Brantley Gilbert v. Jason Chastain
Claim Number: FA1107001397800
Complainant is Brantley Gilbert (“Complainant”), represented by John Jacobson of Riley Warnock & Jacobson, PLC, Tennessee, USA. Respondent is Jason Chastain (“Respondent”), represented by J. Scott Anderson of Brient Intellectual Property Law, LLC, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brantleygilbert.com>, registered with Namesdirect, LLC.
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.
Dr. Reinhard Schanda, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2011; the National Arbitration Forum received payment on July 8, 2011.
On July 11, 2011, Namesdirect, LLC confirmed by e-mail to the National Arbitration Forum that the <brantleygilbert.com> domain name is registered with Namesdirect, LLC and that Respondent is the current registrant of the name. Namesdirect, LLC has verified that Respondent is bound by the Namesdirect, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2011 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@brantleygilbert.com. Also on July 13, 2011, 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.
A timely Response was received and determined to be complete on August 2, 2011.
On August 8, 2011 Complainant submitted an Additional Submission that was in compliance with Supplement Rule # 7.
On August 9, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is a professional singer, songwriter and touring entertainer. Complainant maintains common law trademark rights in his name BRANTLEY GILBERT. Since 2003, Complainant has continuously used the mark BRANTLEY GILBERT to identify his services as professional singer, songwriter and touring entertainer.
According to Complainant in cases involving entertainers, authors, professional athletes and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another's goods or services, or for direct commercial purposes in the marketing of the complainant's own goods or services.
Complainant’s use of BRANTLEY GILBERT in commerce is evidenced by his live performances, for which he has sold thousands of tickets using the trademark BRANTLEY GILBERT. Gilbert’s Facebook page, http://www.facebook.com/BrantleyGilbertMusic uses the trademark BRANTLEY GILBERT to identify Complainant’s live touring schedule. Gilbert also uses the trademark BRANTLEY GILBERT on concert posters to promote and identify his services.
Complainant has also sold hundreds of thousands of recordings, both digital and physical, using the trademark BRANTLEY GILBERT. All of Gilbert’s records, Modern Day Prodigal Son (2009), Halfway to Heaven (2010), and the single Country Must Be Country Wide (2011) use the trademark BRANTLEY GILBERT to identify the goods offered and sold. Cpmplainant is currently a recording artist for The Valory Music Co.
Additionally, Complainant uses the trademark BRANTLEY GILBERT to sell merchandise such as t-shirts and hats.
Complainant uses his name to distinguish himself from other musicians and to endorse and promote various products and services. Complainant has expended, and continues to expend, a substantial amount of money and time promoting and marketing his services using the mark BRANTLEY GILBERT and goods bearing the mark BRANTLEY GILBERT.
Complainant requests that the Arbitrator direct that the domain name brantleygilbert.com (“Domain Name”) be transferred from Respondent Jason Chastain to Complainant for three reasons. First, the Domain Name as registered by Respondent is identical to and/or confusingly similar to the mark in which Complainant has rights. Second, the Respondent has no rights or legitimate interests in respect of the Domain Name. Third, the Domain Name is being used in bad faith.
Complainant contends that in August of 2005, Respondent, Jason Chastain registered the domain name “brantleygilbert.com” in his own name. Respondent does not have permission or consent from Complainant to use the trademark BRANTLEY GILBERT and/or register the Domain Name.
Now, Respondent refuses to transfer the Domain Name to Complainant. Respondent’s purpose in registering and using the Domain Name is to hold it hostage from Complainant.
Complainant contends that the Domain brantleygilbert.com is identical and/or confusingly similar to Complainant’s mark BRANTLEY GILBERT.
Even though Complainant has paid Respondent to lease the Domain Name in the past, Respondent Jason Chastain has no rights or legitimate interest in the Domain Name that is the subject of this Complaint. In fact, the registration of the Domain Name was unlawful. Respondent only uses the Domain Name to hold it hostage from Complainant. Complainant has repeatedly requested that Respondent transfer the Domain Name back to Complainant, but he refuses to do so.
Complainant contends that Respondent refuses to transfer the Domain Name unless Complainant pays her a substantial amount of money.
These facts are a compelling expression of Respondent’s example of bad faith. Any intent by Respondent to profit from holding the Domain Name hostage, amounts to bad faith.
B. Respondent
Respondent contends that Complainant bears the initial burden of providing that the “domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights”.
Complainant has not obtained or filed a request for federal (or state) registration of his name as a trademark or service mark.
Complainant alleges without proof that he has common law trademark rights in his name through continuous since 2003.
Complainant has submitted no evidence to show that he used his name in commerce at any time before August 3, 2011, which is a date in the future.
None of the Complainant’s other exhibits include any proof of use in commerce by Complainant of his name, Brantley Gilbert, to identify goods or services at any time before August 3, 2011.
In order to establish common law trademark rights in a name, the name must be actually used in trade or commerce.
