Jodelle Boorady p/k/a Jodelle v. Joann Harris
Parker
Claim Number: FA0511000600883
PARTIES
Complainant is Jodelle Boorady p/k/a Jodelle (“Complainant”), represented by
Thomas Boorady, PO Box 541, Pompton
Plains, NJ 07444. Respondent is Joann Harris Parker (“Respondent”),
7776 101 Court, Vero Beach, FL 32967.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jodelle.com>,
registered with Namesdirect.
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.
Hon. Nelson A. Diaz as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 21, 2005; the National Arbitration Forum received a
hard copy of the Complaint on December 16, 2005.
On December 12, 2005, Namesdirect confirmed by e-mail to the National
Arbitration Forum that the <jodelle.com>
domain name is registered with Namesdirect and that the Respondent is the
current registrant of the name. Namesdirect
has verified that Respondent is bound by the Namesdirect 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 December 16, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 5, 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@jodelle.com by e-mail.
A timely Response was received and determined to be complete on January
24, 2006.
Complainant submitted a timely Additional Submission in reply to the
Response on January 30, 2006.
On January 31, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Nelson A. Diaz as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Jodelle Boorady, asserts that she is a musician, recording
and performing artist who is professionally known as "Jodelle," and
has rendered musical services under the name, common law trademark and service
mark JODELLE. Complainant asserts that
since at least as early as 1994, she has used the JODELLE mark in connection
with musical services, and the sale of audio compact discs and merchandise. Complainant asserts that the JODELLE mark is
synonymous with Complainant in the minds of consumers, and that the JODELLE
mark is entitled to protection against dilution, meaning it is a famous
mark.
Complainant asserts that she has rights in the <jodelle.com> domain name and that the <jodelle.com> domain name is identical
and confusingly similar to Complainant's JODELLE mark. Complainant further asserts that Respondent
has no legitimate interest or rights in the domain name because: (i) Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services; (ii) Respondent is not commonly known by the domain
name; and (iii) that Respondent is using the domain name to misleadingly divert
consumers to another website located at <creativemakeup.net> in order to
tarnish and dilute Complainant's JODELLE mark.
Finally, Complainant asserts that the disputed domain name was
registered and is being used by Respondent in bad faith because Respondent
registered and acquired the disputed domain name primarily for the purpose of
selling the domain name to Complainant and that Respondent uses the domain name
to intentionally attract consumers to another website located at
<creativemakeup.net> for commercial gain by creating a likelihood of
confusion with Complainant's JODELLE mark.
B. Respondent
Respondent asserts that the <jodelle.com>
domain name is not identical or confusingly similar to Complainant's mark, and
that Respondent has rights and legitimate interests in the <jodelle.com> domain name.
Specifically, Respondent contends that she uses the <jodelle.com> domain name in connection with her makeup
business and the modeling services of her daughter, Jodelle Henley. Respondent asserts that her daughter is
professionally known as "Jodelle," that her daughter has used the
name "Jodelle" to market modeling and other services since 1983, and
that her daughter is known by the name "Jodelle." Further, Respondent asserts that she is
using the <jodelle.com> domain
name in connection with a bona fide offering of goods and services and denies
any bad faith in registration or use.
Specifically, Respondent denies that the <jodelle.com> domain name was acquired with the intent to
sell the domain name to Complainant, and asserts that Complainant made the
initial contact to Respondent asking if Respondent would sell the domain name
to Complainant.
C. Additional Submissions
Complainant
Complainant submitted an
Additional Submission containing additional information regarding Complainant's
use of her JODELLE mark in connection with the sale of musical recordings and
live performances, including evidence that on December 29, 2005 Complainant
filed a trademark application for JODELLE with the U.S. Patent and Trademark
Office. Complainant asserts that
Respondent has not demonstrated rights or legitimate interest in the <jodelle.com> domain name in
that: (i) Respondent has not proven ownership of common law trademark rights in
the JODELLE mark; (ii) the <jodelle.com>
domain name is used to redirect Internet users to a website featuring goods and
services unrelated to Complainant's use of her JODELLE mark; and (iii) that
Respondent has failed to prove that her business or her daughter are known to
the pubic by the <jodelle.com>
domain name or the JODELLE mark.
