Richard Starkey v. Mr. Bradley
Claim Number: FA0612000874575
Complainant is Richard Starkey (“Complainant”), represented by Stephen
J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ringostarr.mobi>, registered with Go Daddy Software, Inc.
Each of 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.
Hon. Sir Ian Barker, Hon. Tyrus R Atkinson, Jr. and Mr David H. Bernstein as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2006.
On December 22, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <ringostarr.mobi> domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 January 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 23, 2007 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on January 19, 2007.
The National Arbitration Forum received a timely Additional Submission from Complainant on January 24, 2007, and determined it to be complete and in compliance with Supplemental Rule 7. A timely Additional Submission was received from the Respondent on January 29, 2007. It was determined to be complete and in compliance with Supplemental Rule 7.
On January 26, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker, as Presiding Panelist and Tyrus R. Atkinson, Jr. and David H. Bernstein as Panelists.
Because Complainant’s Additional Submission responded to statements in the Response that Complainant could not have anticipated (including with respect to Respondent’s intentions to operate a fan site), the Panel decided to consider this submission. See, e.g., eeParts, Inc. v. E.E. All Parts Corp., FA 481753 (Nat. Arb. Forum July 14, 2005). In order to ensure that the parties are treated equally as required by Rule 10(b), the Panel also considered Respondent’s supplemental submission. See, e.g., Alain-Martin Pierret v. Sierra Technology Group LLC, FA 472135 (Nat. Arb. Forum July 1, 2005).
On January 31, 2007, Complainant filed a further submission which had not been sought by the Panel. On February 8, 2007, Respondent filed a further submission which also had not been requested by the Panel. These documents were received outside of the time specified in the Supplemental Rules and did not add any new facts or legal arguments that could not have been addressed in earlier submissions. Accordingly, the Panel, in the exercise of its discretion, declined to consider them. See, e.g., INVESTools Inc. v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006).
In light of the parties’ supplemental submissions, pursuant to Rule 10(c), the Panel extended the date for expected decision from February 9 to February 12, 2007.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Mr. Richard Starkey, is an internationally famous musical
artist who performs under the distinctive stage name and mark of RINGO
STARR. He is one of the surviving
members of the Beatles who all came from
Respondent registered the disputed domain name on October 6, 2006. Complainant gave him no rights to use the name. The domain name currently directs to a website with a search engine and with links to other sites selling various products and services.
Respondent has registered the disputed domain name in bad faith in an attempt purposely to attract internet users seeking Complainant’s goods and services online. He derives benefit by receiving “click-through” fees for redirecting internet users on the <godaddy.com> website.
He is passively holding the name which constitutes evidence of bad faith. The fact of registration of the disputed domain name of such a well-known celebrity is evidence in itself of bad faith registration and use. See Dame Elizabeth Taylor and Others v. Day After, FA 653586 (Nat. Arb. Forum Apr. 14, 2006). Complainant cited precedents under the UDRP where the registration of a trademark as a domain name and without any other word is indicative of bad faith registration and faith.
Respondent agrees with Complainant’s contentions concerning the fame of Complainant and of his mark and also that he owns the registered trademarks.
The disputed domain name is registered as the address for a “mobile specific website” currently under development. When published, the website will be a free-to-view text-based and factual fan site for a mobile platform. It will be a non-commercial reference point for all fans who wish to obtain information on Complainant through a mobile internet platform. Completion of this project has not yet occurred for a number of technical reasons.
The disputed domain name was acquired less than three months before the Complaint was filed. There has been insufficient time to complete the technical requirements for the website to be yet functioning.
In the meantime, the site which is registered with <godaddy.com> was automatically redirected by Go Daddy for its own commercial gain. Respondent has no commercial or revenue relationship with Go Daddy and does not benefit financially from the webpage which is a defaulted setting by <godaddy.com> for all new domain name registrations.
The top of the web page clearly indicates that the disputed domain name is parked free, courtesy of <godaddy.com>. Respondent claims that at the time of registration, this parking practice of Go Daddy was not made clear to him. Had it been so, he would have taken action to prevent the issue arising.
Respondent has a legitimate interest in the creation of a free-to-use textual, factual, non-commercial fan site for this mobile platform. He intends to provide a complete chronology of the life and work of Ringo Starr. A statement will be placed on the website so as not to mislead visitors or tarnish the mark and a link will be made to the Complainant’s primary website of <ringostarr.com>.
