Gnarls Barkley, L.L.C. v. Pax Stereo
Claim Number: FA0808001221421
Complainant is Gnarls Barkley, L.L.C. (“Complainant”), represented by Rod
S. Berman, of Jeffer, Mangels, Butler & Marmaro LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gnarlsbarkley.tv>, registered with Godaddy.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
The Honorable James A. Carmody, G. Gervaise Davis Esq., and Alan L. Limbury Esq., as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 21, 2008.
On August 22, 2008, Godaddy.com, Inc. confirmed by e-mail to the
On August 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 18, 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.
A timely Response was received and determined to be complete on September 17, 2008.
An Additional Submission was received from Complainant on September 22, 2008, which was considered timely and complete pursuant to Supplemental Rule 7.
On September 30, 2008, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant says it is the primary entity corresponding to the
internationally famous, multiple-Grammy-award-winning musical group Gnarls
Barkley, whose first single was released to international acclaim in March
2006. Complainant claims to own the common
law trademark GNARLS BARKLEY, having sold millions of dollars worth of music
and merchandise under that name since March 2006 and having advertised heavily.
It also has two pending
Complainant says the disputed domain name, which Respondent registered on August 22, 2006, is confusingly similar and, but for the addition of the top level domain “.tv,” identical to Complainant’s mark; that Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith. The disputed domain name resolves to a website at <paxstereo.tv>, the home page of which, displaying the disclaimer “This page is not affiliated with Gnarls Barkley in any way,” contains Gnarls Barkley music and information, advertisements by Google and links to Gnarls Barkley merchandise available from Amazon.com.
Respondent says it is a long term affiliate of Amazon.com and that it obtained the disputed domain name as part of an on-going promotional campaign to bring greater representation of artists to the developing world of “Internet Television” before any notice of this dispute. Its use of the domain name is in connection with a bona fide offering of goods and services. Channel pages were created using emerging Internet technology (“widgets”) which were able to display video and other information readily made available by the artists on the Internet at websites such as <youtube.com>. Said materials were used to create a user experience that would provide for viewing of videos available through YouTube, and promote sales of Gnarls Barkley CDs, downloads, T-shirts and more from Amazon.com that directly benefit Complainant.
Respondent does not dispute Complainant’s claim to common law rights in the GNARLS BARKLEY mark nor that the disputed domain name is virtually identical or confusingly similar to that mark. It says it has made every effort to distinguish itself from Complainant by means of statements on its website. It denies bad faith registration and use.
The Response includes as an Exhibit an undated “.tv” Promotional Campaign Flyer that includes the statement:
We picked out over 300 artist and music business URLs and registered them, just to give them back to their rightful owners!! If they want, we will build them a custom micro-niche channel and link it all up with MySpace, and all the other social networking hotspots, all to give internet television a boost.
Another Exhibit to the Response, a press release from Respondent dated December 13, 2006, contains the following passages:
Pax Stereo has announced a new NeoUrban Internet Television Network, and plans to joint venture with indie artists and major labels alike in the development of custom designed meganiche internet television channels. As building efforts continue on their own vlogging-based networks, Pax Stereo reveals the previously super secret list of coveted “.tv” domain properties, and announces that clients are also finally being accepted on a limited first come first served basis for integrated social networking services.
…now the key is adding the channels of those artists willing to be pioneers…
If we get even one tenth of the artists whose urls we have to come on board…well the rest is history. The point is that we aren’t trying to hijack artists’ names and urls, we just knew that having those properties, in conjunction with the platform we have developed, makes a potentially very profitable situation and a stronger bargaining position.
We have no intentions whatsoever to attempt to profit, either directly or indirectly, on holdings where we have no relationship with the artist whose name is involved. We will just hold on to these, and talk to them in a year or so when the environment has changed, and everyone knows the value. But of course, the deal will be much different then. Look at how the value of YouTube changed over six months. Who’s to say just what the value of the Pax Stereo Tv Networks is? Makes one pause…
It is no surprise that the upstart company is now being approached to provide its services for major record label artists. We could have tried to convince all the potential collaborators we have out there, but we decided to take it all to the web and let the interested ones approach us….
C. Additional Submissions
Paragraph 12 of the Rules does not
contemplate unsolicited submissions after the Complaint and Response and gives
the Panel the “sole discretion” as to acceptance and consideration of
additional submissions. The overriding principle of Rule 12 enables the Panel
both to disregard unsolicited submissions received within the time limits
contemplated by the Forum’s Supplemental Rule 7 and to take into account
unsolicited submissions received outside those time limits. See Darice, Inc. v.
