James William Monroe v. Tony Sung
Claim
Number: FA0507000525910
Complainant is James William Monroe (“Complainant”), represented
by J. Gerard Stranch of Branstetter, Kilgore, Stranch & Jennings, 227 Second Avenue North, Fourth Floor, Nashville, TN 37201-1631. Respondent is Tony Sung (“Respondent”), 61 Town Centre Court Suite 2109, null,
Toronto, ONTARIO M1P5C5, CA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <billmonroe.com>, registered with Network
Solutions, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 29, 2005.
On
July 29, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the <billmonroe.com> domain name 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
August 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 29, 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@billmonroe.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 6, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) 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 <billmonroe.com>
domain name is identical to Complainant’s BILL MONROE mark.
2. Respondent does not have any rights or
legitimate interests in the <billmonroe.com> domain name.
3. Respondent registered and used the <billmonroe.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, James William Monroe, is the son of the late
bluegrass musician William S. Monroe, who performed and recorded for over sixty
years under the BILL MONROE mark. Bill
Monroe popularized the bluegrass music style along with Lester Flatt and Earl
Scruggs and became known as “The Father of Bluegrass.” Bill Monroe left his entire estate to
Complainant in Articles II and IV of his Last Will and Testament.
Respondent registered the <billmonroe.com> domain name on September 17, 1999. The domain name resolves to a website that
contains links to numerous music-related items, including music downloads and
the albums of various musicians. Many
of the links are related to bluegrass music.
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. 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.”).
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
asserts that the BILL MONROE mark has acquired sufficient secondary meaning to
establish common law rights based on Bill Monroe’s fame and reputation
associated with bluegrass music. The
Panel concludes that Complainant has proved that the BILL MONROE mark has
become sufficiently connected to Bill Monroe’s music and persona that the
public associates that music with Bill Monroe and the BILL MONROE mark. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that
trademark registration was not necessary and that the name “Julia Roberts” has
sufficient secondary association with the complainant that common law trademark
rights exist); see also Estate of
Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A person
may acquire such a reputation in his or her own name as to give rise to
trademark rights in that name at common law …”); see also CMG Worldwide, Inc. v. Naughtya Page, FA
95641 (Nat. Arb. Forum Nov. 8, 2000) (finding that Princess Diana had common
law rights in her name at her death and that those common law rights have since
been transferred to the complainant, the representative of Princess Diana’s
estate).
The <billmonroe.com>
domain name differs from Complainant’s BILL MONROE mark only with the omission
of spaces between words and the addition of the generic top-level domain
(“gTLD”) “.com.” These changes,
separately and together, are irrelevant in determining similarity under the
Policy and, therefore, do not function as distinguishing features. Thus, the domain name is identical to
Complainant’s mark under Policy ¶ 4(a)(i).
See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127
(WIPO Apr. 22, 2000) ("[T]he 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
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”).
Consequently,
the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
It has been
established under the Policy that the complainant has the initial burden of
proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”). Having found that Complainant
has met its initial burden by establishing a prima facie case, the Panel
will now analyze whether Respondent has met its burden to establish rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant
argues that Respondent is not commonly known by the <billmonroe.com>
domain name and that Complainant has not authorized Respondent to use any
version of Complainant’s BILL MONROE mark for any purpose. The WHOIS information for the disputed
domain name lists Respondent as “Tony Sung” and identifies no other connection
between Respondent and the disputed domain name. Because Respondent has failed to respond to any of Complainant’s
contentions, the Panel is left with no evidence to rebut Complainant’s
assertions that Respondent is not commonly known by the disputed domain
name. Thus, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
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 Vanguard Group, Inc. v.
Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because
Respondent failed to submit a Response, “Complainant’s submission has gone
unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”).
Respondent is
using the <billmonroe.com> domain name to divert Internet users to
a commercial website that displays links to third-party websites, including
many related to country or bluegrass music.
Furthermore, the Panel presumes that Respondent derives commercial
benefit from these diversions due to click-through fees from the links on the
website. The Panel finds that such use
of a domain name identical to Complainant’s BILL MONROE mark to attract
Internet users to Respondent’s commercial website for Respondent’s benefit does
not qualify as a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use of the domain name under
Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit 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 also
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy). Additionally, in failing to submit a response to Complainant’s contentions, Respondent
has neglected to provide any evidence that would challenge Complainant’s prima
facie case. The Panel, therefore,
finds that Respondent has not established rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c)(i) or (iii). See Euromarket Designs, Inc. v. Domain For Sale
VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence,
the complainant and the panel must resort to reasonable inferences from
whatever evidence is in the record. In
addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such
inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The <billmonroe.com>
domain name resolves to a website that features a generic search engine with
numerous links to various music-related products and services. The Panel presumes that Respondent receives
commissions for diverting Internet users to third-party websites via the search
engine and links located at Respondent’s website. Additionally, Respondent’s use of Complainant’s distinctive BILL
MONROE mark in the domain name creates a likelihood of confusion and suggests
an attempt to attract Internet users to Respondent’s website for Respondent’s
commercial gain. The Panel finds that
this is evidence of Respondent’s bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see also Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent
profits from its diversionary use of the complainant's mark when the domain
name resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent’s
registration of the <billmonroe.com> domain name, which contains
Complainant’s BILL MONROE mark in its entirety, suggests that Respondent knew
of Complainant’s rights in the mark.
The similarity between Complainant’s business and the content displayed on
Respondent’s website is further evidence that Respondent had knowledge of
Complainant’s rights in the BILL MONROE mark.
Respondent’s registration of a domain name that contains Complainant’s
mark, with knowledge of Complainant’s rights in the mark, is evidence of bad
faith registration and use 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
Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between the complainant’s mark and the content advertised on
the respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”); 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.”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <billmonroe.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
September 20, 2005
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