Troyal Garth Brooks & Blue Rose, Inc. v.
Bob Crull
Claim Number: FA0609000799367
PARTIES
Complainant is Troyal Garth Brooks & Blue Rose, Inc. (collectively, “Complainant”), represented by Barry Neil Shrum, of Harris, Martin, Jones, Shrum, Bradford & Wommack, P.A., 49 Music Square West, Suite 600, Nashville 37203. Respondent is Bob Crull (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garth.com>,
registered with Catalog.com, Inc.
PANEL
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 Panelist in this proceeding.
David E. Sorkin, M. Kelly Tillery, and Paul M. DeCicco as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 20, 2006; the National Arbitration Forum received a
hard copy of the Complaint on September 20, 2006.
On September 25, 2006, Catalog.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <garth.com>
domain name is registered with Catalog.com, Inc. and that the Respondent is the
current registrant of the name. Catalog.com,
Inc. has verified that Respondent is bound by the Catalog.com, 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 September 29, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 19, 2006 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@garth.com by e-mail.
A timely Response was received and determined to be complete on October
19, 2006.
A timely Additional Submission from Complainant was received and
determined to be complete on October 24, 2006.
A timely Additional Submission from Respondent was received and
determined to be complete on October 30, 2006.
On November 7, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed David E. Sorkin, M. Kelly Tillery, and Paul M.
DeCicco as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
Complainant Troyal Garth Brooks is an
internationally known recording artist, singer, songwriter, guitarist and
superstar. Blue Rose Incorporated is a
Tennessee corporation wholly owned by Troyal Garth Brooks.
Complainant has been exclusively, extensively and
continuously known by the name GARTH and/or GARTH BROOKS from 1981 to the
present.
Since 1988 Complainant has consistently used his
U.S. and EC trademarks and service marks in commerce. In addition, Complainant has numerous related trademarks and
services marks, specifically including GARTH BROOKS (Reg. Nos. 2,226,176 and 2,443,657),
the earliest of which has been used since 1981. The marks are used interchangeably with the GARTH marks
referenced above.
By the time Respondent registered the <garth.com>
domain name, Complainant had already expended substantial resources to develop
the goodwill associated with his GARTH marks, specifically including the GARTH
service mark.
The <garth.com> domain name is
identical in all respects to the GARTH trademark and service mark and is
therefore confusingly similar.
The evidence shows that Respondent selected <garth.com>
because of its connection to Complainant.
<garth.com> was registered to
Catalog.com as late as September 8, 2006, when Complainant retrieved the WHOIS
information for the website in preparation for filing the Complaint. On or before September 25, 2006, the
Registrant had been changed to “Bob Crull.”
This change in the name of the registrant necessitated the filing of an
amended Complaint and is strong evidence of an intent on part of both the
Respondent and the Registrar to circumvent justice and change the facts of this
case.
Respondent’s selection of the <garth.com>
domain name gives rise to the impression of an association with the Complainant
that is not based in fact and therefore creates a likelihood of confusion with
the Complainant’s GARTH marks as to source, sponsorship, affiliation, and
endorsement of its websites and/or of its products and services.
Respondent is using the disputed domain name to
disrupt the business of Complainant in as much as it admits to using the
disputed domain name for the illegitimate purpose of promoting and selling
Complainant’s trademarked goods and services.
Respondent has not created a website for the
domain name at issue, but instead intentionally uses Complainant’s GARTH trademark
and service mark to attract and drive Internet traffic to various other
commercial websites owned and hosted by Respondent or by Respondent’s
executives.
Respondent is using the domain name for
commercial gain in as much as it advertises other services, namely
<infosecureconsulting.com>, on the web page established at <garth.com>.
Respondent is using the Complainant’s GARTH
service mark to drive traffic to its website <catalog.com> where
Respondent sells products related to Complainant.
The Respondent is not commonly known by the
disputed domain name, nor does Respondent have any rights to the use of the
service mark, GARTH.