He cites the case of Richard Starkey v. LOVEARTH.net, FA 97089 (Nat. Arb. Forum June 4, 2001). At that time the trademark registrations were not in place and the case focused on Mr. Starkey’s common law trademark status.
Respondent does not intend to use the disputed domain name in violation of Complainant’s mark.
Respondent acknowledges that he did have knowledge of Complainant’s rights in his trademarks but these rights were inapplicable to the proposed use of the disputed domain name. Respondent has made preparations to use the disputed domain name by setting in motion preparations for the website. Respondent did not, however, disclose any details concerning those preparations because “they involve the development of new and complex technology for the mobile platform, which is commercially sensitive and still under development.”
He did not act in bad faith. There has been no purposeful action to attract internet users to the website under the disputed domain name. He has received nothing for the “click-through” fees. Other cases cited by Complainant are not relevant. In some, there had been a lengthy delay after registration of the domain name.
Respondent has not attempted to sell the disputed domain name, as happened in the Elizabeth Taylor case, and he has no intention of selling it. He has not registered the disputed domain name in order to prevent Complainant from reflecting his mark in the disputed domain name. There is no intention to create a likelihood of confusion or source of sponsorship or affiliation of endorsement. The intended use is for a non-profit, information-based text fact site. Because there is no equivalent to .org for the mobile interface, .mobi is platform-specific and must cater for both commercial and non-commercial uses.
Complainant should have taken advantage of the “sunrise” period and registered its .mobi name then. It has not put to use the domain name <ringo-starr.net> transferred as a result of the LOVEARTH.net case.
Respondent has no history of serial cybersquatting, unlike respondents in other decisions under the Policy. In several of the decisions quoted by Complainant, the respondents failed to respond.
C. Complainant’s First Additional Submission
Complainant notes that Respondent acknowledged its rights to the mark and name and that he had knowledge of them prior to registration of the disputed domain name.
Respondent must establish rights or legitimate interests in the disputed domain name. The onus is on him under paragraph 4(c) of the Policy. He has not discharged this onus.
Respondent acknowledged that his actual knowledge of the international fame of Complainant’s and his mark was his primary motivating factor in registering the disputed domain name. A number of decisions were cited to show that registration of a domain name, incorporating a famous mark with knowledge of Complainant’s rights in the mark, is evidence in itself of bad faith registration and use.
Complainant’s investigations show that Respondent has registered other celebrity domain names including <keithmoon.mobi>, <charliewatts.mobi>, <davidgilmour.mobi>, <robertplant.mobi> and <jimmypage.mobi>. None of these domains is linked to any active website.
Accordingly, Complainant submits that Respondent, as a
Respondent’s statements concerning his intentions for the site are self-serving: particularly, his assertions that the site will be non-commercial is not credible. See Stoneygate 48 Limited and Wayne Mark Rudy v. Hew Marshall, D2006-0916 (WIPO Oct. 6, 2006) where the Panel said:
The Panel has no idea what the Respondent means by “non-commercial fan site” and “…in any event the Panel is unable to accept that the Respondent had no eye to the potential commercial benefit.
This quotation is particularly apposite, given that Respondent has registered other celebrity domains. Respondent does not state when he intends to launch the site. It makes no sense to wait until he actually uses the name. Inevitably, such use would create confusion, as described in the Policy. Given the undisputed international recognition and fame of the RINGO STARR mark, it is inconceivable that Respondent could use an identical domain name in any manner which would not infringe Complainant’s rights. It would therefore be irrational to wait until Respondent uses the disputed domain name before the Panel determines whether it is registered or used in bad faith. Any disclaimer would not be effective.
Complainant mentioned other NAF and WIPO decisions where panels have considered that fan sites cause confusion as to their source, sponsorship, affiliation or endorsement, vis a vis the celebrity. See George Harrison v. LOVEARTH.net, FA 97085 (Nat. Arb. June 4, 2001).
Respondent provided inaccurate WHOIS information at the time of registration. He identified himself in the Response by his full name and provided his personal email address. However, at the time of registration, the WHOIS information showed the registrant as “Mr. Bradley” with an email address of .firstname.lastname@example.org”. This is further evidence of bad faith registration and use.
