National Arbitration Forum
DECISION
Amy Taylor v. Stacy Lennox Brinkerhoff
Claim Number: FA0601000634875
PARTIES
Complainant is Amy Taylor (“Complainant”),
11041 Santa Monica Blvd., #713, Los Angeles, CA 90025. Respondent is Stacy Lennox Brinkerhoff (“Respondent”), 6346 Cypress Gardens Blvd.
SE, Winter Haven, FL 33884.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amytaylor.com>,
registered with Network Solutions, Inc.
PANEL
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.
Clive Elliott as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 22, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 7, 2006.
On January 25, 2006, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <amytaylor.com>
domain name is registered with Network Solutions, Inc. and that the 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 February 14, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 6, 2006 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@amytaylor.com by e-mail.
A timely Response was received and determined to be complete on
February 27, 2006.
A timely Additional Submission was received from Complainant on March 6,
2006 and is considered to be in accordance with The Forum’s Supplemental Rule
#7.
On 8 March 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Clive Elliott as Panelist.
On March 17, 2006 the Panelist received an
amended additional submission from the Respondent. This
is considered to also be in accordance with The Forum’s Supplemental Rule #7.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a California based escort and
model who operates a business partly by means of a website which she operates
using the domain name <AmyTaylor.net>.
She asserts that the website is used by fans and modelling agents. It seems that "Amy Taylor" is an
entertainment alias, which according to Complainant has been legally filed
since February 2001.
Complainant contends that she has attempted
to purchase the disputed domain name <amytaylor.com> from
Respondent on several occasions but without success. She indicates that the <amytaylor.com> URL is needed
by her for business purposes to avoid confusion of those who cannot find her
when searching on the Internet.
Complainant contends that she is losing clients and fans because they
cannot remember her “.net” extension.
She contends that Respondent retains the URL without using it, and
refuses to sell it for a reasonable price.
Complainant contends that this is a case of “cyberquatting” in an
attempt to extort a high payment from her as she knows Complainant wants and
can afford it
Complainant submits that Respondent is not making a legitimate noncommercial or
fair use of the domain name, and is thereby misleadingly diverting consumers to
tarnish the service mark at issue.
Complainant further contends that by Respondent’s own admission the URL
diverts traffic to an unused site and that the only reason this is so is
because of Complainant’s existence as a popular entertainer of the same name.
B. Respondent
Respondent in turn contends that in 1999, she
started managing a singer, songwriter, and vocalist Amy Taylor. Respondent says that she purchased and has
used the domain <amytaylor.com>
for her work with her. Respondent
asserts that Amy Taylor has performed on numerous occasions to audiences from
Florida to Texas with over 5,000 -10,000 attendees. She also asserts that Amy Taylor had showcases with record
labels, as well as hired and spec work with numerous producers.
Respondent contends that the talent she represents (Amy Taylor) has
been professionally working longer than Complainant and that she has a
legitimate right to the domain.
Respondent contends that Complainant has a viable domain
<amytaylor.net> and does not need the disputed domain name.
Respondent says that she has been contacted regularly by people all
around the world interested in purchasing the domain name for various
reasons. Since in development with her
client, Amy Taylor, she has replied that the site was not for sale. Respondent further says that at one time she
was unsure if Amy Taylor would resume recording and offered the site to
Complainant for $6,500 on the basis that if she really wanted it “this was her
golden opportunity to snap it up albeit at a premium.” That offer was declined.
Respondent goes on to say that not very long after that her client Amy
Taylor, did start recording again and accordingly she renewed her ownership of
the domain name.
Respondent submits that Complainant has
conjured up a whole conspiracy theory.
She contends that she is not now (nor has ever been) intent on harming
Complainant as an individual, nor to tarnish or disrupt her supposed business.
C. Additional Submissions
By Complainant:
In her additional submission Complainant states that Internet sites of
her using her entertainment alias can be found as far back as the year 2000.
Complainant requests proof that "Amy Taylor" the singer is a
professional singer and seeks to cast doubt on Respondent’s credentials as a
music manager and Registered Investment Advisor.
Complainant submits that Respondent has no real business that requires
her to keep <amytaylor.com>
and that this is why she has done nothing with it for over two years.
By Respondent:
Respondent in turn contends that Complainant did not initially file this complaint under her legal name, but under an alias. Respondent advises that she is able to provide a video clip of her Amy Taylor’s singing abilities if necessary.
Respondent
submits that Complainant has not proved all
three of the arbitration points required to transfer the ownership of this
domain.
Finally, Respondent states that she is still prepared to sell the domain name to Complainant.
FINDINGS
Complainant
establishes that it has rights in the AMY TAYLOR mark but fails to establish
Respondent has no rights or legitimate interests in respect of the domain name;
and that it has been registered and is being used in bad faith. Having not established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be
denied.
DISCUSSION
Paragraph 15(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (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
the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Identical and/or Confusingly
Similar
The Panel finds that by not providing any evidence of common law rights in the AMY TAYLOR mark, Complainant has failed to prove common law rights in the AMY TAYLOR mark. The Panel finds that Complainant did not provide sufficient evidence of secondary meaning or continuing use, and thus the Panel finds that Policy ¶ 4(a)(i) has not been satisfied. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof (e.g., business sales figures, revenues, advertising expenditures, or number of consumers served)). Much of Complainant’s evidence arguably falls into this category. Bald assertions of business, goodwill and reputation are made, but little support is provided.
