Pearl Jam, LLC. f/k/a
Claim Number: FA0905001262659
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tenclub.org>, registered with Tucows 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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 14, 2009.
On May 14, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <tenclub.org> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 May 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 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 firstname.lastname@example.org by e-mail.
On May 17, 2009, The Forum received an email from Arthur Zonnenberg of
On Sunday, June 7, 2009, Respondent sent his electronic Response to Hostnet, with copies to the Case Administrator and Complainant. The Forum received this Response after the Response deadline and not in hard copy. The Response was determined to be not compliant with ICANN Rule 5.
On June 10, 2009 Complainant submitted a timely Additional Submission pursuant to Supplemental Rule 7. On June 15, 2009, Respondent electronically submitted a reply to Complainant’s Additional Submission. Respondent’s reply was timely.
On June 10, 2009 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
On June 22, 2009, by Procedural Order No. 1 the Panel decided to admit Respondent’s late Response. The Panel also decided that the language of the proceeding shall be English, and that Respondent should submit a translation into English of a document in Dutch attached to the Response. The Panel also decided to reset the deadline for the decision on the merits to July 6, 2009.
On June 23, 2009, Respondent sent by email to The Forum a “Summary” in English of the attachment to the Response entitled “TenClub® ´TeatrumVitae’“. In this Summary, Respondent said that “TENCLUB is registered at the chamber of commerce as a trading name”, and that “TENCLUB is in de proces [SIC] of being trademarked for a brand name in the sector NGO, non-profit and church in the Benelux”.
On the same day, the Panel made Procedural Order No. 2, by which it made Respondent the following request:
“Since Respondent [thus] appears to be relying upon such applications and/or registrations to defend his case, he is requested to submit to The Forum, with copy to Complainant, full copies of such documents together with their respective translations into English, by June 26, 2009.”
On June 24, 2009, Respondent submitted an 8-page long document in pdf format.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Complaint, Complainant contends the following:
- Pearl Jam is one of the most popular and widely known rock bands in the world. Ten Club LLC is the band’s original, authorized fan club and the exclusive licensee of the TEN CLUB mark. Pearl Jam, thorough this exclusive licensee has been using the mark in interstate and international commerce since 1992, in association with fan club services and website services. Complainant and its licensee have invested substantial resources in promoting its goods and services in connection with the TEN CLUB MARK. As a result of these efforts, the TEN CLUB mark is well known as exclusively signifying Complainant’s services and products.
Jam owns the following trademark registrations:
TEN CLUB Reg. No. 2,642,377 covering fan club services and providing a
website featuring information relating to live performances, recordings and
licensed merchandise via the internet, international class 41, and TEN CLUB
Reg. No. 2,990,844, covering online and mail ordering services related to a
musical group, international class 35. Complainant also owns international mark
registrations fro TEN CLUB: International registration Reg. No. 960,235, Hong Kong Reg. No. 301,162,638
- The tenclub.org domain name is substantially identical or confusingly similar to Complainant’s TEN CLUB marks.
- Respondent has no rights or legitimate interests in respect of the <tenclub.org> domain name. Long before the registration date of Respondent’s domain name, Complainant had gained worldwide recognition as a globally renowned provider of entertainment services. This renown is embodied in the TEN CLUB mark. In 2005, Complainant prevailed in UDRP claim FA0501000406483. The registrar did not cooperate and the transfer of the domain name was unsuccessful. Respondent has no relationship to Complainant and is not authorized to use the TEN CLUB mark. Complainant has not granted any license to use this mark in the disputed domain name. Given the history of the 2005 UDRP claim, there is no credibility to a contention that Respondent inherited legitimate rights in the domain name. Respondent registered the <tenclub.org> domain name 16 years after Complainant began using its TEN CLUB mark and had gained worldwide recognition as the provider of Pearl Jam entertainment services embodied in the TEN CLUB mark. Respondent does not own common law marks containing the term TEN CLUB, nor has Respondent made any legitimate use of or entered into any preparations to use the domain name at issue in connection with a bona fide offering of goods or services. Upon information and belief, Respondent has never been known by or operated a business under the TEN CLUB name and has no mark rights in the term tenclub.com. Respondent’s use of the domain name directly infringes on Complainant’s rights. Using a domain name which is confusingly similar to a registered trademark to divert Internet users to a commercial website is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
disputed domain name was registered in bad faith. Respondent’s registration of <tenclub.org> was deliberate
because the TEN CLUB mar is very distinctive and well known worldwide.
Respondent knew or should have known about Complainant and its fan club before
its registration and use of the domain name. Respondent, clearly a
sophisticated Internet user and active participant in the domain name business, could have conducted a simple search on any of the
leading search engines to discover the distinctiveness of the TEN CLUB mark and
its exclusive use in reference to Complainant. Respondent has intentionally
attempted to attract users to its website for commercial gain by creating a
likelihood of confusion. The disputed domain name resolves to a website which,
because of its targeted commercial links, appears, in part, intended to attract
a similar audience as the complainant’s Ten Club website,
In his Response, Respondent makes the following contentions:
- Respondent is the current owner of the <tenclub.org> and <tenclub.nl> domain names. Respondent’s company is involved in marketing advice and organizing events.
