Larry Graham v. Company, S.E.E.
Claim Number: FA0906001268274
Complainant is Larry Graham (“Complainant”), represented by Kenny
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <larrygraham.com> (the “Domain Name”), registered with Network Solutions, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 15, 2009.
On June 15, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <larrygraham.com> Domain Name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 June 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on June 29, 2009.
On July 8, 2009, Respondent sent an email to the Forum in which he cited additional cases.
On July 8, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant contends that he has a common law trademark in his name, Larry Graham, as he is an internationally-known musician who has recorded, performed and sold albums, CDs, videos and concert tickets under his name for over four decades.
Complainant states that, upon his first visit to the website to which
the Domain Name resolves in January 2008, the website listed page-per-click
(“PPC”) links for his music and other associated items. Complainant asked the
Registrar, Network Solutions, to remove the links. Subsequently, the website was changed to a
simple “under construction” page. Complainant
contends that, under Paragraph 4(b) of the Policy, this use of the Domain Name by
Respondent is not a bona fide offering of goods or
In addition, Complainant alleges that, under Paragraph 4(c) of the
Policy, Respondent has registered and used the Domain Name in bad faith because
it has owned the Domain Name for nine years and still has not used it for any
purpose other than a PPC parking page and then an “under construction” page. Complainant notes that Respondent is aware of the
identity of Complainant because Respondent stated in an email to Complainant’s
representative on January 30, 2008: “I
recognize the legendary bass player/vocalist
Although Respondent’s Response (submitted pro se) was not certified as required pursuant to Rule 5, even if it were certified, it would not change the result in this case and thus the Panel will consider the Response in the interest of fairness and expediency without requiring Respondent to resubmit its Response with the certification required by the Rules.
In that Response, Respondent contends that it is not cybersquatting the Domain Name but rather that it purchased the Domain Name with no malicious intent or bad faith. It concedes that the website to which the Domain Name resolves initially contained PPC links, but states that such links were posted by the registrar “on generic domain name[s] that are not being use[d].”
Respondent further maintains that it did not register the Domain Name to use “character assassinations,” to use the name in bad faith, to generate profit, or to create “financial misfortunes.”
Respondent’s principal states
that he read articles online about another person with a similar name, Larry R.
Graham, who is President and Chief Operating Officer of Amedisys Corporation,
and that, because he has a degree in Business Management, he found the reading
to be “uplifting.” Respondent asserts
Finally, Respondent contends that Complainant’s representative offered $1,000 for the Domain Name. It contends that Complainant’s representative’s emails were “a form of entrapment or scam when he made a dollar amount offer and I made a small counter offer” which then resulted in Complainant filing the Complaint.
C. Additional Submissions
In its Additional Submission, Respondent brought three additional UDRP
decisions to the Panel’s attention: Ciccone v. Parisi, WIPO Case No.
D2000-0847 (October 12, 2000),
Respondent registered the larrygraham.com Domain Name on April 2, 2000. The Domain Name currently resolves to a page containing the words “This Site Is Under Construction and Coming Soon.”
In Response to Complainant’s representative’s alleged offer to purchase the Domain Name for $1,000 (the Panel notes that Respondent has submitted no demonstrative evidence to substantiate this assertion, but the Panel accepts it as true for the purposes of this proceeding), Respondent offered to sell the Domain Name to Complainant’s representative for $15,000 or to Complainant directly for $10,000.
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 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 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 has made a strong showing that he has common law trademark rights in his name. His successful and lengthy music career, as well the use of his name on or in connection with various albums, CDs, DVDs, videos, promotional goods and concert tours, establishes that Complainant’s name, Larry Graham, functions as a distinctive trademark that indicates the source of his goods and services. E.g. Kidman v. Zuccarini d/b/a Cupcake Party, WIPO Case NO. D2000-1415 (Jan. 23, 2001). Respondent himself has acknowledged the renown of Complainant, describing him as “legendary.”
