DECISION

Pearl Jam, A General Partnership v. Peter Lyn c/o JamPearl Limited

Claim Number: FA0312000221238

PARTIES

Complainant is Pearl Jam, A General Partnership, Seattle, WA (“Complainant”) represented by Pallavi Mehta Wahi, of Stokes Lawrence, P.S., 800 Fifth Ave., Suite 4000, Seattle, WA 98104.  Respondent is Peter Lyn c/o JamPearl Limited, 11846 S.W. 123 Pl., Miami, FL 33186 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <jampearl.com>, registered with Network Solutions, 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.

Paul M. DeCicco as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 22, 2003; the Forum received a hard copy of the Complaint on December 29, 2003.

On January 5, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <jampearl.com> is 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. 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 January 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 26, 2004 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@jampearl.com by e-mail.

A timely Response was received and determined to be complete on January 26, 2004.

On February 3, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

Preliminary Procedural Matters.  Respondent fails to provide a signature certifying that the information provided in the Response is complete and accurate, in accordance with UDRP Rule 5(b)(viii).  The Panel may find that this deficiency renders the Response inadmissible.  See Schott Glas and Nec/Schott Components Corp. v. Necschott, D2001-0127 (WIPO March 14, 2001) (choosing not to consider the Response in light of formal deficiencies); However, this Panel finds that it cannot determine whether the defect was deliberate or inadvertent and agrees with the panel’s conclusion in  Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002).  There the Panel found that declaring a Response to be inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. While we do not necessarily find that any “due process” rights would be violated by avoiding review of the Response, the Panel finds that equity would be ill served if a possibly inadvertant uncorrectable administrative error could nullify a Response.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complaint contends the following:

Complainant Pearl Jam is one of the most popular and widely known American bands in the world. Among other things, Complaint provides musical recordings, music entertainment services, concert tickets, clothing lines and merchandise on the Internet and through registered sellers in connection with a variety of its PEARL JAM marks. Certain products are sold through Complainant’s website <pearljam.com> and through licensees. Complainant has invested substantial resources and funds in promoting its services in connection with the PEARL JAM mark. Complainant has a number of registrations with the United States Patent and Trademark Office (“USPTO”), as well as numerous foreign registrations for its mark. In particular, Complainant claims rights in the PEARL JAM mark as a result of multiple registrations with the USPTO (Reg. Nos. 1911387, 1911524, 1916938, 1952582), as well as international registrations in territories such as Australia (Reg. No. 814398), Canada (Reg. No. 585347), and the European Union (Reg. No. 1429281). 

Complainant alleges that Respondent’s domain name is confusingly similar to the Complainant’s mark and was registered in an attempt to induce Internet users into believing that Respondent’s website is associated with or authorized by Complainant. Respondent is neither affiliated with Complainant nor authorized by the Complainant to use the PEARL JAM mark.

“Pearl Jam” has no common meaning in the Internet context other than an indicator of the source of Complainant’s services. Prior to the Respondent’s registration of the at-issue domain name on April 27, 2000, Complainant had been using the mark for nine years and had gained worldwide recognition as a renowned provider of entertainment services. This renown is embodied in the PEARL JAM marks.

Respondent has never been known by, or operated a business under the PEARL JAM or <jampearl.com> name, and has no trademark or service mark rights in the Complainant’s mark. Respondent has not made any preparations to use the domain name in connection with a bona fide offering of goods or services nor has it used the name in connection with a business.

According to Complainant, Respondent’s selection and registration of the <jampearl.com> domain name was deliberate and made with knowledge of the Complainant’s mark, thus constituting “bad faith” under the Policy. Likewise, registration coupled with inactivity, as here, constitutes  “bad faith” for purposes of the Policy.

B. Respondent

Respondent contends as follows:

Respondent denies that his registered domain name <jampearl.com> is intended to incorporate Pearl Jam marks, or that it is substantially identical and/or confusingly similar to Complainant’s <pearljam.com> domain name.

Respondent denies that the primary distinctive element of the <jampearl.com> domain name is the Pearl Jam mark.

Respondent denies that he reversed the domain name in an attempt to induce Internet users into believing that Respondent’s website is associated or authorized by Complainant.

 

Respondent further asserts that the sole impetus for the creation of the <jampearl.com> domain name is that Respondent’s father’s first name is “James” and Respondent’s mother’s first name is “Pearl.”  Respondent claims he created the <jampearl.com> domain name as a tool to use in establishing a family business.

Respondent denies Complainant’s allegation that Respondent’s selection and registration of the <jampearl.com> domain name was deliberate as it relates to the Complainant’s PEARL JAM marks.  Respondent claims registration was deliberate only as it relates to honoring his parent’s names, James and Pearl.