- Tenclub is a specific project. Respondent is in the process of setting up a church/club in which all sorts of activities will take place. The essence of the project is that its members will dedicate ten per cent of their time and money to each other. Thus, learning that sharing will bring a better human society. That is where the name Ten club comes from. There is absolutely no financial perspective, except being able to pay for the costs of the project. Currently, Respondent is looking at buildings, the structure and the communication, hence the website.
- Respondent has heard of the band Pearl Jam, but has never heard of a fan club called Tenclub.
- Respondent does not see any conflict of interest. He has no reason to interfere with anything the fan club does or wants. The “.org” domain name indicates an organization and an international character.
Attached to Respondent’s email with the Response, is a 32-pages long A4 document in Word format in Dutch. This document is entitled “TenClub® ‘TeatrumVitae’”.
In its timely Additional Submission of June 10, 2009, Complainant requests the Panel not to admit Respondent’s late Response, and instead, to decide the Complaint without review or consideration of the late-filed response. Complainant also submits subsidiary requests and views already reflected in the Complaint, and addressing Respondent’s arguments contained in the Response.
Respondent’s reply to Complainant’s Additional submission was submitted timely, on June 15, 2009. Basically, Respondent says that the late-filed Response should be considered because he was a single domain name holder on holidays. He also refers to a document in Dutch that explains that the Tenclub society and Ten Club fan club have nothing in common.
Complainant is a well-known rock band owning the TEN CLUB trademark. After Complainant made a prima facie case that Respondent lacks any rights or legitimate interests in the domain name at issue, Respondent failed to come forward with any element showing that does have some right or legitimate interest to the domain name. Complainant evidenced that on the website at the disputed domain name Internets users presumably looking for Complainant’s TEN CLUB fan club are being redirected to commercial websites and links, which is proof of 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.
By the same Order, the Panel made a decision as to the language of the Proceeding, and ordered Respondent a translation of a document into this language, as follows:
“The registration agreement between Tucows and Respondent is in English, and both Parties have submitted their writings in this language. Pursuant to Rules, paragraph 11 (a), the Panel decides that the language of the present proceeding shall be English. Respondent is ordered to submit a translation in whole into English of the attachment in Dutch entitled "TenClub (R) ´TeatrumVitae´" by June 24, 2009, in accordance with Rules, paragraph 11 (b) (“The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding”).”
Finally, by said Order, the Panel decided to reset the deadline for the decision on the merits to July 6, 2009.
Respondent failed to submit a full
translation of the attachment. Instead, on June 23, 2009, he sent by email to
The Forum a “Summary” in English, about half a page long, of the attachment to
the Response entitled “TenClub® ´TeatrumVitae’“. In this “Summary”, Respondent
stated: “TENCLUB is registered at the chamber of commerce as a trading name.”
“TENCLUB is in de proces [SIC] of being trademarked for a brand name in the
sector NGO, non-profit and church in the
With regard to this attachment, the Panel issued Procedural Order No. 2, which reads in part as follows:
“Since Respondent [...] appears to be relying upon [...] applications and/or registrations to defend his case, he is requested to submit to The Forum, with copy to Complainant, full copies of such documents together with their respective translations into English, by June 26, 2009.”
On June 26, 2009, Respondent sent an email to The Forum, attaching what he said were two forms from the Chamber of Commerce and the Benelux Brand Deposit Agency. Respondent added that he made these filings on April 2, 2009 by post, and that they currently are being processed. In a postscript, Respondent added that the forms are in Dutch, but that they are easily understandable, and that he simply cannot request the translation thereof.
Respondent’s email contains an 8-page long A4 attachment in Dutch consisting of an application dated April 2, 2009 for the trade name Ten Club to be submitted before the “Kamer van Koophandel,” and another application, also dated April 2, 2009, to be submitted before the “Benelux-Bureau voor de intellectuelle eigendom” for the trademark TENCLUB in stylized letters. These forms lack any seal, time stamp, application number, or any other indication that they have been sent, received or accepted by any of said agencies or by a postal office.
The Panel concludes that Respondent failed to comply with the procedural orders.