The Panel finds that Respondent’s registration of the <amytaylor.com> domain name predates Complainant’s first use of the AMY TAYLOR mark and thus, Complainant has failed to satisfy Policy ¶ 4(a)(i). See Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that the complainant may have in its common law mark did not predate the respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied). Once again, Complainant asserts that she has been using the disputed domain name for modeling, acting, entertainment and the like for nearly 6 years but once again provides little to corroborate this.
Nevertheless, even though the evidence on
this is light, the same criticism can be made of Respondent’s evidence which
likewise provides little to substantiate a range of allegations. If any comment is to be made it is that both
parties have made a range of allegations and insinuations but done little to
show that they can be substantiated in fact.
Accordingly, the Panelist has to work with the material the parties have
chosen to provide.
It is now relatively well established that a Panel may find that under Policy ¶ 4(a)(i), a complainant need not hold a registered trademark to establish rights in a mark. The Panel may find secondary meaning associated with Complainant’s mark and find that Complainant has common law rights that are sufficient for satisfying Policy ¶ 4(a)(i). See McCarthy on Trademarks & Unfair Competition, § 25:74.2 (4th ed. 2002) (stating that the ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law); see also 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).
Complainant
asserts that the <amytaylor.com> domain name is identical to Complainant’s AMY
TAYLOR mark because the only difference is the addition of the generic
top-level domain “.com,” which is irrelevant under the Policy. The latter point is relatively uncontentious
and it seems that there is merit in the former. Under the circumstances, the Panelist is prepared to give
Complainant the benefit of the doubt to the extent that she has established
rights in the AMY TAYLOR mark and the domain name is for all intents and
purposes identical. Given the above and
that both Amy Taylors appear to be involved in the “entertainment” industry in
one way or another, the Panelist finds that this ground is made out, albeit by
a narrow margin.
Rights or Legitimate Interests
The Panel finds that Respondent does have rights or legitimate interests in the <amytaylor.com> domain name because Respondent’s registration of the disputed domain name predates Complainant’s registration or use of the AMY TAYLOR mark. See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because the respondent’s use of the PARACHUTE mark and the domain name in question preceded any use of the service mark by Complainant); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO April 18, 2002) (finding that the respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before the complainant had established rights in its alleged mark).
Moreover, Respondent asserts that she has rights and legitimate interests in the <amytaylor.com> domain name because she has been using the domain name to promote a musician managed by Respondent. There is some evidence that this allegation is true and copies of various e-mails have been provided by Respondent. Unverified photographic evidence of Respondent’s client, the singer Amy Taylor, is also provided. The Panelist has given the Complainant the benefit of the doubt on its rather sparse evidence and considers it is appropriate to do the same for Respondent. It is also necessary to bear in mind that the overall onus lies on Complainant rather than Respondent.
It is also appropriate to take into account the assertion made by Respondent and not disputed by Complainant that Amy Taylor is a very common name in the USA. Accordingly, there may well be a number of individuals in the USA who might wish to use the name for business or other purposes. The fact that Complainant has used a particularly desirable top-level domain does not imply that another party who does so is acting without a legitimate interest.
The Panel finds that the use described by Respondent is a use in connection with a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that a respondent has rights in the <missionsuccess.net> domain name where it was using the domain name in connection with a noncommercial purpose); see also Baja Marine Corp. v. Wheeler Tech., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that a respondent has rights and legitimate interests in the domain name where the respondent made a non-commercial use of <bajaboats.com> and received no funds from users of the site connected to the domain name).
More specifically, the Panelist is of the view that it could be legitimate for a talent agent to register and renew a domain name for his or her client and on the available evidence this seems to have been the intention, even though, based on the present evidence it is not possible to form any concluded view on this.
Nevertheless, the Panelist concludes that based on the position as currently known the Respondent has done just enough. In the result, the Complainant has failed to establish this ground.
Registration and Use in Bad Faith
The
Panel finds that Respondent has rights or legitimate interests in the <amytaylor.com> domain name
pursuant to Policy ¶ 4(a)(ii). Thus,
the Panel concludes that Respondent did not register or use the domain name in
bad faith pursuant to Policy ¶ 4(a)(iii).
See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA
366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a
finding that there was no bad faith registration or use under Policy ¶
4(a)(iii).”); see also Subleaseexchange.com
v. McGinnis, FA 421267 (Nat.
Arb. Forum Apr. 5, 2005) (“Respondent’s rights and legitimate interests in the
<leasetrade.com> domain name pursuant to Policy ¶ 4(a)(ii) allow a finding
that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”).
Furthermore, the Panel finds that Respondent’s
offer to sell the disputed domain name does not evidence bad faith registration
and use pursuant to Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA 95746
(Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a
domain name is insufficient to amount to bad faith under the Policy; the domain
name must be registered primarily for
the purpose of selling it to the owner of a trademark for an amount in excess
of out-of-pocket expenses); see also
LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (“[T]he
mere offering [of the domain name for sale], without more, does not indicate
circumstances suggesting that Respondent registered the domain name primarily
for the purpose of selling, renting, or transferring the domain name to the
Complainant as required under [Policy ¶ 4(b)(i)].”).
Respondent’s explanations for offering the domain name for sale are not necessarily inconsistent with her version of events. Once again, for the reasons explained above under the previous ground, the Panelist is of the view that the Complainant has failed to prove this ground.
DECISION
Having not established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Clive Elliott, Panelist
Dated: March 21, 2006