Patrick Stump v.
Claim Number: FA0709001082090
Complainant is Patrick Stump (“Complainant”), represented by Peter
E. Nussbaum, of Wolff & Samson
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <patrickstump.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
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, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <patrickstump.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 October 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 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, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <patrickstump.com> domain name is identical to Complainant’s PATRICK STUMP mark.
2. Respondent does not have any rights or legitimate interests in the <patrickstump.com> domain name.
3. Respondent registered and used the <patrickstump.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Patrick Stump, is a well known musician and member of the band Fall Out Boy. Complainant co-founded the band in 2001, and since then has done extensive marketing to acquire and retain a significant fan base. Complainant is featured in many news/pop culture articles, interviews, movies, and television shows. Also, there is a line of products and music marketed and sold in connection with Fall Out Boy and under Complainant’s PATRICK STUMP name.
Respondent’s <patrickstump.com> domain name was registered June 25, 2005 and features various third-party goods and services being offered for sale, many of which relate to Patrick Stump and/or his band’s music.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Under Policy ¶ 4(a)(i), Complainant need not have registered his mark with a governmental authority in order to establish rights in it. A name may give rise to trademark rights at common-law if secondary meaning is established. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that the complainant has common law rights to her name); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law.…”)
Complainant is a member of the famous band Fall Out Boy. Complainant is featured in many news/pop culture articles, interviews, movies and television shows. Since 2001, Complainant has established considerable fame and a significant fan base. Also, there is a line of products and music marketed and sold in connection with Fall Out Boy and under Complainant’s PATRICK STUMP mark. The Panel finds that Complainant has established sufficient common law rights in his mark pursuant to Policy ¶ 4(a)(i). See McCarthy on Trademarks and Unfair Competition, § 13:1 (4th ed. 2002) (stating that the basic rules pertaining to the protection of personal names require actual proof of secondary meaning for protection); see also McCarthy on Trademarks and Unfair Competition, § 13:2 (4th ed. 2002) (“Secondary meaning grows out of long association of the name with the business, and thereby becomes the name of the business as such; is acquired when the name and the business become synonymous in the public mind; and submerges the primary meaning of the name as a word identifying a person, in favor of its meaning as a word identifying that business.”).
Respondent’s <patrickstump.com> domain name
contains Complainant’s PATRICK STUMP mark in its entirety omitting the space
and including the generic top level domain (“gTLD”) “.com.” Accordingly, the Panel finds that
Respondent’s disputed domain name is identical to Complainant’s mark pursuant
to Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman
Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been
established that the addition of a generic top-level domain is irrelevant when
considering whether a domain name is identical or confusingly similar under the
Policy.”); see also
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no
rights or legitimate interests in the disputed domain name. See
TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept.
16, 2002) (“In order to bring a claim under the Policy, Complainant must first
establish a prima facie case.”); see also VeriSign Inc. v. VeneSign
Respondent has failed to submit a response to the Complaint. The Panel thus presumes that Respondent has no rights or legitimate interests in the <patrickstump.com> domain name but will nevertheless proceed to consider all the available evidence in consideration of the factors listed under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Nowhere in Respondent’s WHOIS information or elsewhere in the record does it indicate that Respondent is or ever has been commonly known by the <patrickstump.com> domain name. Absent any other affirmative evidence, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent’s <patrickstump.com> domain name contains Complainant’s mark in its entirety and proceeds to display links, products, and information without Complainant’s authorization that are similar to those marketed under Complainant’s PATRICK STUMP mark. The Panel finds this is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Moreover, there are various hyperlinks to music and products marketed under Complainant’s PATRICK STUMP mark on the website that resolves from the <patrickstump.com> domain name and it is presumed that Respondent financially benefits from these hyperlinks through the use of click through fees. The Panel finds this to be further evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <patrickstump.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 6, 2007
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