|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Pearl Jam, A General Partnership v.
Streaming Digital Media Dot Com c/o Brian
J. Spencer
Claim Number: FA0402000235831
PARTIES
Complainant is Pearl Jam, A General
Partnership (“Complainant”), represented by Gerard A. Taylor, of Stokes
Lawrence, P.S., 800 Fifth Avenue, Suite 4000, Seattle, WA 98104. Respondent is Streaming Digital Media Dot Com c/o Brian J. Spencer (“Respondent”), P.O. Box 9043, London, Ontario N6E 3P3,
Canada. Respondent is represented by
Brian J. Spencer.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pearljamlive.com>,
registered with Dotster.
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.
Robert
A. Fashler as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the
“Forum”) electronically on February 5, 2004; the Forum received
a hard copy of
the Complaint on February 9, 2004.
On
February 6, 2004, Dotster confirmed by e-mail to the Forum that the domain name
<pearljamlive.com> is
registered with Dotster and that Respondent is the current registrant of the
name. Dotster has verified that
Respondent is bound by the Dotster 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
February 11, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of March 2, 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@pearljamlive.com by e-mail.
A
timely Response was received and determined to be complete on March 1, 2004.
A
timely Supplemental Submission was filed by Complainant (“Complaint’s Supplemental Submission”) on
March 5, 2004, in accordance with the Forum’s Supplemental Rule No. 7.
A
timely Supplemental Submission was filed by Respondent (“Respondent’s
Supplement Submission”), in accordance with the Forum’s Supplement
Rule No. 7.
On March 15, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Robert A.
Fashler as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Primary Submissions
Complainant
asserts that:
(a)
Complainant:
(i)
is one of
the most popular and widely-known American music bands in the world,
(ii)
has sold
over 30 million albums and performed in a series of sold-out concert tours all
over the world,
(iii)
has been
nominated for, and has won many music industry awards;
(b)
Complainant
has performed and sold albums under the trademark PEARL JAM (the “Trademark”)
since at least 1991;
(c)
Complainant
has registered the Trademark in the United States, Canada, the European
Community, Mexico, Australia and New Zealand;
(d)
Complainant
offers products and services through its website located at
<pearljam.com>.
(e)
The Domain
Name is substantially identical and confusingly similar to the Trademark;
(f)
Respondent
has no rights or legitimate interests in respect of the Domain Name because:
(i)
the words
“pearl jam” has no common meaning other than as an indicator of the source of
Complainant’s products and services,
(ii)
Respondent
registered the Domain name after the Trademark became known throughout the
world, and more than nine years after Complainant
began using the Trademark,
(iii)
Respondent’s
website offers downloads of Complainant’s concerts (initially, Complaint alleged
that these downloads were illegal and
unauthorized, but Complainant’s
Supplemental Submission softened that allegation considerably),
(iv)
Respondent
has no legitimate trademark or service mark rights in the Domain Name,
(v)
Respondent
is not authorized to use the Trademark;
(vi)
Respondent
selected the Domain Name to generate business and divert traffic to its website
for financial gain, and
(vii)
Respondent
is using the Domain Name to redirect users to a website that falsely suggests
an association between Respondent and Complainant;
(g)
Respondent
registered the Domain Name in bad faith because:
(i)
the
Trademark is known worldwide,
(ii)
Complainant’s
website, which is accessed via the domain name <pearljam.com>, is widely
known and heavily used,
(iii)
Respondent
registered the Domain Name to divert traffic and attract consumers to its
website for commercial gain by creating a likelihood
of confusion with the
Trademark,
(iv)
Respondent’s
website offers downloads of Complainant’s concerts,
(v)
Respondent
has attempted to create a likelihood of confusion as to the source,
sponsorship, affiliation or endorsement of Respondent’s
website,
(vi)
Respondent
has constructive or actual notice of the Trademark because the Trademark is
distinctive and well-known; and
(vii)
Consumers
are likely to believe that Respondent’s website is authorized or endorsed by
Complainant.
B. Respondent’s Primary
Submissions
Respondent
admits that the Domain Name is “substantially identical” to the Trademark
Respondent
asserts that:
(a)
Respondent
has legitimate rights to use the Domain Name because Respondent is a
long-standing fan who created a non-commercial website
as a tribute to
Complainant;
(b)
Respondent
has attended many of Complainant’s shows and is a paid-up member of
Complainant’s fan club;
(c)
Respondent’s
website is dedicated to Complainant’s music and fans, and is intended to
increase Complainant’s popularity;
(d)
Respondent’s
website is profit-free and is not commercial;
(e)
There are
no commercial links or commercial popup advertisements on Respondent’s website;
(f)
Respondent’s
website contains a “links” section, the first link of which is Complainant’s
website, which is identified as the only
official website;
(g)
Complainant
has publicly stated that fans are permitted to record any of Complainant’s
shows and to trade full live concerts or songs
online;
(h)
Respondent
allows any member of the public to access and download recordings of
Complainant’s live shows from Respondent’s website
using streaming technology
in accordance with the public authorization given by Complainant,
(i)
Respondent
has not engaged in a pattern of registering domain names and has never sought
to sell the Domain Name;
(j)
Respondent
has not mentioned this dispute on its website;
(k)
The
similarity between the Domain Name and the Trademark is necessary for the site
to function as a fan site;
(l)
Respondent
has acted in good faith in all its dealings with Complainant, which has been
recognized by Complainant by sending Respondent
backstage passes and
autographs.
