Estate of Frederick Mark Linkous v. Mroczek, Matthew
Claim Number: FA1509001635934
Complainant is Estate of Frederick Mark Linkous (“Complainant”), represented by Jeffrey Sonnabend of SonnabendLaw, New York, USA. Respondent is Mroczek, Matthew (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sparklehorse.com>, registered with Network Solutions, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 1, 2015; the Forum received payment on September 1, 2015.
On September 2, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <sparklehorse.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 September 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 2015 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@sparklehorse.com. Also on September 3, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 1, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, the Estate of Frederick Mark Linkous, has common law rights in the SPARKLEHORSE mark because the deceased had performed, released albums, and gained worldwide media recognition using the mark.
2. Respondent’s disputed <sparklehorse.com> domain name is identical to Complainant’s SPARKLEHORSE mark and merely adds the generic top-level domain (“gTLD”) “.com” which does not differentiate the mark from the domain.
3. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name. Respondent uses the disputed domain name to host a web page that displays various commercial links, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
4. Respondent registered and is using the disputed domain name in bad faith. Respondent, through taking advantage of a lapse in registration, registered the disputed domain name for the purpose of preventing Complainant from reflecting its SPARKLEHORSE mark in a corresponding domain name. Further, Respondent’s registration disrupts the legitimate business of Complainant. Finally, Respondent’s domain attracts internet users for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is the Estate of the deceased American singer, songwriter and musician Frederick Mark Linkous, who was known as Sparklehorse and who died on March 6, 2010.
2. Complainant has established common law trademark rights in SPARKLEHORSE.
3. The disputed domain name was created on January 6, 1998. It was originally registered by EMI Ltd which was then Mr. Linkous’ recording label. The domain name was used in the course of Mr. Linkous’ professional career. After Mr. Linkous’ death in 2010, EMI Ltd relinquished the registration of the domain name but, inadvertently, it was not transferred to his estate as it should have been.
4. The disputed domain name has been used for various commercial purposes without the consent or approval of Complainant.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant, the estate of Frederick Mark Linkous, asserts its common law rights in the SPARKLEHORSE mark have existed since Mr. Linkous began performing in 1995. The Panel notes that a complainant does not need to have registered a mark with a trademark authority to demonstrate rights in a mark under Policy ¶ 4(a)(i) but may rely on a common law or unregistered trademark if it can be proved. 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).
Traditionally, complainant may demonstrate common law rights in a mark by submitting evidence of secondary meaning of its mark. Secondary meaning may be established by any evidence but is often shown by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant claims that it has demonstrated secondary meaning by showing that Mr. Linkous was a professional musician who released five albums and three EPs under the SPARKLEHORSE mark and was the subject of numerous articles in publications such as the New York Times, The Hollywood Reporter, and Rolling Stone. See Compl., at Ex. 2 & 3. The Panel has examined this evidence and finds that it establishes that Mr. Linkous used the name Spaklehorse in his professional career, that he was successful and that he produced goods and services marketed under the name Sparklehouse. As the Panel finds Complainant’s evidence to be sufficient, the Panel concludes that Complainant has established common law rights by showing the SPARKLEHORSE mark has taken on a secondary meaning to signify the professional work of Mr. Linkous and that it has been and is widely accepted as such. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SPARKLEHORSE mark. Complainant contends that the <sparklehorse.com> domain name is confusingly similar to the SPARKLEHORSE mark in which Complainant claims to have common law rights. The disputed domain name differs from the mark through the addition of the gTLD “.com.” Previous panels have consistently held that the addition of the gTLD “.com” is irrelevant to an analysis of confusing similarity. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). The Panel holds that Respondent’s disputed <sparklehorse.com> domain name is confusingly similar to the SPARKLEHORSE mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SPARKLEHORSE mark and to use it in its domain name which is confusingly similar to the mark;
(b) The domain name was registered on January 6, 1998 by EMI Ltd, the recording label of the late Mr. Linkous. Mr. Linkous died on March 6, 2010, after which EMI Ltd relinquished the domain name which should have been transferred to Mr. Linkous’ estate. However, due to an inadvertence, it was not transferred but was acquired by Respondent;
(c) The domain name resolves to a website that has been used for purposes related to the music industry and other commercial purposes;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent is not commonly known by the disputed domain name. WHOIS information indicates that Respondent registered the domain using the name, “Matthew Mroczek,” which does not resemble the disputed domain name. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and lack of information to the contrary. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant also contends that Respondent’s use of the disputed domain name, to resolve to a website hosting commercial links, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant has submitted an exhibit of the website to which the domain name resolves and as it was on August 4, 2015; the exhibit shows various commercial links on the website related to the music business with such titles as, “Free Music Downloads,” “Band Camp,” and “Band Chicago Tour Dates” and it also carries links to “Tickets Music” and “Cheap Concert Tickets”. See Compl., at Ex. 7. The website is apparently now used for other commercial purposes. Panels have held that a respondent’s using a confusingly similar domain name to host a commercial pay-per-click website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent registered and is using the disputed domain name to compete with and disrupt Complainant’s business. Respondent’s disputed domain name resolves to a website which, on the evidence, has hosted commercial click-through links related to the music business including a link titled, “Free Music Downloads.” See Compl., at Ex. 7. The website is also apparently being used currently for other commercial purposes. Panels have found that a respondent has registered and used a domain in bad faith where evidence indicates that the domain name is being used to display links that compete with a complainant’s business. Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent’s display of links that compete with Complainant’s business and other commercial offerings is demonstrative of bad faith registration and use under Policy ¶ 4(b)(iii).
Secondly, Complainant submits that Respondent confuses and attracts internet users for commercial profit. Indeed, Respondent has at least at some stage used the disputed domain name to host commercial links related to the music business and more recently for other commercial purposes. See Compl., at Ex. 4. In addition, the disputed domain name incorporates the entirety of the SPARKLEHORSE mark in which Complainant has trademark rights. Panels have held that a respondent who appropriated a complainant’s mark for commercial profit acted in bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). As the Panel finds that Respondent is intentionally exploiting Complainant’s mark to confuse and attract internet users for commercial profit it may find that Respondent has acted in bad faith under Policy ¶4(b)(iv).
Thirdly, Complainant argues that Respondent, through taking advantage of a lapse in registration, registered the disputed domain name for the purpose of preventing Complainant from reflecting its SPARKLEHORSE mark in a corresponding domain name. According to Complainant, the <sparklehorse.com> domain name was used by Mr. Linkous’ record label from January 1998 through January 2011. See Compl., at pg. 4 & Ex. 4. Complainant claims that due to inadvertent oversight the <sparklehorse.com> domain name was relinquished and not transferred to Complainant which led to Respondent’s ability to take control of the domain name illegitimately. Panels have found that a respondent registered and used a domain name in bad faith where the domain was registered after an inadvertent lapse in registration by a complainant. See Hewlett-Packard Co. v. Domain ForSale, FA 103182 (Nat. Arb. Forum Feb. 7, 2002) (“[T]he fact that Complainant once held registration for the disputed domain name and that Respondent sought to capitalize on Complainant’s decision to let the registration lapse evidences bad faith registration and use under the Policy.”); BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name). As the Panel finds that Respondent took advantage of Complainant’s lapse in registration it finds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <sparklehorse.com> domain name using the SPARKLEHORSE mark and in view of the conduct that Respondent has since engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sparklehorse.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 5, 2015
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