Courtney Love v. Brooke Barnett
Claim Number: FA0703000944826
Complainant is Courtney Love (“Complainant”), represented by Gregory
S. Gabriel, of Kinsella Weitzman Iser Kump & Aldisert,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kittyradio.com> and <kurtcobain.com>, registered with Go Daddy Software, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Sally Abel and Carolyn Marks Johnson as Panelists, Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2007.
On March 23, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <kittyradio.com> and <kurtcobain.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. 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 April 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 24, 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on April 24, 2007.
On May 2, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Sally Abel and Carolyn Marks Johnson as Panelists, and Richard Hill as Presiding Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant alleges that she owns common law trademark rights in the string KITTYRADIO, used on various products such as her website at the disputed domain name, dolls, an album, and animated novels. She further alleges that, being the widow of Kurt Cobain, founder and frontman of the world famous band Nirvana, she owns trademarks associated with that name.
The disputed domain names are identical to Complainant’s marks for, respectively, KITTYRADIO and KURT COBAIN.
Concerning the domain name <kittyradio.com>
Complainant is a well-known musician who formed and led the well-known band Hole and then embarked on a successful solo musical career. In 1999, she decided to create a website for her fans. She coined the word “kittyradio” for this website, as well as for use on various products created by her.
In or about 2002, Complainant requested that Respondent design the website at the disputed domain name <kittyradio.com>. Respondent was a fan of Complainant and they had met years earlier in an online discussion forum. Respondent was a competent web designer. The two parties entered into an agreement whereby Respondent furnished her personal web design services to Complainant in connection with all websites created by Complainant, in exchange for certain fees. All websites were to be 100% owned and controlled by Complainant. That is, Respondent was merely the web designer, and registered the disputed domain name as an agent for, and on behalf of, Complainant.
Respondent became difficult to work with and Complainant sought to terminate the agreement and to regain control over the disputed domain name. She so notified Respondent, but Respondent refused to comply, instead deciding to continue operating the website without Complainant’s authorization or consent.
Various negotiations meant to avoid litigation failed to result in an agreement and Respondent has refused to relinquish control of the disputed domain name and claims to own all rights in that domain name.
But, alleges Complainant, Respondent has no legitimate rights to the disputed domain name. First, she has never been known by such a name. Second, she has never made use of the website for a bona fide offering of goods or services. Rather, she has used the site to sell unauthorized merchandise related to Complainant, and to generate membership fees and advertising income for herself. Third, she has made unauthorized use of Complainant’s mark KITTYRADIO in order to attract consumers to her website for her own commercial gain. Further, the site includes links to sites that sell bootleg recordings of Complainant’s performances, as well as unauthorized video clips of Complainant’s new songs from forthcoming albums, in violation of copyright laws.
Furthermore, Respondent is causing confusion in the marketplace and is preventing Complainant from legitimately using her trademark.
According to Complainant, Respondent has engaged in a pattern of registering domain names, which are associated with Complainant. She formerly maintained the registration in the domain name <courtneylove.com>. Instead of returning the name to the rightful owner, Respondent demanded that Complainant purchase the rights to that name for a sum of $25,000. Complainant acquiesced and paid that sum simply in order to avoid incurring legal fees in securing her rights to the domain name.
Concerning the domain name <kurtcobain.com>
Complainant alleges that Respondent registered the disputed domain name without her knowledge, authorization or consent. As Kurt Cobain’s widow, Complainant should have the right to control a website bearing her late husband’s name and she has the right to manage his legacy.
Further, says Complainant, Respondent has no rights or interests in the name Kurt Cobain. First, she has never been known by such a name. Second, she has never made use of the website for a bona fide offering of goods or services. Rather, she has used the site to link to eBay auctions related to Nirvana and Kurt Cobain material, and has used the website to generate advertising income for herself. Third, she has made unauthorized use of the name Kurt Cobain in order to attract consumers to her website for her own commercial gain. Accordingly, her use of the disputed domain name is not a legitimate non-commercial fair use.
Respondent has used the fact that the disputed domain name confuses consumers into believing that the website is associated with Kurt Cobain and Nirvana for her own pecuniary gain, through commissions for eBay sales and advertising.
Further, Respondent is preventing Complainant from maintaining her own website to pay homage to her late husband’s legacy.
According to Respondent, Complainant does not have rights to trademarks in the names KITTYRADIO or KURT COBAIN. There are no such registered trademarks. Furthermore, the only party authorized to pursue a complaint on behalf of Kurt Cobain is the Estate of Kurt Cobain, not Complainant.
