Paisley Park Enterprises v. Paisley Park
Claim
Number: FA0503000440245
Complainant is Paisley Park Enterprises (“Complainant”),
represented by Catherine E. Maxson, of Davis Wright Tremaine LLP,
1501 Fourth Ave, Suite 2600, Seattle, WA 98101. Respondent is Paisley Park
(“Respondent”), 5010 Dale, Hudson,
IA 50644.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <paisleypark.com>, registered with Network
Solutions, Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 16, 2005.
On
March 16, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <paisleypark.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
March 17, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 6, 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@<paisleypark.com> 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
April 13, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 <paisleypark.com>
domain name is identical to Complainant’s PAISLEY PARK mark.
2. Respondent does not have any rights or
legitimate interests in the <paisleypark.com> domain name.
3. Respondent registered and used the <paisleypark.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant’s
PAISLEY PARK mark is closely associated with Prince, the legendary musician and
entertainer, and the sole owner of Complainant. Complainant sells audio and video recordings under the PAISLEY
PARK mark, and is known throughout the world for its state-of-the-art recording
and film studio. Many of the world’s
top artists have used Paisley Park’s services to create chart-topping music,
full-length feature films, commercials, and music videos, including REM, Barry
Manilow, and the Bee Gees.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office for the PAISLEY PARK mark (Reg. No. 2,150,287, issued April 14, 1998).
Respondent
registered the <paisleypark.com> domain name on November 19, 1998.
Respondent’s domain name does not resolve to an active 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
established that it has rights in the PAISLEY PARK mark through registration
with the United States Patent and Trademark Office as well as through
continuous use of its mark in commerce.
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).
Respondent’s <paisleypark.com>
domain name is identical to Complainant’s PAISLEY PARK mark because the
domain name fully incorporates Complainant’s mark, merely omits the space
between the words “paisley” and “park,” and adds the generic top-level domain
“.com.” The omission of the space
between the words in Complainant’s mark and the addition of the generic
top-level domain to Complainant’s mark is not enough to distinguish the domain
name from Complainant’s mark under Policy ¶ 4(a)(i). See Shirmax Retail Ltd. v. CES Mktg Group Inc., AF-0104
(eResolution Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the
conjunctive rather than disjunctive sense in holding that “mere identicality of
a domain name with a registered trademark is sufficient to meet the first element
[of the Policy], even if there is no likelihood of confusion whatsoever”);
see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat.
Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to
HANNOVER RE, “as spaces are impermissible in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see
also Wembley Nat’l Stadium Ltd. v.
Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name
<wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see
also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to Complainant's registered trademark GAY
GAMES); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY BY
VICTORIA mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make reasonable
inferences in favor of a complainant and accept the complainant’s allegations
as true).
The Panel
construes Respondent’s failure to respond as an admission that Respondent lacks
rights and legitimate interests in the disputed domain name. See
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); see also
Honeywell
Int’l Inc. v. Domain Deluxe,
FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to
respond to the Complaint functions both as an implicit admission that
Respondent lacks rights to and legitimate interests in the domain names, as
well as a presumption that Complainant’s reasonable allegations are true.”).
Furthermore, Respondent has made no use of the disputed
domain name. Simply registering the domain name is not sufficient to establish
rights and legitimate interests. When Respondent makes no use of a disputed
domain name, it can neither be said as being used for a bona fide use under
Policy ¶ 4(c)(i) nor as a legitimate noncommercial or fair use under 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 Vestel Elektronik Sanayi ve Ticaret AS v.
Kahveci, D2000-1244 (WIPO Nov. 11, 2000) ( “[M]erely registering the domain
name is not sufficient to establish rights or legitimate interests for purposes
of paragraph 4(a)(ii) of the Policy.”); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no
rights in the domain name where respondent claimed to be using the domain name
for a non-commercial purpose but had made no actual use of the domain name).
Furthermore, no
evidence submitted indicates that Respondent has a substantial affiliation
with, or is known by the <paisleypark.com>
name. Complainant has established itself as the sole holder of all
rights and legitimate interests in the PAISLEY PARK mark. Since Respondent has not come forward with a
viable alternative supporting its use of
Complainant’s mark and does not have authorization or consent to use the mark,
the Panel may accept the proposition proposed by Complainant that Respondent
has no rights or legitimate interests in the domain name under Policy ¶
4(c)(ii), despite listing its name as “Paisley Park” in the WHOIS contact
information. See Yoga Works, Inc. v. Arpita, FA 155461
(Nat. Arb. Forum June 17, 2003) (finding
that respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that respondent was ever ‘commonly known
by’ the disputed domain name prior to its registration of the disputed domain
name”); see also Neiman Marcus Group, Inc. v. Neiman-Marcus,
FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and
legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was
not commonly known by the <neiman-marcus.net> name, despite naming
itself “Neiman-Marcus” in its WHOIS contact information).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
made no use of the <paisleypark.com>
domain name. The failure of
Respondent to make use of the disputed domain name constitutes passive holding,
and thus the Panel finds that Respondent’s registration and use of the <paisleypark.com> domain name is in bad faith pursuant
to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); 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); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that the 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).
The Panel finds
that there is no conceivable way Respondent could use the disputed domain name
such that it would not infringe on Complainant’s PAISLEY PARK mark, and
therefore it is illogical to await Respondent’s use of the domain name to find
bad faith use. See Phat Fashions v.
Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under
Policy ¶ 4(a)(iii) even though respondent has not used the domain name because
“[i]t makes no sense whatever to wait until it actually ‘uses’ the name, when
inevitably, when there is such use, it will create the confusion described in
the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
respondent made no use of the domain name in question and there are no other
indications that respondent could have registered and used the domain name in
question for any non-infringing purpose); see
also Red Bull GmbH v. Gutch,
D2000-0766 (WIPO Sept. 21, 2000) (finding that respondent’s expected use of the
domain name <redbull.org> would lead people to believe that the domain
name was connected with complainant, and thus is the equivalent to bad faith
use); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith
registration and use where it is “inconceivable that the respondent could make
any active use of the disputed domain names without creating a false impression
of association with the complainant”).
Furthermore,
Respondent’s registration of the <paisleypark.com> domain name,
containing Complainant’s well-known PAISLEY PARK mark in its entirety, suggests
that Respondent knew of Complainant’s rights in the PAISLEY PARK mark. There is no evidence to suggest that
Respondent has any connection to any products or services bearing this
variation on Complainant’s PAISLEY PARK mark.
Moreover, constructive knowledge of the mark may be inferred because the
mark was registered with the United States Patent and Trademark Office prior to
Respondent’s registration of the domain name.
Thus, the Panel finds that Respondent registered and used the disputed
domain name based on the distinctive and well-known qualities of Complainant’s
mark. See Kraft Foods (Norway) v.
Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the
respondent chose to register a well known mark to which he has no connections
or rights indicates that he was in bad faith when registering the domain name
at issue”); see also Digi Int’l v.
DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[C]omplainant’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.”).
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 <paisleypark.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 25, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum