notes that the Complaint is a “Second Amended
Complaint,” however no explanation as to why this should be has been provided,
and nothing hangs on it.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY REMARK
Complainant is a male individual so it is right that in
this Decision the Panel should refer to him in the third person singular as
‘he.’ The Response refers, at times, to Respondent in the third person plural
as ‘we’ or ‘our’ even though the full name of Respondent is ‘Unofficial Fan
Club.’ The Panel will therefore refer hereafter to Respondent as ‘they.’
FACTS
Complainant
Complainant, Stevland Morris, is an internationally famous
entertainer and musical artist who performs under the distinctive stage name
STEVIE WONDER. Spanning a remarkable
career of forty years, the winner of more than fifteen Grammy Awards (including
Best Male Vocalist in both pop and rhythm & blues), as well as the 1984
Academy Award for Best Original Song, Mr. Morris is one of the most influential
and famous musicians and composers of the late 20th Century.
Copies of articles and listings from various encyclopedias and
dictionaries, all referring to and describing Complainant and his achievments
were annexed to the Complaint.
Complainant
is the owner of several trademark registrations for the words STEVIE WONDER –
two each in the United States (Reg. Nos. 2,600,739 and 2,604,279) and Mexico
(Reg. Nos. 513,376 and 513,377), and one each in Australia (Reg. No. 892,736)
the European Union (Reg. No. 2,406,338) and the United Kingdom (Reg. No.
2,283,734). All of these registrations cover, inter alia, sound and
video recordings and entertainment services, and copies of the Registration
Certificates for all of them were annexed to the Complaint.
Respondent
Respondent
operates an unofficial fan club for the performer Stevie Wonder and attracts
members to it via a web site at the disputed domain name.
PARTIES’ CONTENTIONS
In
the following summary of Complainant’s and Respondent’s contentions, some of
the references to legal or UDRP Decisions have been omitted.
A.
Complainant
Complainant
contends as follows –
A. That the Domain Name is Identical to a
Trademark and Service Mark in Which the Complainant Has Rights.
·
Respondent
registered the disputed domain name on March 4, 1999. It incorporates, in its
entirety, Complainant’s STEVIE WONDER trademark.
·
Respondent
uses the disputed domain name differently at different times. Sometimes, it resolves into a web site
having banner and pop-up advertisements and the following legend:
“To Join the Unofficial Fan
Club,
please drop one email to:
We
promise not to share your email address with third parties
and
we will not send you information other than non commercial artist related
news.”
No
reference to Complainant or his STEVIE WONDER trademark is made anywhere on
this site.
At
other times, the web site resolves into another web site that provides links to
other commercial web sites relating to or involving various musical celebrities
and groups (as well as Complainant).
Copies
of both versions of the web site were annexed to the Complaint.
The Respondent Has No Rights or
Legitimate Interests In Respect of the Domain Name
·
Complainant
has common law and United States and foreign registered rights in and to the
STEVIE WONDER name and mark, and the name and mark have acquired secondary
meaning. The contested domain name is
virtually identical to this name. As
such, Respondent’s registration and use of the <steviewonder.com>
domain name infringes Complainant’s trademark rights and creates a likelihood
of confusion under Section 2(d) of the United States Trademark Law. The domain name also dilutes the
distinctiveness and fame of the Complainant’s rights in the STEVIE WONDER mark
and name in violation of Section 43(c)(1) of the United States Trademark Law.
·
Complainant
has no relationship with Respondent, nor has Complainant given permission or
authorized Respondent to register and use the disputed domain name.
·
To the best
of Complainant’s knowledge, Respondent has not been commonly known by the
contested domain name.
·
Complainant
submits that Respondent had knowledge of Complainant's rights in the STEVIE
WONDER mark and name when it registered the <steviewonder.com> domain
name.
·
The
disputed domain name is so confusingly similar, that a reasonable Internet user
would assume the domain to be somehow associated with Complainant and with his
well-established and registered STEVIE WONDER mark.
The Domain Name Was Registered
and is Being Used in Bad Faith
·
Respondent
has registered the disputed domain name, <steviewonder.com>, in
bad faith under Paragraph 4(b)(ii) of the Policy. In addition to registering the disputed domain name, Respondent
has registered domain names that incorporate the names of other internationally
recognized musical artists including <annielennox.com> and
<anidifranco.com>. Copies of
WHOIS Search Result abstracts evidencing Respondent's registration of these domain
names were annexed to the Complaint. Respondent's multiple registration of
domain names incorporating the names of famous musical artists establishes a
pattern of conduct preventing Complainant from reflecting his STEVIE WONDER
mark and stage name in a corresponding domain name.
·
Additionally,
Respondent has engaged in a pattern of bad faith conduct by registering and
using the disputed domain name in an attempt to purposely attract Internet
users seeking Complainant online to Respondent’s commercial web site. Respondent presumably derives commercial benefit
by receiving click-through fees for redirecting Internet users to other
commercial web sites. Thus,
Respondent’s attempts to divert Internet users for commercial gain by
attracting these users to Respondent’s web site through a likelihood of confusion
with Complainant’s mark is evidence of bad faith registration and use under
Paragraph 4(b)(iv).
·
The
disputed domain name is so obviously connected with Complainant, that use and
registration by Respondent (who has no connection with Complainant) establishes
bad faith.
B.
Respondent
Respondent
contends as follows –
That
the Domain Name is Not Identical to a Trademark and Service Mark in Which the
Complainant Has Rights
·
The disputed domain name is not confusingly similar to Complainant’s trademarks which were
obtained three and four years after it began to be used. The web site at the
disputed domain name does not lead people to any conclusion other than it is an
“Unofficial” Fan Club, one of dozens around the world. Because it is only
unofficial, it sort of dispels any notion that Respondent is in some way
affiliated with Complainant.
·
Respondent does not contest Complainant’s acquisition of
registered trademarks beginning in 2002.
Respondent does not contest the fame of Stevie Wonder in any way and points
out that there are many web sites on the Internet that operate as fan clubs
operated by fan and which utilize the “.com” address of the artist they admire.
Respondent refers to Decisions in the Bruce Springsteen (Springsteen v. Burgar, D2000-1532 (WIPO Jan. 25, 2001)), the Tupac
Shakur (citation unclear) and
the Edward Van Halen (Van Halen v. Morgan, D2000-1313 (WIPO Feb. 21,
2004)) UDRP cases, in all of which the fan club owners prevailed in cases
against their idols, and now continue to operate fan club web sites under these
names.
