Stevland Morris a/k/a Stevie Wonder v. Lad
Claim Number: FA0510000584849
Complainant is Stevland Morris a/k/a Stevie Wonder (“Complainant”), represented by Stephen J. Strauss, of Fulwider Patton Lee & Utecht, LLP, 6060 Center Drive, Tenth Floor, Los Angeles, CA 90045. Respondent is Lad (“Respondent”), 23 avenue Lanessan, Champagne au mont d'or, 69410 France.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <stevie-wonder.com>, registered with Gandi.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 26, 2005.
On October 26, 2005, Gandi confirmed by e-mail to the National Arbitration Forum that the <stevie-wonder.com> domain name is registered with Gandi and that Respondent is the current registrant of the name. Gandi has verified that Respondent is bound by the Gandi 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 October 31, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 21, 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@stevie-wonder.com by e-mail.
On November 17, 2005, Complainant filed a request to Stay the Administrative Proceeding. The National Arbitration Forum granted a 45-day Stay of Proceeding, which required a request to continue the Administrative Proceeding filed by either party by January 1, 2006.
On December 29, 2005, Complainant requested and the National Arbitration Forum approved an Order to Lift the Stay of Arbitration.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 9, 2006 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <stevie-wonder.com> domain name is identical to Complainant’s STEVIE WONDER mark.
2. Respondent does not have any rights or legitimate interests in the <stevie-wonder.com> domain name.
3. Respondent registered and used the <stevie-wonder.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Stevland Morris a/k/a Stevie Wonder, is an internationally renowned musician, composer, and entertainer whose career has spanned over forty years. Among his many accomplishments, Complainant has received numerous awards including fifteen Grammy Awards and the Academy Award for Best Original Song received in 1984.
Respondent registered the <stevie-wonder.com> domain name on April 27, 2000. Respondent’s domain name resolves to a website featuring information about the famed musician as well as links to various commercial websites.
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. 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.
Under Policy ¶ 4(a)(i), a complainant need not hold a registered trademark or service mark to establish rights in a mark. SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant’s trademark or service mark be registered by a government authority or agency for such rights to exist). Complainant’s STEVIE WONDER mark has acquired secondary meaning through Complainant’s continuous use of the mark for over forty years as his stage name for entertainment purposes. Thus, Complainant has established common law rights in the STEVIE WONDER mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant alleges that Respondent’s <stevie-wonder.com> domain name is identical to Complainant’s mark. The disputed domain name features the entire STEVIE WONDER mark but separates the two names with a hyphen. Panels have held that the addition of hyphens to an otherwise identical mark is irrelevant for purposes of this Policy. As a result, the Panel finds that Respondent’s <stevie-wonder.com> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <stevie-wonder.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant contends that Respondent is using the confusingly similar <stevie-wonder.com> domain name to operate a website that features information regarding the life and career of Complainant as well as links to various competing and non-competing commercial websites. The Panel finds that such use is nether a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore, no affirmative evidence has been set forth showing that Respondent is either licensed to register domain names featuring Complainant’s STEVIE WONDER mark or any derivation thereof or that Respondent is commonly known by the disputed domain name. As a result, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, the Panel finds that Respondent’s use of the <stevie-wonder.com>
domain name to operate a website featuring links to various commercial websites will result in confusion among Internet users as to
Complainant’s affiliation with or sponsorship of the resulting website and thus
constitute bad faith. 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 TM Acquisition Corp. v. Warren, FA
204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be confused
as to the source, sponsorship, affiliation or endorsement of Respondent’s
website.”).
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 <stevie-wonder.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 16, 2006
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