national arbitration forum

 

DECISION

 

Stevland Morris a/k/a Stevie Wonder v. Domain Administrator / INN Domains Limited

Claim Number: FA1308001513437

PARTIES

Complainant is Stevland Morris a/k/a Stevie Wonder (“Complainant”), represented by Stephen J. Strauss of Fulwider Patton LLP, California, USA.  Respondent is Domain Administrator / INN Domains Limited (“Respondent”), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <steviewonderradio.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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2013; the National Arbitration Forum received payment on August 6, 2013.

 

On August 7, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <steviewonderradio.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 August 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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@steviewonderradio.com.  Also on August 12, 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 September 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:

 

1.    Respondent’s <steviewonderradio.com> domain name, the domain name at issue, is confusingly similar to Complainant’s STEVIE WONDER mark.

 

2.    Respondent does not have any rights or legitimate interests in the domain name at issue.

 

3.    Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a musician who performs under the name “Stevie Wonder,” and has won over 25 Grammy awards for music produced and sold to the general public. Complainant has registered the STEVIE WONDER service mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,600,739 registered July 30, 2002) and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (2,406,338 registered March 17, 2003).

 

Respondent registered the <steviewonderradio.com> domain name which adds the generic term “radio” to Complainant’s mark, and the generic top-level domain (“gTLD”) “.com.” Respondent has not been known as the domain name, nor has Complainant established any relationship with Respondent that would legitimize the use of Complainant’s mark in the domain name.  Respondent uses the <steviewonderradio.com> domain name to send Internet users to the <news.net> domain name wherein various current events are discussed, all of which are wholly unrelated to the STEVIE WONDER mark.  Respondent previously used the domain name to send Internet users to the commercially-oriented <ryanwehner.com> domain name wherein “Ryan Wehner” and “Twigs media production company” were being promoted.  Respondent registered and used the <steviewonderradio.com> domain name in an attempt to confuse Internet users into believing that the content on the resolving website is endorsed, affiliated, or derives from Complainant. The original use of the domain name shuttles Internet users to a website promoting the music of Ryan Wehner. This is evidence of an attempt to benefit a third-party through the misuse of the STEVIE WONDER mark. The current website associated with the domain name sends Internet users to an unrelated news website, which presumably provides Respondent with some commission or referral fee. Respondent had actual knowledge of Complainant’s mark when registering <steviewonderradio.com> on February 16, 2012.

 

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 is a musician who performs under the name “Stevie Wonder,” and has won over 25 Grammy awards for music produced and sold to the general public.  Complainant has registered the STEVIE WONDER service mark with the USPTO (Reg. No. 2,600,739 registered July 30, 2002), and the OHIM (2,406,338 registered March 17, 2003).  Registration of the STEVIE WONDER mark with two distinct trademark registrars is sufficient evidence of Policy ¶ 4(a)(i) rights. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).

 

Respondent has registered the <steviewonderradio.com> domain name which adds the generic term “radio” and the gTLD “.com” to Complainant’s mark and deletes the space in Complainant’s mark. The removal of the mark’s spacing and the addition of the gTLD are irrelevant considerations under the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). In Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), the panel held that the introduction of a common and generic term does not in itself distinguish a domain name from an underlying mark. The Panel finds that Respondent’s <steviewonderradio.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

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.”).

 

Respondent has not been known by the domain name, nor has Complainant established any relationship with Respondent that would legitimize the use of Complainant’s mark in the domain name. The Panel notes that the WHOIS database lists “Domain Administrator” of “INN Domains Limited” as the registrant of the domain name. Previous panels have concluded that there is no reason to find that a respondent is commonly known by a domain name when the record is scant of any rationale for such a finding. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known by the <steviewonderradio.com> domain name under Policy ¶ 4(c)(ii).

 

Respondent currently uses the <steviewonderradio.com> domain name to send Internet users to the website associated with <news.net> wherein various current events are discussed, all of which are wholly unrelated to the STEVIE WONDER mark. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the panel held that a respondent cannot claim a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use in holding onto an infringing domain name for purposes of sending Internet users to various unrelated websites.  Whatever benefit Respondent receives from using the <steviewonderradio.com> domain name to send Internet users to a news website, the use does not give rise to a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Respondent previously used the domain name to send Internet users to the commercially-oriented site associated with the <ryanwehner.com> domain name wherein “Ryan Wehner” and “Twigs media production company” were being promoted, providing a list of personal details about Mr. Wehner.  This is not a legitimate use under Policy ¶¶ 4(c)(i), (iii). See, e.g., Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

Respondent registered and used the <steviewonderradio.com> domain name in an attempt to confuse Internet users into believing that the content on the resolving website is endorsed, affiliated, or derives from Complainant. Respondent's original use of the domain name to shuttle Internet users to a website promoting the music of Ryan Wehner illustrates an attempt to benefit a third-party through the misuse of the STEVIE WONDER mark.  The current use provides Respondent with the benefit of controlling this confusingly similar domain name for purposes of sending Internet users to an unrelated news website, which presumably pays Respondent some commission or referral fee. In Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000), the panel agreed that when a respondent is using a disputed domain name so as to find methods of capitalizing on the confusion of Internet users, there is a basis for finding Policy ¶ 4(b)(iv) bad faith. The Panel here finds that Respondent’s various uses of the domain name for purposes of capitalizing on the confusing nature of a domain name that contains the entire STEVIE WONDER mark is evidence of Policy ¶ 4(b)(iv) bad faith.

 

The nature of the use of the first associated website indicates that Respondent had actual knowledge of Complainant’s mark when registering the domain name. Accordingly, the Panel finds that such knowledge infers Policy ¶ 4(a)(iii) bad faith registration. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). 

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

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 <steviewonderradio.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  September 18, 2013

 

 

 

 

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