Stevland Morris a/k/a Stevie Wonder v. Enrique Matta
Claim Number: FA0805001189962
Complainant is Stevland Morris a/k/a Stevie
Wonder (“Complainant”), represented
by Stephen J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steviewondertickets.com>, registered with Domainbank.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 12, 2008.
On May 12, 2008, Domainbank confirmed by e-mail to the National Arbitration Forum that the <steviewondertickets.com> domain name is registered with Domainbank and that the Respondent is the current registrant of the name. Domainbank has verified that Respondent is bound by the Domainbank 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 May 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 3, 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 email@example.com by e-mail.
A four-paragraph electronic communication unaccompanied by any evidence or other supporting documentation was received from Respondent via the Forum’s website on June 2, 2008. The communication was not received in hard copy by fax or mail, as required by the Forum’s Supplemental Rules 5(c) and 5(d). Nor did it include the statement certifying its accuracy that is required by Paragraph 5(b)(viii) of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
An Additional Submission was subsequently received from Complainant, identifying various procedural deficiencies in Respondent’s communication and responding in substance thereto.
On June 6, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
On June 9, 2008, the Panel entered a Procedural Order notifying the Parties that the Panel would not consider the Respondent’s electronic communication. The Order granted Respondent leave to file a Response no later than July 1, 2008, and stated that such Response would be considered by the Panel only if it complied with and was submitted in accordance with the applicable rules. The Order further stated that any supporting evidence to be considered by the Panel must be submitted with the Response.
The Panel’s Procedural Order also stated that the Panel would not consider Complainant’s Additional Submission, but granted leave to Complainant to file a new Additional Submission in the event that a Response was submitted pursuant to the Order. The Panel ordered that such Additional Submission be limited to matters properly within the scope of such a submission, and clearly identify any grounds warranting consideration of each matter addressed therein.
On June 24, 2008, Respondent resubmitted its previous communication electronically and also submitted a copy by fax. Complainant submitted a response to Respondent’s submission on June 27, 2008.
The Panel declines to consider Respondent’s submission because it lacks the certification statement required by the rules. Even had the required certification been included, Respondent’s claims would not be entitled to significant weight, as they are unaccompanied by any supporting evidence. The Panel also declines to consider Complainant’s response to Respondent’s submission.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a well-known musical artist who has performed for many
years under the stage name “Stevie Wonder.”
Complainant owns various trademark registrations for the STEVIE WONDER
mark in the
For the reasons stated supra, the Panel declines to consider Respondent’s procedurally deficient and unsubstantiated submissions.
The Panel finds that Complainant has rights in the STEVIE WONDER mark; that the disputed domain name <steviewondertickets.com> is confusingly similar to this mark; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that Respondent registered and is using the disputed domain name in bad faith.
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.
The disputed domain name incorporates Complainant’s mark in its entirety, appending the word “tickets,” which merely describes a product within the scope of Complainant’s mark. The disputed domain name is therefore confusingly similar to the mark.
Complainant alleges that Respondent is using the disputed domain name for a website that promotes the sale of concert tickets. The website appears to be devoted primarily to the sale of tickets for Complainant’s own concerts, but the website also enables users to search for tickets to other events as well.
It is not clear to the Panel whether Respondent actually has tickets for Complainant’s concerts available for sale, or whether in fact the website is designed merely to attract users seeking such tickets and then profit from this traffic in some other manner. The prominent presence of a general ticket search function on the website further suggests to the Panel that the mark is being used at least in part to promote the sale of tickets to events other than Complainant’s concerts. In either case, Respondent’s use of the disputed domain name likely extends well beyond nominative fair use, and thus would not qualify as bona fide. See Bank of Am. Corp. v. Beitler, FA 161463 (Nat. Arb. Forum July 24, 2003) (holding that use is not bona fide where respondent uses the mark to divert customers to a much broader offering of goods or services, rather than merely those properly described by the mark).
Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and the burden of production therefore shifts to Respondent to come forward with concrete evidence of such rights or interests. See e.g. Am. Online, Inc. v. Thricovil, FA638077 (Nat. Arb. Forum Mar. 22, 2006). Respondent has not done so, and the Panel accordingly finds that Respondent lacks rights or legitimate interests.
Complainant alleges that Respondent registered and uses the disputed domain name in an attempt to purposely attract Internet users seeking Complainant’s goods and services, and to benefit commercially thereby. The evidence before the Panel is consistent with this allegation, and such evidence supports a finding of bad faith registration and use under
Paragraph 4(b)(iv) of the Policy. The Panel so finds.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <steviewondertickets.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 9, 2008
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