Apple Corps
Limited v. Gods-Domains.com
Claim Number: FA0108000098464
PARTIES
The Complainant is Apple Corps Limited, London (“Complainant”) represented by Howard H. Weller, of RubinBaum LLP. The Respondent is Mark Elsis Gods-Domains.com, Siesta Key , FL (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <ethebeatles.net>, <ebeatles.net>, <ithebeatles.net>, and <i-beatles.com>, registered with Network Solutions, Inc..
PANEL
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 Roger P. Kerans as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 3, 2001; the Forum received a hard copy of the Complaint on August 6, 2001.
On August 8, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <ethebeatles.net>, <ebeatles.net>, <ithebeatles.net>, and <i-beatles.com> are 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. 4.0 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 August 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 4, 2001 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@ethebeatles.net, postmaster@ebeatles.net, postmaster@ithebeatles.net, postmaster@i-beatles.com by e-mail.
The Forum received an incomplete response on September 4, 2001. Specifically, it failed to comply with ICANN Rule 5(b), and as such the Panel has discretion whether or not to consider this Response. Having regard to all the circumstances I will consider this Response.
On
September 18, 2001, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel,
the Forum appointed Hon Roger P. Kerans as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant corporation
is wholly owned by Sir Paul McCartney, George Harrison, Richard Starkey (p/k/a
Ringo Starr) and Mrs. Yoko Ono Lennon. It is the successor in interest to The
Beatles, the most famous group of popular musicians of all time, and is the
sole and exclusive owner of the rights in and to the name, likeness and
performances of The Beatles.
The Beatles enjoy an
exceedingly valuable reputation and tremendous goodwill as a result of (a) the
extensive sales and advertising of hundreds of musical compositions and
recordings bearing The Beatles name; (b) the fame and acclaim surrounding the
musical services of The Beatles and the popularity of the motion pictures in
which The Beatles have appeared; (c) the widespread public recognition of the
name The Beatles and the association of that name with the individual owners of
Apple; and (d) the high quality and nature of The Beatles' musical
compositions, musical recordings and musical services.
Through The Beatles' efforts and professional activities, the substantial use of The Beatles name, the hugely successful sales of goods and services bearing The Beatles name, and the world-wide publicity that The Beatles have received and continue to receive, THE BEATLES trademark has undoubtedly acquired secondary meaning and is a strong trademark worthy of the broadest scope of protection. The Beatles' name is distinctive and famous and is widely recognized throughout the world.
Gods-Domains.com is a web
site devoted to the sale of domain names.
Gods-Domains.com is owned and operated by an individual named Mark Elsis
(“Elsis”). Elsis also operates a web
site called LOVEARTH.net which purports to be an environmental organization
that has, as its objective, the prevention of the destruction of the rainforests
and of mankind. Elsis also operates a
variety of other websites, including celebrity-websites.com, that
specifically target celebrities.
Through his web sites, Elsis owns hundreds of celebrity domain names
(among the thousands of other names owned by him) including six other
iterations of The Beatles' name in addition to the domain names at issue here.
The purported purpose behind the Respondent's registrations of THE BEATLES
domain names as well as the registration of hundreds of other celebrity names
is to obtain an endorsement of Elsis’ causes.
Elsis explains that
365
top level domain names have been developed into websites for most Earth
Conscious Celebrities . . . . [W]e ask that the celebrities . . . read and understand the most important study
there is on Earth: Rainforests
Biodiversity.
Elsis also writes a letter
addressed to "Dear Celebrity" which states, in relevant part, that,
through his LOVEARTH.net, he has registered the many celebrity names "in
order to raise the consciousness about . . . Rainforests Destruction" with
the intent that "when these Eco Celebrities understand the true
ramifications they will help bring this critical study to the forefront of
human consciousness . . . . something nearly impossible do to [sic] in today's corporate-owned
media." Thus, rather than using legitimate media channels, Elsis is
"trying to get to the top people throughout the world through improper
means in order to urge them to read Elsis' essay on the destruction of the
rainforests in exchange for the transfer of their domain names. In this regard,
Elsis has attempted to obtain meetings and other forms of assurance from the
individual Beatles regarding support for his environmental causes in exchange
for the transfer of the domain names that are the subject of this Complaint.
