Michael Aston v. Dena Pierrets
Claim Number: FA0207000117322
Complainant is Michael Aston, Santa Monica, CA (“Complainant”) represented by Michael R. Blaha. Respondent is Dena Pierrets, Mesa, AZ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <genelovesjezebel.com>, registered with Network Solutions, 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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 30, 2002; the Forum received a hard copy of the Complaint on July 31, 2002.
On August 1, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <genelovesjezebel.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 21, 2002 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 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 September 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <genelovesjezebel.com> domain name is identical to Complainant’s interests in the band name “Gene Loves Jezebel” and common law rights in the corresponding mark.
Respondent has no rights or legitimate interests in the <genelovesjezebel.com> domain name.
Respondent registered and used the <genelovesjezebel.com> domain name in bad faith.
Respondent did not submit a Response in this proceeding.
Complainant founded the musical group “Gene Loves Jezebel” with his brother, Jay Aston, in 1982. Complainant asserts that the band name “Gene Loves Jezebel” “became associated in the minds of the relevant consuming public with goods created and services provided by Complainant.”
Around October 2, 1997, Complainant and Jay Aston had a falling out, which resulted in the band breaking up. Following the break-up, Complainant was informed by Jay Aston, James Stephenson, and Peter Risingham (all former band members) that Complainant had the “sole exclusive right” to use the “Gene Loves Jezebel” name to perform music live or sell recorded music and that they were going to start a new band without Complainant. This release, grant of rights in the “Gene Loves Jezebel” band name was confirmed in a October 31, 1997 conference call, whereby all the aforementioned parties were represented.
Subsequently, Jay Aston, James Stephenson, and Peter Risingham filed an action in Los Angeles County Superior Court asserting that they owned rights in the “Gene Loves Jezebel” band name and sought an injunction against Complainant from using the band name in connection with Complainant’s goods and services. This action was dismissed with prejudice.
Since the bands dissolution in 1997, Complainant has used the “Gene Loves Jezebel” name to denote goods created and sold by him and services provided by him. Furthermore, Complainant currently has a pending application with the United States Patent and Trademark Office for the GENE LOVES JEZEBEL mark.
Respondent registered the <genelovesjezebel.com> domain name on June 16, 1998. Complainant asserts that Respondent is not a former or current member of the “Gene Loves Jezebel” band. The domain name resolves to a website that is designed to challenge Complainant’s ownership and rights to use the “Gene Loves Jezebel” moniker in connection with Complainant’s music and to disparage the quality of Complainant’s musicianship.
Complainant contends that “on the message board of the website represented by the Domain Name that [Respondent] has no involvement in running said website, and that [Respondent] does not own the Domain Name registration, even though she is listed by Network Solutions as the registered holder of [<genelovesjezebel.com>].” Furthermore, Complainant claims that Respondent has “stated publicly that she is transferring the Domain Name to Complainant’s competitor, his brother Jay Aston.” Respondent has not come forward to answer Complainant’s contentions.
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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and
(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
Complainant has established common law rights in the GENE LOVES JEZEBEL mark through use of the mark in connection with live music and recorded music since 1982. Complainant also provides evidence that, since the break-up of the “Gene Loves Jezebel” band, all the former band members have bestowed upon Complainant the right to use the band name for Complainant’s musical endeavors. Complainant’s longstanding, continuous use of the “Gene Loves Jezebel” moniker and acquiescence of said use by Complainant’s former band members gives Complainant sufficient rights in the moniker to raise a claim under the ICANN Policy. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark FISHTECH which it has used since 1982).
Furthermore, 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). In addition, in support of its rights to the GENE LOVES JEZEBEL mark, Complainant notes that it has a federal registration application pending for the mark. Evidence that Complainant is actively seeking trademark protection for a mark in question is enough to show rights in the mark sufficient to establish standing. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also Phone-N-Phone Serv. (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to Complainant’s pending service mark application).
Respondent’s domain name incorporates Complainant’s entire GENE LOVES JEZEBEL mark with the mere absence of spaces between words in the mark and the inconsequential addition of the generic top-level domain “.com.” Since spaces are not permitted in domain names and generic top-level domains are required, Respondent’s domain name is identical to Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in the <genelovesjezebel.com> domain name because Complainant’s former band members relinquished all the rights in the “Gene Loves Jezebel” band name. Complainant also contends that Respondent has some sort of affiliation with Complainant’s former band members as Respondent has stated its intentions to transfer the domain name registration to one of the former band members. Respondent has failed to come forward and refute Complainant’s allegations and, therefore, the Panel may presume that Respondent has no rights or legitimate interests in the domain name and that Complainant’s allegations are true. 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); 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”).
In addition, Complainant’s assertions that Respondent has no rights or legitimate interests in the <genelovesjezebel.com> domain name and Complainant’s compelling arguments in support of that proposition shift the burden on Respondent to prove that it holds valid rights or legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Respondent uses the <genelovesjezebel.com> domain name to resolve to a website that is designed to tarnish Complainant’s established goodwill in the music industry. The website challenges Complainant’s ownership of the GENE LOVES JEZEBEL mark and comments in a negative fashion about the quality of Complainant’s musicianship. Thus, Respondent is using Complainant’s entire mark for the purpose of diverting Internet users to its website in order to disparage Complainant and the services that Complainant offers under the mark. Such a use in not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate fair use pursuant to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “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 Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark).
Respondent is not a former band member and, thus, Respondent has not been commonly known by the GENE LOVES JEZEBEL moniker. Furthermore, there exists no evidence on the record that Respondent ever had authorized permission to use the GENE LOVES JEZEBEL moniker for any purpose. Therefore, Respondent has no rights or legitimate interests in the <genelovesjezebel.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <genelovesjezebel.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s use of the <genelovesjezebel.com> domain name to divert Internet users to a website that disparages Complainant’s musicianship and challenges Complainant’s ownership rights in the GENE LOVES JEZEBEL moniker evidences bad faith registration and use of the domain name. Complainant avers that Respondent has a connection with Complainant’s former band members, whom are now in competition with Complainant, which Respondent does not come forward to refute. The use of another’s mark, by a person connected with one of Complainant’s competitors, for the purpose of tarnishing that entity’s reputation is not a good faith use. Respondent’s tarnishing use of the domain name represents bad faith registration and use under Policy ¶ 4(b)(iii). See Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where the Respondent, a company financially linked to the Complainant’s main competitor, registered and used the domain name in question to disrupt the Complainant’s business); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding bad faith where Respondent has connections with a competitor of the Complainant’s digital security business).
Furthermore, it is evident from Respondent’s infringing use of the <genelovesjezebel.com> domain name that Respondent is aware of Complainant’s interests in the GENE LOVE JEZEBEL moniker. Therefore, Respondent’s registration of the mark, despite knowledge of Complainant’s rights in the mark, constitutes bad faith under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <genelovesjezebel.com> be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: September 27, 2002
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