D. Respondent’s First Additional Submission
Respondent relies on the majority view in Bruce Springstein v. Jeff Burgar & Bruce Springstein Club, D2000-1532 (WIPO Feb. 7, 2001) and Edward van Halen v. Deborah Morgan, D2000-1313 (WIPO Jan. 4, 2001), as upholding the right of individuals to create and maintain as free-to-use fan sites, using domain names which consists entirely of the complainant’s mark.
A delay in a website launch is not in itself evidence of bad faith, given that preparation is needed. See Wal-Mart Stores Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477 (WIPO July 25, 2001).
Respondent acknowledges that he owns the .mobi domain names referred to in Complainant’s Additional Submission. He has some 400 domain names not related to rockstar fan-sites. His extensive .mobi portfolio will provide tourist and educational information over the mobile platform. He is developing a new and genuine technology platform commercially to exploit the non fan-site domains only. The technology will be used without commercial gain for the fan-sites of the persons mentioned by Complainant.
The development of the rock star sites is:
[E]ssentially a hobby for the Respondent and his co-workers who are fans of the rock stars concerned.
The fan sites will only benefit the celebrities and they will contain only factual information and be no threat to any official site. He is not a cyber-squatter under the Lanham Act. Complainant has given no evidence to support his concern about the proposed site being commercial.
Respondent’s reason for not using his personal email address is to avoid being spammed.
There are other trademarks combining the words RINGO STARR.
The .mobi TLD is unique and should be differentiated from .org, .com, .net, when comparing the disputed domain name with the trademark.
Complainant is internationally known and has
a worldwide reputation as a member of the Beatles – arguably the best-known
musical grouping of the 20th Century. He owns
Respondent was given no rights by Complainant to use Complainant’s mark.
Respondent is not commonly known as Ringo Starr.
The Respondent registered the disputed domain name in September 2006. He alleges that he is to provide on the site a non-commercial fan club which will not seek to detract from the mark of Complainant. This site is not yet operational. No evidence of “demonstrable preparations” has been given.
Respondent has registered .mobi domain names using the names of other musical notables.
In the meantime, the relevant site has been “parked” by Godaddy.com with a reference to “click-through” sites.
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.
There is no doubt that the disputed domain name is identical to Complainant’s mark, both the registered marks and his common law mark. Respondent does not dispute this. Accordingly, the first limb of the Policy is made out.
The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name. See Mansueto Ventures LLC v. Witte, D2006-1479 (WIPO Jan.19, 2007) (<inc.mobi>). It is irrelevant that the Complainant did not avail itself of the .mobi “sunrise” registration. Its right to file a complaint under the UDRP is unaffected.
Complainant gave Respondent no rights. It therefore falls to Respondent to come forward with evidence showing that he comes within one or other of the exceptions in paragraph 4(c) of the Policy. Respondent must show in terms of Paragraph 4(c)(i) either that he has made demonstrable preparations to use the disputed domain name for a legitimate commercial offering of goods and services, or that, in terms of Paragraph 4(c)(iii), he is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark. Contrary to the suggestion in Respondent’s Additional Submission, the onus is on Respondent to come forward with evidence that he comes within Paragraph 4(c), though the burden of proof ultimately remains on Complainant.
Whilst the Panel accepts that three months may not be a long enough time within which to set up a sophisticated website, the Panel finds that Respondent has not satisfied its obligation to come forward with evidence showing at least demonstrable preparations towards the creation of a noncommercial fan site. Thus, regardless of whether use of the disputed domain name for such a site could constitute a legitimate interest, Respondent’s failure to show demonstrable preparations dooms its arguments with respect to the second limb of the Policy.
Respondent has given no evidence to show what were the “demonstrable preparations” taken between September 25, 2006, when the disputed domain name was registered, and December 21, 2006, the date the proceedings were filed. No business plan was produced. No documentary evidence was submitted showing efforts by Respondent to create a fan site. No affidavit nor declaration under penalty in support of his contentions was provided, as is common. Such would have made his assertions more credible. In the absence of such evidence, Respondent’s alleged intention to develop a legitimate interest in the disputed domain name is insufficient to defeat Complainant’s evidence that the use is unauthorized. See Edward van Halen v. Deborah Morgan, D2000-1313 (WIPO Jan. 4, 2001).
The Panel considers, after considering the submissions and precedents, that the Respondent cannot succeed in showing that he comes within Paragraph 4(c) of the Policy because he has not shown demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.
