DECISION

Pearl Jam, A General Partnership v. Francesco Catalano

Claim Number:  FA0402000236583

PARTIES

Complainant is Pearl Jam, A General Partnership (“Complainant”), represented by Pallavi Mehta Wahi, of Stokes Lawrence, P.S., 800 Fifth Ave., Suite 4000, Seattle, WA 98104-3179.  Respondent is Francesco Catalano (“Respondent”), Via S. Maria 14, Pietrapaola, CS 87060.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pearljamclub.com>, registered with Tucows 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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 10, 2004; the Forum received a hard copy of the Complaint on February 13, 2004.

On February 11, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <pearljamclub.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 February 18, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 9, 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@pearljamclub.com by e-mail.

On March 8, 2004 Respondent sent an email to the Forum stating that it was “open to every request of the complaint.” However this email does not comply with any of the formal requirements of the UDRP pursuant to Policy ¶ 5. Moreover, Respondent did not comply with ¶ 5(b)(viii) which requires an authorization statement to accompany the Response.

Having received no formal Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 18, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <pearljamclub.com> domain name is confusingly similar to Complainant’s PEARL JAM mark.

2. Respondent does not have any rights or legitimate interests in the <pearljamclub.com> domain name.

3. Respondent registered and used the <pearljamclub.com> domain name in bad faith.

B.  Respondent failed to submit a formal Response in this proceeding.

FINDINGS

Complainant, Pearl Jam is one of the most popular American bands in the world. The band has performed and sold albums under their PEARL JAM mark since 1991. Over the past 14 years Complainant’s audience and national recognition has grown exponentially. Complainant has sold millions of records, performed numerous sold out concerts across the globe and repeatedly is listed on popular music charts. Complainant has also won many music industry awards.

Complainant holds numerous trademark registrations with the United States Patent and Trademark Offices for the PEARL JAM mark (Reg. No. 1,952,582, issued January 1, 1991; Reg. No. 1,911,387, January 1, 1991; Reg. No. 1,911,524, issued January 1, 1991; and Reg. No. 1,916,938, issued January 1, 1991). Complainant also holds a trademark registration for the mark TEN CLUB (Reg. No. 2,642,377, issued October 29, 2002) for use in connection with its fan club services and licensed merchandise. Complainant also holds trademark registrations in several countries, including Australia, Canada, Mexico, New Zealand, and the European Community.

Complainant’s main website is located at the <pearljam.com> domain name, where customers can access Complainant’s services and products related to music.

Respondent registered the disputed domain name on October 25, 2002. Respondent is using the website to divert Internet traffic to Respondent’s commercial website that offers unauthorized products and services, which purportedly relate to Complainant’s mark.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the PEARL JAM mark through registration with the United States Patent and Trademark Office and in numerous countries worldwide, and through the use of the mark in commerce for the last 14 years. Respondent’s <pearljamclub.com> domain name is confusing similar to Complainant’s mark because the disputed domain name incorporates Complainant’s mark in its entirety and only deviates with the addition of the generic term “club.” There mere addition of this generic term to Complainant’s famous mark does not remove the disputed domain name out of the realm of confusingly similarity with regard to Policy ¶ 4(a)(i). See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark; see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant urges that Respondent has no rights or legitimate interests in the disputed domain name. Based on Respondent’s failure to respond formally to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name; see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist.

Furthermore, because Respondent has not submitted a formal Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.

Respondent is using the website to benefit from Complainant’s goodwill and to divert Internet traffic intended for Complainant’s website to Respondent’s website that offers unauthorized products and services which purportedly relate to the Complainant’s mark. The use of a confusingly similar domain name to divert Internet users interested in Complainant’s services to a competing website is not a use in connection with a bona fide offering of goods or services under the UDRP pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark; see also Avery Dennison Corp. v. Ray Steele d/b/a Mercian Labels Ltd. and selfadhesivelabels.com, FA 133626 (Nat. Arb. Forum Jan 10, 2003) finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant.

Moreover, Respondent has offered no proof and no evidence in the record suggests that Respondent is commonly known by <pearljamclub.com>. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name; see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark.

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the domain name for its own commercial gain. Respondent’s domain name redirects Internet users who intend to search under Complainant’s well known mark to Respondent’s website through the use of a confusingly similar domain name. Respondent’s commercial use of a domain name confusingly similar to Complainant’s mark evidences registration and use in bad faith pursuant to ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain; see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site.

Respondent registered the disputed domain name for the primary purpose of disrupting Complainant’s business by diverting Internet traffic intended for Complainant to Respondent’s website. Registering a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration  and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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

Sandra Franklin, Panelist

Dated:  April 1, 2004

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