C. Complainant’s
Supplemental Submission
Complainant
further asserts that:
(a)
Complainant’s
policies regarding taping and distributing Complainant’s shows are irrelevant
because Respondent can conduct such activities
in association with domain names
that are not confusing with the Trademark;
(b)
Respondent
has no relationship with Complainant that would allow Respondent to use the
Trademark as part of the Domain Name;
(c)
The fact
that Respondent is a good fan does not mean Respondent registered and is using
the Domain Name in good faith; and
(d)
The fact
that Respondent’s website does not make a profit does not disprove the site’s
commercial value.
Respondent
further asserts that:
(a)
Complainant’s
management sent Respondent emails praising Respondent’s website.
(b)
The Parties
entered into settlement negotiations, part of which involved an offer by
Complainant to license Respondent’s use of the
Domain Name.
FINDINGS
The
Domain Name is confusingly similar to a trademark or service mark in which
Complainant has rights.
Complainant has not proven that Respondent
has no rights or legitimate interests in respect of the Domain Name.
Complainant has not proven that the
Domain Name was registered or is being used by Respondent in bad faith.
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 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.
Respondent
has sought to tender into evidence various communications between Respondent
and Complainant. None of these
communications were marked “without prejudice”. Nonetheless, the communications were all made during settlement
negotiations.
There
is a strong policy reason for not considering such communications as part of
these proceedings. The Parties should
be encouraged to settle disputes amicably without fear that their good faith
negotiations will be used against
them.
However,
some panels have noted good reasons for considering “without prejudice”
communications during the course of UDRP proceedings. For a comprehensive list of such reasons see The Vanguard Group, Inc. v. Emilio
Sa, D2001-1453 (WIPO, April 7, 2002).
In
the present case it is not necessary to decide whether communications between
the parties directed to settlement are admissible
because the Panel’s decision
does not turn on those communications.
Complainant has established rights in the
Trademark by virtue of registering the mark in Canada, the United States and
other countries.
The Domain Name is confusingly similar to
the Trademark. The addition of the word
“live” does not significantly distinguish the domain name from the
Trademark. See L.L. Bean,
Inc. v. ShopStarNetwork, FA 95404
(Nat. Arb. Forum Sept. 14, 2000), in which the Panel found that
<shopllbean.com> was confusingly similar to Complainant’s
registered
trademark L.L.BEAN.
Respondent has not disputed Complainant’s
trademark rights or the fact that the Domain Name is substantially identical
and confusingly
similar to the Trademark.
On the contrary, Respondent admits that the Domain Name is substantially
identical to the Trademark.
Complainant has satisfied the
requirements of Paragraph 4(i) of the Policy.
It
is difficult for any complainant to prove that a respondent has no rights or
legitimate interests in a domain name.
For the most part, that information is known to and within the control
of the respondent. Accordingly, the
burden on a complainant in respect of this element must be relatively
light. Nonetheless, a complainant still
bears the burden of proving the presence of this element.
In
this case, Complainant must provide some evidence tending to show that
Respondent has no rights or legitimate interests in the
Domain Name. Complainant has made the following
assertions:
(a)
the words
“Pearl Jam” have no common meaning in the Internet context other than as an
indicator of the source of Complainant’s services
and products;
(b)
Complainant
has offered its services and products in connection with its well-known PEARL
JAM marks and domain name since at least
as early as November, 1991, and
Respondent registered the Domain Name more than nine years after Complainant
began using its PEARL
JAM marks and domain name;
(c)
Complainant
and the Trademark gained world-wide recognition and renown prior to
registration of the Domain Name,
(d)
Respondent
has no relationship to Complainant and is not authorized to use the Trademark;
(e)
Respondent
has selected the Domain Name for the purpose of generating business and
diverting traffic to a commercial website by capitalizing
on the public’s
familiarity with the Trademark;
(f)
Respondent
is using the Domain Name to redirect Internet users to a website that falsely
suggests an association between Respondent
and Complainant;
(g)
Respondent
has taken advantage of the Trademark by diverting Internet users to its own
commercial website for financial gain.
