DECISION

 

The Estate of Mercer K. Ellington v. A. C. Lichtenstein / Ideal Entertainment Inc

Claim Number: FA2308002059639

PARTIES

Complainant is The Estate of Mercer K. Ellington ("Complainant"), represented by Richard J. J. Scarola of Scarola Zubatov Schaffzin PLLC, New York, USA. Respondent is Ideal Entertainment Inc ("Respondent"), represented by A. C. Lichtenstein, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <thedukeellingtonorchestra.com> and <dukeellingtonorchestra.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge he has no known conflict in serving as Panelist in this proceeding.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 29, 2023; Forum received payment on August 29, 2023.

 

On August 30, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <thedukeellingtonorchestra.com> and <dukeellingtonorchestra.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On September 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@thedukeellingtonorchestra.com and postmaster@dukeellingtonorchestra.com. Also on September 5, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on September 25, 2023.

 

On September 26, 2023, pursuant to the Parties' request to have the dispute decided by a single-member Panel, Forum appointed Fernando Triana, Esq., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant owns the trademark THE DUKE ELLINGTON ORCHESTRA with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,677,799, registered January 21, 2003), among others.

 

Any attempt to disassociate the Orchestra domain names from the Orchestra itself would lead to confusion among the many fans and followers.

 

The possibility for mischief and harm by an unknown person or entity controlling these disputed domain names is substantial.

 

Respondent is former outside management of Complainant.

 

Respondent improperly obtained the disputed domain names when it registered them on behalf of Complainant.

 

Respondent does not have legitimate rights to the domain names.

 

Respondent is not using the disputed domain names.

 

Respondent is offering the disputed domain names for sale at USD$10,000 each.

 

Having information about the Orchestra's tours and booking availability easily accessible to the public, or by potential bookers or other business partners, at the website they are accustomed to checking, is critical to Complainant. Depriving that access is a bad faith attempt to harm the Orchestra.

 

B. Respondent

Respondent registered the disputed domain names with knowledge of the trademark owner.

 

The disputed domain names were not created for the use of Complainant.

 

The disputed domain names redirected to Respondent's website and were created to promote Respondent's business.

 

Respondent stopped the redirection of the disputed domain names to avoid any appearance of confusion.

 

Respondent owns and sales other domain names and has proven a sale for USD$2,500.

 

Respondent resigned as Complainant's manager in 2022.

 

Respondent is willing to negotiate a fair deal to transfer the disputed domain names.

 

The dispute domain names were registered and paid by Respondent.

 

C. Complainant's additional submission

Respondent did not provide any evidence indicating that Complainant provided any rights to the disputed domain names.

 

Respondent still identifies itself as Complainant's manager and agent, despite that its role ended in 2022.

 

As manager and agent Respondent knew of Complainant's trademarks.

 

FINDINGS

Complainant owns the trademark THE DUKE ELLINGTON ORCHESTRA with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,677,799, registered January 21, 2003), among others.

 

Respondent registered the disputed domain name <dukeellingtonorchestra.com> on March 26, 2008, and the disputed domain name <thedukeellingtonorchestra.com> on August 16, 2023.

 

Respondent knew of Complainant rights before registering the disputed domain names.

 

Respondent has never been legitimately known by the trademark THE DUKE ELLINGTON ORCHESTRA.

 

Respondent knew and confessed (page 3 to the Response) that the use of the disputed domain names created confusion among the users.

 

Respondent registered and uses the disputed domain names in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 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.

 

Identical and/or Confusingly Similar

Complainant owns the trademark THE DUKE ELLINGTON ORCHESTRA with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,677,799, registered January 21, 2003), among others.

 

i)                      Existence of a trademark or service mark in which Complainant has rights

 

Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of trademark rights. As a matter of general principle, industrial property rights are typically acquired by registration before a competent office.

 

The generally accepted definition of a trademark involves the concept of a distinctive force as the most relevant element. It is this "distinctiveness" that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force and the owner is granted with an exclusive right over the trademark, which entitles him or her to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

 

In this case, Complainant owns the trademark THE DUKE ELLINGTON ORCHESTRA with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,677,799, registered January 21, 2003), among others.