By submitting copies of certificates of
registration issued by the USTPO, the WIPO, the Trade Marks registry of the
Hong Kong Special Administrative Region, and
Complainant contends and evidences with abundant documents that before the registration date of Respondent’s domain name, Complainant had gained recognition as a renowned provider and/or marketer of entertainment services protected by the TEN CLUB mark. Complainant also contends that Respondent has no relationship to Complainant and that he is not authorized or licensed to use the TEN CLUB mark. Respondent, asserts Complainant, registered the tenclub.org domain name 16 years after Complainant began using its TEN CLUB mark and had gained recognition as the provider of Pearl Jam entertainment services embodied in the TEN CLUB mark. Respondent, further contends Complainant, also does not own any common law marks containing the term TEN CLUB. Upon Complainant’s information and belief, Respondent has never been known by or operated a business under the TEN CLUB name and has no mark rights in the term tenclub.com Further, according to Complainant, Respondent has not made any legitimate use of or entered into any preparations to use the domain name at issue in connection with a bona fide offering of goods or services. Complainant concludes that Respondent’s use of the domain name directly infringes on Complainant’s rights, and that using a domain name which is confusingly similar to a registered trademark to divert Internet users to a commercial website is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Considered together, these contentions of Complainant amount to a prima facie case that Respondent lacks rights to or legitimate interests in the domain name in dispute. It is then up to Respondent to come forward with contentions and supporting evidence that he does have some rights or legitimate interests. See Lopez v. Irish Realty Corp., FA 94906 (NAF Aug. 8, 2000). (“Once Complainant makes out a prima facie showing [regarding lack of rights or legitimate interests], the burden shifts to Respondent to prove that it has rights to or legitimate interests in the domain name.); see also See Document Technologies, Inc. v. Int’l Elec. Commc’ns Inc., Case No. D2000-0270 (WIPO June 6, 2000).
For his part, Respondent contends that he is in the process of setting Tenclub, a specific project of a church/club in which all sorts of activities will take place. The essence of the project, says Respondent, is that its members will dedicate ten per cent of their time and money to each other, which is the reason for the name of the project. Respondent adds that he currently is looking at buildings, the structure and the communication aspects, hence the [need for a] website.
The Panel believes that none of these unsupported contentions of Respondent is evidence that before any notice to Respondent of the dispute, he used or made 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 according to Policy ¶ 4(c)(i). For instance, Respondent fails to show that he has posted any contents related to the purported uses of the domain name (“church/club”) on the website at the disputed domain name. Nor does he submit any affidavit or documents evidencing any preparations to use the domain name. See Inter-Continental Hotels Corp. v. Soussi, D2000-0252 (WIPO, Jul. 5, 2000) (“All Respondent offers is affidavit testimony of an intention to offer services; Respondent has not, however, provided documentary or other demonstrable evidence of his […] supposed plans to create a legitimate non-profit website at the URLs in question […]. The Policy plainly requires such demonstrable evidence, paragraph 4(c)(i), and therefore mere assertions of intent are insufficient to meet the burden.”). In sum, Respondent has not met the shifted burden of production.
contends that in April 2009 he applied for the trade name TenClub before the
Chamber of Commerce and for the Ten Club mark before the
Although the Panel ordered Respondent to submit full copies of such applications, together with their full translation into English, the language of the proceeding, Respondent only sent copies of the applications in Dutch. This panelist does not understand Dutch. Thus, Respondent’s assertion that such application forms in Dutch are “easily understandable” is totally baseless. Apart from the fact that Respondent offers no evidence that he actually sent or submitted any such applications before the Chamber or the trademark office, or that the applications were received by said agencies, it is presumable that both applications are open to opposition or objection by any interested party, such as Complainant. See Universal City Studios, Inc. v. Antonio Paez, D2000-0569 (WIPO, Aug. 17, 2000) (“The existence of a pending application to the United States Patent and Trademark Office is not conclusive regarding the purported rights of Respondent; [t]his application appears from the evidence submitted to the Sole Panelist to remain subject to objection by Complainant”).
The Panel cannot overlook the fact that in Respondent’s attachment to the
email with the Response, he added the “®” symbol to the TenClub term, thus
attempting to create the false impression that he owned a registered trademark.
Only after this Panel requested Respondent to submit a full translation of the
attachment in Dutch, it appeared that no such trademark registration had ever
been granted. As a result from Respondent’s failure to comply with the request
from the Panel, there is no evidence that Respondent has even applied
for a trademark registration before the
Respondent did not offer the slightest explanation why his website at the domain name at issue was never used to promote his planned “church/club”, but instead, as shown by Complainant with printouts of Respondent’s website at the disputed domain name, to redirect Internet users presumably using their browsers to look for Complainant’s fan club, to commercial websites offering Complainant’s goods and services or other goods or services from competitors of Complainant. It is well established that that this kind of use of a domain name is neither a bona fide offering, nor a noncommercial or fair use of the domain name. See FleetBoston Financial Corp. v. Jackson, D2003-0915 (WIPO, Jan. 14, 2004) (“The fact that the Respondent uses the domain name to divert Internet users for its own benefit and profit to its portal website that provides hyperlinks to websites of Complainant’s competitors or websites which provide advertisements for or links to Complainant’s competitors is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain names.”)
The Panel concludes that Respondent lacks rights or legitimate rights in the domain name in dispute.
As seen above, Respondent posted or caused Hostnet, a domain name parking service, to post contents and/or links on the website at the domain name in dispute, seeking to attract Internet users who are looking for Complainant’s well-known fan club. Respondent’s presumable purpose was extracting a benefit from the Internet traffic thus generated, since at least a portion of such profit, big or small, would go to Respondent via a “click-through” or “pay-per-click” system.
The Panel believes
this is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site or other on-line location,
by creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or location.”). See
The third requirement of the Policy is thus met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tenclub.org> domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: July 1, 2009
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