At one time, Respondent also
owned numerous domain names comprising various iterations of the names of Sir
Paul McCartney, George Harrison and Ringo Starr. On April 19, 2001, Complainant filed ICANN complaints against
Elsis, d/b/a LOVEARTH.net (as well as against another d/b/a used by Elsis)
seeking the transfer of these domain names and on June 4, 2001, panels
appointed by the National Arbitration Forum rendered decisions ordering the
transfer of the domain names to the Complainants. Significantly, these decisions fully detail the illegitimate
interests of Elsis in the domain names as well as his bad faith
Another factor evidencing
bad faith is Respondent's calculated attempt to foreclose Complainant from
using its own trademark as a web address on the Internet. ICANN Policy 4(b)(ii). In this regard, as discussed above, Elsis
has registered 10 iterations of The Beatles' name as domain names. Significantly, previous ICANN panels have
determined that efforts by a Respondent to capture more than one variation of a
Complainant's trademark is evidence of bad faith. See, e.g., Sanrio Co. Ltd.
v. Neric Lau, D2000-0172 (WIPO
Apr. 20, 2000); The Stanley Works,
Inc. v. Camp Creek Co., Inc., D2000-0113 (WIPO Apr. 13, 2000) (noting that
such a pattern is evidence of "classic cybersquatting").
It has been specifically held that registration,
followed by non-use, can constitute bad faith on the part of a registrant. See
Withers v. Dominico et al.,
D2000-1621 (WIPO Jan. 28, 2001), and cases cited therein.
RESPONDENT
The Respondent filed a joint
Response to this claim and to a claim of even date against Lovearth.net
respecting its use of these names: “thebeatles.org”, “the-beatles.org”,
“the-beatles.net”, “ethebeatles.com”,
“ibeatles.com”, and “ithebeatles.com.”
This is reported as Apple Corps Limited v. LOVEARTH.net, FA98812 (Nat.
Arb. Forum Sept. 25, 2001).
With respect to this Complaint, he says only that, because of a clerical error, these names were registered under Gods-domain.com instead of Lovearth.net.
I accept however that the responses made in the sister claim were intended by him to apply also to this claim. They are summarized in the Decision in the other claim.
FINDINGS
The Complainant filed another Complaint involving Mr. Elsis. I refer to Apple Corps Limited v. LOVEARTH.net FA98812 (Nat. Arb. Forum Sept. 25, 2001). The complaints were filed the same day, and the Respondent made, as I have noted, one response to both claims. Neither party sought consolidation, so it was necessary to open separate proceedings. No doubt because the Complaints are similar and the defenses are identical, both were assigned to the same Panelist, and I considered the cases together. All the reasons given in the Findings in Apple Corps Limited v. LOVEARTH.net FA98812 (Nat. Arb. Forum Sept. 25, 2001) apply equally here. I see no reason to repeat them.
Is this claim only about a clerical error?
I do not accept that installation of the names on a website devoted to the sale of domain names was a clerical error. If that were so, the respondent could and would readily have made a change long before the complaint was filed. These names were registered in 1999, and no change was ever made. I draw the obvious inference that the names were put on the Gods-domain.com website for the purpose of sale.
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 names <ethebeatles.net>, <ebeatles.net>, <ithebeatles.net>, and <i-beatles.com> all are confusingly similar to the musical trade name “The Beatles”.
It has been repeatedly held that minor alterations and additions are not likely to eliminate confusion. See Bloomberg L.P. v. Stanford Asset Mgmt., FA 97257 (Nat. Arb. Forum June 19, 2001) (the addition of the letter “i” to Complainant’s BLOOMBERG mark makes the <ibloomberg.com> domain name confusingly similar); International. Data Group, Inc. v. Maruyama & Co., Ltd., D2000-0420 (WIPO June 26, 2000) (finding that the domain name <ecomputerland.com> is confusingly similar to Complainant’s mark, COMPUTERLAND); and Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).
Rights or
Legitimate Interests
The right of the shareholders of the Complainant to the exclusive use of their famous musical trade name is beyond rational dispute.
The Respondent has demonstrated no pre-existing right to use the name “Beatles”. And the Respondent has offered no rational basis why he should have any right or interest in trying to sell the challenged domain names.
In any event, even if I were to accept the Respondent’s contention that these names should be assessed as though they were tied to his Lovearth.net site not his God’s-domain.com site, the claim would nevertheless succeed on this point for the reasons given in the decision in the sister matter.
I conclude that the Respondent has no legitimate interest or right in the name “Beatles”.
Registration and
Use in Bad Faith
Where the respondent is perfectly well aware of the
interest in the name on the part of the
Complainant, it manifestly is bad faith within the meaning of the UDRP to offer
for sale domain names respecting which one has no legitimate interest and which
merely trade on an well-known name, and respecting which no valid web-site is
organized. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the “domain names are so obviously connected with
the Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”); see
also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
(finding that the Respondent demonstrated bad faith where the Respondent was
aware of the Complainant’s famous mark when registering the domain name as well
as aware of the deception and confusion that would inevitably follow if he used
the domain names).
DECISION
I direct that the names <ethebeatles.net>, <ebeatles.net>, <ithebeatles.net>, and <i-beatles.com> be transferred to the Complainant.
Hon. Roger P. Kerans, Panelist
Dated: September 25, 2001.
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