·
The web site at the disputed domain name has been known for
nearly seven years, and during this time it has become well established among
persons on the Internet, in various chat rooms, on various search engines, and
to over 175,000 opt-in fans who have signed up through it as members of “THE UNOFFICIAL STEVIE WONDER FAN
CLUB.” The term ‘unofficial’ is used
here so as to specify to anyone who visits the site that Respondent’s use of
the disputed domain name is not confusingly similar to Complainant or to
Complainant’s trademarks.
·
Respondent has clearly established its own rights and,
perhaps, Common Law rights in its use of the disputed domain name by fostering
and promoting the Unofficial Fan Club relating to Stevie Wonder since March
1999.
·
Complainant’s Trademarks are not protected in any category
as a club or organization for enthusiasts, fans or user groups. But Respondent
has, possibly, established this through their use of the disputed domain name.
·
Respondent started its Unofficial Fan Club with
noncommercial intent in 1992, which was just a year prior to its first use of
the Internet and e-mail and the Usenet (or newsgroups). Respondent contends
that it spent time on Usenet Newsgroups for several years before the opportunity
to register the disputed domain name took place.
·
Respondent was
able to obtain the rights to the disputed domain name in March 1999 quite by
luck when the previous registrant had let it go for non-payment. Respondent
contends that a few days later Motown Records immediately registered
<steviewonder.net> and that a person who claimed to be a representative
from Motown Records telephoned Respondent and asked if they would sell them the
domain name. Respondent replied that they would rather not, and the caller was
told that Respondent ran the Unofficial Stevie Wonder Fan Club and planned to
use the name to expand this club. There
was no further communication.
·
Respondent contends that its Common Law trademarks should be
recognized, with additional consideration for the nearly seven years that
Complainant has allowed it to exist, with occasional encouragement from various
members of what Respondent perceived as being Stevie Wonder’s publicity agents
and parties attempting to promote record releases, concerts, appearances,
charity events, etc.
·
Respondent confirms that Complainant’s annexed copy of a
temporary web page that was on the site on March 15, 2005 is an accurate
picture of the site at that time and at many other times whilst the regular
site was updated. It clearly shows a way for people to sign up for Respondent’s
e-mail list. There were no advertisements on the site at this date, but on
another of Complainant’s annexes, printed on March 16, 2004, one day later,
there appears to be an advertisement from Yahoo. Respondent contends that it did not put that advertisement there
and that it has never had Yahoo as an advertiser or anyone else for that
matter. It contends that the advertisement may have been photocopied over it,
or that there was an existing pop up advertisement on the computer of the
person who made the photocopy and that they may have positioned it over the web
page before copying it. A visit to the web site right now would confirm that
there is no advertising. There is no
proof that Respondent was the party responsible for the pop up ad appearing on
Complainant’s computer.
·
In response to Complainant’s assertion that sometimes the
web site provides links to other commercial web sites, Respondent contends that
on the day in question this happened for a period of only about twenty-four
hours. The date of the
printout annexed to the Complaint was March 4, 2005 which is the anniversary of
the day the domain was originally registered. Therefore, it was also the
renewal date. Respondent believes that Complainant must have printed out the
web page when the domain name had expired due to administrative registrar
issues. Respondent only realized that this had occurred when another of its
domain names expired for a day. When Respondent attempted to renew the disputed
domain name with Enom prior to its renewal/expiration date of March 4, the
credit card used for doing so could not be processed, as the registrar’s
account payment system could not accept an Indonesian address and phone number.
Thus, the disputed domain was shut down by eNom and because their free DNS
service has been utilized to register the name, they immediately seized control
of the web site and forwarded it to their own proprietary search page in
association with an advertising company called SEDO or ZEDO that supplies pop
up ads. Complainant’s annex shows the web address <http://eta.us>, but Respondent does not have a
business relationship with Zedo, Eta.US or eNom outside of having a domain
registration with Enom. Respondent contends that this must have been what
Complainant saw and copied on the day the domain expired for a brief period and
now asserts that Respondent somehow benefited from click-through revenues. This
is not the case. All the advertising was supplied by Enom without Respondent’s
knowledge. Respondent annexed a copy of an e-mail from Enom which it contends
makes this clear. In this, the legal counsel for Enom acknowledges that the
procedure is in their registration agreement. Respondent alleges that when this
registration agreement was amended, there was no public notice that Enom would
be placing advertising on the web sites of persons who had used their Free DNS
service. That this practice has caused quite a stir was illustrated in a web
site chat thread, a copy of which was annexed to the Response.
·
Respondent contends that this was an isolated incident which
they believe was there for a total of only one day. It was done by Enom without
Respondent’s consent, but when payment was made, and the domain name renewed,
the brief appearance of advertisements went away.
B. The Respondent Has Rights or
Legitimate Interests In Respect of the Domain Name
·
Respondent contends that its use of the disputed domain name
is a bona fide offering of fan club services, that this is
non-commercial and that it is fair use. Its web site is not operated for profit
or gain, and indeed has generated no revenue whatsoever. It does not
misleadingly direct people to any sites other than the fan club site.
·
Respondent further contends that its fan club is often
sought out by members of the media seeking historical facts relating to Stevie
Wonder. No charge is made for any data or historical information provided and
applicants know that Respondent does not work with Stevie Wonder and does not
represent him.
·
Respondent contends that its actions are nothing like those
of the Respondent in the case of <juliaroberts.com> cited by Complainant
(Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000)), but more like those
in the <tupac.com> case (citation unclear), and the <brucespringsteen.com> case (Springsteen v. Burgar, D2000-1532 (WIPO Jan. 25, 2001)).
·
Respondent does not dilute the distinctiveness or the fame
of Stevie Wonder in any way, but likens itself to a magazine which may utilize
Stevie Wonder’s name on its cover. The
mere use of the name of a celebrity on the front page of a magazine does not
mean that the magazine is claiming any kind of specific rights in relation to
the name, but merely that it features an article about the individual in
question.