 

This information appears to be incontestable and conclusive evidence of Complainant's ownership of the cited trademark and the exclusive right to use it in connection with goods and services of international classes 9, and 41. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.

 

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark THE DUKE ELLINGTON ORCHESTRA for purposes of Paragraph 4(a)(i) of the Policy.

 

ii)                      Identity or confusing similarity between the disputed domain name and Complainant's trademark

 

Complainant alleges that the disputed domain names are confusingly similar with Complainant's trademark THE DUKE ELLINGTON ORCHESTRA.

 

In the first place, before establishing whether or not the disputed domain names <thedukeellingtonorchestra.com> and <dukeellingtonorchestra.com> are confusingly similar to Complainant's trademark THE DUKE ELLINGTON ORCHESTRA, the Panel wants to point out that the addition of generic top-level domains (gTLDs), e.g., ".com," ".net," ".edu," or ".org", may be disregarded when determining if the disputed domain name is identical or confusingly similar to the registered trademark .

 

UDRP Panels have unanimously accepted that the inclusion of the ".com" gTLD in a disputed domain name may be disregarded in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, D2000-0477 (WIPO July 25, 2000), the panel stated:

 

"The 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, '.com' is one of only several such gTLDs, and '.com' does not serve to identify a specific enterprise as a source of goods or services".

 

The Panel considers that the reproduction of the trademark THE DUKE ELLINGTON ORCHESTRA, by the disputed domain names <thedukeellingtonorchestra.com> and <dukeellingtonorchestra.com>, is sufficient ground to establish that the disputed domain names are confusingly similar to the trademark. Moreover, as it is the first element, and it creates an impression of sponsorship, affiliation, or endorsement.

 

In this case, the disputed domain names reproduce the entire trademark THE DUKE ELLINGTON ORCHESTRA, and do not include any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain names belong to Complainant. Thus, by registering the disputed domain names, Respondent creates a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the domain name.

 

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain names are confusingly similar to Complainant's trademark THE DUKE ELLINGTON ORCHESTRA and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.

 

Rights or Legitimate Interests

a)        Prima Facie Case.

 

Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent .

 

In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:

 

"Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel's view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head".

 

Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests . If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

 

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names <thedukeellingtonorchestra.com> and <dukeellingtonorchestra.com> because of the following: i) Complainant has not authorized Respondent to use Complainant's trademarks for any purpose, neither has licensed them in any way to Respondent; ii) Any attempt to disassociate the Orchestra domain names from the Orchestra itself would lead to confusion among the many fans and followers; iii) The possibility for mischief and harm by an unknown person or entity controlling these disputed domain names is substantial; and iv) The disputed domain name creates confusion among consumers looking for Complainant.

 

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.

 

b)        Respondent's rights or legitimate interests in the disputed Domain Name.

 

Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent's rights or legitimate interests in a domain name:

 

(i)        Before any notice of the dispute, Respondent's 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; or

 

(ii)        Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii)        Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent states the disputed domain names were not created for the use of Complainant and that the disputed domain names redirected to Respondent's website and were created to promote Respondent's business.

 

Moreover, Respondent considers that Complainant consented the registration and use of the disputed domain names. However, there is no evidence of such consent, and the mere undisputed use does not represent rights or legitimate interests as required by the Policy. Furthermore, the fact of the alleged 20 years with no action from Complainant, does not represent consent or legitimize the use by Respondent.

 

Certain jurisdictions endorse the doctrine of laches which typically bars the recovery of damages incurred before the filing of a lawsuit and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief. The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. The Policy offers a limited remedy to avoid future confusion in the marketplace, and it does not contemplate that such a remedy would be unavailable because of delay in instituting a Policy proceeding. Furthermore, lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the Complainant's arguments with respect to Respondent's rights or legitimate interests in the disputed domain name, or Respondent's alleged bad faith in registering and using the domain name.

 

As laches is a defense mechanism for Respondent which finally affects the arguments regarding the elements of rights or legitimate interests in the disputed domain name and bad faith registration and use, the delay should be taken into account in those elements. Hence, we would have to review each element in order to determine whether or not the delay affected the requirements of the Policy as delay is not itself a basis to deny a claim. Consequently, the only reference to Laches is that it does not apply in this case as is not part of the Policy. 

