Apple Corps Limited v. LOVEARTH.net
Claim Number: FA0108000098812
The Complainant is Apple Corps Limited, London, England (“Complainant”) represented by Howard Weller, of RubinBaum LLP. The Respondent is LOVEARTH.net, Siesta Key, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thebeatles.org>, <the-beatles.org>, <the-beatles.net>, <ethebeatles.com>, <ithebeatles.com>, and <ibeatles.com>, registered with Internet Domain Registrars.
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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 6, 2001; the Forum received a hard copy of the Complaint on August 6, 2001.
On August 13, 2001, Internet Domain Registrars confirmed by e-mail to the Forum that the domain names <thebeatles.org>, <the-beatles.org>, <the-beatles.net>, <ethebeatles.com>, <ithebeatles.com>, and <ibeatles.com> are registered with Internet Domain Registrars and that the Respondent is the current registrant of the name. Internet Domain Registrars has verified that Respondent is bound by the Internet Domain Registrars 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com by e-mail.
The Forum received a 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.
The Complainant requests that the domain names be transferred from Respondent to 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.
On or about August 24, 1998, Respondent registered <thebeatles.org> and <the-beatles.org>; on or about March 4, 1999, Respondent registered <the-beatles.net> and <ethebeatles.com>; and on or about June 27, 1999, Respondent registered <ibeatles.com> and <ithebeatles.com>
When accessed, Respondent's <thebeatles.org> domain name leads to a "Beatles" homepage. A glance at this site makes it clear that it merely pays lip service to The Beatles; in actuality, the unauthorized site is designed solely to accomplish Respondent's objective of promoting its environmental causes by inundating the unsuspecting Beatles fan with a variety of environmental literature totally unrelated to The Beatles. The material related to the Respondent's causes dwarfs any information connected to The Beatles and contains connections to no less than 40 links to various causes belonging to and promoted by the Respondent.
In addition to these sites, the Respondent’s “Beatles” homepage also has (1) a discussion forum where users are connected to Lovearth's discussion board where there exists a forum to discuss various of the Respondent's causes; (2) Respondent's Mission Statement which relates to environmental awareness; (3) an offer to receive the Respondent's Newsletter related to the environment and the rainforests; and (4) links to approximately 50 other "ecohumanitarian" celebrity web sites that similarly promote the Respondent's causes. None of these links are connected in any way to the Complainant.
Respondent's <thebeatles.org> web site also invites the public to correspond with The Beatles and lists addresses where individuals can write to "Paul, George or Ringo" creating the impression that Respondent's web site is officially sponsored by Complainant. In addition, the images of the individual Beatles on the “Beatles” homepage are themselves links to homepages corresponding to the individual Beatles. Once one arrives at those sites, Respondent deceitfully suggests that the public can correspond with that Beatle. In the mistaken belief that The Beatles are affiliated with Respondent's web site, fans have sent hundreds of e-mail messages to their favorite Beatle at Respondent's address. The unsuspecting public, duped by Respondent into believing that they are corresponding, for example, with Paul McCartney, has written:
Hello Paul, I hope you read this, because otherwise I'm making a fool of myself. I am fourteen and I am a big fan of the Beatles. . . . I would like to get autographs of the remaining Beatles. . . .
* * *
sir paul mccartney, i just want to tell you, that i really love the beatles and that you and john will be my favorite forever. . . . Please write back, it is really important for me.
* * *
Hi, I really love you. I hope someday I can meet you. . . . Thanks for reading!
* * *
Dear Mr. Paul McCartney, I am an almost 13 year old boy from Sioux City, Iowa . . . and can play all of your songs on the drums . . . . I would greatly appreciate if you could respond to this e-mail.
Similar emails have been written to George Harrison and Ringo Starr.
Finally, Respondent's <thebeatles.org> site also diverts the public to Elsis' gods-domains.com home page -- a site devoted to the sale of domain names owned by Elsis where he encourages offers to be made for over $50,000.
The Respondent's <the-beatles.net> and <the-beatles.org> web sites lead to the same homepage as <thebeatles.org> web site. The Respondent is not exploiting <ethebeatles.com>, <ithebeatles.com> or <ibeatles.com> at the present time. Rather, Respondent has simply reserved these domain names in order to use them as leverage in negotiations with Complainant.
LOVEARTH.net is operated by an individual named Mark Elsis ("Elsis"), who is also in the business of selling domain names for profit. Through LOVEARTH.net, Elsis operates a variety of other websites, including celebrity-websites.com, that specifically target celebrities. Elsis claims to own hundreds of celebrity domain names (among the thousands of other names owned by him) including four 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 Respondent's causes. Elsis, on behalf of Respondent, explains that
365 top level domain names have been developed into websites for most Earth Conscious Celebrities by the environmental group LOVEARTH. . . . [W]e ask that the celebrities . . . read and understand the most important study there is on Earth. Rainforests Biodiversity. (Emphasis in original).
Elsis also writes a letter addressed to "Dear Celebrity" which states, in relevant part, that LOVEARTH.net 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 and LOVEARTH.net are "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 Respondent's 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 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 Respondent in the domain names as well as Respondent's bad faith. See George Harrison v. Lovearth.net, FA97085 (Nat. Arb. Forum June 4, 2001); MPL Communications, v. Lovearth.net, FA97086 (Nat. Arb. Forum June 4, 2001); and Richard Starkey v. Lovearth.net, FA0097089 (Nat. Arb. Forum June 4, 2001).
1. The Respondent was never contacted by the Complainant to discuss anything about any of the Beatles domains.
2. The Complainant’s case lacks even one shred of evidence to back what it has said.
3. The letter written to urge celebrity endorsement merely asked for “fair market value” for the site, meaning what the Respondent had paid.
