Stevland Morris a/k/a Stevie Wonder v. Tedd Groves
Claim Number: FA1108001404660
PARTIES
Complainant is Stevland Morris aka Stevie Wonder ("Complainant"), represented by Stephen J. Strauss, of Fulwider Patton LLP, California USA. Respondent is Tedd Groves ("Respondent"), California USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thesteviewonderstory.com>, registered with GoDaddy Software, Inc.
PANEL
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.
David H. Bernstein as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum on August 24, 2011, and the Forum received payment on August 24, 2011.
On August 25, 2011, GoDaddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <thesteviewonderstory.com> Domain Name is registered with GoDaddy Software, Inc. and that Respondent is the current registrant of the name. GoDaddy Software, Inc. has verified the Respondent is bound by the GoDaddy Software, 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 August 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of Complaint, setting a deadline of September 14, 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 teddygroves@aol.com and postmaster@thesteviewonderstory.com.
Respondent submitted an e-mail to the Forum as part of his Response on August 25, 2011.
On September 12, 2011, the parties filed a Joint Request to Stay the Administrative Proceeding.
On September 13, 2011, the Forum granted an Order to Stay the Administrative Proceeding, and the proceedings were stayed for a period of forty-five (45) days.
On October 26, 2011, Complainant submitted a Request to Remove the Stay of Administrative Proceeding. The Forum granted an Order to Lift Stay of Arbitration on October 27, 2011, allowing the case to proceed and granted Respondent an opportunity to submit a formal Response.
On October 28, 2011, Respondent submitted an additional e-mail to the Forum as part of his Response.
The Forum received a timely and complete Additional Submission from Complainant on November 2, 2011.
The Forum appointed David H. Bernstein as Panelist on November 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, and in the absence of any request by Respondent for appointment of a three-member panel.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
FACTUAL BACKGROUND
Complainant Stevland Morris, also known as Stevie Wonder, is an entertainer and musician who performs under the stage name and trademark STEVIE WONDER. Complainant's music career spans nearly fifty years, during which time Complainant garnered twenty-five Grammy awards and numerous other recognitions. Complainant owns trademark registrations for the STEVIE WONDER trademark with several trademark offices around the world, including the Australian Trade Marks Office ("ATO"), the United Kingdom Intellectual Property Office ("UKIPO"), the United States Patent and Trademark Office ("USPTO"), the European Union Office for Harmonization in the Internal Market ("OHIM"), and the Mexican Institute of Industrial Property/Instituto Mexicano de la Propriedad Industrial ("IMPI"):
ATO
Reg. No. 892,736 issued October 22, 2001; and
UKIPO
Reg. No. 2283734 issued October 23, 2001; and
USPTO
Reg. No. 2,600,739 issued July 30, 2002;
Reg. No. 2,604,279 issued August 6, 2002; and
OHIM
Reg. No. 002406338 issued March 17, 2003; and
IMPI
Reg. No. 793213 issued May 28, 2003;
Reg. No. 808190 issued September 30, 2003.
Respondent, Tedd Groves, registered the <thesteviewonderstory.com> domain name on October 23, 2009 with GoDaddy Software, Inc. Respondent's disputed domain name resolves to the website <jakibrown.com>, a site promoting the services of Respondent's current employer, Jaki Brown, a casting director and producer in the entertainment business. The redirected website streams one of Complainant's songs in the background.
PARTIES' CONTENTIONS
A. Complainant
Complainant asserts that he is an internationally-famous entertainer and musical artist who performs under the distinctive stage name and mark STEVIE WONDER. He states that Respondent registered the disputed domain name <thesteviewonderstory.com> long after the Complainant had achieved celebrity status.
Complainant contends that Respondent's registration and use of the disputed domain name, which incorporates the entirety of Complainant's trademark, "creates a likelihood of confusion with, and dilutes the fame of, Complainant's STEVIE WONDER mark. " Complainant states that Respondent has no rights or legitimate interests in the domain name, and that his use of the domain name to promote Jaki Brown's services as a casting director and producer is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use.
Complainant further alleges that Respondent registered and used the domain name in bad faith by attempting to purposefully attract Internet users seeking Complainant's goods and services online to Respondent's commercial website. Complainant also asserts that the registration of a domain name containing the famous STEVIE WONDER mark is evidence in itself of bad faith.
B. Respondent
Respondent alleges that he registered the domain name in connection with a book project he has been researching on Complainant's life. Respondent further states that he parked the disputed domain name at his employer's website because he did not believe it to be commercial in nature.