Additionally, Complainant asserts that email exchanges between the
parties discussing purchase and sale of the <jodelle.com> domain name prove bad faith on the part of
Respondent. Finally, Complainant
asserts that for over five years Respondent has forwarded the <jodelle.com> domain name to a
website featuring services unrelated to Complainant's JODELLE mark, and that
such action creates a likelihood of confusion with Complainant's JODELLE mark
and suggests an attempt to attract consumers for commercial gain, all
constituting bad faith.
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.
Before the Panel can continue with its
analysis under paragraph 4(a), it must first decide whether Complainant has
protectable rights. Complainant asserts
common law trademark and service mark rights in the JODELLE mark through
exclusive and continuous use of the JODELLE mark since 1994 in connection with
musical recordings and live performances as well as with various promotional
materials and merchandise. Complainant
contends that the JODELLE mark has acquired secondary meaning and is famous.
UDRP panel decisions have held that
"artists, performers, and the like, can acquire protectable rights in the
names under the UDRP, if their names have been used and/or are
recognized as indicators of the origin of their goods or services, even if they
do not own registered trademarks."
Larson v. Judy Larson Club, FA
96488 (Nat. Arb. Forum Mar. 13, 2001) <judylarson.com> (artist) (citing Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000)
<juliaroberts.com> (acting services)); Rudner v. Internetco Corp., D2000-0581 (WIPO Aug. 3, 2000)
<ritarudner.com> (comedy entertainment services); Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000)
<mickjagger.com> (musical entertainment services); Estate of Shakur v. Shakur Info. Page, AF-0346 (eResolution Sept.
28, 2000) <tupacshakur.org> (hip-hop musical services); Ciccone v. Parisi, D2000-0847 (WIPO Oct.
12, 2000) <madonna.com> (musical and entertainment services)). The UDRP was not devised for the protection
of personality rights "unless the qualitative use of the person's
name rises to the level of trademark or service mark use - and that use is
recognized by the public as such."
Larson v. Judy Larson Club, FA
96488 (Nat. Arb. Forum Mar. 13, 2001).
The Panel may find that through such use, a complainant has sufficiently
established secondary meaning to justify a finding of common law rights in the
mark pursuant to Policy ¶ 4(a)(i). See McCarthy on Trademarks and Unfair
Competition, § 13:2 (4th Ed. 2002) ("Secondary meaning grows out of
long association of the name with the business, and thereby becomes the name of
the business as such; is acquired when the name and the business become
synonymous in the public mind; and submerges the primary meaning of the name as
a word identifying a person, in favor of its meaning as a word identifying that
business.").
The evidence submitted by Complainant
demonstrating Complainant's use of JODELLE as a trademark or service mark is
minimal. Complainant submits
information regarding an audio cd recording released in 1994 by various
artists, including a performer listed as "Jodelle." This submission in and of itself does not
establish or demonstrate trademark or service mark rights in JODELLE by
Complainant. Complainant provides some
copies of venue advertisements posting concert dates by "Jodelle" in
2002-2005. Additionally, Complainant
submits information regarding two additional albums bearing
"JODELLE," dating from 2002 and 2004. There is nothing in the record to indicate whether the use of the
JODELLE trademark in connection with the sale of these albums accrues to
Complainant, or whether the mark is owned by another entity with respect to
these recordings. In her Additional
Submission, Complainant submits pages from the <cafepress.com/jodelle>
website offering t-shirts bearing the JODELLE mark, yet no information is
provided evidencing that such sales and trademark rights accrue to
Complainant. Additionally, Complainant
provides evidence of a trademark and service mark application for the JODELLE
mark in connection with sale of clothing since April 2005 and for entertainment
services since 1994. While Complainant
provides a list of radio stations playing "Jodelle's Music" and
"Jodelle's Past and Upcoming Tour Dates," the lists themselves do not
evidence Complainant's use of the JODELLE mark as a trademark or service mark.
As evidence of secondary meaning in the
JODELLE mark as a trademark and service mark, as opposed to Complainant's
performance name, Complainant submits a number of articles written about
Complainant as performer, predominantly all dating 2002 and later -- after
the registration of the disputed domain name, <jodelle.com>,
in January 2001.
