C. Russell Bridges p/k/a Leon Russell v. Steve and Ruth Kahn a/k/a Steve Kahn Assoc. a/k/a Leonrussell.org
Claim Number: FA0111000101818
The Complainant is C. Russel Bridges p/k/a Leon Russell, Nashville, TN (“Complainant”) represented by Barry Shrum, of Gordon, Martin, Jones & Harris PA. The Respondent is Steve and Ruth Kahn a/k/a Steve Kahn Assoc a/k/a Leonrussell.org, North Massapequa, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <leonrussell.com> and <leonrussell.org>, registered with Melbourne IT.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Hon Roger P Kerans as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 7, 2001; the Forum received a hard copy of the Complaint on November 13, 2001.
On November 8, 2001, Melbourne IT confirmed by e-mail to the Forum that the domain names <leonrussell.com> and <leonrussell.org> are registered with Melbourne IT and that the Respondent is the current registrant of the name. Melbourne IT has verified that Respondent is bound by the Melbourne IT 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 November 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 2001 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 email@example.com, firstname.lastname@example.org> by e-mail.
A timely Response was received and determined to be complete on December 7, 2001.
On December 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon Roger P. Kerans as Panelist.
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
a. The Complainant is a professional country music singer who has been a performer since 1959. His professional name is Leon Russell.
b. The domain names, <leonrussell.com> and <leonrussell.org>, are identical to the Complainant’s trade name and service mark, Leon Russell, and are confusingly similar. Evidence of this confusion is that a third party reviewer of country “blues” music offers the Respondent’s site as the official site of the Complainant.
c. Because of Respondent’s illicit use of the trade name and service mark, Complainant was forced to use the site <leonrussellrecords.com> for purposes of promoting his products.
d. Complainant’s attorney, Barry Neil Shrum, Esq., sent a letter to Respondents on September 11, 2001 via U.S.P.S. certified mail, return receipt requested. The return receipts were returned, signed by Respondent Steve Kahn.
e. The Respondent, either as an individual, business, or other organization, is not commonly known by the domain name, nor does Respondent have any rights to the use of the trade name and service mark, Leon Russell..
f. Respondents have made no use of the domain name for over five months.
g. Respondents’ use of the domain name is not a legitimate noncommercial or fair use of the domain name, without intent for commercial gain and is therefore unfair trade and competition.
h. The evidence of the Complainant is that the Respondent Steve Kahn told him that he had registered the domain name in dispute, and Mr Russell “believes Mr.Kahn’s intentions are to resell the domain names.
i. A page on “great domains.com” indicates that the domain names <leonrussell.com and <leonrussell.org are for sale.
a. The Respondent Steve Kahn makes no Response.
b. The Respondent Ruth Kahn responds that she never authorized her husband Steve Kahn to use her name or her credit to register the domain names in dispute.
c. She further asserts that she successfully demanded a refund from her credit card issuer in respect of the charge for registration of the domain names in dispute.
d. She further consents to a transfer of the domain names provided she is not required to pay any costs or damages.
e. She further asserts that she and her husband were formally and legally separated on October 4, 2001.
f. She further asserts that the letter sent to her and her husband by the attorney for the Claimant dated Sept 21, 2001, was apparently signed for by her husband.
Because there is no formal response by the male Respondent, I have reviewed the material on the question whether there was good service.
I note that the Notice was sent to Mr and Mrs Kahn at the address supplied to the service provider on behalf of the administrators of the two domains in issue.
I observe also that the letter sent by the attorney for the Complainant was sent to the same address, and signed for by the Respondent Steve Kahn.
I infer that he also received the Notice, and is truly in default of Response.
I accept the evidence of Mrs Kahn.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The names “Leon Russell”, <leonrussell.com>, and <leonrussell.org> are all confusingly similar. A person seeking information about Leon Russell likely would assume the two sites were his.
The addition of a top level domain indicator such as ".org" or ".com" is not enough to create a distinctive mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Rights or Legitimate Interests
I accept that the Complainant has a valid business interest in the name “Leon Russell” and that there is no evidence that Mr nor Mrs Kahn has any business interest in that name. Indeed, Mrs Kahn denies that she ever had any interest in the name.
I accept the argument for the Complainant that the Respondent Steve Kahn, by using the domain name in the way he did, intentionally attempted to attract, for commercial gain, Internet users to the web, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site. This is bad faith under the UDRP clause 4(b)(iv).
I also accept the argument for the Complainant that the Respondent registered the domain name in question primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. This is bad faith under the UDRP clause 4(b)(iv).
I direct transfer of both domain names to the Claimant.
Hon Roger P Kerans, Panelist
Dated: December 27, 2001.
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