·
Respondent denies Complainant’s assertions that the disputed
domain name is so confusingly similar that a reasonable Internet user would
“assume” that the domain is somehow associated with Complainant’s mark. The term “UNOFFICIAL” has always been synonymous with the web site at the
disputed domain name, and anyone visiting the site in the last six-plus years,
and/or looking at the WHOIS record, would quickly come to the conclusion that
the site is not in any way affiliated with Stevie Wonder or his Trademarks.
Respondent does not know of anyone who has ever been confused, and notes that
Complainant has not produced any evidence of confusion.
·
Contrary to Complainants’ assertion that he has no
relationship with Respondent, nor given permission or authorized Respondent to
register and use the contested domain name, Respondent contends that they know
for a fact that Complainant’s representatives at Motown, the life long
recording company to whom Stevie Wonder is under exclusive contract, and which
is his eyes and ears in terms of marketing and promotion, did know about
Respondent’s fan club when the name was first registered in March 4, 1999, and
even perhaps as far back as when it was founded off the Internet in 1992.
Respondent contends that they are very well known, due to their use of the
disputed domain name and in this context says, in a direct quotation from the
Response: “The fact that Respondents
other representatives knew about our ownership and operation of the Unofficial
Fan Club on StevieWonder.Com and never once objected to us, shows that
reasonable time was given for the Unofficial Fan Club to build additional
membership base to it’s already established club and that the use of the
StevieWonder.Com domain established fair use of the name and a common law mark
in terms of it’s use of StevieWonder.Com for the Unofficial Fan Club about
Stevie Wonder.. It has become one of
the most highly traveled websites in the world due to our efforts. It is not necessary to gain permission for
things such as magazines, clubs etc to utilize the name of the subject of a
magazine article or a fan club.”
·
Stevie Wonder’s record label knew about Respondent’s
acquisition, and over the years publicity people from the company had attempted
to feed them news and information. No one had ever told Respondent to give up
the name or to stop using it. If they
had, Respondent might have cooperated.
·
Respondent contends that he was introduced to Stevie Wonder
backstage at an Awards show as President of the Unofficial Fan Club and that
Stevie Wonder said “Thank you for the
support” and that he loved people in Indonesia.
·
Respondent contends that many thousands of people, perhaps
over a million, have come to know the Unofficial Fan Club at the disputed domain
name. Most, if they do not already know, quickly learn that Stevie Wonder’s
official site is at <steviewonder.net>. Respondent contends that over
175,000 members have opted into the Unofficial fan Club and receive newsletters
and share their thoughts which are included in the news that is distributed by
the Club.
C. The Domain Name Was Not Registered or
is Being Used in Bad Faith
·
In response to this accusation, Respondent contends that
they never acquired the domain name for selling, renting or transferring the
name to a competitor of or to Complainant. They never attempted to use it for
commercial gain, or to direct traffic to anywhere other than the unofficial fan
club that was set up to praise Stevie Wonder and his achievements. Respondent
maintains that they have worked hard to make sure no visitors to the site are
confused by pasting the world UNOFFICIAL everywhere on the site, and even in
the WHOIS record for the domain.
·
The fact that Respondent operates other fan clubs does not
show bad faith. It shows that they love
many artists other than Stevie Wonder. Complainant’s annex simply shows that
Respondent operates Unofficial Fan Clubs for AniDiFranco and Annie Lennox,
without any opposition to its service thus far.
·
Contrary to Complainant’s assertion that Respondent is
operating in a pattern that prevents Complainant from reflecting his STEVIE
WONDER mark, Respondent points out that in the <brucespringsteen.com>
case the respondent prevailed, and he also owned several artist’s domain names.
See Springsteen v.
Burgar, D2000-1532 (WIPO
Jan. 25, 2001). Mere
registration does not in itself reflect bad faith.
·
Respondent has never earned one penny from any click-through
advertisements and Complainant has not provided any proof that they have.
Respondent claims they have not been acting in bad faith, unlike the respondent
in other UDRP cases referred to by Complainant.
·
Respondent does not offer anything similar to the artist; it
does not write songs, record songs, sell songs, or sell merchandise; it delivers
information relevant to fans of Stevie Wonder. It is true that the web site is
related to the artist’s name, but there is no confusion and anyone visiting the
site would find that it is NOT an official web site of Stevie Wonder. Therefore
to claim that the disputed domain name is “obviously
connected” with Complainant is misleading.
C.
Additional Submission by Complainant
In
its Additional Submission, Complainant makes the following points, many of
which were supported by references to and quotations from other UDRP Decisions
–
·
Respondent
asserts a number of unfounded and unsupportable arguments. However, a review of the Response
establishes that Respondent has failed to dispute the critical issues raised in
the Complaint. Specifically, Respondent
does not dispute:
1.
That Complainant owns the rights to the STEVIE WONDER mark and name.
2.
That the disputed domain name is identical to Complainant's STEVIE
WONDER
trademark
and service mark pursuant to Rule 3(b)(ix)(1) of the Policy.
3.
That Respondent had actual knowledge of the STEVIE WONDER name at the
time
of registration of the disputed domain name.
In fact, Respondent admits that it was fully aware of the international
fame of STEVIE WONDER prior to registering this name, and that it was the
primary motivating factor in obtaining the domain name.
4. That
Respondent was never authorized by Complainant to register and use the
disputed
domain name.
5.
That Respondent has not
been commonly known by the disputed domain name.
6. That Respondent has exhibited a pattern of conduct of registering,
as domain names, the names of other internationally famous entertainment
celebrities without their authorization or consent.
·
In light of
the above, Complainant has made out a clear and convincing prima facie case in these proceedings. The burden now shifts to Respondent to
establish rights or legitimate interests in the domain name with concrete
evidence rebutting Complainant’s assertions. Respondent has failed to meet this
burden. In fact, the Response actually
supports a number of critical issues raised in the Complaint.
·
Complainant
has established that his STEVIE WONDER mark and name is famous throughout the
world and Respondent does not dispute this fact. Indeed, Respondent admitted that it had actual knowledge of this
international fame of the STEVIE WONDER mark and name, and that it was this
fame that was the primary motivating factor in registering the disputed domain
name. This establishes that Respondent
registered a domain name identical to Complainant’s mark based on the goodwill
associated with Complainant’s mark. It
has been universally determined in a number of UDRP decisions that registration
of a domain name that incorporates Complainant’s famous mark, despite knowledge
of Complainant’s rights in the mark, is evidence, in and of itself, of bad
faith registration and use, pursuant to paragraph 4(a)(iii) of the Policy.
