Pearl Jam, A General Partnership v.
Jongcheol Lee
Claim
Number: FA0501000406483
Complainant is Pearl Jam, A General Partnership (“Complainant”),
represented by Leslie C. Ruiter of Stokes Lawrence, P.S.,
800 Fifth Ave., Suite 4000, Seattle, WA, 98104-3179. Respondent is Jongcheol
Lee (“Respondent”), Kongsu-ri Maegokmyun Youngdonggun Chungbuk, Korea
370871.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <tenclub.org>, registered with Yesnic
Co., Ltd.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
January 19, 2005; the National Arbitration Forum received a hard copy of the
Complaint on January 24, 2005.
On
February 3, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 23, 2005 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@tenclub.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
march 3, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A, Crary
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." 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tenclub.org>
domain name is identical to Complainant’s TEN CLUB mark.
2. Respondent does not have any rights or
legitimate interests in the <tenclub.org> domain name.
3. Respondent registered and used the <tenclub.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Pearl Jam, is one of the most popular and widely known American bands in the
world. Over the last fourteen years,
Complainant has sold over 30 million albums and performed in a series of
sold-out concert tours all over the world.
Complainant’s records have consistently appeared on industry lists of
the most popular music, including America’s “Billboard” charts. In addition, Complainant has been both
nominated for and has won a number of music industry awards including Grammys,
American Music Awards and MTV Awards.
Complainant
registered its TEN CLUB mark with the United States Patent and Trademark Office
(Reg. No. 2,642,377 filed August 10, 2001 and issued October 29, 2002 and File
No. 76/298,691 filed August 10, 2001).
Complainant first made use of its mark in 1992 and has used the mark
continuously and exclusively since that time in association with fan club
services that provide a website with information about Complainant’s live
performances, musical and video recordings, and services providing official
licensed merchandise.
Complainant
operates its main website at <tenclub.net> and redirects its other
websites <pearljam.com> and <pearljam.net> to this domain name.
Respondent
registered the <tenclub.org> domain name on November 25, 2002, one
month after Complainant’s registration of the TEN CLUB mark and over ten years
following Complainant’s first use of the mark.
Since registering the domain name, Respondent has neither operated any
business in connection with the domain name nor connected it to an operative
website.
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."
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.
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.
Complainant has
provided proof that its TEN CLUB mark is registered with the United States
Patent and Trademark Office. The Panel
finds that Complainant’s registration of the mark is prima facie
evidence of Complainant’s rights in the mark and that Respondent does not
dispute these rights in this proceeding.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption); see also Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which respondent operates. It is sufficient that complainant can
demonstrate a mark in some jurisdiction); see also FDNY Fire Safety Educ.
Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding
that complainant’s rights in the FDNY mark relate back to the date that its
successful trademark registration was filed with the U.S. Patent and Trademark
Office).
The <tenclub.org>
domain name registered by Respondent is identical to Complainant’s TEN CLUB
mark because the disputed domain name includes Complainant’s exact mark in its
entirety, adding only the generic top-level domain (“gTLD”) “.org.” The Panel concludes that it has been
established that the addition of a gTLD is irrelevant to a finding under Policy
¶ 4(a)(i) and, therefore, does not distinguish the identical domain name from
Complainant’s mark. See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants"); see also BMW AG v. Loophole, D2000-1156 (WIPO
Oct. 26, 2000) (finding that there is “no doubt” that the domain name
<bmw.org> is identical to Complainant’s well-known and registered BMW
trademarks); see also Koninklijke
Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that
the domain name <philips.org> is identical to Complainant’s PHILIPS
mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
avers that Respondent has no rights or legitimate interests in the <tenclub.org>
domain name, containing Complainant’s TEN CLUB mark in its entirety. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to show
that it does have rights to or legitimate interests in the domain name. Thus, due to Respondent’s failure to respond
to the Complaint, the Panel assumes that Respondent lacks rights and legitimate
interests in the disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once complainant asserts that respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by complainant that respondent has no
rights or legitimate interests is sufficient to shift the burden of proof to
respondent to demonstrate that such rights or legitimate interests do exist); see
also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
Moreover, where
Respondent does not respond, the Panel may accept reasonable allegations and
inferences in the Complaint as true. See 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.”); see also
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is tantamount
to admitting the truth of complainant’s assertion in this regard”); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb.
Forum June 17, 2002) (finding that in the absence of a Response the Panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
Respondent is wholly appropriating
Complainant’s mark and has passively held the domain name since the time of
registration in 2002. The Panel finds
that this failure to use the domain name that is identical to Complainant’s
mark constitutes passive holding and is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii). See Pharmacia &
Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or
legitimate interests where respondent failed to submit a Response to the
Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that respondent made preparations to
use the domain name or one like it in connection with a bona fide offering of
goods and services before notice of the domain name dispute, the domain name
did not resolve to a website, and respondent is not commonly known by the
domain name); see also Boeing Co.
v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate
interests where respondent has advanced no basis on which the Panel could
conclude that it has rights or legitimate interests in the domain names, and no
use of the domain names has been established).
In addition, Complainant
has asserted that Respondent is not commonly known by the <tenclub.org>
domain name. Furthermore, nothing in
Respondent’s WHOIS contact information indicates that it is known by the
disputed domain name, and there is nothing further in the record to refute
Complainant’s assertions. Therefore,
the Panel determines that Respondent has not established rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v.
Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) respondent is not a licensee of
complainant; (2) complainant’s rights in the mark precede respondent’s
registration; (3) respondent is not commonly known by the domain name in
question).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <tenclub.org> domain name in an attempt to intentionally
attract Internet users interested in locating Complainant’s TEN CLUB products
and services. Internet users searching
for Complainant’s products and services are likely to type in Complainant’s
mark followed by the common gTLD “.org.”
Respondent has failed to market any bona fide goods or services since
the disputed domain name was registered.
Respondent’s passive holding of a domain name identical to Complainant’s
mark evidences bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.
18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the
Respondent to amount to the domain name being used in bad faith.”); see also
Caravan Club v. Mrgsale, FA 95314
(Nat. Arb. Forum Aug. 30, 2000) (finding that respondent made no use of the
domain name or website that connects with the domain name, and that passive
holding of a domain name permits an inference of registration and use in bad
faith); see also Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that merely holding an infringing domain name without active use can
constitute use in bad faith).
Respondent’s
registration of a domain name that includes an identical version of
Complainant’s registered mark suggests that Respondent knew of Complainant’s
rights in the mark. Furthermore,
Complainant’s registration of the mark with the United States Patent and
Trademark Office grants constructive knowledge on anyone attempting to use the
mark. Therefore, the Panel finds that
Respondent chose the <tenclub.org> domain name based on the
distinctive qualities of Complainant’s mark, and thus registered and used the
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Pfizer,
Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding
respondent “was aware of and had knowledge of” complainant’s mark when
registering the domain name because complainant’s mark was a coined arbitrary
term with no meaning apart from complainant’s products).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <tenclub.org> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
March 17, 2005
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