C. Additional Submission
Complainant states that the two e-mails submitted by Respondent fail to conform to the Rules for ICANN's Uniform Domain Name Dispute Resolution Policy (the "Rules"). Specifically, Complainant asserts Respondent failed to submit a copy of the Response to Complainant and, more importantly, failed to include the "complete and accurate" certification statement in the Response. Complainant argues that a Response that does not conform to the Rules should be given little weight as evidence. Complainant also states that the Response did not dispute the major arguments set forth in the Complaint.
FINDINGS
After reviewing both Complainant's and Respondent's submissions, this Panel finds the following:
(1) the domain name registered by Respondent is confusingly similar to a mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests with respect to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
For a Complainant to obtain an order that a domain name be transferred or canceled, Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements:
(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.
Preliminary Issues
A. Response and Additional Submission
Complainant objects to the Response on the ground, inter alia, that is was not certified. It is true that Respondent, who is acting pro se, failed to include the required certification in his Response. If the facts alleged in the Response were determinative, then disregarding them solely because of the absence of the certification, especially where Respondent is pro se, would be inequitable. Instead, were that the case, the better practice would be to give the Respondent an opportunity to submit a certification.
Here, though, even if the Panel credited all the facts alleged in the Response, it would not change the Panel's decision. For that reason, it would be a waste of time and the parties' resources to require Respondent to certify his Response. Accordingly, for purposes of this proceeding, the Panel will consider Respondent's Response as if it had been certified as true.
The Complainant has submitted an Additional Submission. Although the Rules permit the Panel to consider such submissions, they do not obligate the Panel to do so. CNRV, Inc. v. Vertical Axis, Inc., FA 1300901 (Nat. Arb. Forum May 30, 2010) ("Paragraph 12 of the Rules does not contemplate unsolicited submissions after the Complaint and Response and gives the Panel 'sole discretion' as to acceptance and consideration of additional submissions."). The Panel has the authority to disregard additional submissions when they do not address any new legal principles or facts that could not have been anticipated in the complaint. Denver Newspaper Agency v. Jobing.com LLC, FA 1282148 (Nat. Arb. Forum Oct. 16, 2009). In this case, Complainant's Additional Submission points out (1) the procedural defect in the Response, and (2) Respondent's failure to rebut certain of Complainant's arguments. Neither of these is a basis for requesting, or accepting, an Additional Submission. The procedural defect (the lack of certification) is obvious on its face and thus does not warrant an additional submission. Similarly, the Panel does not need further briefing solely so that Complainant can address the Response's deficiencies. For these reasons, the Panel disregards Complainant's Additional Submission.
B. Consent to Transfer
The Panel has the authority to issue an immediate order to transfer a disputed domain name to a complainant when a respondent consents to the transfer. See Boehringer Ingelheim Int'l GmbH v. Modern Ltd. - Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003). The Panel may consider several non-exclusive factors when deciding whether to issue a simple transfer order or render a full decision on the merits. Such factors include (1) arbitral efficiency, (2) complainant's consent to an immediate transfer order, (3) whether complainant wishes to deter cybersquatting by third parties, (4) whether the respondent is a serial cybersquatter who is trying to avoid a decision on the merits which could later be cited against the respondent in cases showing a pattern of bad faith, (5) whether the complainant has requested a full decision, and (6) whether the respondent is willing to resolve a dispute with the complainant prior to the filing of the UDRP proceeding. RE/MAX LLC v. Pat Newton Props. FA 1325776 (Nat. Arb. Forum July 9, 2010).
Respondent in this case has indicated some willingness to transfer the domain name, but such consent is not altogether clear from the Response. Respondent stated that he "wouldn't mind a transfer of the domain name to [Complainant] ", but also indicated that he did not want the Panel to "just take something away from [Respondent]." His equivocation indicates that Respondent has not given his consent to a simple transfer order. Accordingly, the Panel will issue a full decision on the merits.
Complainant has registered the STEVIE WONDER trademark with the USPTO. This registration is prima facie proof of Complainant's rights in the STEVIE WONDER mark.
Respondent's <thesteviewonderstory.com> domain name incorporates Complainant's STEVIE WONDER mark in its entirety with minor variations. The disputed domain name removes the space between the two words of the mark, bookends the trademark with the dictionary terms "the" and "story", and includes the generic top-level domain (gTLD) ".com." Removing spaces and adding descriptive words to a trademark do nothing to vitiate the confusing similarity caused by the wholesale incorporation of the mark into the domain name. In addition, it is well established that the gTLD be excluded when assessing whether a disputed domain name is identical or confusingly similar to a trademark.