This is not a case of discovery of evidence not reasonably available to Complainant at the time of its initial submission nor of arguments by Respondent that Complainant could not reasonably have anticipated: see Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001). There is nothing in Complainant’s Additional Submission that could not have been included in the Complaint. Indeed there is substantial repetition of arguments already made in the Complaint. Accordingly the Panel declines to consider the Additional Submission.
Complainant has established all the elements entitling it to the relief which it seeks.
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.
Complainant’s pending trade mark registration applications confer no trade mark rights: see Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) and Spencer Douglass MGA v. Absolute Bonding Corp., D2001-0904 (WIPO Sept. 5, 2001).
Although Complainant has provided no evidence, as
distinct from assertions, to support its claim to common law trademark rights,
Respondent does not dispute that claim nor the facts asserted in support of it.
It is plain from the material revealing Respondent’s business plan that it was
because the name GNARLS BARKLEY had become, albeit in only a few months, distinctive
of Complainant that Respondent registered the disputed domain name. The Panel
finds the claim to common law rights to have been established. See
The disputed domain name is clearly identical to the GNARLS BARKLEY mark, with the top level domain “.tv” being inconsequential: see Magnum Piering, Inc. v. Mudjackers & Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 29, 2001); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
Complainant has established this element of its case.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Once a complainant establishes a prima facie case
against a respondent, the burden is on the respondent to provide evidence of
its right or legitimate interests under paragraph 4(c) of the Policy: see for
example Cassava Enters. Ltd., Cassava Enters. (
Respondent relies on paragraphs 4 (c)(i) and (iii) to demonstrate that it does have rights or legitimate interests in the disputed domain name.
Respondent is using the disputed domain name to provide information about Complainant; to enable viewing of videos of Complainant’s band’s performances and to facilitate the sale, through its affililate, Amazon.com, of Complainant’s music and merchandise. It is unrealistic to conclude that Respondent does not generate any revenue for itself from those sales.
It is clear from the correspondence between the parties exhibited to the Response that Respondent is not affiliated with Complainant and is not authorized to post or sell such content, but is using the GNARLS BARKLEY mark in the domain name in order to attract Internet users, for the likely purpose of a commercial transaction, who would expect to reach a site authorised or run by Complainant. Accordingly, the Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services. The fact that Respondent is attempting to gain from sales of Complainant’s merchandise also leads to the conclusion that Respondent is not utilizing the disputed domain name in connection with a legitimate noncommercial or fair use. See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)). See also Ciccone v. Parisi & “Madonna.com,” D2000-0847 (WIPO Oct. 12, 2000) (“Use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services”).
Complainant has established this element of its case.
Respondent’s business plan was to select a large number of domain names incorporating the names of musical artists, including Complainant, without the knowledge or consent of their “rightful owners” and, having secured these “coveted ‘.tv’ domain properties,” to seek the artists’ collaboration in the development of “custom designed meganiche internet television channels.” Those who declined to “to come on board” would be approached in a year or so “when the environment has changed, and everyone knows the value.”
Meantime, contrary to Respondent’s press release, Respondent stood to gain commercially from sales by Amazon.com of GNARLS BARKLEY merchandise generated from Internet traffic reaching Respondent’s website as a result of the confusion caused by the disputed domain name as to the affiliation, sponsorship and endorsement of Respondent’s website. The disclaimer notices do nothing to dispel this initial interest confusion, which arises before the Internet user reaches the site. Although some Internet users, upon reading the disclaimer, might immediately search for a site which is associated with Complainant, others are likely to stay, and some of those would be likely to buy the merchandise on offer, thereby generating for Respondent revenue derived from the confusion caused by the disputed domain name, since those buyers would never have reached Respondent’s site in the first place but for that confusion.
Not all uses of someone else’s trade mark in a domain name are improper under the so-called “initial interest confusion principle.” Parody and criticism sites and other fair uses of a mark may, depending on the way it is done, legitimately incorporate the mark in a domain name. Further, in the early days of the Internet, users would routinely type in a URL incorporating a mark, expecting to find the site of the trademark owner. Nowadays search engines are frequently used instead to display numerous links generated by the search term used. Users select the link to a site without the same expectation of finding the site of the trademark owner and, upon reaching a site they immediately perceive to be the wrong one, they return to their search engine to find the site they want. Hence, today there may be less likelihood of confusion. Here the sin of Respondent is in using the mark of another, for commercial purposes, knowing that the confusion engendered by the domain name is likely to benefit Respondent financially.
The Panel finds that this constitutes bad faith registration and use on Respondent’s part pursuant to Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Complainant has established this element of its case.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gnarlsbarkley.tv> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Presiding Panelist
The Honorable James A. Carmody G. Gervaise Davis
Dated: October 12, 2008.
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