Stevland Morris a/k/a Stevie Wonder, Taxi Productions, Inc. and Taxi License Corporation v. Jeremy VanHall
Claim Number: FA0901001242904
Complainant is Stevland
Morris a/k/a Stevie Wonder, Taxi
Productions, Inc. and Taxi License
Corporation (“Complainant”), represented by Stephen J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kjlh.net>, registered with Godaddy.com, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 16, 2009.
On January 15, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kjlh.net> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 January 19, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of February 9, 2009
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 postmaster@kjlh.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <kjlh.net> domain name is identical to Complainant’s KJLH mark.
2. Respondent does not have any rights or legitimate interests in the <kjlh.net> domain name.
3. Respondent registered and used the <kjlh.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Stevland Morris a/k/a Stevie Wonder, Taxi Productions, Inc. and Taxi License Corporation, have operated a Los Angeles-based radio station operating under the call sign letters and mark KJLH since 1978. Complainant uses the <kjlhradio.com> domain name in connection with its business.
Respondent, Jeremy VanHall, registered the disputed <kjlh.net> domain name on April 20, 2008. The disputed domain name resolves to a website that offers a search engine and displays third-party links and advertisements for third-party radio stations. The resolving website also contains this sentence: “This domain may be for sale by its owner!”
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.
The Panel finds that Complainant does not need to demonstrate its rights in the KJLH mark through a trademark registration in order to obtain UDRP standing, so long as Complainant can demonstrate that it has sufficient common law rights through secondary meaning under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant argues its common law
rights in the KJLH mark based on its continuous use of the mark in commerce
since 1978 in advertising radio broadcasts in a major metropolitan area.
The Panel finds that Complainant has established common law rights in the KJLH
mark since at least as early as 1978 under Policy ¶ 4(a)(i).
See Bond & Co. Jewelers,
Inc. v.
Respondent’s disputed <kjlh.net> domain name
contains Complainant’s KJLH mark along with the generic top-level domain
“.net.” The Panel finds that the
disputed domain name is therefore identical to Complainant’s mark under Policy
¶ 4(a)(i). See Katadyn N. Am. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant asserts that it has not permitted Respondent to
use the KJLH mark, and that Respondent is not commonly known by the disputed
domain name. The Panel finds that the
WHOIS information’s listing of Respondent as “Jeremy VanHall” supports
Complainant’s argument. Therefore, the
Panel finds that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
The disputed domain name resolves to a website that features a search engine and advertises third-party radio stations. The Panel infers that Respondent is seeking click-through revenue from this activity, which evidences Respondent’s lack of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The resolving website indicates an offer to sell the
disputed domain name. The Panel finds
that Respondent’s willingness to dispose of the disputed domain name for profit
evidences Respondent’s lack of rights and legitimate interests under Policy ¶
4(a)(ii). See Mothers
Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum
May 27, 2003) (holding that under the circumstances, the respondent’s apparent
willingness to dispose of its rights in the disputed domain name
suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s offer to sell the disputed
domain name to the general public evidences Respondent’s bad faith registration
and use under Policy ¶ 4(b)(i). See Am.
Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb.
Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain
names for sale); see also Banca Popolare
Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad
faith where the respondent offered the domain names for sale).
Moreover, Complainant’s
business is likely disrupted through the display of third-party links and
advertisements for Complainant’s radio competitors on the resolving
website. This evidences Respondent’s
bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also
Finally, the Panel agrees with Complainant’s assertion that
Respondent has intentionally created a likelihood of confusion for commercial
gain as to Complainant’s affiliation and sponsorship of the identical disputed
domain name and corresponding website.
The Panel finds that Respondent registered and is using the disputed
domain name in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <kjlh.net> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 19, 2009
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