Alexander James McLean p/k/a AJ McLean v. NA c/o The data in Bulkregister.com's WHOIS database is p
Claim Number: FA0804001179363
Complainant is Alexander James McLean p/k/a AJ McLean
(“Complainant”), represented by Thomas David Ruth, of Lassiter, Tidwell, Davis,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ajmclean.com>, registered with Enom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 23, 2008.
On April 22, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ajmclean.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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").
29, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 19, 2008
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 May 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <ajmclean.com> domain name is confusingly similar to Complainant’s AJ MCLEAN mark.
2. Respondent does not have any rights or legitimate interests in the <ajmclean.com> domain name.
3. Respondent registered and used the <ajmclean.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alexander James McLean, is an internationally recognized recording artist. Complainant has recorded and performed with the musical group Backstreet Boys for the past fifteen years. As part of this group, Complainant has sold over seventy-five million albums and given live performances in multiple countries. Additionally, Complainant has had a solo singing career and has recorded music and performed live under the AJ MCLEAN mark. Additionally, Complainant has advertised his solo career by producing goods such as posters, t-shirts and hats which contain the AJ MCLEAN mark.
Respondent registered the disputed domain name on March 14, 2000. The disputed domain name contains a pop-up advertisement for a casino and redirects the Internet user to a search engine at <usseek.com> where search results for music which competes with Complainant are automatically displayed.
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.
Complainant has not registered his AJ MCLEAN mark with a governmental authority. The Panel finds registration of a mark with a governmental authority is not necessary, provided Complainant can provide evidence of common law rights in his AJ MCLEAN mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also 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).
Complainant has been a recording artist and performer both with a musical group and on his own for fifteen years. During this time Complainant has created multiple albums, sold over seventy-five million records and performed live in several countries. Complainant has advertised his career by producing advertising goods such as posters and t-shirts which contain the AJ MCLEAN mark. The Panel finds Complainant’s continuous use of his AJ MCLEAN mark in connection with his musical career is sufficient to establish Complainant’s rights in the AJ MCLEAN mark pursuant to Policy ¶ 4(a)(i). See 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 …”); see also Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (holding that the complainant had accrued common law rights in the KEVIN GARNETT mark).
domain name fully incorporates Complainant’s AJ MCLEAN mark with the mere
deletion of a space, and the addition of the generic top-level domain (“gTLD”)
“.com.” The deletion of a space from a
mark in a disputed domain name is not relevant because spaces are not
permissible in domain names. Also, the
addition of a gTLD is not legally relevant when determining whether a disputed
domain name is identical to a mark pursuant to Policy ¶ 4(a)(i)
because a gTLD is a required element of every domain name. Thus, the Panel finds that Respondent’s domain
name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant presents a prima facie case supporting these allegations, the burden shifts to Respondent to establish it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has presented a sufficient prima facie case to support its allegations. Respondent failed to submit a response in these proceedings. Therefore, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel will inspect the record and determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent is using the disputed domain name to redirect Internet users to a search engine which automatically displays music related links which compete with Complainant’s business. The disputed domain name also resolves to a pop-up advertisement for casinos. The Panel finds Respondent’s use of the disputed domain name is not a legitimate offering of bona fide goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Wells Fargo & Co. v. Party Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or services).
The record and WHOIS information do not indicate Respondent is commonly known by the <ajmclean.com> domain name. Respondent is listed as “The data in Bulkregister.com’s WHOIS database is p” in the WHOIS information. Additionally, Complainant has not authorized Respondent to use its AJ MCLEAN mark. Therefore, the Panel finds Respondent is not commonly known by the <ajmclean.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 the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name redirects Internet users to a search engine which automatically displays links to music which competes with Complainant’s business. The Panel finds Respondent’s use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Respondent is using the website resolving from its
confusingly similar disputed domain name to display links to competing music
related content. The disputed domain
name also resolves to a search engine and displays a pop-up advertisement for a
casino. Respondent presumably profits
from these uses of the confusingly similar disputed domain name in the form of
click-through fees. Additionally,
Respondent’s use of Complainant’s AJ MCLEAN mark creates a likelihood of
confusion regarding the source of the content resolving from the disputed
domain name. The Panel finds this is an
attempt by Respondent to profit from the goodwill associated with Complainant’s
mark. Therefore, the Panel finds Respondent’s
attempt to profit from its use of the confusingly similar disputed domain name constitutes
registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ajmclean.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 6, 2008
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