Respondent’s use of the disputed domain name and
marks falls squarely into Policy ¶ 4(b)(iv).
Respondent's use of the disputed domain name and
mark are in violation of the United States Trademark Act of 1946 (15 U.S.C.
§1125) and the United States Anticybersquatting Consumer Protection Act, as
well Complainant's common law rights of privacy and publicity.
Respondent's use of the disputed domain name is
not a legitimate noncommercial or fair use of the disputed domain name, without
intent for commercial gain and is therefore unfair trade and competition.
Respondent provides domain name hosting
services. Respondent is therefore in
the business of buying and selling high profile Internet domain names, domain
name appraisals and other domain name services. Respondent also sells various products through its website,
<catalog.com>.
After Complainant’s attorney sent Respondent a
cease and desist letter, Respondent offered to sell the disputed domain name to
both Complainant's attorney and his manager for $100,000.00. Respondent’s offer in this regard is in the
nature of cybersquatting which infers that Respondent acquired the disputed
domain name primarily for the purpose of selling, renting or otherwise
transferring it to Complainant for valuable consideration in excess of its
documented out-of-pocket expenses directly related to the disputed domain name.
By its actions, Respondent is misleadingly
diverting consumers to its domain name hosting services, <webhero.com>,
by advertising their services in conjunction with the established service mark
of Complainant. Respondent intentionally
misuses Complainant’s goodwill and mark to lure Internet users to Respondent’s
other commercial sites.
Respondent's conduct prevents Complainant from
reflecting the above-referenced mark in his corresponding domain name, and
Respondent engages in a pattern of such conduct as described in Policy ¶
4(b)(ii) and demonstrates bad faith on the part of Respondent.
Respondent's conduct demonstrates intent to
disrupt the business of Complainant, as described in Policy ¶ 4(b)(iii) and
demonstrates bad faith on the part of Respondent.
Respondent's conduct, as described above,
demonstrates an intent to attract, for commercial gain, Internet users to the
websites <catalog.com>, <webHero.com>, <crull.com>,
<infosecureconsulting.com> and others, as described in Policy ¶ 4(b)(ii)
and demonstrates bad faith on the part of Respondent.
By it actions, Respondent is tarnishing the
service mark of Complainant and preventing him from utilizing his mark. See Policy ¶ 4(b)(ii).
These facts indicate that Respondent has
registered and acquired the disputed domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration, or
utilizing it for commercial gain, and there is no reason to believe that
Respondent will not do so much in the same manner as it has done in the past.
These facts also indicate that Respondent has
intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s 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 Respondent’s website or location or of a product
or service on Respondent’s website or location.
Respondent’s blatant attempt to circumvent the
facts of this case by changing the name of the Registrant after the Complaint
had been filed is clearly evidence of bad faith and intent.
B. Respondent
Respondent contends as follows:
Respondent is not a cybersquatter but an
entrepreneur.
The disputed domain name was registered over ten
years ago on December 26, 1995.
The fact that Complainant waited so long raises
the inference that Complainant did not believe that Respondent had acted in bad
faith for all those years, and it follows that Complainant did not believe the
Disputed Domain was registered in bad faith – a fact that is fatal to
Complainant’s case since Complainant must prove that the Disputed Domain was
“registered” with a bad faith intent.
Respondent takes no position on the validity of
Complainant’s trademark.
It is undisputed that “Garth” is a common first
name and that <garth.com> incorporates this common name. Complainant does not have exclusive rights
to a trademark identical to a common personal name.
Respondent’s intent in registering the at-issue
domain name as a possible name for a son he and his wife were expecting also
establishes his legitimate interest.
In addition, Respondent’s legitimate interest is established because
“Garth” is a word in the English language.
