MPL Communications Limited v. Denny Hammerton
Claim Number: FA0009000095633
The Complainant is MPL Communications Limited ("Complainant"). The Respondent is Denny Hammerton, Lutz, FL, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain names at issue are "linda-mccartney.net" registered with Network Solutions, and "lindamccartney.com" and "paulmccartney.com", registered with Bulkregister.
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 the panelist in this proceeding.
Honorable Paul Dorf (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 18, 2000; The Forum received a hard copy of the Complaint on September 18, 2000.
On September 20, 2000, Bulkregister confirmed by e-mail to The Forum that the domain names "lindamccartney.com" and "paulmccartney.com" are registered with Bulkregister and that the Respondent is the current registrant of the name.
On September 21, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "linda-mccartney.net" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions Version 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.
On September 22, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 2000 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 Respondentís registration as technical, administrative and billing contacts, and to firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
On October 12, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
The Complainant contends that domain names that are the subject of this Complaint were registered by the Respondent to capitalize on the fame of the McCartneys for his own personal gain. Also, the Complaint contends that the Respondent is merely a domain name speculator and has no regard for otherís trademark rights.
The Respondent contends that the domain names consist of common names and therefore has rights to the domain names.
The Complainant owns the rights to the common-law and registered trademarks and service marks of Sir Paul McCartney and his wife, the late Linda McCartney.
Sir Paul McCartney is a well-known international recording artist. He began his career in 1960 as a member of The Beatles Sir Paul married Linda Eastman McCartney in 1969. Linda gained her own notoriety as a photographer. She was also known as an animal rights activist, which lead her to publishing several vegetarian cookbooks as well as a series of ready-made vegetarian meals. They performed together both on recorded medium and live world tours, and also authored a collection of songs.
The Respondent has commandeered the domain names of other internationally well-known recording artists including Mick Jagger, Rod Stewart and Sean Lennon. He has also registered the domain names <jimihendrix.com>, <jethrotull.com> and <jethro-tull.com>. These domain names are based on the names and service marks of other internationally well known recording artists.
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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 domain names registered by the Respondent are confusingly similar to that of the common-law marks Paul McCartney and Linda McCartney but for the ".com" and ".net" top level domains. See Yanni Management, Inc. v. Progressive Industries, FA 95063 (Nat. Arb. Forum July 28, 2000) (holding that the domain name Yanni.com is almost identical to the Complainantís trademark YANNI, but for the .com. The Complainant holds several registered trademarks for this name, and is known as an international superstar by this name.)
Rights or Legitimate Interests
The Respondent has not presented any evidence that he has any rights or legitimate interests in the domain names. The Respondent has not made use of the domain names in connection with a bona fide offering of goods or services; nor is he, as an individual, business or other organization commonly known by any of the domain names. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" , D2000-0847 (WIPO Oct. 12, 2000) (holding that use which intentionally trades on the fame of another cannot constitute a "bona fide" offering of goods or services.)
Previously on the <paulmccartney.com> site there was a link button labeled "Click to Enter" that leads you to another domain owned by the Respondent, which includes a list of domains presumably available for sale. Several of these domains are owned by the Respondent. Also, the Respondent receives a type of credit when these "click through" advertisements are activated. This domain has also been used as in the same manner which leads the surfer to a pornographic website.
Registration and Use in Bad Faith
The Respondent has demonstrated a pattern of conduct of registering the domain names of famous recording artists and using those domain names for his own personal gain. The Respondent is using the domain names to misleadingly divert consumers for his own personal commercial gain. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" , D2000-0847 (WIPO Oct. 12, 2000) (holding that a deliberate attempt to trade on Complainantís fame for commercials purposes is evidence of bad faith.)
As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain names PAULMCCARTNEY.COM, LINDAMCCARTNEY.COM and LINDA-MCCARTNEY.NET be transferred from the Respondent to the Complainant.
Honorable Paul A. Dorf (Retired), Panelist
October 25, 2000
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