4. If John Lennon were alive he would quickly recognize this as a case of reverse hijacking.
5. Mr Elsis urges this Panel to read his studies on the risks to humanity from environmental depradation and overpopulation.
6. In 1998, and again in 1999, the spirit of John Lennon came to Mr Elsis and told him to register and put up fan sites employing some of the names now under review.
7. Lovearth and Mr. Elsis have only made legitimate noncommercial use of the names without intent for commercial gain.
8. Reference is made to a study done by Professor of Law Michael Geist called “How Bias Besets Domain name cases.” This new study proves beyond a shadow of a doubt that the playing field is not level. Reverse hijacking of domain names always favors them.
9. Fans of the Beatles are entitled to put up a website honouring them.
10. The claim violates the right to free speech of the Respondent.
11. The Beatles already own Beatles.com and TheBeatles.com, and that should be enough for them.
1. Has the Complainant proven the facts it has alleged?
The extensive materials supplied by the Complainant in support of its contentions do support them, contrary to the unspecific allegation of the Respondent to the contrary. Indeed, the key allegations are confirmed by the Respondent:
- The Complainant’s musical trade name is famous and respected;
- The Respondent employed the names in issue to attract Beatles fans to his website;
- The prime function of the site is to promote his environmental views;
- He wrote to some of the Beatles and offered to sell the domain names in issue in consideration for support for his causes and some money.
2. Has Professor Geist proven that I am biased?
The study in question purports to be a sociometric study of success rates, and draws certain inferences from this. It fails to distinguish between default cases and disputed cases, and the conclusions drawn have been challenged by other studies.
In any event, at no point in this study is there any allegation – let alone evidence - that I or any other specific Panelist is biased. Nor is there any evidence to support a reasonable apprehension of bias on the part of any Panelist.
I reject as unreasonable any suggestion I ought to recuse myself on the basis of this study.
3. Ought I to review the Respondent’s studies?
However meritorious they may or may not be, these views are not relevant to the issues in this proceeding.
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.
The names <the-beatles.net>, <the-beatles.org>, <ethebeatles.com>, <ithebeatles.com> and <ibeatles.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).
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 their name.
As best I can understand it, the claim of interest by the Respondent is as a fan of the Beatles, and a fan particularly of one former member of that group, the late John Lennon.
I accept that Mr Elsis is a fan. And I accept that fans have a legitimate interest in a website devoted to their enthusiasm. But the domain names in question do not purport merely to identify a fan website. A legitimate name for a fan website would distinguish between the admirer and the admiree, which this name fails to do. To this extent, I would not follow Springsteen v. Burgar, D2000-1532 (WIPO Jan. 25, 2001).
I accept as apparently honest Mr Elsis’s statement that he believes that he received consent and direction from the spirit of John Lennon. But this supposed encouragement is not determinative. John Lennon – dead or alive - has no right to consent to the use of a name he does not exclusively own.
The Respondent’s admitted intention, to employ the names in question to help promote his views on the environment, raises no right or interest recognized by law. With respect to the free speech claim, the US Second Circuit held that "Domain names ... per se are neither automatically entitled to nor excluded from the protections of the First Amendment, and the appropriate inquiry is one that fully addresses particular circumstances presented with respect to each domain name." See Name.Space, Inc. v. Network Solutions Inc. 202 F.3d 573, 585 (2d Cir. 2000). In my view, the determinative circumstance here is that the names employed make no effort whatever to distinguish the domain owner from the legal owner of the name, and are designed to cause confusion. See North American Wilderness Recovery, Inc. d/b/a The Wildlands Project v Citizens With Common Sense FA97058 (Nat. Arb. Forum July 1, 2001).
I conclude that the Respondent has no legitimate interest or right in the name “Beatles”. There is as a result no question here of “reverse hijacking”.
Registration and Use in Bad Faith
The Respondent has knowingly exploited the musical trade name of the Complainant in order to attract Beatles fans to his website and has intentionally led them to think they are actually visiting a site of the Beatles, and does this so that he can expose them to his environmental views. This is bad faith within the meaning of the Policy. Again, the case is very like North American Wilderness Recovery, Inc. d/b/a The Wildlands Project v Citizens With Common Sense FA97058 (Nat. Arb. Forum July 1, 2001), where I said:
In this case, I have no difficulty – assuming even that the name use was legitimate – in drawing an inference that the true purpose of its use in this case was to draw to the Respondent’s site unsuspecting members of the public who were curious about the Complainant’s project and then to influence them . . . before they realize they have not found the right site. That is the inference I draw from the design of the home page, and the absence of an appropriate disclaimer.
I agree with the Complainant that Policy paragraph 4(b) extends to non-commercial gain from use of a domain name to attract users by creating a likelihood of confusion between the impugned site and the Complainant’s mark in terms of source, sponsorship, affiliation, or endorsement.
Additionally, this case in this regard is indistinguishable from George Harrison v. Lovearth.net, FA97085 (Nat. Arb. Forum June 4, 2001); MPL Communications, Ltd. v. Lovearth.net, FA97086 (Nat. Arb. Forum June 4, 2001); and Richard Starkey v. Lovearth.net, FA97089 (Nat. Arb. Forum June 4, 2001). I adopt the reasoning in these cases.
I direct that the names the-beatles.net, the-beatles.org, ethebeatles.com, ithebeatles.com and ibeatles.com be transferred to the Complainant.
Hon. Roger P. Kerans, Panelist
Dated: September 25, 2001
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