·
Moreover,
Respondent's registration of <steviewonder.com> was not an
isolated incident by a fan. In fact,
Complainant's investigations have disclosed that Respondent has registered over
100 celebrity domain names including, but not limited to
<arethafranklin.com>, <anitabaker.com>, <arrianahuffington.com>,
<annielennox.com>, <anidifranco.com>, <paulazahn.com>,
<raquelwelch.com>, <smokeyrobinson.com>, <goldiehawn.com>,
<farrahfawcett.com>, <hughgrant.com>, <jimcarrey.com>, and
<lucyliu.com>. Copies of reverse
WHOIS reports evidencing Respondent's registration of these (and other)
celebrity domain names were annexed to the Complaint. Undoubtedly, Respondent had actual knowledge that these domains
incorporated the names of famous celebrities prior to registration. Further, it is unlikely that Respondent
obtained authorization or consent from those celebrities to register domains
that used or incorporated their names.
Thus, Respondent's
registration of numerous domain names incorporating the names of famous musical
and entertainment artists establishes a clear pattern of conduct preventing
Complainant from reflecting his STEVIE WONDER mark and stage name in the most
logical corresponding “.com” domain name, in violation of Paragraph 4(b)(ii) of
the Policy.
·
Bad faith
is also demonstrated by Respondent's own assertions in its Response, and its
actions subsequent to receiving the Complaint.
They demonstrate that, prior to receiving notice of the Complaint,
Respondent never actively used the disputed domain name in connection with a bona
fide fan site devoted exclusively to Complainant. As set forth in the Complaint, the domain originally resolved
into a website having the legend referred to in the above summary of the
Complaint. Complainant notes at this point that Respondent uses the identical
generic legend in connection with sites linked to a number of other celebrity
“.com” domain names it has registered including but not limited to
<raquelwelch.com>, <smokeyrobinson.com>, <farrahfawcett.com>,
<hughgrant.com> and <jimcarrey.com>. Copies of the web pages to these sites were attached to the Additional
Submission.
·
No
reference to Complainant, his music, his career, or his STEVIE WONDER trademark
was made anywhere on Respondent’s web site, nor did the site ever offer any
commentary or criticism relating to Complainant. The appearance of this original “inactive” web site remained
essentially unchanged for years, as evidenced by copies of pages obtained from
the Internet Archive web site at <archive.org>, which were annexed to the
Additional Submission. It was only after initiation of these proceedings that
Respondent created a purported unauthorized STEVIE WONDER fan site, in an
obvious and belated attempt to avoid being found in violation of the Policy. A
copy of this newly revised web site, created after Respondent received notice
of the Complaint, was attached to the Additional submission. Clearly, Respondent's original pre-notice
use of the disputed domain was not bona fide, active or fair under the
meaning of the Policy.
·
Respondent's
lengthy inactive use of the <steviewonder.com> domain name prior
to these proceedings demonstrate that Respondent does not have a valid argument
for (and cannot establish) a bona fide investment deserving of
protection.
·
Respondent
contends that disclaimers on the web site at the disputed domain name (touting
that the current site is an “unofficial” fan site) preclude Internet users from
being confused. Such an argument is
without merit. First, Respondent only
recently added such disclaimers on its revamped site. Second, the disclaimers do not preclude “initial interest
confusion,” which occurs when an Internet user directs his or her web browser
to a particular site under a logically assumed “.com” domain name, only to find
on arrival that the site has no relationship to the intended source. By the time the user arrives at the
erroneous site, before the disclaimer is read or acted upon, confusion
has already occurred. Thus, Respondent's belated insertion of disclaimers on
its newly revamped <steviewonder.com> web site will not immunize
Respondent from Complainant's charge that the disputed domain creates
confusion. It is beyond legitimate
dispute that the disputed domain name is identical to Complainant's STEVIE
WONDER mark and name. The weight of
previous UDRP panel decisions hold that the use of a domain name identical or
confusingly similar to a Complainant’s mark is not a “bona fide” use
within the meaning of paragraph 4(c)(i) of the Policy.
·
Respondent's
assertion that it uses the disputed domain name in a strictly non-commercial
fan site does not insulate itself from a bad faith finding. It claims never to have received any
“click-through” fees from the operation of this site. Although it is difficult to test the credibility of Respondent's
claim on this issue in these proceedings, even if such an assertion were true,
Respondent's registration and use of the disputed domain name would still
violate the Policy. Respondent admits
that it currently uses the disputed domain name in connection with an unauthorized
fan web site. Such an unauthorized use
usurps Complainant's rights in its STEVIE WONDER mark, by creating confusion
and a false association in the minds of Internet users. Thus, regardless of
whether or not Respondent is making any money from the site, its registration
and use of the disputed domain name in connection with an unauthorized
fan site is not a legitimate use and is in bad faith under the Policy.
·
Respondent's
claim that it has somehow acquired common law trademark rights in the disputed
domain is patently ridiculous and need not be further commented on, other than
to mention that Complainant acquired worldwide common law trademark and service
mark rights in connection with his sound and video recordings and entertainment
services (including fan clubs) long prior to Respondent's purported operation
of a fan club and registration of the disputed domain name. Complainant's United States and foreign
trademark and service mark registrations serve to confirm his international
rights to the STEVIE WONDER mark and name.
·
Respondent
has commented on Complainant's delay in initiating these proceedings. Such assertions should have no bearing in
this case. Numerous panel decisions
have consistently held that laches is not available as a defense in these types
of proceedings. Moreover, where, as here,
a prima facie case is made out, the
Policy does not provide for any defense of laches. Even if laches were
available, Respondent has failed to provide any evidentiary support entitling
it to such a defense. Respondent has
offered no evidence that Complainant has been aware of its registration of the
disputed domain for years. Its
contention that Complainant became aware of the domain through Motown is
strictly speculative and without foundation.
In any event, Complainant owns the rights to the STEVIE WONDER
mark and name, not Motown. Moreover, Respondent has failed to offer any credible
evidence as to how it has been prejudiced by Complainant's purported delay in
bringing on these proceedings, particularly since for the six years preceding
this case, it never used the disputed domain name in connection with any bona
fide fan web site. Such prejudice
does not exist because Respondent will be able to continue to use the STEVIE
WONDER mark in any non-infringing manner in connection with its purported fan
club activities. It will just be unable
to use the disputed domain name.