Finally, Complainant's pending trademark
application does not establish any enforceable rights until registration
issues. See Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO Apr. 3,
2001). Mere assertions of
"widespread consumer knowledge" without evidence of secondary meaning
is insufficient to establish rights in a mark for purposes of Policy ¶ 4(a)(i).
See Yao Ming v. Evergreen Sports,
Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (stating that "[b]ald
assertions of consumer knowledge are not an adequate form of evidence to
establish secondary meaning in a name" in holding that the complainant has
not established common-law rights in the YAO MING mark).
Based on all of the above, the Panel finds
that the evidence in the record submitted by Complainant in support of
secondary meaning in the common law trademark and/or service mark JODELLE is
insufficient to support a UDRP claim.
In reaching this conclusion, the Panel is mindful that Complainant might
well be able to succeed in a court of law in which she would have the opportunity
to produce greater evidence regarding such issues as scope and priority of
trademark rights. The Panel, of course,
can only decide based upon the evidence before it.
As discussed in detail below, the Panel
further finds that Complainant has not satisfied the requirements of paragraphs
4(a)(ii) and 4(a)(iii) of the Policy.
Complainant asserts that Respondent has no
right or legitimate interest in the <jodelle.com>
domain name because Complainant contends Respondent has not demonstrated that
it possesses continuous trademark rights in the JODELLE mark or that Respondent
or Respondent's business are known by the <jodelle.com>
domain name or "Jodelle."
Complainant has failed to establish facts sufficient to grant relief
pursuant to Policy ¶ 4(a)(ii). See Lush LTD v. Lush Environs, FA 96217
(Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does
file a response, the complainant must allege facts, which if true, would
establish that the respondent does not have any rights or legitimate interests
in the disputed domain name); see also
Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum
Jan. 15, 2003) (finding that absent a showing of any facts by the complainant
that establish the respondent lacks rights or legitimate interests in the
disputed domain name, the panel may decline to transfer the disputed domain
name).
Respondent has provided evidence of
circumstances of the type specified in paragraph 4(c) of the Policy as giving
rise to a right to or legitimate interest in the <jodelle.com> domain name.
Paragraph 4(c)(i) provides that a registrant's right or legitimate
interest in the domain name may be found where an evaluation of all evidence
presented demonstrates that "before any notice to the registrant of the
dispute, his use of, or demonstrable preparations to use, the domain name or a
name corresponding to the domain name in connection with a bona fide offering
of goods or services." See Larson v. Judy Larson Club, FA 96488
(Nat. Arb. Forum Mar. 13, 2001). It is
not required that a registrant establish trademark rights in the domain or be
commonly known by the domain name in order to demonstrate a legitimate interest
in the domain name.
Respondent provided evidence that she has
been using the <jodelle.com>
domain name in connection
with offering makeup artist services and makeup sales, since she registered the
domain in January 2001. Respondent has
directly linked the <jodelle.com> domain name to the website (<creativemakeup.net>), which provides
detailed information regarding Respondent's goods and services. Respondent provided evidence and context
regarding the decision to register the <jodelle.com>
domain name, in that "Jodelle"
is her daughter's name, in light of the fact that her daughter works with her in
her business, and in light of the fact that Respondent's daughter is or was a
model whose pictures are located on Respondent's website at
<creativemakeup.net>. Respondent
also provided evidence that she registered the domain name in anticipation of
its use by her daughter in connection with her daughter's modeling and other
ambitions.
The Panel finds that Respondent's use of the <jodelle.com> domain name in
connection with Respondent's makeup business is a bona fide use.
Additionally, the Panel finds that because Respondent's daughter's given
name is "Jodelle," Respondent's use of the <jodelle.com> domain name to operate a website featuring
information regarding Respondent's daughter and her career as a model and
make-up artist is also a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i). See Harrods Ltd. v. HDU
Inc., D2004-0093 (WIPO Apr. 27, 2004) (finding that the
<harrodssalon.com> domain name was used in a bona fide manner because the respondent had been in the salon
business for ten years prior to registering the domain name and the owner's
surname was "Harrod"); see also
Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003)
(finding that the respondent's operation of a bona fide business of online prop rentals for over two years was
evidence that the respondent had rights or legitimate interests in the disputed
domain name).