This, in and of itself, establishes Respondent’s legitimate
interest. Complainant does not have
exclusive right to use a common word. There simply is no evidence, whatsoever,
that Respondent registered the disputed domain name for the purpose of selling,
renting or transferring it to Complainant; to prevent Complainant from reflecting
its trademark in a domain name, together with a pattern of such conduct; or to
disrupt Complainant’s business or attract customer’s seeking to purchase its
products. The fact that “Garth” is a
common man’s name, as well as a common word, weighs heavily against a finding
of bad faith. There are over 13 million
third party uses of the name “Garth” on the Internet alone. Complainant obviously does not have
exclusive rights to this word. Absent
direct proof that a common word domain name was registered solely for the
purpose of profiting from Complainant’s trademark rights, there can be no
finding of bad faith registration and use.
Complainant points to Respondent’s search engine
optimization experiment where his chief technology officer placed ads on the
web site for merchandise related to Complainant. Such content generated less than $80 and appeared 10 years after
Respondent registered the disputed domain name. There is no evidence that the Respondent attempted to mislead
users that Complainant endorsed or sponsored the web site. Users typing in <garth.com>
should not expect that it is a site affiliated with Garth Brooks.
Facts relating to a few months use of the at-issue domain name following
10 years of use in good faith – which is further implicitly acknowledged by
Complainant who failed to complain during this extended period of time – cannot
convert a good faith registration into a bad faith registration.
A further argument that Complainant makes is that
Respondent’s offer to sell the disputed domain name is an indication of bad
faith. However, Respondent was only
replying to Complainant’s inquiry to purchase it. Such a reply to an
unsolicited offer to purchase a common word domain name does not constitute bad
faith under the Policy.
Complainant alleges that Respondent’s
modification of the registrant name from Catalog.com to Bob Crull after the
proceedings were initiated constitutes bad faith. Respondent simply wanted to
correct the registration to indicate that he owned the domain name personally,
a fact corroborated by the fact that the domain name had previously been
registered in this matter. It is the
provision of “false or misleading WHOIS contact information” that constitutes
bad faith.
Respondent did not change the address or any
other contact information, so it cannot be credibly argued that Respondent was
trying to hide his identity or avoid being contacted for these
proceedings. Such a change does not
constitute bad faith under the Policy because Respondent had no intent to mislead,
which follows from the fact that the registration contact information is
accurate.
C. Additional Submissions
Complainant additionally contends as follows:
The record clearly proves that respondent does not have a legitimate interest in the <garth.com> domain name and has used the domain name in bad faith. Respondent has never conducted business using the name GARTH. His only connection with the name GARTH appears to be his past intention of naming a son “Garth.” The Respondent has documented no rights or legitimate interests in the name GARTH.
Respondent is clearly in the business of buying and selling domain names. The fact that he may not be successful is not relevant.
The fact is, while the word “Garth” is defined in an English dictionary and may be used in combination with other words, when the average consumer hears the word “Garth,” he or she thinks of the Complainant, GARTH, much like they think of the entertainers Madonna, Charo or Cher when those words are used.
The only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain. That purpose is a violation of the Policy, as well as U.S. Trademark Law.
Respondent admits that he attended college with the Complainant Garth Brooks in 1985 and admits that he is a “big fan.” This fact alone obliterates the notion that Respondent was merely picking a “common” word for his new son’s name.
Respondent also admits to being familiar with the GARTH marks, as that phrase is defined in the Complaint, prior to registering the at-issue domain name in 1995.
Selling the very merchandise to which the GARTH mark relates is, in fact, an appearance of an association with the Complainant and is not only bad faith under the Policy, but a violation of U.S. Trademark law. Contrary to Respondent’s concluding remarks, Complainant does, in fact, have the right to exclude all others from using the common word “Garth,” particularly when it relates to the goods and services for which he has obtained registration of the mark.
Respondent has offered no evidence that Complainant was even aware of the at-issue domain name until recently, when and whereupon Complainant’s attorney immediately served Respondent with a cease and desist notice.