Complainant bears the burden of establishing the element of rights in the mark under Paragraph 4(a)(i) of the UDR Policy. The mere assertion of trademark rights is insufficient without accompanying evidence to demonstrate that the public identifies the Complainant’s mark exclusively or primarily with the Complainant’s goods or services.
At the time of the registration and creation of the website in 2005, there was no merchandise of any kind offered for sale in the <brantleygilbert.com> website.
After the registration, and during at least 2005 and 2006, there was no merchandise of any kind offered for sale the <brantleygilbert.com> website.
Complainant has not submitted sufficient evidence to establish his rights in his name as a trademark or service mark.
Respondent further contends that Complainant has submitted no evidence to show that Respondent has no rights or legitimate interests in the domain name.
The mere assertion that Respondent lacks rights, without more, does not satisfy Complainant’s obligation to set forth a prima facie case.
Complainant has submitted no evidence to support the allegation that “Complainant has paid Respondent to lease the Domain Name in the past.”
Complainant has submitted no evidence do show the existence of a lease agreement with Respondent. Complainant has submitted no evidence to show any payments to Respondent under a lease agreement or any other agreement.
If Complainant’s statement is true, then it shows that Complainant authorized and consented to Respondent’s lawful registration and use of the domain name.
Complainant has submitted no evidence to support the allegation that “the registration of the Domain Name was unlawful.”
Complainant has submitted no evidence to support the allegation that “Respondent only uses the Domain Name to hold it hostage from Complainant.”
Complainant has submitted no evidence to support the allegation that “Complainant has repeatedly requested that Respondent transfer the Domain Name back to Complainant, but he refuses to do so. Moreover, there is no evidence that the Domain Name was ever held by Complainant.
Because Complainant has not met its initial burden, the Respondent is under no burden to show its rights and legitimate interests in the domain name.
The Respondent, Mr. Jason Chastain, and the Complainant, Mr. Brantley Gilbert, were acquainted as friends, before the dispute domain name was registered.
On or before August 30, 2005 Respondent and Complainant discussed the idea that complainant should have a website. Complainant asked Respondent to get the domain name and build him a website.
Respondent registered the dispute domain name <brantleygilbert.com> under instructions and with express permission from Complainant.
Respondent registered the dispute domain name <brantleygilbert.com> on August 30, 2005, using MyDomain.com.
After registration, Respondent designed and created an operational website for Complainant using the <brantleygilbert.com> domain name.
After the registration, Respondent maintained the website, under the registered domain name, for legitimate purposes including the posting if information about Complainant’s music activities.
Complainants has been aware the Respondent registered the domain name since on or about the day of registration; August 30, 2005.
Complainant has been aware of the existence of the <brantleygilbert.com> website since its creation.
Complainant cooperated with Respondent in the development and use of the <brantleygilbert.com> website.
Complainant supplied Respondent with information about his music activities, including but not limited to the dates of upcoming performances.
Complainant frequently asked Respondent to update the information on the website.
Respondent’s time and effort creating and maintaining the <brantleygilbert.com> website added value to Complainant’s music activities and increased Complainant’s popularity by serving as an information resource for people with an interest in Complainant and his music activities.
As set forth above, Complainant worked together with Respondent to periodically and frequently update the <brantleygilbert.com> website during late 2005 and 2006. Complainant did not ask Respondent to transfer ownership of the domain name during this time period.
In late 2006 or 2007, Complainant told Respondent that he wanted to begin offering merchandise for sale, including compact discs and apparel, on the <brantleygilbert.com> website.
Complainant hired a web services company to add the e-commerce features to the website so Complainant could begin offering merchandise for sale the <brantleygilbert.com> website.
Neither Complainant nor his web services company asked Respondent to transfer ownership of the domain name.
Respondent cooperated fully with the web services company, including but not limited to providing his log-in and password so the web services company could modify the website and/or re-direct traffic to a new <brantleygilbert.com> website.
In about 2009, Respondent was contracted by a person from Average Joe’s Entertainment who said he wanted to modify and/or update the content of the <brantleygilbert.com> website.
Neither Complainant nor Average Joe’s asked Respondent to transfer ownership of the domain name.
Respondent cooperated fully with Average Joe’s, including but not limited to providing his lo-in and password so that Average Joe’s could modify the website and/or re-direct traffic to a new <brantleygilbert.com> website.
Respondent cooperated fully with Average Joe’s, including but not limited to providing support and troubleshooting related to Average Joe’s ongoing use of the <brantleygilbert.com> website.
Then, as early as June 15, 2011, Respondent was contacted-by e-mail and by telephone, by several people from Big Machine Label Group (parent company of The Valory Music Co.) and Hard 8 Management – both directly and indirectly (through Complainant’s mother) – with a demand that Respondent must transfer ownership of the <brantleygilbert.com> website.
For almost 6 years, Complainant and/or his business associates authorized consented to, and encourage Respondent and use of the domain name.
On or about August 10, 2007, Respondent renewed his registration of the domain name. Neither Complainant nor his business associates asked Respondent to transfer ownership of the domain name at the time of this renewal.