When the gTLD is disregarded, the Domain Name, larrygraham.com, is identical to Complainant’s common law mark.
The Panel thus concludes that larrygraham.com is identical to a mark in which Complainant has rights, and that Complainant has therefore satisfied his burden under Paragraph 4(a)(i) of the Policy.
Complainant bears the burden of proving that Respondent lacks rights or legitimate interests in the Domain Name. Once Complainant has made at least a prima facie showing that Respondent lacks rights or legitimate interest, the burden of production shifts to the Respondent to come forward with evidence to rebut Complainant’s showing. To rebut a prima facie case, Respondent must produce “concrete evidence” that it has rights or legitimate interests in the Domain Name. Document Techs, Inc. v. Int’l Elec. Commc’ns Inc., WIPO Case No. D2000-0270 (June 6, 2000).
Under Paragraph 4(c) of the Policy, Respondent can establish rights or legitimate interests in the Domain Name if it can show any of the following elements, or other evidence that the Panel determines is sufficient to show rights or legitimate interests in the Domain Name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain 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 it has acquired no trademark or service mark rights, or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without the intent for commercial gain to misleadingly divert consumers or
to tarnish the trademark or service mark at issue.
Complainant contends that, in the nine years that Respondent has owned the Domain Name, Respondent has failed to use the site in connection with any bona fide offering of goods or services. Instead, the site was used as a PPC link parking page and, after Complainant objected to the links, for an “under construction” site. Neither of these uses qualifies as a bona fide offering of goods of services. Similarly, Complainant adequately asserts that Respondent is not commonly known by the Domain Name and that Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
These allegations are sufficient to establish a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has failed to adduce any evidence to rebut that showing. Respondent has not asserted a bona fide use nor provided demonstrable evidence that it is preparing to use the Domain Name for a future bona fide use. The Panel thus finds that Respondent has not used the Domain Name in connection with a bona fide offering of good or services. See Hizmetleri A.S. v. SUN ADMIN SUN ADMIN SUN ADMIN, WIPO D2008-1588 (Dec. 30, 2008) (holding that since the respondent registered the domain two years ago and still has “not yet made any use or evident preparations to use” it, the respondent has not made a legitimate commercial or bona fide use of the domain).
Similarly, Respondent has not come forward with any evidence to support a claim that Respondent has made or is planning to make a legitimate noncommercial or fair use of the Domain Name. See, e.g., Ziegenfelder Co. v. VMH Ents., Inc., WIPO Case No. D2000-0039 (Mar. 14, 2000) (failure to market a product or service or develop the site demonstrates that the respondent has no rights or legitimate interests in the domain name); Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (respondent’s failure to make active use of the domain name evidences his lack of rights or legitimate interests in the domain name); State Fair of Tex. v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
The Panel thus finds that Complainant has satisfied his burden under Paragraph 4(a)(ii) of the Policy of showing that Respondent lacks rights or legitimate interests in the Domain Name.
Respondent’s actions regarding the Domain Name
over the past eight years support a finding that Respondent registered and used
the Domain Name in bad faith. First,
Respondent, whose name is not
thereafter allowed the registrar to post PPC advertising on the website to
which the Domain Name resolved. See Serta Inc. v.
Finally, in response to an offer to purchase
the Domain Name, Respondent offered to sell it for a price of $10,000 or
more. Under Paragraph 4(b)(i), an offer
to sell the Domain Name for a price in excess of the Respondent’s out-of-pocket
costs is presumptive evidence of bad faith registration and use. Respondent has not claimed that this $10,000
payment was designed to cover its out of pocket costs; rather, the Panel
infers, the requested payment would have provided Respondent with a significant
profit over its registration costs. See
Any one of these findings would be sufficient to support a finding of bad faith; together, they powerfully suggest that Respondent did register and use the Domain Name in bad faith. The Panel therefore concludes that Complainant has met his burden under Paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <larrygraham.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Dated: July 22, 2009
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