Concerning the domain name <kittyradio.com>
Respondent alleges that the disputed domain name has been exclusively used for a community forum created by Respondent, who has been doing business using the name KITTYRADIO with Complainant’s knowledge for the past six years. ICANN Policy ¶ 4(a)(i).
According to Respondent, Complainant’s versions of events are not factual and lack valid evidence. Complainant did not create the concept nor coin the word “kittyradio.”
Respondent was a pioneer in music and online communities, receiving recognition for her innovative ideas and websites from a young age. In 1994, Respondent, then 14, met Complainant online where the two formed a friendship. Inspired by Complainant, Respondent created a fan site for Complainant and her band Hole on Respondent’s personal domain. Throughout the years, Respondent regularly spoke with Complainant regarding the possibilities of an online presence for her band and encouraged Complainant to have an official website.
Complainant did not conceptualize the site built in 1999, nor was it called <kittyradio.com>.
The term “kittyradio” was coined by Respondent and the disputed domain name <kittyradio.com> was registered on August 2, 2001. Complainant’s subsequent usage of the name KITTYRADIO on products in commerce in and after 2004 was directly inspired by the website <kittyradio.com>. There are no records of Complainant’s usage of that name prior to 2004.
Staring in 1999, Respondent, with Complainant’s permission, undertook various web-related activities, including building a website for Complainant’s band Hole, at <holemusic.com>. At this point, given the success of that website, the relation between the parties evolved from a friendship to an informal partnership.
According to Respondent, there has never been a written agreement between the parties. The unsigned employment agreement submitted by Complainant is a fabrication.
As the discussion forums at <holemusic.com> gained popularity and the scope of conversation grew, Respondent proposed to Complainant to split off the forums from <holemusic.com> and to host them at <kittyradio.com>. Complainant agreed, so <holemusic.com> continued as Complainant’s and Hole’s official website while <kittyradio.com> flourished as a diverse community.
In 2003, Complainant’s behavior towards Respondent changed and conflicts emerged. Respondent was surprised when <kittyradio.com> appeared on Complainant’s album artwork in 2004, since they had not been in contact for some time.
In July 2004, some financial issues arose, concerning unpaid invoices for the servers hosting the several websites. Respondent raised the money to pay the invoices and, as of that time, she has exclusively maintained all responsibility for domain name registration and hosting fees associated with various websites, including those at the two disputed domain names, <holemusic.com>, and <courtneylove.com>, with Complainant’s explicit knowledge and consent.
In April 2006, Complainant contacted Respondent regarding the domain name <courtneylove.com>, requesting ownership of that domain name. Respondent agreed, provided that she was reimbursed for outstanding fees. After some negotiation, an agreement was reached.
Subsequently, Complainant requested ownership of the two disputed domain names. Respondent contests the account of the facts given by Complainant. Respondent has never given any indication that she would be willing to transfer the disputed domain names. Respondent maintains that she is the legal and rightful owner of the <kittyradio.com> domain name, and that Complainant has no rights to that domain name or to the trademark KITTYRADIO. ICANN Policy ¶ 4(a)(ii).
Respondent has the considerable,
legitimate and independent right to operate a website under the <kittyradio.com> domain name. First, she not only coined the term
“kittyradio” and registered the domain name in 2001, but also has been known by
this name in the State of
As a web entrepreneur, Respondent has registered and maintained domain names related and unrelated to Complainant and her projects throughout the years. The registration and usage of <kittyradio.com> was not intended for any purpose other than hosting the diverse community forums that had outgrown <holemusic.com>. Complainant asserts that Respondent has engaged in a clear pattern of registering domain names that are associated with Complainant, however fails to mention that Complainant and her representatives had knowledge that Respondent owned and maintained the registration of these domain names for a number of years.
Complainant alleges that Respondent acted in bad faith in the registration of domain names and cites the <courtneylove.com> Domain Transfer Agreement as evidence. Despite claiming that Respondent “demanded” a sum of $25,000 to purchase the rights to the domain name, the document clearly indicates that it was a settlement releasing both parties from any claims against one another. Complainant in fact had an outstanding debt to Respondent for the amount of $50,000.
Complainant also alleges that Respondent used the website at the disputed domain name to sell unauthorized T-shirts and memorabilia without Complainant’s authorization, however this claim is unsubstantiated. All merchandise relating to Complainant that was sold on the website at the disputed domain name was expressly supplied and/or approved by Complainant’s authorized representatives. Furthermore, implying consent, Complainant visited and posted on the website a number of times during and after the sale of this merchandise, as well as having a direct link to the <kittyradio.com> storefront on her site at <courtneylove.com> as recently as January 31, 2007.
