DECISION

John David Lyon v. James Casserly

Claim Number: FA0309000193891

PARTIES

Complainant is John David Lyon, Hamilton, NJ (“Complainant”) represented by Thomas Jannarone of Kalas & Jannarone, 254 Brick Boulevard, Suite 9, Brick, NJ 08723. Respondent is James Casserly, 17 Norwood Terrace, Milburn, NJ, 07041 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <southsidejohnny.com> registered with Register.com.

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.

Robert T. Pfeuffer, Senior District Judge, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 10, 2003; the Forum received a hard copy of the Complaint on September 15, 2003.

On September 12, 2003, Register.com confirmed by e-mail to the Forum that the domain name <southsidejohnny.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 13, 2003 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@southsidejohnny.com by e-mail.

A timely Response was received and determined to be complete on October 14, 2003.

On October 17, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Robert T. Pfeuffer, Senior District Judge, as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that its SOUTHSIDE JOHNNY mark is entitled to common law trademark protection and argues that Respondent’s <southsidejohnny.com> domain name is identical to Complainant’s mark because the disputed domain name entirely incorporates the mark and simply omits the space between the words and adds the generic top-level domain (“gTLD”) “.com” to the end of the mark.

Complainant avers that Respondent is using the disputed domain name <southsidejohnny.com> to divert Internet traffic to Respondent’s websites related to cities in New Jersey, including <jerseycityonline.com>, <hobokenonline.com> and <bayonneonline.com>. Complainant furthermore alleges that <southsidejohnny.com> is a unique domain name and selection of this name gives rise to the impression of an association with Complainant which is not based upon fact.  Complainant also asserts that Respondent has never been commonly known by or has been identified as SOUTHSIDE JOHNNY or any similar variation thereof.

Additionally, Complainant would have the Panel find that the registration of this disputed domain name by Respondent is registration and use in bad faith under Policy 4(a)(iii).  Complainant has stated that Respondent has offered to transfer the <southsidejohnny.com> domain name registration for compensation such as concert tickets, backstage passes, press passes and a website development contract.  Complainant asserts that these actions are evidence of registration and use in bad faith.

B. Respondent

Respondent asserts that Complainant has failed to establish any common law rights in the SOUTHSIDE JOHNNY mark and therefore Complainant has failed to discharge its burden of proof on this issue.

With respect to rights and legitimate interests, Respondent claims only an intent to develop a fan website when it purchased the <southsidejohnny.com> domain name registration.  Respondent further maintains that it was in the process of developing the website and was ready to post a fan website at the disputed domain name when Complainant’s fans began to harass him.

With respect to registration and use in bad faith, Respondent disclaims any attempt to initiate offers for the transfer of the <southsidejohnny.com> domain name registration from Respondent to Complainant.  Respondent further insists that its association of the <southsidejohnny.com> domain name with New Jersey city websites does not in any way establish bad faith or use of the domain name.

FINDINGS

Findings in Respect to Identical or Confusingly Similar:

The Panel finds that Complainant has established common law rights in the SOUTHSIDE JOHNNY mark pursuant to Policy ¶ 4(a)(i).  The Panel finds that neither the omission of the space between the words of the disputed domain name nor the addition of a “gTLD” significantly distinguishes the domain name from the mark under Policy ¶ 4(a)(i).

Findings in Respect to Rights and Legitimate Interests:

The Panel finds in respect to the issues on Rights and Legitimate Interests that Respondent’s use of a domain name identical to Complainant’s mark to divert Internet traffic to Respondent’s New Jersey-related websites indicates neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  The Panel also finds on this issue that Respondent has selected a unique domain name which is unique solely to the business of Complainant and would therefore be hard pressed to establish any rights to or legitimate interests in the domain name.  The Panel further finds that Respondent has failed to produce evidence that Respondent is commonly known by the <southsidejohnny.com> domain name under Policy ¶ 4(c)(ii).

