Stevland Morris a/k/a Stevie Wonder v. Mark Galasso c/o Antifluff Superstar.com
Claim Number: FA1005001326351
Complainant is Stevland Morris a/k/a Stevie Wonder (“Complainant”), represented by Stephen
J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <steviewonder.biz> and <steviewonder.info>, registered with Godaddy.com 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2010.
On May 25, 2010, Godaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <steviewonder.biz> and <steviewonder.info> domain names are registered with Godaddy.com Inc. and that Respondent is the current registrant of the names. 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 June 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@steviewonder.biz and postmaster@steviewonder.info. Also on June 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <steviewonder.biz> and <steviewonder.info> domain names are identical to Complainant’s STEVIE WONDER mark.
2. Respondent does not have any rights or legitimate interests in the <steviewonder.biz> and <steviewonder.info> domain names.
3. Respondent registered and used the <steviewonder.biz> and <steviewonder.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Stevland Morris a/k/a Stevie Wonder, holds rights to the STEVIE WONDER mark due to its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,600,739 filed April 23, 2001; issued July 30, 2002). Complainant uses the mark in connection with sound and video recordings, clothing, and entertainment services. Complainant is an internationally known entertainer and musical artist who has performed under the stage name STEVIE WONDER since 1962 and has received numerous awards related to his business under the STEVIE WONDER mark.
Respondent, Mark Galasso c/o Antifluff Superstar.Com, registered the <steviewonder.biz> and <steviewonder.info> domain names on May 17, 2002. The disputed domain names each resolve to a website displaying links to third-party websites related to Complainant’s business in the music industry and displaying a general offer of sale of the domains.
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.
Complainant asserts that it has rights in the STEVIE WONDER mark due to its registration of the mark with the USPTO (Reg. No. 2,600,739 filed April 23, 2001; issued July 30, 2002). The Panel finds that trademark registration with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).
The Panel finds Complainant’s rights in the STEVIE WONDER
mark date back to Complainant’s trademark registration filing date of April 23,
2001 which predates Respondent’s disputed domain name registration on May 17,
2002. The Panel finds that the relevant date to be considered for Complainant’s
rights in the mark under Policy ¶ 4(a)(i) is the
filing date of the trademark registration. See Hershey
Complainant alleges that Respondent’s <steviewonder.biz> and <steviewonder.info>
domain names are identical to Complainant’s STEVIE WONDER mark. Complainant argues that the disputed domain
names merely remove the space between the terms of the mark and each adds a
generic top-level domain (“gTLD”) (“.biz,” “.info”). See
The Panel finds that Complainant has met its burden under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights and legitimate interests in the disputed domain name. Once Complainant has made a prima facie case in support of these allegations, the burden to establish that it has rights or legitimate interests in the disputed domain name shifts to the Respondent pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case in support of its complaint, shifting the burden to the 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 Policy ¶ 4(c). See F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
The WHOIS information for the <steviewonder.biz> and <steviewonder.info> domain names lists the registrant for both domain names as “Mark Galasso c/o Antifluff Superstar.Com.” Complainant asserts that it did not provide Respondent with authorization or rights in the STEVIE WONDER mark for any use. The Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Oakley, Inc. v. Watson, D2000-1658 (WIPO May 3, 2001) (“It is clear that the value in the Oakley name has been created by the commercial use and registrations of the Complainant and it is also clear . . . that Respondent is taking advantage of the value created by the Complainant.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent’s disputed domain names each resolve to a website that displays a list of third-party websites to members of the music industry unrelated to Complainant or to Complainant’s business. Complainant further alleges that Respondent has received referral fees (click-through fees) when Internet users seeking Complainant become confused and click on a third-party link. The Panel finds that offering links to third-party websites and receiving commercial gain is not 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not 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).
Complainant contends that each website resolving from Respondent’s <steviewonder.biz> and <steviewonder.info> domain names clearly state a general offer sell the disputed domain names. Complainant asserts that Respondent lacks rights and legitimate interest in the disputed domain names when it exhibits a willingness to sell by displaying a general offer on the websites resolving from the disputed domain names. The Panel finds Respondent’s general offer to sell the disputed domain names which are identical to Complainant’s mark exhibits a lack of rights or legitimate interests pursuant to 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 Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).
The Panel finds that Complainant has met its burden under Policy ¶ 4(a)(ii).
Complainant contends Respondent’s disputed domain names each
resolve to a website that includes a general offer to sell among the
advertisements of third-party websites. The
Panel finds Respondent’s general offer to sell the <steviewonder.biz> and <steviewonder.info> domain names is
evidence of bad faith registration under Policy ¶ 4(b)(i). See Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
Complainant contends that Respondent’s <steviewonder.biz> and <steviewonder.info>
domain names resolve to websites that have links and advertisements to third-party
websites including members of the music industry unrelated to Complainant. Complainant further alleges that Respondent receives
click-through fees when an Internet user seeking Complainant and confused as to
Complainant’s sponsorship or affiliation with the websites selects a displayed
hyperlink. The Panel finds that commercial gain due to a likelihood of
confusion on the part of the Internet users constitutes bad faith registration
and use, pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen,
FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s
previous use of the <bankofamericanfork.com> domain name to maintain a
web directory was evidence of bad faith because the respondent presumably
commercially benefited by receiving click-through fees for diverting Internet
users to unrelated third-party websites); see
also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
The Panel finds that Complainant has met its burden under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <steviewonder.biz> and <steviewonder.info> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 1, 2010
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