Bob Anderson v. DAVE BANCROFT / BRANSON MEDIA
Claim Number: FA1509001638376
Complainant is Bob Anderson (“Complainant”), represented by Mark Borghese, Nevada, USA. Respondent is DAVE BANCROFT / BRANSON MEDIA (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bobanderson.com>, registered with Domain.com, 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.
Luz Helena Villamil J. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2015; the Forum received payment on September 17, 2015.
On September 18, 2015, Domain.com, LLC confirmed by e-mail to the Forum that the <bobanderson.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 September 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@bobanderson.com. Also on September 21, 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.
A timely Response was received and determined to be complete on October 13, 2015.
On October 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz Helena Villamil J. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The complainant contends that he uses his name in connection with entertainment services, in particular as a singer and singing impressionist, having been performing for over forty (40) years. He adds that People Magazine named him “The world’s greatest singing impressionist”. He also argues that over his long career he has acquired common law rights in his name as it applies to entertainment and music.
Complainant asserts that in or about 2004 he met Respondent and they became friends and worked together on a number of projects. Moreover, Complainant contends that he used the services of Respondent to acquire the domain name <bobanderson.com>, update Complainant’s website and perform other marketing work for him. Complainant also states that the domain was supposed to be registered in Complainant’s name.
According to the Complaint, in 2013 the business relationship ended, and Respondent was asked to provide the login and password information for the website, which he refused to do causing the new web designer to be unable to make changes to the <bobanderson.com> website. Moreover, Respondent used the associated email addresses to attack Complainant’s credibility, make false accusations, defame his name and stop Complainant’s investors from going forward with Complainant’s project.
Lastly, Complainant states that Respondent was paid for the work he performed, and there was never an agreement that Respondent could transfer, hold, own, lien or otherwise encumber the domain name <bobanderson.com>. In fact, the domain name was never supposed to be owned by anyone other than Complainant.
B. Respondent
It is stated in the response that Complainant did not meet any of the three elements that are required to “seize Respondent’s property of over ten years”.
Respondent adds that Complainant has attempted to shift the burden of proof with elaborate claims of fraud and deception, and states that Respondent has no burden of proof and should not be penalized by the loss of his property simply because he was a “nice guy” who funded and supported Complainant’s failing music career for over ten years without any financial compensation.
It is argued as well in the response that <BOBANDERSON.COM> is not a registered trademark or trade name by anyone according to the USPTO website, and even though it is true that Complainant has been using the stage name “BOB ANDERSON” for over forty years, that does not grant him any common law copyright or trademark.
Respondent also contends that he never received any type of payment from Complainant although he made many promises to make payments for the website. Moreover he states that Complainant’s current webmaster has had complete control of the hosting account including web content and all records and files including the “MX mail record” which directs how emails addressed to the domain are forwarded. For this reason, Respondent states that he has had not access to the hosting account since 2012.
Moreover, Respondent asserts that “Domain name rights are on a first come, first serve basis, and only in the event that the trademark owner can establish trademark rights and a bad faith intent to register, use or traffic in the domain name that they wish to own would this cause of action apply.” He furthermore argues that if there is any bad faith involved it is on the part of Complainant who is attempting a “REVERSE DOMAIN HIJACKING” and is harassing and defaming Respondent who has acted in friendship, charity and good faith for oven ten years.
Lastly, Respondent argues that simply because a person uses a stage name to promote himself this does not automatically grant him a common law copyright and exclusive use of a generic name or mark. He adds that Complainant’s claim that they have been denied access to the hosting site is simply not true but, even if this was the case, it is still Respondent’s property and Respondent’s choice of where they wish to point the name servers to, or let it go dark and sell the domain on the open market.
It is clear for the panel that the bottom line of the case at hand relates with the fact that there used to be a business and personal relationship between Complainant and Respondent pursuant to which one of the parties entrusted to the other the registration of the domain name <bobanderson.com> and the handling of the website, and the other followed the instructions although reserving certain rights for himself, which are the rights that arise from the ownership of the domain name that is now the basis of the dispute that began after the relationship ended.
The parties to the present case are both in agreement regarding the fact that pursuant to their personal and business relationship Complainant requested Respondent’s assistance with several issues, one of them being the registration of the domain name <bobanderson.com>. The parties are not in agreement regarding the existence of certain rights (common law rights) over the trademark or service mark BOB ANDERSON, an aspect that is of the essence to decide the present case, and certainly, as can be seen on the parties’ contentions, they are not either in agreement as regards the rights or legitimate interests in respect of the domain name by Respondent, and the fact that the domain was registered and is being used in bad faith by Respondent.
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.
There is no doubt in connection with the fact that the domain name to which the dispute refers is identical to the name BOB ANDERSON which turns out to be the name of the individual who filed the Complaint. Now, the bottom line relies on whether Complainant has common law rights over the trademark BOB ANDERSON or a confusingly similar one that entitles him to obtain a favorable decision and, therefore, the transfer of the domain under dispute.
Let us elaborate a little bit around trademarks:
A trademark is a sign (a word, a design, or a combination of both) that is used to identify products or services in the market in order to individualize them from the same or similar or products or services of competitors in the market.
