Pete Wentz v. Phil Lynch
Claim Number: FA0709001082087
PARTIES
Complainant is Pete Wentz (“Complainant”), represented by Peter
E. Nussbaum, of Wolff & Samson PC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <petewentz.com>, registered with Godaddy.com,
Inc.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 25, 2007; the
National Arbitration Forum received a hard copy of the Complaint on October 1, 2007.
On September 26, 2007, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <petewentz.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On October 3, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 23, 2007 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,
A timely Response was received and determined to be complete on October 18, 2007.
On October 23, 2007, Complainant timely filed an Additional Submission
and on October 25, 2007, Respondent timely filed an Additional Submission. Both submissions were considered by the
Panelist.
On October 25, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Pete Wentz (“Pete Wentz”), is a world-famous musician,
author and entrepreneur who is the owner of the name and mark PETE WENTZ. Pete Wentz is the co-founder, bassist and
primary lyricist of the world famous musical group Fall Out Boy. Since at least as early as 2001, Pete Wentz
and Fall Out Boy have provided musical-group related goods and services and
have achieved tremendous success. During
this time, Pete Wentz and Fall Out Boy have performed in major venues
throughout the
Moreover, Pete Wentz has appeared on the cover of major music and
entertainment publications, such as Rolling Stone, Spin Magazine, AP
Alternative Press, Interlude, Skope and many others.
Pete Wentz and Fall Out Boy released their first musical sound recording
in 2001 and released their first full length recording, entitled Fall Out Boy’s Evening Out With Your Girl,
in January, 2003 to excellent reviews and significant media attention. In May of 2003, Pete Wentz and Fall Out Boy
released another recording, entitled Take
This To Your Grave, which went on to sell over 200,000 copies and received
rave reviews.
Based on the success of the Take
This To Your Grave record, rabid fan support and the many positive reviews
from the band’s live performances, Pete Wentz and Fall Out Boy were courted by
many of the world’s largest record companies and eventually chose to sign with
Island Records in mid-2003.
In addition to Pete Wentz’s fame and notoriety as a musician and a
member of Fall Out Boy, he is also well known for his various other
entrepreneurial activities. Pete Wentz
formed the publishing, clothing and accessories company Clandestine Industries,
which has sold goods through major retail outlets throughout the country.
Both as a musician and member of Fall Out Boy, Pete Wentz’s goods and
services are advertised, promoted and provided throughout the
Upon information and belief, Respondent registered the domain name on
May 24, 2004, well after Pete Wentz became a well known musician and member of Fall
Out Boy.
Respondent is providing a web page at <petewentz.com> that prominently displays the virtually
identical mark PETEWENTZ.COM.
On Respondent’s web site, Respondent is providing links to various
third party web sites where various third party goods and services, all of
which are directly related to Pete Wentz and his musical group Fall Out Boy,
are being offered for sale.
The domain name <petewentz.com>
is virtually identical and confusingly similar to the PETE WENTZ
name and mark. The inclusion of “.com”
is not significant in determining similarity.
Respondent has no rights or legitimate interests in the domain name
that is the subject of this Complaint.
Respondent’s use of the domain name is clearly intended to confuse the
public as to the source of his services and at the very least suggest a relationship
with, approval by or affiliation with the Pete Wentz, which Respondent does not
have.
Respondent has not utilized the domain name for any legitimate business
purpose, including the creation and maintenance of a website in connection with
a bona fide offering of goods or
services.
The domain name at issue was indisputably registered and is being used
in bad faith by Respondent. Evidence of
bad faith has been found pursuant to Policy ¶ 4(b)(iv) where a respondent is
using a domain name that is confusingly similar to a complainant’s mark to
refer Internet users to the web sites of third parties.
B. Respondent
Peter Charles Wentz, who has gone by Pete since early childhood, and Respondent
have been friends since the summer of 1993.
Peter Charles Wentz was born on October 7, 1960, long before the Complainant,
who is trying to claim the right to Pete’s name and domain registration. Pete has been written about in Life Magazine
in a 1972 issue, and was an international flight attendant for many years with
American Airlines. As a result, it can
be established that this Pete Wentz has been, and still is known throughout
many international countries.
Pete Wentz has long been interested in the hobby of photography.
In 2004, Pete Wentz and Respondent began negotiations to form a
partnership in a photography business.
Respondent and Pete Wentz had the forethought to register the domain
name for business and/or personal use, and Phil Lynch owned the registration
account with GoDaddy.com so Phil Lynch registered the domain name <petewentz.com> with Pete Wentz’s full knowledge, cooperation,
and blessing.
We did not register <petewentz.com> for any of the
following:
(1) for the purpose of selling, renting, or
otherwise transferring the domain name registration to the Complainant.
(2) to prevent the owner of any trademark or
service mark from reflecting the mark in a corresponding domain name.
(3) registered the domain name primarily for
the purpose of disrupting the business of a competitor.
(4) to
intentionally attempt to attract, for commercial gain, Internet users to a
website or other on-line location, by creating a likelihood of confusion with
the Complainant’s mark.