·
As
a final note, Respondent has cited a number of UDRP cases in support of its
Brief. However, over the years these cases, particularly Springsteen v.
Burgar, D2000-1532 (WIPO Jan. 25, 2001), have been criticized or
distinguished, by other UDRP Panels. The clear weight of the UDRP case law is
more in line with Complainant's position.
D.
Additional Submission by Respondent
In its own Additional Submission, Respondent repeats a number of
its previous arguments and assertions. The following is a summary of those that
are new –
·
Respondent
maintains that it did indeed clearly specify in its original Response the
manner in which the disputed domain name is not identical or confusingly similar
to a trademark or service mark in which Complainant has rights. They do not
dispute that Stevie Wonder owns his several trademarks, but they do dispute
that their own common law mark, established whilst operating their fan club, is
identical to Stevie Wonder’s marks.
·
On
the page at the web site at the disputed domain name, in the upper left hand
uppermost part of each page is a header, usually in a blue stripe across the
top of any and most web pages, which is not reflected in any of the annexes provided
by Complainant. In that header, Respondent has always stated that the club was
the Unofficial Stevie Wonder Fan Club, which is one of several elements that
eliminates confusing similarity.
Additionally, when a visitor signs up for the club by clicking on the
email link, a e-mail form automatically pops up, and has always popped up, with
the subject heading “Join Unofficial Stevie Wonder Fan Club.” Not only is this
done so that Stevie Wonder fans can be segregated from fans of other clubs
which Respondent manages, but it is to dispel any confusion that may lead
visitors to think Respondent is affiliated in an authorized manner with
Complainant. Complainant provided no
evidence that anyone has ever been confused by Respondent’s non-affiliation
with Stevie Wonder or his trademarks.
·
Complainant continues to refer
to cases that are unrelated to the free speech and rights of fan clubs to
organize to praise and/or critique those persons who are the subject of the
club. Respondent has developed a purpose for their
domain name in that they run a bona fide fan club operation. These cases
are not relevant to the present proceedings.
·
Approximately 700-800 new
persons per week sign up at Respondent’s Unofficial Stevie Wonder Fan Club and
receive the e-mail information mentioned above.
·
Complainant asserts, “It has been universally determined in a number of UDRP decisions that
registration of a domain name incorporating a complainant’s famous mark,
despite knowledge of complainant’s rights in the mark, is evidence, in and of
itself, of bad faith registration and use.” That is untrue. There have been a number of cases, all
mentioned in the original response that contradict this contention.
·
Complainant
refers to the Hillary Rodham Clinton case but in that case the respondent
failed to submit a Response. Clinton v. Dinoia, FA 414641 (Nat. Arb.
Forum Mar. 18, 2005). It is different from the present case because in it the
respondent ran a search engine page unrelated to a fan club or bona fide
fan club service. Respondent asserts it
is not doing the same and should not be thrown in with those who are.
·
Respondent
does not dispute the fact that they maintain several Unofficial Fan Clubs for
various recording artists and actors. It offers bona fide fan club and
services in the case of <steviewonder.com>, and although
information was added to the web site, it was a bona fide web site
offering fan club services well before it was amended and well before this
Complaint was filed.
·
Respondent
annexes a photograph of what happens when a visitor clicks on its e-mail link
to Stevie Wonder’s fan club. As can be seen from this, or from visiting the
site, the site has always been programmed to only sign up persons for the
Unofficial Fan Club of Stevie Wonder.
The same is true when visiting any of the fan clubs in Respondent’s
network.
·
Complainant
contends that “Respondent's
post-notice change underscores and evidences its previous inactive use of the
<steviewonder.com> domain name.” That is also untrue. The name has been up and running as stated
since early 1999 and has accumulated almost 180,000 members who have opted into
the club. It was not inactive at all. It has been very active. The site was not
created “after” the Complaint was made. The original site showed a clear
Unofficial and Non-Commercial Use, as does the current site. A majority of the
club’s activities take place through e-mail. Claims that there was “Lengthy
Inactive Use” is bogus. The site has always been on and has always been used to
add new members to the club. To suggest otherwise is not true. All the cases
mentioned by Complainant were cases where there was no use prior to the
complaint. That is not the case in the present Complaint and Complainant has
provided no solid evidence to the contrary because there is none. The archive web site referred to in their
annex fails because the Way Back web site has not been proven to be a fully
complete record of every webpage on the Internet at every moment. It is simply a research project.
·
Contrary
to Complainant’s contentions, Respondent registered less than 100 domain names.
That in itself does not mean that it is similar to the Morgan Freeman case referred to by Complainant. In that case the respondant
did not run a “Fan Club.” See
Freeman v. Mighty, LLC, D2005-0263 (WIPO Apr. 28, 2005). The
respondant in that case ran the name to a search engine portal that was
Commercial, as were the other domain registered by the respondent in that
case. In the Bruce Springsteen case,
the respondent had over 1000 celebrity domain names, but prevailed in that case
because they were all non commercial as is <brucespringsteen.com>. See Springsteen v. Burgar, D2000-1532
(WIPO Jan. 25, 2001).
·
Complainant
states that “Respondent contends that
disclaimers on the <steviewonder.com> website preclude users from being
confused, and that Respondent only recently added such disclaimers on its
revamped site.” That is untrue and
the site has always been touted as “Unofficial”. Complainant’s attorneys
contradict themselves, as can be seen from a copy of an early page which was
annexed to the original Complaint.
DISCUSSION AND FINDINGS
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 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;
(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 has proved conclusively that
he has trademark registrations of the name STEVIE WONDER. He also claims Common
Law rights in this name and it is well established that Common Law rights are
sufficient for a complainant to satisfy the requirements of paragraph 4(a)(i)
of the Policy. It can be seen from the extracts from dictionaries and
encyclopedias filed by Complainant that Complainant was born in 1950 and that
his first album – called “Little Stevie Wonder: the 12 –Year Old Genius” – was
released in 1963 when he was 13 years old. Thus, for over forty years the name
Stevie Wonder has been known to music lovers all over the world. This is quite
sufficient for an individual to establish Common Law rights in his or her name.