In the Panel’s view, Respondent has not discharged the onus under Paragraph 4(c) and the second limb of the Policy Paragraph 4(a) is proved.
Registration and Use in Bad Faith
Complainant does not allege that Respondent has attempted to sell the disputed domain name to Complainant, that Respondent is preventing Complainant from reflecting its mark in a corresponding domain name, or that Respondent is a competitor trying to disrupt Complainant’s business. Rather, its allegations of bad faith focus on Respondent’s alleged registration of the disputed domain name for the purpose of intentionally attracting Internet users to Respondent’s website for commercial gain, by creating a likelihood of confusion as to the source, sponsorship affiliation or endorsement by Complainant of Respondent’s website.
Although the bad faith factor is distinct from the legitimate interest factor, the two are intertwined in this case. That is because, in assessing whether the Respondent’s registration and use of the disputed domain name is in bad faith, the Panel needs to decide whether the Respondent has the right to operate a fan site at this the disputed domain name. In other words, if the Respondent may appropriately run a fan site at the disputed domain name, then its registration and use of the disputed domain name would not be bad faith, per se (though any future commercialization of this website would give rise to a new claim for cybersquatting). Alternatively, if the Respondent has no right to operate a fan site at the disputed domain name, then the registration and use of the disputed domain name for such a fan site would constitute bad faith.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, this is an issue on which panels are split. Some panels believe that an active, noncommercial fan site may be a legitimate interest; others believe that a fan does not have the right to express his or her views, even if positive, on a fan site that uses a domain name that is identical to the celebrity’s trademark. The Panel must thus directly face the question of whether the use of the disputed domain name for an unauthorized fan site can constitute a legitimate interest.
The juxtaposition of the timing of the introduction of the .mobi suffix and the registration of a domain name of such an internationally famous person as Ringo Starr indicates a high degree of opportunism. The fact that the website resolves to ‘click through’ other sites is also a factor when assessing bad faith in the round. The fact that the Respondent has also registered .mobi names for other British musicians casts doubt on his statement that he is not in the business of cyber-squatting.
In the view of the majority of the Panel, there is an inference that the Respondent registered and used the disputed domain name in bad faith. The inference comes from his admitted knowledge of the worldwide fame of Ringo Starr and the fact that he registered this name so soon after .mobi registrations were permitted.
It would be natural for persons to access a website using the disputed domain name thinking that they would find some connection with Ringo Starr and/or his merchandise available through that name. Finding a website which is an unofficial fansite will create confusion and a false association in the minds of internet users.
The majority of the Panel agrees with the cases cited by the Complainant, particularly the Elizabeth Taylor, supra, and the Stevie Wonder case, i.e. Stevland Morris a/k/a Stevie Wonder v. Unofficial Fan Club, FA 453986 (Nat. Arb. Forum June 22, 2005). These cases show that the mere fact of registration of a famous name is in itself evidence of bad faith.
The majority also disagrees with the majority in the Bruce Springstein decision (quoted by the Respondent) and prefers the view of the minority. The words of the dissenting Panelist there are appropriate here, with the necessary modifications:
Given a vast array of information on the performer Bruce Springstein the internet user is more likely than not to associate <brucespringstein.com> with commercial activity and with an official domain name, resolving to an official website.
There is ample authority that knowledge of a
famous mark at date of registration can be evidence of bad faith registration
and use. See, e.g., Stevie Wonder, supra; Hugh Jackman v. Sun, FA 248716
(Nat. Arb. Forum May 10, 2004); David
Gilmour Music Overseas Ltd v. Cenicolla, D2000-1450 (WIPO Jan. 22, 2001); Bayerische Motoren Werke AG v.
Examples of the contrary view are Britannia Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 12, 2001) (where the domain name <britanniabuildingsociety.org> was used for a criticism site) and Howard Jarvis Taxpayers Association (HJTA) v. McCauley, D2004-0014 (WIPO Apr. 22, 2004) (<hjta.com> used as a criticism site). An example of a domain name which incorporated a famous trademark plus another word is Ryanair Ltd v. Coulston, D2006-1194 (WIPO Dec. 12, 2006) where, in a case involving <ryanaircampaign.org>, a criticism site, the Panel found a legitimate interest and no proof of bad faith. See also Covance Inc v. Covance, D2004-0206 (WIPO Apr. 30, 2004) where <covancecampaign.com>, involving European parties, was found to be a legitimate commercial use.