Generally speaking, trademarks are registered in order to secure exclusive rights thereon. However, in countries like the United States (country of origin and residence of the parties to this process) it is imperative to use trademarks in order to obtain and maintain rights, and in addition, the applicable regulations provide for common law rights over trademarks, which arise from actual use of a mark. Common law rights may allow the common law user to successfully challenge a registration or application, and also the usage thereof by a non-authorized third party.
Trademarks are registered according to the types of goods or services to which they refer. In the case of entertainment, a mark destined to cover services related with the basic aim of the entertainment, amusement or recreation of people shall be registered in International Class 41.
The foregoing leads to analyze whether a living person such as Mr. BOB ANDERSON can derive common law trademark rights from his personal presentations and sale of merchandise such as records and posters. In other words, can a living person be something like a “walking trademark”? In the present case it should be remembered that the parties hereto are in agreement as to the fact that Mr. BOB ANDERSON has been performing for over forty (40) years. Moreover, the information that appears on the website concerning him as an entertainer, as per evidence submitted with the Complaint, demonstrates such fact and also that there are goods and services involved in the BOB ANDERSON name and image.
No doubt, in the event that anyone tried to register in the United States the mark BOB ANDERSON in Class 41 to cover entertainment services, Mr. BOB ANDERSON most probably could successfully oppose said registration on the grounds of the likelihood of confusion of any such trademark with his own image and name, to a point where consumers could assume that a Class 41 trademark registration for BOB ANDERSON covering entertainment services is owned by the Complainant.
That said, the Panel finds: (i) that Complainant has asserted common law trademark rights in his name; (ii) that the Rules do not require that the Complainant's trademark be registered by a government authority or agency for such a right to exist, and (iii) that the name “BOB ANDERSON” has sufficient secondary association with Complainant. 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).
Having decided that Complainant has common law trademark rights in his name, the next consideration to make is whether the domain name <bobanderson.com> is identical or confusingly similar with Complainant’s name. The second level domain name in <bobanderson.com> is identical to the Complainant’s name. Therefore, the Panel finds that the requirement of the Policy paragraph 4(a)(i) is satisfied.
The second aspect to determine in the present case is whether Respondent has rights or legitimate interests on the domain name <bobanderson.com>. To start, it is imperative to recall that the mentioned domain name was registered by Respondent pursuant to the request made to him by Complainant when they were working together. The bottom line is: Was Respondent entitled to register the domain name in his own name? Evidently Complainant did not take time to review how the registration was made and whether the domain name <bobanderson.com> was registered in his name or not. Now, the fact is that the registration was made by someone who was working with and for Complainant, and therefore there should be no doubt that the registration was made following the instructions from Complainant. The question is: Can Respondent claim having legitimate interests in registering the domain name in question in his own name instead of registering it in the name of Mr. Bob Anderson? Nothing explains to this Panel why the registration was made in such a manner, and moreover, how can legitimate interests be claimed from such behavior.
Furthermore, Complainant asserts that Respondent is not commonly known as the <bobanderson.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the BOB ANDERSON mark in domain names. The Panel notes that “DAVE BANCROFT” is currently listed as the registrant of record for the disputed domain name, and the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). 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).
In light of the foregoing considerations, the Panel finds that the requirement of the Policy paragraph 4(a)(ii) is satisfied.
The Panel considers that registering the domain name <bobanderson.com> in the name of someone other than Bob Anderson, who asked Respondent to make the registration, is in itself a bad faith registration. As said before, nothing explains why Respondent decided to register the domain on his name, but what can indeed be seen is that the assertions made by Complainant as regards the fact that Respondent has defamed his name, are true. Let the Panel quote some of the statements made by Respondent in his response:
- Respondent has no burden of proof and should not be penalized by the loss of his property simply because he was a “nice guy” who funded and supported Complainant’s failing music career for over ten years without any financial compensation.
- If there is any bad faith involved it is on the part of the Complainant who is attempting a “REVERSE DOMAIN HIJACKING” and is harassing and defaming Respondent who has acted in friendship, charity and good faith for oven ten years.
- Complainant’s claim that they have been denied access to the hosting site is simply not true but, even if this was the case, it is still Respondent’s property and Respondent’s choice of where they wish to point the name servers to, or let it go dark and sell the domain on the open market.
As the Panel sees it, if Respondent decided to be nice and assist the Complainant, this does not mean that he was entitled to register the domain name <bobanderson.com> in his own name. It does not mean either that he had to act in charity and support a career for a number of years without a financial compensation, but he himself acknowledges that he did that willingly and freely when he says that he “has been allowing Complainant to enjoy and benefit from the use of the domain free of charge over a decade”. It appears clear that
reserving the domain name for himself with the possibility of letting it “go dark and sell the domain on the open market” does demonstrate a bad faith usage of the domain name <bobanderson.com> by Respondent.
In light of the foregoing considerations, the Panel finds that the requirement of the Policy paragraph 4(a)(iii) is met.
REVERSE DOMAIN HIJACKING
The Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), and therefore Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bobanderson.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil J., Panelist
Dated: November 3, 2015
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