Julia Roberts required far fewer years than that to establish rights in her own
name in her domain name dispute (Roberts v. Boyd, D2000-0210 (WIPO May
29, 2000)) and Jeanette Winterton, an author, had published nine books and had
had two plays performed on television in the fifteen years prior to the
Complaint in which she was involved (Winterton v. Hogarth, D2000-0235
(WIPO May 22, 2000)).
However, in reply Respondent makes
several claims: (1) that he has common law rights in the disputed domain name;
(2) that Complainant’s trademarks are not similar to the disputed domain name
because the site is clearly marked as being ‘Unofficial;’ (3) that Complainant’s
trademarks were registered after his web site was established; and (4)
that Complainant’s trademarks cannot be similar because they are not registered
in respect of the services which he offers under the disputed domain name.
(1) Respondent claims that he has
acquired Common Law rights in the name <steviewonder.com> through
his nine year use of it as a domain name. This is a novel concept with very
little merit, especially as Respondent resides in Indonesia which is a civil
law country and where the concept of common law is unknown. In a common law
passing off action under English jurisdiction (with which the Panel is most
familiar) a claimant must establish three things, the first of which is that he
has “a goodwill or reputation attached to
the goods or services which he supplies in the mind of the purchasing public by
association with the identifying ‘get-up’ ……under which his particular goods or
services are offered to the public, such that the get-up is recognised by the
public as distinctive specifically of the plaintiff’s goods or services.” (Lord
Oliver in Reckitt & Colman Prods. Ltd. v. Borden, [1990] R.P.C. 341
(H.L.), the leading English case on the subject.) Likewise, in WIPO’s “Overview
of WIPO Panel Views on Selected UDRP Questions”, it is stated that in order to
assert common law rights, a party
must
show that the name has become a distinctive identifier associated with (the party) or its goods and services. Relevant evidence of such ‘secondary
meaning’ includes length and amount of sales under the mark, the nature and
extent of advertising, consumer surveys and media recognition. The fact that
the secondary meaning may only exist in a small geographic area does not limit (the
party’s) rights in a common law trade
mark. Unregistered rights can arise even when the complainant is based in a
civil law jurisdiction. [1]
In this case, Respondent has produced no
proof whatsoever that anyone would recognize him, as opposed to Complainant, as
the owner of the Stevie Wonder name. Indeed, how could he when he has
apparently only used a variation of the name for nine years, on a modest scale,
as opposed to Complainant’s use of the name itself for over forty years
worldwide on a massive scale. Complainant has described Respondent’s claim to
have Common Law rights as “patently
ridiculous” and the Panel does not quarrel with this description.
(2) Respondent claims that Complainant’s
trademarks are not similar to the disputed domain name because the site is
clearly marked as being ‘Unofficial.. This claim too has no merit. It is
customary, when comparing a trademark with a domain name, to disregard the
‘.com’ suffix and when one does so, and in the present case the only
difference between the two signs is that Complainant’s is spelt as two words
and Respondent’s as one. The word ‘Unofficial’ may be used on the website but
it is not a part of the domain name and the Policy is clear that it is the
domain name and the trade mark that must be identical or confusingly similar.
The Panel has no difficulty in deciding that in this case, for all practical
purposes they are identical.
(3) and (4) Both the fact that
Complainant’s trademarks were registered after Respondent’s website was
established, and that they are allegedly not registered in respect of the
services which he offers under the disputed domain name are also irrelevant.
The Policy makes no specific reference to the date when a complainant acquired
his rights or to the goods or services for which where these rights are
protected. In any case, not only does Complainant’s use of the name STEVIE
WONDER predate Respondent’s use by decades, but also most of Complainant’s
trademarks are actually registered for ‘fan clubs.’ So in fact Respondent’s
allegations are both proved to be false.
In conclusion, the Panel finds that
without doubt paragraph 4(a)(i) of the Policy has been proved.
The Policy enumerates several ways in
which a respondent may demonstrate rights or legitimate interests in a domain
name. For example, paragraph 4(b)
reads:
Any of the following circumstances, in
particular but without limitation, if found by the Panel to be proved based on
its evaluation of all evidence presented, shall demonstrate your rights or
legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i)
before any notice to you of the dispute, your use of, or
demonstrable
preparations to use, the domain name or a name
corresponding
to the domain name in connection with a bona
fide
offering
of goods or services; or
(ii) you (as an individual, business, or
other organization)
have been commonly known by the domain
name, even if you have
acquired no trademark or service mark
rights; or
(iii) you are making a legitimate
noncommercial or fair use of the
domain name, without intent for
commercial gain to misleadingly
divert consumers or to tarnish the
trademark or service mark at issue.
The Panel believes that there are two main aspects to be
considered under this heading: (1) Where the onus lies; and (2) Is Respondent
operating a legitimate fan club site?
(1) As Complainant has rightly pointed
out, once a complainant has established a bona
fide case, the onus to prove the he has a legitimate right in a disputed
domain name transfers to a respondent.
In this case, Complainant has made a
powerful argument that Respondent has no legitimate rights or interest to the
disputed domain name, <steviewonder.com>, and so it falls to
Respondent to prove that they have. Whether they have succeeded in this will be
considered below under the second of the above questions.
(2) The consensus of opinion on the
question of fan clubs, according to WIPO’s “Overview of WIPO Panel Views on
Selected UDRP Questions,” is that “An
active and clearly non-commercial fan site may have rights and legitimate
interests in the domain name that includes the complainant’s trademark. The
site should be non-commercial and clearly distinctive from any official site.”
As already noted, this Overview is not to be considered as a precedent but it
is the majority view, and the Panel would need more evidence than it has been
provided with to disregard it. For example, the Overview refers to two WIPO
Cases. In Estate of Gary Jennings v. Submarine, D2001-1042 (WIPO Oct.
25, 2001) it was said:
Based
upon a review of Respondent’s web site, Respondent appears to be providing
reviews of Gary Jennings’ books; and not advertising. Based on the record,
before any notice to Respondent of the dispute, it appears that Respondent was
using the Domain name in connection with a bona fide offering of goods and
services. Respondent has been using the Domain name in connection with a web
site to share information on the author Gary Jennings. The Panel finds on this
basis that respondent has a legitimate interest in the Domain name.
