national arbitration forum

 

DECISION

 

Richard A. Nielsen v. Nextnet Tech / Domain Dept

Claim Number: FA1209001461626

 

PARTIES

Complainant is Richard A. Nielsen (“Complainant”), represented by Peter J. Strand of Leavens, Strand, Glover & Alder, LLC, Illinois, USA.  Respondent is Nextnet Tech / Domain Dept (“Respondent”), represented by Jay Putt, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ricknielsen.com>, registered with ENOM, INC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

R. Glen Ayers served as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2012; the National Arbitration Forum received payment on September 10, 2012.

 

On September 7, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <ricknielsen.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name.  ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 September 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2012 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@ricknielsen.com.  Also on September 11, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 1, 2012.

 

A timely Additional Submission was received from Complainant on October 4, 2012.  The Complainant’s additional submission was considered.

 

On October 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

    1. Complainant, Richard A. Nielsen a/k/a Rick Nielsen, is the lead guitarist, backup vocalist, and primary songwriter for the American rock band Cheap Trick.
    2. Complainant has been a successful performing artist for nearly 50 years.
    3. Complainant’s band has performed more than 5,000 shows, toured internationally, recorded 26 albums, sold over 20 million records, appeared on 29 movie soundtracks, and has been awarded 40 gold and platinum records.
    4. Complainant has applied for two trademark registrations with the United States Patent and Trademark Office ("USPTO") for the RICK NIELSEN mark (Ser. No. 85/694,875 filed August 3, 2012).
    5. Complainant has rights in the RICK NIELSEN mark through its exclusive and continuous use of the mark in connection with entertainment services that have created a strong secondary meaning within the music industry.
    6. Respondent’s <ricknielsen.com> domain name is identical to Complainant’s RICK NIELSEN mark as the domain name merely adds the generic top-level domain (“gTLD”) “.com.” 
    7. Respondent does not have rights or legitimate interests in the disputed domain name.

                                          i.    Respondent does not own trademark rights or registrations for the RICK NIELSEN mark and is not individually known by the name RICK NIELSEN. 

                                         ii.    Respondent is using the disputed domain name to divert Internet users to unassociated, music-related advertising websites and such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

    1. Respondent is using the disputed domain name to intentionally attract Internet users to its website for commercial gain.

                                          i.    Respondent’s resolving website features links to music-related goods and services, and Respondent presumably profits from such use.

 

  1. Respondent
    1. The disputed domain name is comprised of the first name “Rick” and the last name “Nielsen,” which is not solely used by Complainant.
    2. The name “Rick Nielsen” returns many results through a Facebook search, proving that the name and mark are not used exclusively used by Complainant.
    3. When Respondent registered the disputed domain name on June 30, 2005, Respondent was not aware of Complainant, his marks, or his businesses. 
    4. Respondent’s business is to provide web services and development to clients.  Respondent met a Mr. Rick Nielsen, who is a Web marketing and search engine optimization “guru” from <thewebtrainer.com>, and registered the disputed domain name to help distribute his materials to the general public.
    5. Complainant cannot use the marks identified as they were filed seven years after Respondent registered the disputed domain name.
    6. The disputed domain name was registered to promote articles and materials of Mr. Rick Nielsen from <thewebtrainer.com>, who Respondent met in a business meeting in 2005.
    7. Respondent conducted a trademark search at the time of registration and did not find any registered trademarks for “Rick Nielsen.” 
    8. Respondent has gathered and prepared materials to publish on the website, but has been busy developing other websites.
    9. While the website is under construction, the disputed domain name is being used for pay-per-click advertisement to earn minimum revenue to pay for its registration costs.
    10. Respondent was not aware of Complainant when it registered the disputed domain name.
    11. The disputed domain name was registered to provide free content, and the pay-per-click links are being used to provide general business and service links. 
  2. Complainant’s Additional Submission
    1. Complainant’s name is RICK NIELSEN, and the mark has been used in connection with entertainment and music services for over 50 continuous years, thereby establishing rights in the mark.
    2. Respondent has not argued that it is commonly known by the disputed domain name and has openly admitted in its Response that it registers the names of famous people in domain names in order to profit from pay-per-click  traffic.
    3. Respondent is not using the disputed domain name as it says it is.  The disputed domain name has continuously resolved to a pay-per-click website since being registered.  Respondent is simply holding the disputed domain name to collect click-through fees.

 

FINDINGS

 

Identical or Confusingly Similar: Policy ¶ 4(a)(i).

 

 

Complainant, while having trademark applications with the USPTO, does not own a valid trademark with a governmental organization.  Policy ¶ 4(a)(i) specifies that a complainant must present evidence of its trademark or service mark that it is relying on within the Complaint.  However, Policy ¶ 4(a)(i) does not give preference to registered trademarks and a complainant may prove its rights in a mark under common law by showing that it has used its mark openly and extensively so that secondary meaning has attached.  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). 