Respondent further admits that Complainant is a music industry giant and a “globally renowned provider of entertainment services.” He claims that the music industry giant is attempting to commandeer the domain name which Respondent legitimately and in good faith acquired with his hard earned dollars.  Respondent argues that Complainant could have acquired the <jampearl.com> domain name just as it has acquired countless other trademarks and/or domain names which it sought to protect.  Now, as an after thought, Complainant wants to acquire Respondent’s <jampearl.com> domain name. Respondent therefore denies that transfer is warranted based on Respondent’s bad faith and further urges the Panel to find that the Complainant is engaged in reverse domain name hijacking.

FINDINGS

Complainant is the owner of numerous Pearl Jam trademarks. The trademarks predate the registration of the <jampearl.com> domain name. The marks are well known and were known to the Respondent prior to the time he registered the <jampearl.com> domain name. Respondent has never been known by, or operated a business under, the PEARL JAM or <jampearl.com> name. Respondent has no trademark or service mark rights in the Complainant’s mark.

The dominant feature of the <jampearl.com> domain name is the PEARL JAM mark and Respondent intended to incorporate a reflection of the PEARL JAM marks in his domain name.

The domain name does not resolve to an Internet object, such as a website, FTP site or e-mail address. However, the Respondent cannot deny that it used the domain name in commerce.

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 PEARL JAM mark is the name of a famous American musical band and is associated with the band’s musical recordings, as well as a variety of goods and services that are outgrowths of the band’s successes. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.). Indeed, Respondent admits in its Response that “Complainant is apparently a music industry giant which is a ‘globally renowned provider of entertainment services.’”

The Respondent’s domain name wholly contains the Complainant’s mark. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name). Merely transposing the elements of the mark, such as here, does not avoid confusing similarity under the Policy. See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and finding that merely inverting the terms of a mark is insufficient to dispel consumer confusion because the mark and the resulting domain name are simply too similar to each other); see also Playboy Enters. v. Movie Name Co., D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name <channelplayboy.com> confusingly similar to the mark THE PLAYBOY CHANNEL); see also Toronto Convention & Visitors Ass’n v. This Domain is For Sale, D2001-1463 (WIPO Feb. 25, 2002) (finding that there would be no reason to distinguish between <tourismtoronto.com> and TORONTO TOURISM).

Therefore, the Panel concludes that the Respondent’s domain name <jampearl.com> is confusingly similar to Complainant’s PEARL JAM mark.

Rights or Legitimate Interests

Complainant asserts and Respondent does not deny that Respondent is not authorized to use the Complainant’s mark. However, Policy ¶ 4(c) sets out three particular fact patterns, which if present may show that a Respondent has rights or legitimate interests in a domain name, despite a Complainant’s trademark rights in such name. None of the fact patterns in Policy ¶ 4(c) are present in the instant case.

Contrary to Complainant’s claim that Respondent did not make any bona fide business plans regarding the <jampearl.com> domain name, Respondent asserts that the domain name reflects his parents’ names --James and Pearl, and that it was registered as tool to establish a family business. The assertion is tenuous. No documentary evidence in the form of an affidavit, business plan, government filing, or other business record was proffered. Not even a statement suggesting the substance of the “family business” was put forth.  Mere claims of some unspecified business plan without evidentiary support that the plans are bona fide are insufficient to demonstrate rights or legitimate interests pursuant to Policy ¶ 4(c)(i).

Second, Policy ¶ 4(c)(ii) does not apply. If in fact Respondent’s parents are named James and Pearl, there is no evidence that they or any business with which they and Respondent are associated have ever been collectively referred to as <jampearl.com>. Likewise, there is no evidence that the Respondent has gone by the name <jampearl.com>. The Panel thus concludes that Respondent is not commonly known by the disputed domain. 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").

Finally, Policy ¶ 4(c)(iii) permits a Respondent to demonstrate a legitimate interest in a domain name by showing that he is making “legitimate noncommercial or fair use of the domain name.” Respondent claims that he registered the domain name as a tool to establish a family business. As discussed elsewhere herein, Respondent thus impliedly admits that the domain name was registered for a commercial purpose. The admission renders Policy ¶ 4(c)(iii) inapplicable.

The Complainant has established trademark rights in the domain name and the Panel concludes that the Respondent fails to demonstrate any legitimate rights or interest in the domain name.