The Respondent's domain name is therefore confusingly similar to Complainant's mark under Paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires Complainant to make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Because Complainant must prove a negative, once Complainant makes a prima facie showing and Respondent has not come forward with rebuttal evidence, the burden of production shifts to Respondent to show Respondent's rights or legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). In the matter at hand, Complainant has sustained a prima facie case, and Respondent has not produced any evidence to rebut it.
Paragraph 4(c) of the Policy instructs the Panel to find that Respondent has rights or legitimate interests in the disputed domain name if any of the following conditions are satisfied:
(i) before any notice to Respondent of the dispute, Respondent used, or demonstrated 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; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of the criteria are satisfied in this case, nor has Respondent come forward with any other valid basis for demonstrating his rights or legitimate interests in the disputed domain name.
First, there is no evidence that Respondent used, or has adequately demonstrated preparations to use, the domain name in connection with a bona fide offering of goods or services. Rather, the evidence shows the disputed domain name resolves to a website promoting the services of Respondent's employer, a casting director and executive producer in the entertainment business. This evidence suggests that, other than the promotion of his employer's services, Respondent has never offered or sold any products or services on his website. This in turn implies that he has not used the website and domain name in connection with the bona fide offering of goods or services. See Ziegenfelder Co. v. VMH Enterps., Inc., D2000-0039 (WIPO Mar. 14, 2000). While Respondent could conceivably have a legitimate interest in a domain name promoting a book about Complainant, there is no evidence showing Respondent has created such a site, or made demonstrable preparations toward doing so.
Second, Respondent is not affiliated with Complainant, has never been given a license to use the STEVIE WONDER mark, and is not commonly known by the name "THESTEVIEWONDERSTORY."
Third, Paragraph 4(c)(iii) does not apply. For the past two years, Respondent's use of the domain name misleadingly diverted Internet users to a site promoting the services of his employer. While Respondent alleges he does not derive direct financial benefit from resolving the disputed domain name to his employer's website, this does not alter the impact on Complainant with respect to diverting prospective customers and causing confusion. See Get Away Today.Com Inc. v. Gilbert, D2010-0021 (WIPO Nov. 10, 2010).
Accordingly, on the record presented, Complainant has shown by a preponderance of the evidence that Respondent does not have rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy instructs the Panel to find that Respondent's registration and use of the disputed domain name was in bad faith in four non-exclusive instances:
(i) circumstances indicate that Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant; or
(ii) Respondent registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, provided that Respondent engaged in a pattern of such conduct; or
(iii) Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location.
With respect to Respondent's registration of the domain name, the Panel disagrees with Complainant's contention that the registration of a domain name that uses a famous trademark is in and of itself evidence of bad faith. A domain name that uses a trademark may be registered for a legitimate purpose, such as a non-commercial fan site or to promote a book, in which case such registration may not be in bad faith. In this case, however, there is no evidence that the domain name was registered for a legitimate purpose. Rather, based on Respondent's subsequent use of the domain name, the Panel finds it is a fair inference that the registration was in bad faith.
The Panel likewise finds Respondent's use of the domain name was in bad faith. Panelists have found bad faith in the use of a domain name when a respondent, who both knew of the mark at the time of registration and used the domain name in commerce without having a legitimate interest, did so in a manner likely to create confusion and allow the respondent to "free ride" on the complainant's goodwill. See Lifetime Prods., Inc. v. IQ Mgmt. Corp., D2004-0719 (WIPO Nov. 12, 2004); Ka v. Korenek, D2003-0453 (WIPO July 7, 2003).
In this case, Respondent's use of the domain name to redirect users to a site promoting the services of his employer demonstrates the use of the domain name in bad faith. Although there is little natural connection between the site to which the disputed domain name resolves and the area of the Complainant's reputation, consumers browsing the Internet may be led to believe that there is some sort of association between Complainant and the site <jakibrown.com> when they see and access it through the domain <thesteviewonderstory.com>. In addition, setting aside the issue of Respondent's rights to use Complainant's song on the redirected site, the likelihood of consumer confusion is exacerbated by the fact that the <jakibrown.com> website streams one of Complainant's songs. Lastly, this website is commercial in nature because it advertises Jaki Brown's services as a casting director and executive producer. The Panel accordingly finds that Respondent has intentionally used the disputed domain name with the purpose of attracting Internet users to the website for commercial gain by creating a likelihood of consumer confusion.
DECISION
Having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thesteviewonderstory.com> domain name be TRANSFERRED from Respondent to Complainant.
David H. Bernstein,
Panelist
Dated: November 21, 2011
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