 

Complainant, Richard A. Nielsen a/k/a Rick Nielsen is the lead guitarist, backup vocalist, and primary songwriter for the American rock band Cheap Trick.  A successful performing artist for nearly 50 years, he and Cheap Trick have performed more than 5,000 shows, toured internationally, recorded 26 albums, sold over 20 million records, appeared on 29 movie soundtracks, and have been awarded 40 gold and platinum records.  Complainant notes several appearances that it has made with internationally known artists and on television shows.  Further, on August 10, 2010, he opened a museum exhibit called “Rick’s Picks,” consisting of the story of Complainant’s passion for guitars and music.  Complainant has applied for two trademarks with the USPTO for the RICK NIELSEN mark (Ser. No. 85/694,875 filed August 3, 2012).  Complainant asserts that it has rights in the common law mark RICK NIELSEN, through its exclusive and continuous use of the mark in connection with entertainment services that have created a strong secondary meaning within the music industry.  Complainant’s Annex 2 contains several magazine covers featuring the RICK NIELSEN mark and pictures of Complainant, dating back to 1980. 

 

Prior UDRP Panels have held that musicians and entertainers can indeed possess common law trademark rights in their personal names under the UDRP.  See Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (this Panelist determined that the complainant held common law trademark rights in his famous name MICK JAGGER); see also MPL Commc’ns Ltd v. Hammerton, FA 95633 (Nat. Arb. Forum Oct. 25, 2000) (finding that the complainant owned common law rights to the name Paul McCartney). 

 

Here, while not as famous as the MICK JAGGER common law mark, the Panel finds that Complainant has presented sufficient evidence – particularly the evidence relating to the museum – to show common law rights in the RICK NIELSEN name and mark.  Therefore, the Complainant has successfully established the first prong of Policy ¶ 4(a)(i).

 

Further, Complainant has shown that the <ricknielsen.com> domain name is identical to Complainant’s RICK NIELSEN mark as the domain name merely adds the gTLD “.com.”  The disputed domain name also removes the space between the terms of Complainant’s mark.  UDRP panels have held that the removal of a space and the addition of a gTLD are irrelevant under Policy ¶ 4(a)(i).  See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).  Respondent’s <ricknielsen.com> domain name is identical to Complainant’s RICK NIELSEN mark under Policy ¶ 4(a)(i). 

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

Complainant must make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Respondent does not own trademark rights or registrations for the RICK NIELSEN mark and is not individually known by the name RICK NIELSEN.  Within its Additional Submission, Complainant has shown that Respondent has not brought forth any evidence indicating that it is commonly known by the disputed domain name.  The WHOIS information identifies the registrant of the <ricknielsen.com> domain name as “Nextnet Tech / Domain Dept,” which is not similar to the domain name at issue.  Respondent is certainly not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent essentially has admitted, as Complainant has alleged and shown, that Respondent is using the disputed domain name to divert Internet users to unassociated, music-related advertising websites and that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Complainant provides a screenshot of the resolving website, which the Panel notes contains various headings under the “Related Searches,” section such as “Christian Music,” “Electric Guitars,” “Music,” and many others.  See Complainant’s Annex 3.  Complainant argues, and Respondent admits, that Respondent is collecting pay-per-click fees through the use of the website.  Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “Respondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

Complainant argues that Respondent is using the disputed domain name to divert Internet traffic to the resolving website containing third-party links.  Complainant notes in its Additional Submission that Respondent has fully admitted to using the disputed domain name to collect revenue via pay-per-click links.  Complainant argues throughout its filings that Respondent is clearly attempting to attract Internet users to the resolving website by using the RICK NIELSEN mark in the disputed domain name itself.  The resolving website contains third-party links to music and entertainment, which the Panel may note are directly related to Complainant’s mark and name.  Complainant also points out that Respondent has admitted within its Response to registering domain names featuring the personal names of celebrities and using the domain names for pay-per-click links.  Complainant has shown that such use of the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iv).  The Panel finds accordingly under Policy ¶ 4(b)(iv).  See  AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

DISCUSSION

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."

 

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.

 

Identical and/or Confusingly Similar

 

While the Complainant’s name and the domain name are clearly identical, the issue is the existence of a common law mark, for Complainant has only applied for a trademark.  Here, Complainant has presented facts showing that his name has attained some secondary meaning.  While the name is not as famous as that of Mick Jagger, see Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000), the evidence of secondary meaning, including the evidence of a museum dedicated to Complainant’s musicianship, is sufficient to show a common law mark.

 

Rights or Legitimate Interests

 

Once the existence of a common law mark is shown, the issue of rights in the name is easily resolved.  The Respondent is not commonly known by the name, is not a licensee of Complainant, and is clearly not making a bona fide use of the domain name, which exists only as a “click-thru” site.  See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008).

 

Registration and Use in Bad Faith

 

Respondent has admitted within its Response to registering domain names featuring the personal names of celebrities and using the domain names for pay-per-click links.  Use of the disputed domain name in this manner is evidence of bad faith under Policy ¶ 4(b)(iv).  See  AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ricknielsen.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

R. Glen Ayers, Panelist

Dated:  October 27, 2012

 

 

 

 

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