The corporate entity Catalog.com,
Inc. as the respondent could not propose a legitimate use defense, as Mr. Crull
does, that the domain was named for a future child.
Respondent additionally contends as follows:
Complainant’s statement that Respondent offered
“several” domains for sale on <crull.com> is disingenuous. There were
just two domain names listed on that site: <garth.com>, and
<datesafe.com>.
Respondent deals with domain names every day
because he operates Catalog.com, an ICANN accredited domain name registrar. The
only domain name ever sold by Respondent was <oklahoma.com>.
Respondent’s e-mail stated that he had “other
buyers and uses.” The fact that Respondent had received other inquiries for the
disputed domain name does not mean he is in business of buying and selling
domain names. Respondent’s February 9, 2006 e-mail was not an offer to sell the
domain name and, moreover, included the statement that he would trade it for
<bob.com> or <bill.com>, which he said in jest.
The fact that Respondent knew who Mr. Brooks was
in college is irrelevant, even if that were his inspiration for selecting
“Garth” as a possible name for a son, or for registering the domain. The UDRP
is violated where a domain name is registered in bad faith.
Complainant
argues that people instantly think of Garth Brooks when they hear the name
“Garth,” like Elvis, Madonna, Cher or Charo. However, there is no evidence of
this.
Bob Crull originally registered <garth.com>.
The defense in this matter is based on that earliest registration and
Respondent was justified in changing the registration so that it reflected
this.
FINDINGS
The disputed domain name <garth.com> is identical to the
word mark GARTH, in which the Complainant has rights.
Complainant has trademark rights in the word
mark “Garth.”
Complainant does not have exclusive rights to
the name “Garth.”
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.
Complainant demonstrates trademark rights in
the disputed domain name by virtue of the trademark registration in “GARTH” and
otherwise. Disregarding the generic
top-level domain suffix, “.com”, the <garth.com> domain name is
identical to Complainant’s mark.
Because the Panel’s finding as to “bad faith” is dispositive of the present matter, the Panel declines to reach the issue of rights or legitimate interests.
Under the Policy, Complainant bears the
burden of proving both that the disputed domain name was registered in bad
faith and that Respondent has used the disputed domain name in bad faith. The Panel finds that Complainant has failed
to meet its burden of proving bad faith registration, and therefore does not
reach the question of bad faith use.
Respondent contends that when he registered
the disputed domain name in 1995, his wife was pregnant and he was thinking of
naming his son Garth. Respondent has
submitted a signed affidavit to this effect.
This claim is plausible but self-serving, and the Panel accordingly
views it with some skepticism, considering it in light of all of the
circumstantial evidence before the Panel.
However, it is the Complainant’s burden to show that the Respondent has
registered the disputed domain name in bad faith and this Complainant has not
done.
In Ciccone
v. Parisi, D2000-0847 (WIPO Oct. 12, 2000), the respondent used the domain
name <madonna.com> to reference a pornographic website. “Madonna,” like “Garth,” is a common word as
well a first name; both names serve as commonly recognized references to
well-known celebrities. In Ciccone, the panel inferred bad faith
registration from circumstantial evidence, including (1) the high purchase
price that the respondent had paid to acquire the domain name; (2) the fact that
soon after acquiring the name, the respondent used it in a manner that traded
on the complainant’s trademark rights; and (3) the respondent’s failure to
offer a plausible explanation for selecting the domain name.
None of those circumstances are present
here. In particular, the only evidence
of improper use of the disputed domain name is so brief and so distant in time
from the date on which the domain name was registered that it is of little or
no probative value in assessing Respondent’s reasons for registering the domain
name ten years earlier. The Panel
therefore finds that Complainant has failed to meet its burden of proving that
Respondent registered the domain name in bad faith.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
David E. Sorkin, M.
Kelly Tillery, and Paul M. DeCicco,
Panelists
Dated: December 1, 2006
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