Respondent and the moderation team of <kittyradio.com> have made every attempt to remove any material that may infringe on Complainant’s copyrights. Complainant’s allegation that “the Respondent has allowed rampant infringements of Complainant’s copyrights to occur on the website” is false. Furthermore, several of the alleged infringements were items personally posted and leaked by Complainant to the <kittyradio.com> forums. In addition, the assertion that a forum devoted to selling and exchanging items between members is devoted “solely to the exchange and sale of bootlegs” is inaccurate. The forum is for members to sell or trade anything from clothing to concert tickets. Neither Respondent nor <kittyradio.com> endorses the sale or trade of bootleg recordings.
Concerning the domain name <kurtcobain.com>
Complainant alleges that Respondent registered the disputed domain name without Complainant’s authorization or consent, however, this is inaccurate. Complainant made public postings online regarding Respondent and her plans to develop the disputed domain name for several years during the time that the parties maintained a working relationship.
Respondent has owned and maintained the registration and hosting for the disputed domain name for nearly a decade. She has intentions to create an unbiased, fan-generated, content-driven informational archive and resource for Kurt Cobain fans online.
The community that Respondent pioneered with Complainant was left in financial debt and increasing costs after Complainant dropped financial support in July 2004. For a period of several months, Respondent re-directed traffic to Nirvana items on eBay. She did not intend to confuse consumers into believing the website was associated with Cobain or Nirvana, and in fact, the domain name merely redirected to <eBay.com>; eBay is a clearly recognizable trademarked brand under which it would be unreasonable to assume confusion on the part of the consumer.
In January 2007, Respondent began testing relevancy advertising on <kurtcobain.com>. Her intent was to determine if the possible income generated would be enough to sustain the cost of the fan site being planned. Not only was this content up for a period of 6 days as a means of testing, but also the title of the page is “Kurt Cobain Fan site” and all links were clearly marked as advertising or affiliate links to eBay as Complainant clearly indicates. Respondent’s intentions were not to confuse consumers into believing that the website is associated with Cobain and Nirvana, but to analyze the traffic to the domain name and its behavior for use in the development of the Kurt Cobain fan site.
According to Respondent, Complainant’s allegation that Respondent maintains the registration “to spite Love” and possibly sell it back to Complainant for “an excessive sum” is ludicrous and unfounded.
Complainant is a well-known musician and performer. She is the widow of another well-known musician, Kurt Cobain.
The parties had, at one time, an agreement under which Respondent developed and maintained websites for Complainant.
Some disagreements arose and the agreement was terminated. It was agreed to transfer some of the websites to Complainant, in exchange for certain payments.
There was no agreement concerning the disputed domain name <kittyradio.com>.
There are no registered marks related to either of the disputed domain names.
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 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;
(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.
However, the Panel will first consider a preliminary issue, namely:
· Whether the matter is a business dispute outside the scope of the UDRP.
Preliminary Issue: Business Dispute Outside the Scope of the UDRP
Respondent notes (and Complainant does not contest) that there are no registered trademarks related to either of the disputed domain names. Both parties claim common law trademark rights to both disputed domain names.
According to Complainant, Respondent initially registered the disputed domain name <kittyradio.com> on behalf of Complainant to provide web design services. As evidence, Complainant provides a copy of an agreement with Respondent, signed in the year 2000, to provide web design services as an independent contractor of Complainant. The agreement also states that all materials “appearing on or in connection” with the websites at the disputed domain name would belong to Complainant and not to Respondent. After their business relationship soured, Complainant alleges that it attempted to negotiate a transfer of the disputed domain name registration from Respondent to Complainant, but that those negotiations have broken down, leaving Complainant with no other option than to bring this UDRP Complaint.
Respondent counters Complainant’s claims by alleging that the purported agreement is a fabrication. Further, she notes that the disputed domain name <kittyradio.com> was not registered until 2001, a year after the purported agreement.
Respondent claims that her website at <kittyradio.com> is her own offshoot of the website she created for Complainant at <holemusic.com> and that Complainant was agreeable to Respondent creating her own website at the disputed domain name.
With respect to the other disputed domain name, <kurtcobain.com>, Complainant claims that she was unaware of Respondent’s registration of that domain name even though she personally knew Respondent and she further notes that it is the name of her famous late husband. Respondent, on the other hand, claims that Complainant was aware of Respondent’s registration of the disputed domain name and that Complainant even made public announcements on the Internet to the effect that Respondent and Complainant had made plans to develop a website at that domain name.
Further, Respondent notes that only the Estate of Kurt Cobain, not Complainant, would have standing to initiate a proceeding with respect to the disputed domain name <kurtcobain.com>.
The two parties present very different accounts of the facts, and use those accounts to support their claims for common law trademark rights in the disputed domain names. The written evidence submitted by the parties is inconclusive.