In 2001 White Castle Way, Inc. v. Jacobs, D2004-0001 (WIPO
Mar. 26, 2004) it was said:
Respondent’s
website provides a wide range of information concerning Pat Benatar, the
recording artist. There are clear disclaimers on the website stating that it is
not endorsed by or an official website of the recording artist. There is no
evidence on the record of this proceeding that Respondent obtains any
commercial benefit from the website. While he does make a recommendation
regarding the Internet retailer which he believes to stock the widest selection
of the recording artist’s work, there is no evidence that Respondent receives
compensation from the retailer. Respondent is not seeking to disparage the
recording artist. Complainant was aware of Respondent’s website and activities
for a substantial period, and requested that his website be linked to its
official website before changing its view and attempting to obtain a transfer
of the disputed domain name. The combination of these factors leads the Panel
to conclude that Respondent is engaging in legitimate noncommercial use of the
disputed domain name.
As a result of the above summary of the
consensus view, it would seem that there are two further questions which fall
to be answered in this case: is Respondent’s web site at the disputed domain
name clearly non-commercial, and is it active? If the answer to either
is in the negative, then Complainant must prevail.
To support its arguments, Respondent
relies on the Decisions in several cases, notably the Bruce Springsteen and
Tupac cases. The former, Springsteen v. Burgar, D2000-1532 (WIPO Jan.
25, 2001), was decided by a three-person Panel and it was not unanimous. It has
also been criticized subsequently, as Complainant notes. This Panel has read
both the majority and the dissenting judgments in the case and tends to side
with the latter, believing that the majority put rather too much weight on the
fact that an Internet search for ‘Bruce Springsteen’ gave rise to thousands of
hits. But the case is distinguishable from the present one in that anyone who
accessed the site at the disputed domain name was immediately diverted to
another site operated by the respondent. Therefore there was an element of
commerce involved, even though the majority of the Panel held otherwise.
Respondent also cites “Tupac” but there
are several UDRP cases involving the deceased hip-hop artist Tupac Shakur, and
Respondent does not make clear to which one he refers. In Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000), the Panel found in favor of the Complainant under all
three grounds of paragraph 4(a) of the Policy and ordered the name to be
transferred, so this does not appear to assist Respondent. However in The Estate of Tupac Shakur v. R.J.Barranco,
AF-0348a and AF-0348b (eResolution Oct. 23, 2000), the Complaint was denied.
The case involved two domain names – <tupac.net> and <tupac.com>
and as it is this latter name to which Respondent refers, the Panel has worked
on the assumption that it is this case which he must take account of.
On the face of it the case would appear
to favour Respondent as in it the Respondent was operating a non-commercial Fan
Club at the site which clearly distinguished itself from the official Tupac
Shakur site, and the Complaint was denied. However the case can be
distinguished from the present case because it was concerned with what was an
active site in itself which was wholly devoted to the artist and, as explained
below, the Panel has concluded that the web site at the disputed domain name in
the present case does not fall into the same category.
On this point Complainant also refers to
two cases in its support: George Harrison and Kevin Spacey. In the first of
these, Harrison v. LOVEARTH.net, FA 97085 (Nat. Arb. Forum June 4,
2001), it is true, as Complainant says, that the Panel found that fan sites can
cause confusion as to their source, sponsorship, affiliation, or endorsement,
but it also found “that the domain names
at issue have essentially been held hostage by Respondent to coerce Complainant
to take a position of sponsorship of the particular environmental movement
espoused by Elsis” and concluded that “Respondent
is not making a legitimate noncommercial or fair use of the disputed domain
names without misleadingly diverting consumers to its web site or tarnishing
Complainant’s famous mark.” It was
therefore a case where the disputed domain name was used commercially.
In the second case, Spacey v. Alberta
Hot Rods, FA 114437 (Nat. Arb. Forum Aug. 1, 2002), the respondent was
originally using the web site to direct Internet traffic to its own commercial
site and the Panel found that his subsequent use of the domain name for an
unauthorized fan site was a demonstration that he was not making fair use of it
within the meaning of the Policy.
Thus in the opinion of the Panel, none of
these four cases appear to assist him in coming to a conclusion as to whether
Respondent’s actions in this case are legitimate.
On the question of commerce, the Panel
has come to the conclusion that in the present case there is no evidence of
commercial or other activity by Respondent. Complainant alleges that the site
at the disputed domain name has been commercially active and evidences copies
of two different versions of the site. He alleges that both show evidence of
links to commercial websites but in fact, as far as the Panel can see, one does
not, and this is the version that has remained unchanged for six years.
Respondent has provided an explanation (with proof) of why the other version of
the site appeared, with its clear links to commercial web sites, claiming that
this occurred on a temporary basis, without their permission, and with any
revenues resulting from persons clicking on the links being pocketed by the
Internet Service Provider not Respondent – an explanation which Complainant has
not contested in his Additional Submission. Respondent stoutly denies that they
have ever received any money through the web site from advertising, and they do
not charge for supplying information about Stevie Wonder to the media. The
site’s only purpose has been to attract new members to its Stevie Wonder Fan
Club.[2]
Complainant attempts to cast doubt on Respondent’s denials, but provides no
proof. The Panel prefers to believe Respondent on this issue, and concludes
that the web site has not been operated for commercial gain.
More pertinently, Complainant also
alleges that Respondent has never actively used the disputed domain name in
connection with a bona fide site
devoted exclusively to Stevie Wonder and that it is, therefore, not a
legitimate fan site. There is a great deal more merit in Complainant’s argument
on this point, as for many years the only message on the site was an invitation
to all visitors to send an e-mail if they wished to join the Unofficial Stevie
Wonder Fan Club. That hardly constitutes active use. The message has remained
the same for more than six years, or until the dispute was filed when the
content of the site was suddenly enlarged upon and now contains some
information about Stevie Wonder, such as a list of some of his recordings and a
notice of his forthcoming appearance at a rock concert. However the invitation
to join the Club remains the same, and it is still made clear that the Club is
Unofficial. The site even conveniently provides a link to the Official Stevie
Wonder web site, as well as to other related sites. This dramatic change is too
much of a coincidence, and the Panel agrees with Complainant that it was
probably prompted by Complainant’s initial criticisms and in an effort to avoid
the consequences of the Policy. However what happens after a Complaint is filed
is, usually, not relevant.
