DECISION

 

Jimmie Vaughan, Independent Administrator for the Estate of Stevie Ray Vaughan v. Domain Sales, This Domain Name is For Sale

Claim Number: FA0112000102746

 

PARTIES

Complainant is Jimmie Vaughan, Independent Administrator for the Estate of Stevie Ray Vaughan (“Complainant”) represented by Jane A. O'Connell, of Thompson & Knight, L.L.P.  Respondent is Domain Sales, This Domain Name is For Sale, Jung-gu (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <stevierayvaughan.com>, registered with Iholdings.com, Inc. dba Dotregistrar.com.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Hon. Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 6, 2001; the Forum received a hard copy of the Complaint on December 6, 2001.

 

On December 7, 2001, Iholdings.com, Inc. dba Dotregistrar.com confirmed by e-mail to the Forum that the domain name <stevierayvaughan.com> is registered with Iholdings.com, Inc. dba Dotregistrar.com and that Respondent is the current registrant of the name.  Iholdings.com, Inc. dba Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. dba Dotregistrar.com 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 December 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 27, 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 postmaster@stevierayvaughan.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On January 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <stevierayvaughan.com> is identical or confusingly similar to STEVIE RAY VAUGHAN, a mark in which Complainant holds exclusive rights.

 

Respondent has no rights or legitimate interests in respect of the disputed domain name.

 

Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

Stevie Ray Vaughan ("Vaughan") was an internationally known guitar player, having recorded several albums and having won three Grammy Awards by the time of his death in 1990.  Vaughan's music continued to be commercially successful after his death, as marked by the release of albums as recently as in 2001.

 

Complainant, as the sole surviving sibling of Vaughan, was appointed to be the Independent Administrator of the Estate of Stevie Ray Vaughan by the Probate Court of Dallas County, Texas on October 4, 1990.  On August 20, 2001, Respondent registered a Claim for Use of a Deceased Individual's Name, Voice, Signature, Photograph, or Likeness with the Texas Office of the Secretary of State.

 

Respondent registered the disputed domain name on March 7, 2000, and has since used the domain name to display "risqué" images, to direct users to commercial pornographic websites, and to solicit offers to buy the disputed domain name and other domain names.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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 ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); accord see Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the ICANN Policy does not require that the Complainant have rights in a registered trademark, but rather, that it is sufficient to show common law rights).

 

Complainant has sufficiently established common law rights in the STEVIE RAY VAUGHAN mark.  Because of Vaughan's fame and popularity, the mark is entitled to common law trademark rights.  See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the Complainant that common law trademark rights exist); see also Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (finding that Complainant held common law trademark rights in his famous name MICK JAGGER).

 

The addition of “.com” does not affect the STEVIE RAY VAUGHAN mark for the purpose of determining whether it is identical to the disputed domain name.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant); see also 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).

 

The Panel finds the disputed domain name to be identical to Complainant's common law trademark; Policy ¶ 4(a)(i) has therefore been satisfied.

 

Rights or Legitimate Interests

Complainant has established that it has rights to and legitimate interests in the STEVIE RAY VAUGHAN mark. Because Respondent has failed to submit a Response in this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

There is no evidence that Respondent is commonly known as "stevierayvaughan" or "stevierayvaughan.com" pursuant to Policy ¶ 4(c)(ii) or that Respondent has made a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

 

Further, Respondent's use of the disputed domain name to direct users to commercial pornographic websites cannot constitute a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i).  See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).  Similarly, the use of the disputed domain name to solicit bids for the domain name is not a bona fide offering under the Policy.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied and that Respondent has no rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

Complainant’s STEVIE RAY VAUGHAN mark is both famous and distinctive among the general public.  By registering and using an identical domain name without regard for the mark, Respondent acted with opportunistic bad faith.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., supra, (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).

 

Respondent’s use of the domain name to distribute pornographic material also supports a finding of bad faith.  See MatchNet plc. v. MAC Trading, supra, (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith).

 

Finally, Respondent's apparent offer to sell the domain name, even though not naming a specific price, constitutes evidence of bad faith under the Policy ¶ 4(b)(i).  See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

 

Accordingly, it is Ordered that the <stevierayvaughan.com> domain name be transferred from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: January 4, 2002