Respondent has registered the domain name <petewentz.com> because it is Pete Wentz’s name. It has not made any financial gain, or
attempted any financial gain. It has not
yet created a website due to Pete’s move from
C. Complainant’s Additional Submissions
Notwithstanding Respondent’s attempts to imply otherwise, there is only
one Respondent in the subject proceeding, and that is Phil Lynch. The domain name at issue was both registered
and is owned by Phil Lynch. As such,
Phil Lynch is the sole Respondent in the subject proceeding; the individual
identified by Respondent as “Peter Wentz” is not a party hereto; and
Respondent’s attempt to imply otherwise should not be considered by the
panelist.
Respondent has not demonstrated that he has rights or legitimate
interests in the domain name that is the subject of this Complaint. Respondent does not claim to be known by the
name “Peter Wentz” nor does he claim to have acquired any trademark or service
mark rights in and to the name “Peter Wentz” or the domain name <petewentz.com>. Rather, Respondent claims to know an
individual named “Peter Wentz” and alleges that he registered the domain name
in connection with a photography business that he and “Peter Wentz” were
contemplating.
Moreover, Respondent has not even attempted to demonstrate that he is
utilizing the domain name for any legitimate business purpose or noncommercial
use, including the creation and maintenance of a website in connection with a bona fide offering of good and services.
In addition, the domain name was registered in 2004, and Respondent has
provided no evidence to explain why it has been over three years since the
subject domain name was registered.
The domain name at issue has been registered and is being used in bad
faith by Respondent and nothing contained in Respondent’s response demonstrates
otherwise.
Respondent has not supported its statements with any evidence
whatsoever that would demonstrate the existence of this proposed business
venture, let alone justify Respondent’s registration of the domain name.
There is no question that Respondent’s use and registration of the <petewentz.com> domain name is
likely to divert web users trying to locate Complainant Pete Wentz on the
Internet, thus tarnishing and disparaging the reputation and good will
associated with Complainant’s PETE WENTZ name and mark.
D. Respondent’s Additional Submissions
The domain name <petewentz.com>
was registered by Phil Lynch in complete good-faith as an agent for Pete
Wentz.
The fact that Phil Lynch knows Pete Wentz and has been a friend of Pete
Wentz since 1993 is not “alleged” at all, it is an undisputable fact.
For Complainant to blatantly and totally misrepresent that Respondent
setup a “click-through advertising site” or setup a website “for commercial
gain,” or “likely receives ‘click-through’ fees for each referral” is complete
fabrication and borders on the incredulous and ridiculous.
FINDINGS
(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.
DISCUSSION
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.
Complainant does not possess a trademark registration with a governmental authority for its alleged PETE WENTZ mark. However, previous panels have held, and this Panel holds, that registration of a mark with governmental authority is not required under Policy ¶ 4(a)(i), provided Complainant can demonstrate common law rights in its mark through continuous and extensive use of the mark, which Complainant has done. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant asserts rights in the PETE WENTZ mark by virtue of the use of the mark as Complainant’s personal name. Complainant contends that he is a world-famous musician, author and entrepreneur who has used his name since birth. Complainant contends that he has been a member of the famous music group Fall Out Boy since 2001 when he co-founded the group, and that prior to that he was well known in the Chicago-area music scene. The Panel finds that Complainant has established sufficient secondary meaning in his name, and finds that Complainant has met its burden under this element of Policy ¶ 4(a)(i). 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).
The Panel finds that the <petewentz.com> domain name is
identical to Complainant’s PETE WENTZ mark, and the addition of a generic
top-level domain is irrelevant for the purposes of Policy ¶ 4(a)(i). Respondent neither confirms nor denies
Complainant’s allegations with regards to Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to show that it does have rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Complainant asserts that Respondent is not
commonly known by the <petewentz.com>
domain name, and Respondent’s WHOIS information, listing “Phil Lynch” as
Respondent, seems to support this contention.
Complainant also asserts that Respondent is not authorized to use
Complainant’s mark in any way. While
Respondent asserts it has registered the disputed domain name for his “friend,”
named Pete Wentz, Respondent has not asserted that he is in any way commonly
known by the disputed domain name.
Complainant contends that the disputed domain
name is being used to host a website that displays hyperlinks for various
websites in relation to Complainant, presumably for Respondent’s own commercial
benefit through the accrual of click-through fees. The Panel finds that such use of the <petewentz.com> domain name is
neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Tencent Commc’ns
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the
complainant’s mark “as a portal to suck surfers into a site sponsored by [the
respondent] hardly seems legitimate”).
Respondent appears to be commercially
benefiting from the use of the <petewentz.com>
domain name, and the disputed domain name is capable of creating a likelihood
of confusion as to Complainant’s source, sponsorship, affiliation or
endorsement of the disputed domain name and corresponding website, and the
Panel finds evidence of bad faith registration and use under Policy ¶
4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum December 22,
2003) (“Registration and use of a domain name that incorporates another’s mark
with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”); see also Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent’s
prior use of the mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant’s competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
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 <petewentz.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dated: November 8, 2007
National
Arbitration Forum
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