national arbitration forum

 

DECISION

 

Anthony Joseph Pereira v. Byron Otero

Claim Number: FA1302001483614

PARTIES

Complainant is Anthony Joseph Pereira (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA.  Respondent is Byron Otero (“Respondent”), Louisiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <joeperryguitar.com>, registered with GoDaddy.com, LLC.

 

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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2013; the National Arbitration Forum received payment on February 5, 2013.

 

On February 5, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <joeperryguitar.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2013 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@joeperryguitar.com.  Also on February 7, 2013, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the domain name.

Policy ¶ 4(a)(ii): Respondent lacks rights and legitimate interests in the domain name.

Policy ¶ 4(a)(iii): Respondent has registered and is using the domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant argues that federal trademark registration is not a pre-requisite to protection under the Policy.  The Panel agrees.  See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Rather, the Panel will consider all information relevant to the mark’s acquisition of secondary meaning which allows a finding of common law rights in the JOE PERRY mark.

 

Complainant claims that he does own common law rights to the JOE PERRY mark, which Complainant uses as his stage name in the band Aerosmith and in other musical enterprises.  Complainant declares that he has used the JOE PERRY mark continuously since 1970 in connection with the recording and performance of music, and an array of entertainment services.  Complainant states that he has assisted Aerosmith in the sale of over 150 million albums under the JOE PERRY name.  Complainant mentions that he has also used the JOE PERRY mark in conjunction with his own band, The Joe Perry Project, which released three albums starting in 1980.  Complainant concludes that his use of JOE PERRY in the entertainment context for over forty years establishes distinctive characteristics to the JOE PERRY mark.  Previous panels have held that once a celebrity or other famous person has used a personal or stage name in conjunction with their business for a period of time, it is easy to find that they have acquired rights in that name.  See Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (“Complainant's use of his unique name and the widespread fame associated with Complainant's use of the name long preceded Respondent's registration of the domain name, which suggests only that Respondent registered the domain name because of Complainant's fame and not because of some right or interest of its own.”).  Therefore the Panel finds that Complainant has rights in the JOE PERRY mark under Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <joeperryguitar.com> domain name is confusingly similar to the JOE PERRY mark.  Complainant notes that the domain name takes the entire JOE PERRY mark and adds the descriptive term “guitar.”  Complainant avers that the addition of the gTLD “.com” does not distinguish the infringing domain name from the JOE PERRY mark.  The Panel notes that Respondent also deleted the space from the JOE PERRY mark in forming the domain name.  The Panel finds that neither the deletion of a space, nor the addition the gTLD are relevant to a Policy 4(a)(i) analysis.  See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  The Panel further agrees that the addition of the term “guitar” does little to dispel the confusing similarity, as Complainant’s fame derives predominately from his ability to play the guitar.  See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).  Therefore the Panel concludes that the <joeperryguitar.com> domain name is confusingly similar to the JOE PERRY mark under Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

Complainant must first 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.”).

 

Complainant avers that Respondent is not commonly known as JOE PERRY or the <joeperryguitar.com> domain name.  Complainant duly notes that the WHOIS information shows that Respondent’s name is “Byron Otero.”  Complainant declares that it has not granted Respondent permission to use the JOE PERRY mark a in domain name.  The Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) because there is no evidence to suggest otherwise.  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant argues that Respondent is not providing a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed <joeperryguitar.com> domain name.  Complainant notes that Respondent is using the domain name to sell unauthorized products of the Complainant.  Complainant states that Respondent’s products are counterfeits that use the JOE PERRY mark in order to secure the confidence of potential consumers.  The Panel notes that Respondent’s domain name resolves to a website purporting to sell JOE PERRY guitars to the consumer for $349.00, with an array of pictures purporting to illustrate the quality of the guitars. Previous panels have long held that the unauthorized sale of a complainant’s own goods, or the sale of mere counterfeits, is never a bona fide offering of goods or services.  See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).  Therefore the Panel finds that Respondent has failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) through its commercial offering which is categorically excluded from being Policy ¶ 4(c)(iii) legitimate noncommercial or fair uses.

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant finally argues that Respondent is seeking to intentionally attract Internet users to the <joeperryguitar.com> domain name for a commercial gain by confusing Internet users into believing the domain name is connected with Complainant.  The Panel again notes that Respondent has elected to use the domain name to sell products under the auspices that they are JOE PERRY brand guitars, or otherwise condoned by Complainant. The Panel agrees that Respondent’s bad faith can be apparent from its intent to confuse Internet users into believing they are doing business with Complainant or an affiliate, when they are in fact mistakenly handing money to Respondent.  See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also  H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).  Therefore the Panel finds that Respondent has registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).

 

Complainant concludes by stating that Respondent had actual knowledge of Complainant’s rights in the JOE PERRY mark.  Complainant believes that this knowledge is evident from the fact that the domain name’s website explicitly features pictures of Complainant and markets the guitars as somehow authorized or affiliated with Complainant.  The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

Complainant has proven this element.

 

DECISION

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

 

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

 

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  March 14, 2013

 

 

 

 

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