The Panel further finds that Complainant has
not proven that Respondent registered and is using the <jodelle.com> domain name in bad faith. Complainant contends that bad faith is
demonstrated through email correspondence between Complainant and Respondent
regarding the potential sale of the domain name to Complainant. Additionally, Complainant contends that
Respondent's use of <jodelle.com>
in connection with Respondent's business and <creativemakeup.net> website
constitutes an intentional attempt to attract Internet users for commercial
gain to Respondent's website by creating a likelihood of confusion with
Complainant's JODELLE mark. Neither
circumstance demonstrates bad faith.
With respect to the potential sale of the
domain name, the evidence reflects, and Complainant does not dispute, that it
was Complainant who initiated contact with Respondent by inquiring to attempt
to purchase the domain name.
Thereafter, the parties engaged in discussions regarding the sale over a
number of years. These communications,
however, do not provide evidence, as would be required, that Respondent
registered the domain name primarily for the purpose of selling the domain name
to the Complainant. See Sumner v. Urvan, D2000-0596 (WIPO
July 24, 2000). In Sumner, evidence that the respondent admitted that he offered to
sell the domain name to the complainant for more than his out of pocket
expenses ($25,000) after the complainant solicited an offer was insufficient to
prove bad faith, particularly where the same evidence was consistent with the
respondent's contention that he acquired the domain name five years prior in good
faith. Indeed, Respondent's willingness
to engage in such negotiations negates a finding of bad faith registration and
use. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA
103186 (Nat. Arb. Forum Feb. 21, 2002) (finding that "when a Complainant
indicates a willingness to engage in a market transaction for the name, it does
not violate the policy for [the respondent] to offer to sell for a market
price, rather than out-of-pocket expenses"); see also Coca-Cola Co. v. Svensson, FA 103933 (Nat. Arb. Forum Feb.
27, 2002) (finding that the respondent was not acting in bad faith when it
engaged in discussions to sell its domain name registration to the complainant
after the complainant initiated the discussion).
Further, the record is also devoid of
evidence indicating that Complainant held trademark or service mark rights, let
alone rights in which secondary meaning had been acquired, at the time
Respondent registered the <jodelle.com>
domain name in January 2001. For this
reason also, the Panel finds that there is no evidence that Respondent
registered the domain name with the intent to sell it to Complainant or with
the intent to trade off of Complainant's mark.
Complainant repeatedly contends in her
Complaint and Additional Submission that Respondent is using <jodelle.com> in connection with
Respondent's business for completely unrelated services to Complainant's. Simultaneously, Complainant argues that bad
faith on the part of Respondent is proven because Respondent has intentionally
registered <jodelle.com> to
attract Internet users for commercial gain by creating a likelihood of
confusion with Complainant's JODELLE mark.
These arguments by their nature are contradictory. The evidence reflects that Respondent is
currently and has always in the past linked the disputed domain to her website
offering makeup services. Complainant
and Respondent have both argued that Complainant's music entertainment services
are not similar or confusing to Respondent's makeup services. Complainant provides no evidence that any
consumers have been confused by Respondent's use. For the above reasons, Complainant has failed to prove paragraph
4(a)(iii) as required by the Policy.
Further, in light of the Panel's finding that
Respondent registered the <jodelle.com>
domain name in connection with a bona
fide offering of goods and services, the Panel also finds that no bad faith
registration or use is present under 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 Pensacola Christian Coll. v. Gage,
FA 101314 (Nat. Arb. Forum Dec. 12, 2001) ("Because the Panel has found
that Respondent has rights and interests in respect of [sic] the domain name at
issue, there is no need to decide the issue of bad faith.").
DECISION
This Administrative Panel decides that Complainant has not proven each
of the three elements as required under the ICANN Policy in relation to the
domain name that is the subject of the Complaint. We find in favor of Respondent and the Panel concludes that
relief shall be DENIED.
Hon. Nelson A. Diaz, Panelist
Dated: February 14, 2006
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