The
Panel accepts Complainant’s assertions about Complainant’s own use of the
Trademark, the renown of the Trademark, and the fact
that Complainant has not
authorized Respondent to incorporate the Trademark within the Domain Name. However, the Panel finds that Complainant
has not provided any factual basis, other than mere assertions, from which the
Panel can
conclude the truth of any of the other allegations made by
Complainant in relation to Paragraph 4(a)(ii) of the Policy.
In
the Panel’s view, it is not sufficient for Complainant merely to point to the
existence and reputation of its own trademarks and
to the fact that Complainant
has not authorized the activities of Respondent. The existence of a complainant’s trademark rights is the subject
of Paragraph 4(a)(i) of the Policy. The
fact that a complainant has not authorized Respondent’s registration and use of
a domain name is really implicit in most proceedings
brought under the Policy.
Paragraph
4(a)(ii) of the Policy acknowledges that a respondent may have rights or
legitimate interests in a domain name that are
distinct from a complainant’s
legal monopoly in a particular trademark.
Marks and names can co-exist with identical and confusingly similar
registered trademarks in certain circumstances.
As
well, not all uses of a registered trademark by another will constitute
infringement. Moreover, the Policy is
not designed to police infringement. It
is a summary procedure directed to certain specific circumstances. In this Panel’s view, paragraph 4(a)(ii) of
the Policy would be rendered meaningless if a complainant could satisfy its
requirements
merely by repeating what it has already proven in relation to
Paragraph 4(a)(i) and pointing to respondent’s lack of authorization
from the
complainant. That approach would
presume that it is impossible for a respondent to have any rights or legitimate
interests in a domain name that
is identical or confusingly similar to an
enforceable trademark other than by way of license from the owner of that
trademark.
Complainant’s
evidentiary burden in relation to paragraph 4(a)(ii) of the Policy is
relatively light and can be satisfied with minimal
effort, such as conducting
relevant searches. In the absence of
some additional evidence on point, the Panel cannot find that Complainant has
proven its case under paragraph 4(a)(ii)
of the Policy.
As
well, Respondent asserts that he has rights and legitimate interests in the
Domain Name as contemplated in Paragraph 4(c)(iii)
of the Policy because he is
making a legitimate noncommercial or fair use of the Domain name without intent
for commercial gain,
without intent to misleadingly divert consumers and
without intent to tarnish the Trademark.
Respondent bears the burden of establishing his rights and legitimate
interests under this Paragraph of the Policy.
The
first issue to consider in relation to Respondent’s reliance on Paragraph
4(c)(iii) of the Policy is whether Respondent is making
a “noncommercial” use
of the Domain Name without intent for commercial gain. Complainant originally claimed that Respondent’s activities were commercial in
nature. However, Complainant softened
this assertion considerably after receiving the Response. Complainant’s Supplemental Submission appears
to concede that Respondent use is not commercial in the usual sense. Instead, Complainant suggests that
Respondent’s website nonetheless has commercial value and asserts that
Respondent bears the burden
of disproving that commercial value.
In
support of that assertion, Complainant refers to Universal City Studios, Inc. v. Burns, D2001-0784 (WIPO Oct. 1,
2001). However, that case does not
support Complainant’s assertion. There,
the Panel ruled that the complainant had demonstrated sufficient active commercial
activity to satisfy its burden. The
Panel found that the respondent was attempting to generate revenues through the
sale of a book. The Panel noted that
the sale and distribution of the book was being made at cost but concluded that
the failure to make a profit
from sales of the book was not sufficient to avoid
the commercial nature of the activity.
In
this case, Respondent is not purporting to sell any product or service or to
generate any revenues at all.
Accordingly, the Panel is of the view that Respondent’s evidence and
Complainant’s admissions support the conclusion that Respondent
is making a
noncommercial use of the Domain Name.
The
next point that Respondent must prove is that his noncommercial use of the
Domain Name is “legitimate”. Other UDRP panels have ruled that operation of a
noncommercial fan site can constitute a legitimate noncommercial or fair use of
a
domain name. See Halen v. Morgan, D2000-1313 (WIPO Dec. 20, 2000); see also Springsteen v.
Burgur, D2000-1532 (WIPO Jan. 25,
2001); see also Smith v. DNS Research, Inc., FA 220007 (Nat. Arb.
Forum Feb. 21, 2004).
There
appears to be nothing illegitimate about the content of Respondent’s site. Complainant initially claimed that
Respondent was offering illegal and unauthorized downloads of concerts on its
site. However, the evidence submitted
by Respondent, and not denied by Complainant, shows that Complainant has
publicly authorized members
of the public to make copies of Complainant’s live
shows and to trade them online.
Complainant has provided no other evidence regarding such allegedly
illegal and unauthorized downloads. To
the contrary, Complainant’s Supplemental Submission confirms that:
“Complainant
does not seek to bar Respondent from offering free live music in streaming
format (which could be offered under a different
domain name), but rather seeks
to bar unauthorized use of the PEARL JAM trademark within his domain name.”