 

Moreover, Respondent confessed to have known of Complainant's rights, nevertheless, registered the disputed domain names on its behalf and after finalizing its manager and agent relation, registered the second disputed domain name.

 

Finally, the disputed domain names are not being used, hence Respondent is not making a legitimate noncommercial or fair use of the domain names.

 

Given the above, the Panel considers the following:

 

1.        Respondent failed to prove that before receiving the written notice of the Complaint it was using or preparing a website to use the disputed domain name in connection with a bona fide offering of goods or services. 

 

2.        The use of the disputed domain names to redirect to Respondent's website, which Respondent accepted in its response, could have led to confusion, cannot be qualified as bona fide offering of goods or services. Specially since Respondent's website still promotes itself as manager and agent of Complainant, when in both the Complaint and the Response, it is clear that the relationship ended in 2022.

 

3.        Respondent did not provide any evidence supporting the absence of a trademark violation, as Complainant's trademarks remain within the disputed domain name, which create the risk of confusion.

 

Furthermore, Respondent proved that it did not need to use Complainant's trademark to promote its services, given that its own website could have and was actually used for this purpose.

 

4.        Respondent's use of Complainant's trademark as part of the disputed domain names also misleads visitors into thinking that Complainant is somehow connected to Respondent.

 

5.        Moreover, there is no evidence to support that Respondent is and/or has been commonly known by the disputed domain names.

 

6.        The fact that Complainant did not claim the disputed domain names before is not evidence of Respondent's rights or legitimate interest in them. Furthermore, Respondent never used the disputed domain names, simply redirected them to its own website.

 

7.        Finally, Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, since the use of Complainant's trademark in the disputed domain name misleads visitors into thinking that Complainant is somehow connected to Respondent.

 

This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain names.

 

Furthermore, Respondent never explained the reason for registering a domain name including Complainant's trademarks, after the management and agent relationship between the parties had ended.

 

Consequently, Respondent knew of Complainant's trademark THE DUKE ELLINGTON ORCHESTRA given the history between the parties. Yet Respondent incorporated said trademarks in the disputed domain names. Thus, Respondent used the trademark THE DUKE ELLINGTON ORCHESTRA to create a likelihood of confusion aimed to divert consumers to Respondent's offered products and services.

 

Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with as Respondent lacks any right or legitimate interest in the disputed domain name.

 

Registration and Use in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

 

(i)        Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii)        Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii)        Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv)        By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.

 

Complainant asserts that Respondent registered the disputed domain names in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement. Moreover, Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor, given the fact that it registered the second disputed domain name after the management and agent relationship between the parties had ended.

 

Respondent knew of Complainant's trademarks due to its position as manager. Nevertheless, decided to register the disputed domain names on its behalf.

 

Moreover, Respondent affirmed in its response to have resigned as Complainant's manager in 2022, and despite of that, registered the disputed domain name <thedukeellingtonorchestra.com> on August 16, 2023.

 

Finally, Respondent has acquired the domain name primarily for the purpose of selling for USD$10,000 which is a valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain names, especially since Respondent proved to have sold other domain names for USD$2,500, that is 75% less than what was requested for the disputed domain names.

 

This Panel considers that the mere fact of knowingly incorporating a third-party's trademark in a domain name constitutes registration in bad faith. See Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Direct Navigation Data Inc., WIPO Case No. D2012-1448, where the panel found: "The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent's prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel's opinion".

 

By trying to register a domain name including the trademark THE DUKE ELLINGTON ORCHESTRA offering them at a valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain names and despite being well aware of Complainant's rights, the Panel considers that Respondent has registered the disputed domain names for the purpose of disrupting Complainant's business.

 

In addition, the Panel considers that Respondent must have known that the word "THE DUKE ELLINGTON ORCHESTRA" within the disputed domain names would attract Internet users seeking Complainant's trademark, to the website from which expected to earn money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant's trademark, which is indicative of bad faith registration and use pursuant to Policy¶ 4(b).

 

Therefore, the three elements of the Policy¶ 4 are satisfied in the present case in respect to Respondent of the disputed domain name.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <thedukeellingtonorchestra.com> and <dukeellingtonorchestra.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Fernando Triana, Esq., Panelist

Dated: September 30, 2023