There are some precedents in
Complainant’s favor on the point that an inactive site is contrary to the
Policy. For example, Fox News Network, LLC v. Solomon, D2005-0022 (WIPO
Mar. 25, 2005) where the disputed domain name was transferred, partly because
the respondent had proffered no “evidence
that he had made any criticism, comment or even a passing reference to
Complainant;” and Pernod Ricard SA v. Pernod Records, D2001-1471
(WIPO May 1, 2002) in which lengthy inactivity of the domain name was one of
the factors in a finding of illegitimacy.
On the subject of fan sites, Complainant
alleges that “The clear weight of the
UDRP case law is more in line with Complainant’s position.” As we have seen
above from WIPO’s Overview, that is true only when it is clear that the site is
both non-commercial and active. Respondent claims to have a number of
fans registered via its site. On the site itself, the total membership is given
as 177,000, but Respondent variously refers to membership as being “over
175,000,” “many thousands of people, perhaps over a million”, “700-800 new
persons per week,” and “almost 180,000 members.” However Respondent produces neither evidence to support any of
these figures nor indeed any evidence whatsoever about the Club or its
existence. The Panel is therefore entitled to doubt the accuracy of these
unsupported statements. But in fact this is unnecessary, because it is quite
clear that the web site itself is not the Fan Club. It is, as we have
seen, and as Respondent repeatedly assures us, only the gateway through which
erstwhile fans of Stevie Wonder can apply for information about the
Club. The inevitable conclusion therefore is that the web site at the disputed
domain name is not active as a Fan Club. This activity occurs elsewhere.
Respondent emphasizes again and again that theirs is an unofficial fan club,
but that hardly matters once one has established that the web site itself is
not the Club. In any case, as Complainant has pointed out, an Internet user is
likely to have been confused before perceiving that the site carries an
unofficial label.
Conclusion
The Panel concludes that although the
disputed domain name may be non-commercial, it has never acted as a fan site
and it therefore fails the second of the requirements for legitimacy set by the
WIPO Overview. The inevitable conclusion must be that Respondent does not have
any rights or legitimate interest in it and that paragraph 4(a)(ii) of the
Policy has been proved.
Paragraph
4(b) of the Policy sets out four circumstances which could be evidence of a bad
faith registration, although the list is not exhaustive. In this case, only one
out of the four would appear to be directly relevant, but there are indeed
other factors.
Paragraph
4(b)(ii) of the Policy provides that there is bad faith if a respondent “registered the domain name in order to
prevent the owner of the trademark or service mark from reflecting the mark in
a corresponding domain name, provided that you have engaged in a pattern of
such conduct.”
In
the present case, the Panel finds that this allegation is proved conclusively.
It is true that Complainant has established a very full site to promote his
activities at <www.steviewonder.net> but
everyone knows that a ‘.com’ site is to be preferred and it is where an
Internet user looking for information about the singer would look first, so
Respondent’s registration of <steviewonder.com> has been a barrier
to Complainant.
As for
establishing ‘a pattern’, Complainant has also stated that Respondent has
registered over 100 domain names containing the names of various celebrities,
and he has provided evidence of 32 of these (including Stevie Wonder).
Respondent does not deny this – although they dispute the actual number and
they dispute the accuracy of the site used by Complainant to acquire the
evidence – but they claim that all of these sites contain a message similar to
the one that appeared at the disputed domain name until it was radically
altered following the filing of the Complaint. The Panel feels sure that if a
Complaint had been filed by any of these other artists, Complainant would have
been very quick to draw attention to it. Thus they presumably exist undisturbed
and, perhaps, Respondent is running fan clubs for all of them, despite his
expressed preference for Stevie Wonder.
The
Panel concludes from this that paragraph 4(b)(ii) of the Policy is proved, and
bad faith established.
Thus it is hardly necessary to comment at
length on any additional arguments, for example that, as has been universally determined in a number of UDRP decisions,
registration of a domain name incorporating a complainant’s famous mark,
despite knowledge of the complainant’s rights in the mark, is evidence, in and
of itself, of bad faith registration and use; or that the weight of previous
UDRP panel decisions have held that the use of a domain name identical or
confusingly similar to a Complainant’s mark is not a “bona fide” use; or
that Respondent's revision of its previous inactive site to an unauthorized
STEVIE WONDER fan site after notice of this dispute is a demonstration
of bad faith; or that despite Respondent’s emphasis on the fact that the
web site is clearly marked as being ‘Unofficial,’, this will still create “confusion and a false association in the
minds of internet users.”
However, for the record, these are powerful arguments, which have
been well argued and documented by Complainant and scarcely rebutted by
Respondent. They would therefore seem to add further weight to a finding of bad
faith.
ADDITIONAL REMARKS
The Panel accepts entirely Complainant’s
arguments that its failure to take any action against the disputed domain name
until now is not an issue. Laches does not feature in the Policy and has never
been held against a complainant.
Respondent claims
his right to freedom of speech but closing down the web site at the disputed
domain name, or transferring the name to Complainant, would not prevent
Respondent from maintaining his Fan Club, but through a different name such as
<joinanunofficialfanclub.com>.
Respondent also
alleges that the rights of fan clubs to organize and to praise and/or criticize
those persons who are the subject of the club, have been established in many
UDRP Decisions. He also claims to run a bona fide
fan club operation. This may be true but, as found above, the Fan Club is not
run from the disputed domain name. It matters not therefore that it is an
unofficial club.
Respondent
also claims to have been approached by and to have assisted Complainant’s
recording company Motown whom, they also claim, know about the disputed domain
name. However, as was rightly said in Complainant’s Additional Submission,
Motown has no standing in this matter which is between Complainant himself and
Respondent. Respondent’s reported conversation with Complainant long ago is
pure hearsay and irrelevant to this proceeding.
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 <steviewonder.com>
domain name be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: June 22, 2005
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National
Arbitration Forum
[1] ‘The WIPO Decision Overview’ is not a precedent in
itself, but it does reflect a studied and considered summary of consensus
positions culled from the decisions by numerous panellists in UDRP proceedings
during its first 5 years. Panelists are not bound by previous Decisions, but in
order to promote consistency Panels are expected to follow the consensus – or
majority – view.
[2] Whether or not the
Fan Club itself charges for membership or has otherwise been operated
commercially is not an issue.