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
Further, the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.
The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://www.wipo.int/amc/en/processes/process1/report/index.html ). This report states at paragraph 135:
In view of the weight of opinion against mandatory submission to an administrative procedure in respect of any intellectual property dispute arising out of a domain name registration, the final recommendations of the WIPO Process contain two major changes in respect of the suggested administrative dispute‑resolution procedure:
(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.
(ii) Secondly, the notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights.
And the WIPO Report states at 153:
… The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting), as defined below, and would not be available for disputes between parties with competing rights acting in good faith.
And at 166:
The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations.
Thus, according to the majority, a dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy.
Further, according to the majority, the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint. See Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (concluding that when the respondent registers a domain name on behalf of the complainant and then refuses to relinquish control over the domain name registration, the cause of action is for breach of contract or fiduciary duty and is thus outside the scope of the UDRP); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Jan. 2, 2007) (holding that disputes arising out of a business relationship between the complainant and the respondent regarding control over the domain name registration are outside the scope of the UDRP); see also Mark Travel Corp. v. ATHS, FA 154644 (Nat. Arb. Forum May 29, 2003) (stating that Policy ¶ 4(a)(iii) requires a showing of bad faith use and registration, and that any subsequent termination of a distributorship agreement would, therefore, not allow this particular case to fall under the UDRP in the future).
For the reasons stated above, the majority finds that it is not necessary for the Panel to consider the three elements of the Policy.
For the reasons presented above, the Panel concludes that relief shall be DENIED.
Accordingly, the Complaint is DISMISSED.
Carolyn Marks Johnson, Panelist
Richard Hill, Presiding Panelist
Dated: May 14, 2007
CONCURRENCE BY MS. ABEL:
I write separately because I agree with the outcome of the majority opinion, but not with its reasoning. I would not find that this dispute lies beyond the scope of the UDRP—it does not—but that Complainant wholly fails to meet her burden of proof on each of the three required elements. In support of this position, see Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000).
Further, it should be stressed that, pursuant to paragraph 4(a) of the Policy, Complainant must prove that each of the elements of the Policy is present.
Complainant has not established that she has or ever had any trademark rights in either KITTYRADIO or KURT COBAIN, the fact that she was married to Mr. Cobain notwithstanding. Simply stating that she owns KITTYRADIO, or that as Mr. Cobain's widow she owns his rights of celebrity/trademarks doesn't mean she, in fact, owns protectible trademark rights. Even assuming for the sake of argument that the proffered "agreement" ever was executed by the parties, it does not speak to trademarks or domain names but instead is focused entirely on copyright in the content of the site. Complainant has not met her burden of proof on this prong.
It is undisputed that at the time Respondent obtained <kittyradio.com>, Ms. Love approved of Respondent's behavior. Far from proving that Respondent had no right or legitimate interest in the domain, in the Amended Complaint, Complainant essentially concedes that Respondent's registration and use for some period of time was consensual: "Barnett became difficult to work with and Love sought to terminate the Agreement and regain control over the domain name kittyradio.com (Amended Complaint, p. 4)." That concession is underscored by Ms. Love in her April 24, 2006 e-mail to Respondent, in which Ms. Love says: "I recall that we were partners in Kittyradios name ... in any case, I guess you are taking Kittyradio in a new direction and I think that's fine, however as I have said I do need my name [courtneylove.com]." (Response, Exhibit D, p. 15). The parties subsequently agreed that the sale of <courtneylove.com> to Ms. Love for $25,000 did not include sale of <kittyradio.com>. (August 11, 2006 e-mail from Ms. Love’s representative to Respondent, Response, Exhibit E).
Likewise, Respondent appears to have had a legitimate interest in <kurtcobain.com>. There is no evidence that Respondent registered and/or has used <kurtcobain.com> for anything other than a fan site, including linking to Cobain-related goods on eBay. Whether Respondent’s behavior constitutes fair use is an issue the parties ultimately may litigate in another forum; in this forum Complainant has failed to carry her burden of proving that Respondent had no right or legitimate interest in the domain.
Finally, for the reasons set forth above, Complainant fails to establish bad faith. Further, Respondent credibly explains why she registered the various domains, and why she sought money for <courtneylove.com>. There is no evidence she asked for money for either of the domains in question here.
Minority concurring DECISION
Complainant fails to make the necessary showing to prevail in this UDRP action. This in no way reflects on the merits of future proceedings, if any, between the parties in other fora. That such proceedings might occur, and that they likely would involve additional evidence, different claims and other factors of proof does not mean that this Panel should refrain from ruling on the merits of the case before us.
Sally M. Abel Panelist
Dated: May 14, 2007
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