ELIGIBILITY REQUIREMENTS DISPUTE
RESOLUTION POLICY
DECISION
The Estate of
Jerome J. Garcia v. Paradigm Solutions aka Charlie White
Claim Number: FA0207000114756
PARTIES
Complainant
is the Estate of Jerome J. Garcia, San Rafael, CA (“Complainant”) represented
by Leslie C. McKnew, of Brobeck, Phleger & Harrison LLP. Respondent is Charlie White a/k/a
Paradigm Solutions, Clarksville, IN (“Respondent”).
REGISTRAR AND
DISPUTED REGISTERED NAME
The
Registered Name at issue is <jerry.garcia.name>, registered with Verisign,
Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on July 1, 2002; the Forum received a hard copy of the Complaint
on July 1, 2002.
On
July 9, 2002, Verisign, Inc. confirmed by e-mail to the Forum that the
Registered Name <jerry.garcia.name> is registered with Verisign,
Inc. and that Respondent is the current registrant of the Registered Name. Verisign, Inc. has verified that Respondent
is bound by the Verisign, Inc. registration agreement and has thereby agreed to
resolve registered name disputes brought by third parties in accordance with
the Eligibility Requirements Dispute Resolution Policy (“ERDRP”).
On
July 9, 2002 a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 29,
2002, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with 2(a) of the Rules of Procedure for
the Eligibility Requirements Dispute Resolution Policy (the “ERDRP Rules”).
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
August 8, 2002, pursuant to ERDRP Rule 6(b), the Forum appointed Tyrus R.
Atkinson, Jr., as the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibilities under Paragraph 2(a)
of the ERDRP Rules. Therefore, the
Panel may issue its decision based on the documents submitted and in accordance
with the ERDRP, ERDRP Rules, the Forum’s ERDRP 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 Registered Name be transferred from Respondent to Complainant
pursuant to Policy 5(f)(i)(B).
A. Complainant
Respondent’s
legal name is Charlie White and does not correspond to the Registered Name <jerry.garcia.name>.
Respondent
does not own trademark or service mark rights to a fictional character named
“Jerry Garcia” and therefore has no rights in the Registered Name <jerry.garcia.name>.
Respondent
is not commonly known by “Jerry Garcia” and therefore has no rights in the
Registered Name <jerry.garcia.name>.
Complainant,
the estate of Jerome J. Garcia has rights in the Registered Name <jerry.garcia.name>
because it is the legal holder of all rights belonging to the late Jerome
Garcia who was commonly known as “Jerry Garcia” during his lifetime, and is
still commonly known by such name after his death.
B. Respondent
No
Response was received.
Complainant
is the estate of the late Jerome J. Garcia.
Jerome J. Garcia has always used and been commonly known as “Jerry
Garcia” in life and in relation to all of his music, artwork and writings. Jerome J. Garcia performed for more than
thirty years with the world famous band The Grateful Dead and other
bands, including the Jerry Garcia Band under the name “Jerry
Garcia.” In addition to his music,
Jerome Garcia created numerous paintings, drawings and sketches that continue
to be sold today under the name, “Jerry Garcia.” He also wrote a number of published books under the name of
“Jerry Garcia.” Any reference to Jerome
Garcia in books, interviews, films, articles and memorabilia all refer to
Jerome Garcia as “Jerry Garcia.”
Respondent
is Charlie White a/k/a Paradigm Solutions.
Respondent’s legal name is either “Charlie White” or “Carlos
White.” Respondent registered the
Registered Name using the name “Charlie White.” Complainant’s investigation has found no evidence that Respondent
owns any trademark or service mark rights for a character that is name “Jerry
Garcia.” Complainant’s investigation
has found no evidence that Respondent uses the name “Jerry Garcia” in any
way. Complainant has only found
evidence that Respondent uses the names “Charlie White,” “Carlos White,” and
“Paradigm Solutions.”
Paragraph
15(a) of the ERDRP 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 ERDRP
Rules and draw such inferences it considers appropriate pursuant to paragraph
14(b) of the ERDRP Rules.
Paragraph
4(b) of the ERDRP requires that the Complainant prove each of the following
elements in order to establish that the Registered Name was registered in
violation of the Eligibility Requirements and obtain an order that a Registered
Name should be cancelled:
(1) the name corresponding to the Registered
Name is not the legal name of Respondent; and
(2) the name corresponding to the Registered
Name is not the name of a fictional character in which the Respondent has
trademark or service mark rights; and
(3) the Respondent has not been commonly
known by the name corresponding with the Registered Name.
If
the above elements are shown, and the Complainant requests that the Registered
Name be transferred to Complainant, paragraph 5(f)(i)(B) of the ERDRP requires
the Complainant to establish that it meets the Eligibility Requirements
correspondent to the Registered Name.
In order to meet the Eligibility Requirements Complainant must provide
evidence of one or more of the following:
(1) the name corresponding to the Registered
Name is the legal name of Complainant; or
(2) the name corresponding to the Registered
Name is the name of a fictional character in which the Complainant has
trademark or service mark rights; or
(3) the Complainant has been commonly known
by the name corresponding to the Registered Name.
Respondent
is known to this Panel only as “Charlie White” and “Paradigm Solutions.” There is no evidence on record, nor has
Respondent come forward to establish that its legal name is “Jerry
Garcia.” Therefore, Respondent’s
registration of <jerry.garcia.name> does not meet this Eligibility
Requirement, and ERDRP Policy ¶ 4(b)(i) has been satisfied.
Name of Fictional Character
There
is no evidence on record, nor has Respondent come forward to establish that it
owns any trademark or service mark rights for a character by the name of “Jerry
Garcia.” Therefore, Respondent’s
registration of <jerry.garcia.name> does not meet this Eligibility
Requirement, and ERDRP Policy ¶ 4(b)(ii) has been satisfied.
Commonly Known As
Respondent
is commonly known as “Charlie White,” or “Paradigm Solutions,” and has
presented no evidence that it is also commonly known as “Jerry Garcia.” Therefore, Respondent has failed to meet
this Eligibility Requirement in relation to <jerry.garcia.name>,
and ERDRP Policy ¶ 4(b)(iii) has been satisfied.
Complainant,
the Estate of Jerome J. Garcia, is the current owner of all rights held by the
late Jerome J. Garcia. Complainant has
provided evidence that Jerome J. Garcia was commonly known as “Jerry Garcia”
during his lifetime and has continued to be known by such name after his
death. Therefore, Complainant has
rights in the name “Jerry Garcia,” and has satisfied this Eligibility
Requirement. Therefore, Complainant is eligible to register <jerry.garcia.name>.
It
has been demonstrated, as required by the ERDRP Policy, that <jerry.garcia.name>
was registered in violation of the Eligibility Requirements. Furthermore, it has been established that
Complainant has rights to the Registered Name because it is the Estate of the
deceased Jerome J. Garcia who was commonly known as Jerry Garcia. Therefore, the Panel concludes that the
requested relief shall be hereby granted.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 22, 2002.
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