Complainant
says that Respondent could easily operate a website using any other domain name
that does not incorporate the Trademark.
However, if that argument were correct, paragraph 4(c)(iii) of the
Policy would have little purpose. As
noted by other panelists, the purpose of the UDRP is not to prevent registrants
from incorporating third parties’ trademarks into
their domain names. Rather, the Policy is only intended to
combat abusive, bad faith cybersquatting.
See Van Halen, supra.
The
Panel is of the view that Respondent’s evidence and Complainant’s admissions
support the conclusion that Respondent’s noncommercial
use of the Domain Name
in association with Respondent’s fan site is “legitimate”.
The
final question to be determined in connection with Paragraph 4(c)(iii) of the
Policy is whether Respondent’s use of the Domain
Name is being carried on
without intent to misleadingly divert consumers or tarnish the Trademark.
Respondent
claims to be a fan of Complainant. This
claim is confirmed by Complainant’s Supplemental Submission where Complainant
says, inter alia:
“Complainant
appreciates and respects its fans, especially Respondent Brian. J. Spencer…”
Respondent
says that his site is dedicated to promoting Complainant. Complainant does not deny this. Furthermore, Respondent claims he has
included Complainant’s website at the top of his “links” page and has clearly
identified Complainant’s
site as the only authorized Pearl Jam website. Complainant does not deny this. Respondent does not compete in business with
Complainant. There is no evidence that
anything about Respondent’s website tarnishes the Trademark.
Respondent
does not directly address the issue of whether or not its use of the Domain
Name is without intent to misleadingly divert
consumers in the context of
Paragraph 4(c)(iii) of the Policy.
However, Respondent does distinguish his activities from those of
cybersquatters who have been found to be engaging in “blatant attempts
to
entrap Internet users”. Respondent says
that a GOOGLE search he conducted using the words “Pearl Jam” returned
1,430,000 hits. Of those hits,
Respondent says that his own website appeared at position No.323 and that
Complainant’s website appeared at position
No.1. Respondent says that if he intended to “redirect” or “divert”
Internet users away from Complainant, or to falsely suggest association
with or
capitalize in some way on the public’s familiarity with Complainant, Respondent
would have elected to alter its coding and
design in order to increase its
search engine ranking.
Although
Respondent’s submissions on this point are not particularly compelling, they
constitute some evidence of Respondent’s subjective
intent. Complainant’s Supplemental Submission did
not refute Respondent’s assertion of his subjective intent. Complainant merely asserts that Respondent
must have had an improper intention merely by virtue of registering and using a
domain
name that included the well known trademark PEARL JAM. On balance, the Panel concludes that there
is no evidentiary basis for calling into question Respondent’s assertion of an
innocent
intention.
The Panel is satisfied that Complainant
has failed to prove that Respondent does not have any rights or legitimate
interests in respect
of the Domain Name as of the date of this Decision.
Complainant
must prove that the Domain Name was registered and is being used in bad
faith. Complainant has not done so.
There is no evidence that any of the
circumstances in paragraph 4(b) of the Policy apply to Respondent. In particular, there is no evidence that
Respondent wishes to sell the Domain Name, or that Respondent has engaged in a
pattern of
registering domain names to prevent trademark owners from
registering such domain names, or that Respondent is attempting to disrupt
a
competitor’s business, or that Respondent is attempting to attract users for
commercial gain.
Complainant referred to the decision in Pearl Jam, A General Partnership v. Lyn, FA 221238 (Nat. Arb. Forum Feb.
16, 2004) to support the argument that there is a legal presumption of bad
faith when Respondent
reasonably should have been aware of Complainant’s
marks. However, in that case the Panel
concluded from the respondent’s admissions that respondent had used the domain
name <jampearl.com>
improperly to derive commercial benefit from
Complainant’s mark. As well, a careful
reading of that decision reveals that the Panel had concerns about the
credibility of the respondent based on his
submissions. This case is different in both of those
respects.
Furthermore, the fact that Respondent in
this case had notice of the Trademark is not, in and of itself, determinative
of bad faith
in circumstances where Respondent is operating a noncommercial
site in tribute of Respondent. See
Van Halen, supra; see also Springsteen, supra; see
also Smith, supra. The evidence in this case supports the
conclusion that Respondent is operating such a website.
Complainant has not provided any other
evidence tending to show that Respondent has ever acted in bad faith in respect
of the Domain
Name or Complainant.
Accordingly, Complainant has not satisfied the requirements of paragraph
4(a)(iii) of the Policy.
DECISION
Having
considered all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <pearljamlive.com> domain name NOT be TRANSFERRED from Respondent to Complainant.
Robert A. Fashler, Panelist
Dated: March 29, 2004
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/256.html