On or about August 15, 2008, Respondent renewed his registration of the domain name. Neither Complainant nor his business associates asked Respondent to transfer ownership of the domain name at the time of this renewal.
On or about August 19, 2008, Respondent renewed his registration of the domain name. Neither Complainant nor his business associates asked Respondent to transfer ownership of the domain name at the time of this renewal.
On or about August 19, 2008, Respondent renewed his registration of the <brantleygilbert.com> domain name for a period of 5 years. Neither Complainant nor his business associates asked Respondent to transfer ownership of the domain name at the time of this renewal.
Respondent did not receive any reimbursement of the expenses he paid in order to create, update, and otherwise maintain the <brantleygilbert.com> website from Complainant or any other person.
Respondent did not receive any compensation for the time he devoted to creating and updating the <brantleygilbert.com> website from Complainant or any other person.
Respondent did not receive any compensation for the time he devoted to creating and updating the <brantleygilbert.com> website from Complainant or any other person.
Respondent did not receive any income or commercial gain related to his registration and use of the <brantleygilbert.com> website from any source.
Complainant’s conduct – from the date of registration in 2005 through mid-2011 – is a manifestation of this consent to the registration of the domain name and the creation of the website by Respondent.
Respondent’s conduct – including his investment of his personal money, resources, and time (with no compensation) and his cooperation with Complainant and his business associates since August 2005 – shows Respondent reasonably relied on Complainant’s course of conduct during almost 6 years.
The course of conduct between the parties during their long-lasting business relationship shows that Complainant gave at least his implied consent to Respondent to register and use the domain name for almost 6 years.
Respondent reasonably relied on Complainant’s repeated and ongoing consent.
Respondent relied on such consent to his detriment, because Respondent has never been compensated for his detriment, because Respondent has never been compensated for his investment of money and time and because Complainant now seeks to use the UDR Policy to wrest ownership of the domain name from Respondent.
After consenting for almost 6 years, Complainant should be estopped from termination his implied consent because allowing such termination would be inequitable.
Respondent contends that there is no evidence of registration in bad faith or use in bad faith by Respondent at any time.
The course of conduct described above shows there is no evidence of bad faith in registration, or bad faith use, by Respondent.
There are no facts to suggest that Respondent registered the domain name without authorization from Complainant.
There are no facts to suggest that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant.
Respondent did not use the <brantleygilbert.com> website to market or promote the products or services of anyone other than Complainant.
There are not facts to suggest that Respondent registered the domain name in order to prevent Complainant from using his name to promote his music activities.
There are not facts to suggest that Respondent registered the domain name in order to disrupt the business of Complainant.
There are not facts to suggest that Respondent, by using the domain name, is intentionally attempting to attract internet users for his own commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website.
Finally Respondent contends that by filing this complaint without a sound basis, and with actual knowledge that Respondent has lawful rights and legitimate interests in the domain name, Complainant has engaged in reverse domain-name hijacking.
C. Additional Submissions
In his Additional Submission Complainant basically repeats its allegations in that Complainant has established common trademark rights in his name BRANLEY GILBERT. Further that the Domain Name at issue, “brantleygilbert.com”, is identical to Complainant’s common law trademark and that Respondent has no rights or legitimate interests in the Domain Name. Finally that Respondent registered the Domain Name and is now using the Domain Name in bad faith.
Respondent contends that it assisted Complainant, as a friend and without pay, in creating and developing a web presence. During this time, Respondent states that it set up the website for Complainant by registering and using the disputed domain name for Complainant’s purposes. Respondent was never officially an employee of Complainant during this process. Respondent argues that because of this fact it has no duty to turn the disputed domain name over to Complainant as it is the duly verified and legitimate owner of the disputed domain name. Respondent references Complainant’s own submission which states, without corroborating evidence, that Complainant “leased” the disputed domain name and corresponding website from Respondent. This statement appears to suggest that the two parties have at least a pseudo-contractual oral agreement solidified through business practices and a continued relationship which grants Respondent ownership rights in the disputed domain name.
Complainant stipulates that Respondent was engaged to build the website to which the disputed domain name corresponds. Complainant also states that it leased the disputed domain name from Respondent for its own purposes and to be used to promote and market Complainant’s music career. Complainant states that Respondent is attempting to hold the disputed domain name “hostage” by not transferring it to Complainant. This implicitly indicates that Complainant and Respondent may have different interpretations of true ownership of the disputed domain name and the nature of their contractual relationship.
In this instance, the Panel is of the view that this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.
In Love, the panel was concerned with possible causes of action for breach of contract. In this case, however, Respondent points out that these causes of action are currently active cases that are pending with the courts. According to the panel in Love, complex cases such as the one presented here the Panel is of the view that these are better decided by the courts than by a UDRP panel:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
Having found that this dispute is outside the scope of the UDRP, the Panel concludes that relief shall be DENIED.
Accordingly, the Complaint is dismissed and it is Ordered that the <brantleygilbert.com> domain name REMAIN WITH Respondent.
Dr. Reinhard Schanda, Panelist
Dated: August 22, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page