Registration and Use in Bad Faith

At the time he registered the disputed domain name Respondent had notice of the PEARL JAM mark due to its registration with a variety of international governmental agencies, as well as the wide recognition associated with the mark within the United States. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“There is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."). Moreover, Respondent admits the notoriety of the PEARL JAM mark in his Response. See generally, Fiber-Shield Industries, Inc. v. Fiber Shield, LTD., FA 92054  (Nat. Arb. Forum Feb. 29, 2000) (finding bad faith registration where Respondent was aware of the confusing similarity between his domain name <fibershield.net> and Complainant's domain name <fiber-shield.com>).

Respondent fails to proffer any evidence supporting his story that he was inspired by his parents’ names (James and Pearl) to register <jampearl.com>. In fact, there is no evidence that his parents’ names are in fact James and Pearl. Assuming for argument that Respondent’s assertion is true, and that the domain name was derived from Respondent’s parents’ names to support a family business, still the particular contraction of the names is nevertheless indicative of Respondent’s conscious design to trade on the Complainant’s mark.  If Respondent were unaware or simply respectful of the Complainant’s mark, one would expect the names James and Pearl to be contracted and conjoined as JamesPearl or JimPearl or some other variant, but not JamPearl. 

The fanciful PEARL JAM mark is the distinguishing element of the <jampearl.com> domain name. One needs only to say “JamPearl” to someone and the expected response is almost invariably “don’t you mean Pearl Jam?” Respondent’s suggestion that it picked the domain name without reference to the Pearl Jam mark is disingenuous. Respondent’s domain name selection and registration was no lexical accident, but rather the deliberate result of an improper design by Respondent to register a variant of Complainant’s mark. This “improper design” constitutes “bad faith” registration under Policy ¶ 4(a)(iii).

To prevail under Policy ¶ 4(a)(iii), a Complainant must not only prove that the at-issue domain name was registered in “bad faith,” the domain name must also be used in bad faith. Despite Complainant’s reference to Respondent’s website in the Complaint, the domain name does not currently resolve to any Internet object. Nor is there any evidence in the record that it ever did. Perhaps the domain name is not in use?

UDRP panels have employed the fiction of “use by non-use” to find that under particular circumstances a domain name which does not reference an Internet object or is not in apparent use for a commercial purpose, is nevertheless in-use for the purposes of Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith). The line of decisions advocate that “use” is somehow magically spawned when certain bad faith indicia are present, even though there is no actual active use.

Support for this proposition is not universal.  Other panels have held that a domain name must actually be used to satisfy Policy ¶ 4(a)(iii). E.g. Nike, Inc. v. Crystal Int’l, D2002-0352 (WIPO July 4, 2002)(finding that mere continuous ownership is not sufficient to demonstrate “use” while acknowledging decisions allowing use thought non-use; Societe des Produits Nestle S.A. – D2001-0916 (WIPO October 12, 2001).

We need not be concerned with adopting one of the two contrary positions. In his Response, Respondent admits that the domain name was “created as a tool to use in establishing a family business.” Even though the Panel questions the veracity of Respondent’s claims regarding the genesis of the at issue domain name, the Panel may nevertheless draw inferences as if the Respondent’s admission were true. A party cannot assert a fact, which is favorable in one situation, and deny it to avoid unfavorable implications in another context. Policy ¶ 4(a)(iii)’s  clause, "is being used in bad faith," does not refer to any particular point in time. The paragraph is satisfied if at any time after registration the domain is used in bad faith. See Ingersoll-Rand Co. v. Gully, d/b/a Advcomren, D2000-0021 (WIPO Mar. 9, 2000). Likewise, “use” does not need to be continuous. Respondent’s admission that he was creating a tool to establish a family business admits that the domain name was actually used “as a tool.”  Using the domain name “as a tool” constitutes “use” under the Policy.

As discussed above, since the at-issue mark is confusingly similar to Complainant’s mark. Since, as also discussed above, Respondent intentionally selected a domain name reflecting Complaint’s fanciful mark, it is apparent that Respondent’s purpose in using the <jampearl.com> domain name as a tool, was to improperly derive commercial benefit from the perceptual congruity of the registered domain name and Complainant’s mark.

Respondent cannot use Complainant’s trademark in good faith “as a tool” to establish his business. Therefore, the Panel concludes that the domain name was not only registered in bad faith, but is also being used in bad faith.

Reverse Domain Name Hijacking

Since, the Panel determined that Respondent does not have any right to the at-issue domain name, Respondent’s claim of reverse Domain Name Hijacking fails. 

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 <jampearl.com> domain name be TRANSFERRED from Respondent to Complainant.

Paul Michael DeCicco, Panelist
Dated: February 16, 2004

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