Findings in Respect to Registration and Use in Bad Faith:

It is the finding of the Panel that Respondent’s requests for concert tickets, backstage passes, press passes and a website development contract suggest that the domain name was acquired primarily for the purpose of transferring the domain name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name, all of which evidences bad faith registration and use with regard to Policy ¶ 4(b)(i).  In addition, the Panel finds that Complainant’s evidence sustains its contention that Respondent’s unauthorized commercial use of the <southsidejohnny.com> domain name, a domain name identical to Complainant’s common law mark, demonstrates Respondent’s intention to register and use the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

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

Complainant contends that its SOUTHSIDE JOHNNY mark is entitled to common law trademark protection due to its exclusive, continuous, uninterrupted and commercial use since 1972, inter alia, to identify the source and market the work product of the musician/performer John David Lyon a/k/a “Southside Johnny.” The Panel finds that Complainant has established common law rights in the SOUTHSIDE JOHNNY mark pursuant to Policy ¶ 4(a)(i). See Barnes v. Old Barn Studios Ltd., D2001‑0121 (WIPO Mar. 26, 2001) (all that is required for a famous or very well-known person to establish a common law trademark is likelihood of success in an action for passing off in the event of use in trade without authority); see also Sade v. Quantum Computer Serv., Inc., D2000-0794 (WIPO Sept. 26, 2000) (“Although the Complainant has not registered the word ‘SADE’ either as a trademark or as a service mark in any jurisdiction, the Complainant has adapted the word ‘SADE’ as her stage name and as a trademark and service mark and this Administrative Panel . . . is further satisfied that the Complainant has established that she has common law rights in the said mark”).

Complainant argues that Respondent’s <southsidejohnny.com> domain name is identical to Complainant’s mark because the disputed domain name entirely incorporates the mark and simply omits the space between the words and adds the generic top-level domain (“gTLD”) “.com” to the end of the mark. The Panel rules that neither the omission of the space between the words nor the addition of a gTLD significantly distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that Respondent’s domain name <charlesjourdan.com> is identical to Complainant’s marks).

Rights or Legitimate Interests

Complainant avers that Respondent is using the <southsidejohnny.com> domain name to divert Internet traffic to Respondent’s websites related to cities in New Jersey, which include <jerseycityonline.com>, <hobokenonline.com> and <bayonneonline.com>. The Panel finds that Respondent’s use of a domain name identical to Complainant’s mark to divert Internet traffic to Respondent’s New Jersey-related websites indicates neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

Further, based on the uniqueness of the <southsidejohnny.com> domain name, the Panel concludes that Respondent would be hard pressed to establish any rights to or legitimate interests in the domain name. See Marino v. Video Images Prod., D2000-0598 (WIPO Aug. 2, 2000) ("in light of the uniqueness of the name <danmarino.com>, which is virtually identical to the Complainant’s personal name and common law trade mark, it would be extremely difficult to foresee any justifiable use that the Respondent could claim. Selecting this name gives rise to the impression of an association with the Complainant which is not based in fact"); see also Kasparov v. Am. Computer Co., FA 94644 (Nat. Arb. Forum May 30, 2000) (finding no legitimate rights and interests when Respondent used Complainant's name as a portal to a web site which, without permission, associated Complainant as an endorser of Respondent's causes).

Complainant asserts that Respondent has never been commonly known by or identified as SOUTHSIDE JOHNNY or any similar variation thereof. The Panel finds that Respondent has failed to demonstrate that it is commonly known by the <southsidejohnny.com> domain name under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Registration and Use in Bad Faith

Complainant states that Respondent has offered to transfer the <southsidejohnny.com> domain name registration for compensation such as concert tickets, backstage passes, press passes and a website development contract. The Panel holds that Respondent’s requests suggest that the disputed domain name was acquired primarily for the purpose of transferring the domain name registration to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name, which evidences bad faith registration and use with regard to Policy ¶ 4(b)(i). See Mr. Severiano Ballesteros Sota, Fairway, S.A. v. Waldron, D2001-0351 (WIPO June 18, 2001) (holding that Respondent’s request for “4 complementary tickets for the Seve Ballesteros Trophy for every year that the Seve Ballesteros trophy takes place” in exchange for the disputed domain name registration evidenced bad faith use and registration); see also Metallica v. Schnieder, FA 95636 (Nat. Arb. Forum Oct. 18, 2000) (finding bad faith based on Policy ¶ 4(b)(i) where Respondent offered to transfer the domain name in return for non monetary consideration (i.e., if Complainant met with Respondent, called two of his friends, and granted Respondent an interview); see also Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”).

Complainant also contends that Respondent’s unauthorized, commercial use of the <southsidejohnny.com> domain name, a domain name identical to Complainant’s common law mark, demonstrates Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  The Panel finds the evidence sustains this contention. See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <southsidejohnny.com> domain name be TRANSFERRED from Respondent to Complainant.

ROBERT T. PFEUFFER, Senior District Judge, Panelist
Dated: October 29, 2003

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