The Panel in both the HJTA and Ryanair cases discerned a distinction between UDRP decisions involving US parties where a more robust view of “free speech” rights was taken, and those where the parties were UK citizens or citizens of elsewhere in the European Union or of the British Commonwealth.
In Tridos Bank NV v. Dobbs, D2002-0776 (WIPO Oct. 3, 2002), it was held that even although the respondent may have had a genuine grievance, it could not use the English complainant’s mark in its domain name without adornment. To similar effect is British Nuclear Fuels Plc v. Greenpeace International, D2001-1318 (WIPO Jan. 10, 2002) where it was held, in a case involving British and Dutch parties, that the right to use free speech to criticize is different from the right to use another’s trademark in a domain name.
Under the Nominet system for UK names, (which
is not the same system as the UDRP), an Expert held in Ryanair Ltd v. Michael Coulston (Nominet DRS 3655) that the
registration of a trademark as a domain name for a criticism site was not a
“fair” registration since the use of an identical domain name made confusion
likely. This case exemplifies the legal
approach in the
In the present case, the majority of the Panel prefer the view that the registration of a trademark as a domain name without further adornment is likely to cause confusion to internet users and therefore bad faith is shown.
In the Panel’s view, therefore, the Respondent has registered and uses the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ringostarr.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker (Presiding) Panelist
Hon. Tyrus R. Atkinson Panelist
Dated: February 12, 2007
I join most of the majority’s decision. For the reasons cogently stated by my fellow panelists, I agree that Complainant has trademark rights, that the domain name is identical thereto, and that Complainant has demonstrated that Respondent has failed to show demonstrable preparations towards the creation of a fan site, and thus that Complainant has established that Respondent lacks a legitimate interest in the domain name. However, I do not agree with the majority’s conclusion with respect to bad faith. Accordingly, I write separately to indicate my dissent from that one part of the majority’s decision.
As my learned co-panelists have noted, the question of bad faith in this case turns on the legal question of whether Respondent could lawfully use the domain name for a non-commercial website. As the majority also notes, and as identified by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, this is a question on which panels are split. In addition, as the majority accurately notes, a number of decisions (including Howard Jarvis Taxpayers Association v. McCauley, D2004-0014 (WIPO Apr. 22, 2004) and Ryanair Ltd. v. Coulston, D2006-1194 (WIPO Dec. 12, 2006) have tried to reconcile the disparate views on criticism sites (which apply with equal force with respect to fan sites, since fanatics are just the flip side of critics) by noting that, when US law applies, free speech and fair use issues tend to favor allowing the use of a criticism (or fan) website at a domain name address consisting of a trademark plus a top level domain (such as <ringostarr.mobi>, or some other domain name in the form of “trademark.tld”) whereas, when European legal principles apply, such domain names may not be permitted unless there are additional words indicating that the site is not the authorized site of the trademark owner (e.g., ringostarrfansite.mobi).
parties in this case are British, one might say that British legal principles
should apply. If that were the case, a
panel might conclude that there is no right in
In this case,
though, it is not appropriate to look to British legal principles. That is because Complainant has provided a
Having concluded that the United States view of fan sites should control, I would hold that, even though Respondent has not shown demonstrable preparations towards his fan site, he appears to have the right to lawfully launch a noncommercial fan site at the domain name ringostarr.mobi in the future, and thus the mere registration of that domain name is not bad faith. See Edward van Halen v. Morgan, D2000-1313 (WIPO Jan. 4, 2001). If Respondent were to follow through on that plan, and launch a noncommercial website, it could not constitute bad faith use under the Policy because a finding of bad faith (at least on the basis on which the majority rests its decision) requires a showing of “commercial gain.” In the absence of any other evidence of bad faith (and there is none here), I would find that Complainant has not proven bad faith registration and use. (I would add, though, that if Respondent were to passively hold the domain name without launching a fan site after a reasonable period of time, that might well constitute bad faith as it would support the inference that Respondent registered the domain name for some illegitimate reason; similarly, if Respondent were later to use the domain name for purposes other than a wholly noncommercial fan site, it similarly would support an inference that the original registration was not in good faith after all; in both cases, I would thus allow a case to be refilled in light of the changed circumstances).
Accordingly, and with the complete respect for my co-panelists, I respectfully dissent.
David H. Bernstein, Panelist
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