WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bill Withers v. Robert Dominico et al.
Case No. D2000-1621
1. The Parties
Complainant is Bill Withers ("Complainant" or "Withers") an individual with a mailing address of P.O. Box 16698, Beverly Hills, California 90209-1698 USA.
Respondents are Robert Dominico, an individual located at 5777 West Century Blvd., #1605, Los Angeles, California 90045 USA together with Scott Arnold and FastPoint Communications, Inc. both located at 5777 West Century Blvd., Suite 876, Los Angeles, California 90045 USA ("Respondents").
2. The Domain Name and Registrar
The domain name at issue is <billwithers.com> (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia 20170 USA.
3. Procedural History
On November 22, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On November 28, 2000, the Center received hardcopy of the Complaint. On November 28, 2000 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.
On December 5, 2000 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.
The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On December 11, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
From December 5-11, 2000, the Center exchanged communications with Complainant.
On January 5, 2001, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On January 15, 2001 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single member panel consisting of the Sole Panelist.
4. Factual Background
Bill Withers is an internationally known singer, songwriter, performer and recording artists who has been in the entertainment industry since 1971. He has been known as Bill Withers not only professionally, but personally, all his life. Bill Withers is the owner and administrator of all rights relating to the common law trademark Bill Withers, including rights in his music, name, image and recordings.
Complainant alleges that BILL WITHERS is a common law trademark on the recordings, which identifies the product to be purchased by the public and identifies the singer. There are twelve such recordings with the BILL WITHERS common law trademark. Among them are the following:
Bill Withers Live at Carnegie Hall, Columbia/Legacy Record Label, Record # CK 65431, 1997;
Sussex Records, Record # SXBS 7025-2, 1973;
Lean On Me: The Best of Bill Withers, Columbia/Legacy Record Label, Record # CK52924, 1994;
The Best of Bill Withers:Lean On Me,Columbia/Legacy Record Label, Record #CK 63852, 2000;
Just As I AM, Bill Withers, Sussex Records, Record #SXBS 7006, 1971;
Still Bill, Bill Withers, Sussex Records, Record #SXBS 7014, 1972;
Menagerie, Bill Withers, Columbia Records, Record #JC 34903, 1977; and
Watching You, Watching Me, Bill Withers, Columbia Records, Record #FC39887, 1985.
Bill Withers is also the author of many popular songs including "Lean On Me", "Ain’t No Sunshine," "Grandma’s Hands," "Use Me," "Lovely Day," and "Just The Two Of Us." Bill Withers has been featured in publications; his music has been recorded by hundreds of artists and featured in numerous films, television shows and commercials. Bill Withers has received three Grammy Awards for songwriting.
Bill Withers is also the registrant of the domain names <billwithers.net>, <billwithers.org>, <bill-withers.com>, <bill-withers.net> and <bill-withers.org.>, <billwithersmusic.com> and the owner of the website located at www.billwithersmusic.com.
In December of 1999, Marcia Withers, Complainant’s Publishing Administrator ("PA") contacted Phyllis Strode of Strode and Lee Marketing (S&L), 1305 W. Arrow Highway, Suite 201, San Dimas, CA 91773 whose telephone number is 909.394.3155, for the purpose of designing a website for Bill Withers as an artist and his publishing companies. The site name would be <billwithers.com> and the Domain Name proved to be available according to a search in Network Solutions in December 1999 and January 2000. On Monday, January 10, 2000, Eric Gould of S&L instructed PA to email information to Rick at Vectranet, S&L’s hosting company that would register the Domain Name and supply Network Solutions with hosting information for the website. S&L suggested that PA send the email so billing would go directly to Complainant. PA immediately sent an email to Rick at Vectranet. After several telephone conversations and meetings, PA and S&L signed a proposal dated May 16, 2000 for designing the website. Once data was compiled for the site and design work progressed, S&L asked for the email receipt from Network Solutions on July 10, 2000 in order to get the site up with Vectranet. PA informed S&L that no receipt had been received. S&L contacted Luis Palafox, a partner at Vectranet to discuss the problem and was informed that Vectranet had in fact received the email but failed to register it with Network Solutions. Mr. Palafox admitted that a Vectranet employee who is no longer employed by the company was responsible for overlooking the email request by PA. He informed S&L that the current owner, the Respondent, had registered the Domain Name on February 16, 2000. When Mr. Palafox of Vectranet contacted Mr. Dominico and informed him of the error, Mr. Dominico informed him that he would sell the Domain Name for $20,000.00. Complainant could not launch the website as <billwithers.com> because Respondent, having no interest whatsoever in the name "Bill Withers", was trying to benefit commercially from the name as indicated by Respondent’s offer to sell the domain name to the Complainant for an exorbitant amount of money. By fraudulently purchasing the <billwithers.com> Domain Name, Respondents have prevented Bill Withers from reflecting the BILL WITHERS mark in a corresponding website where advertisers, music supervisors, artists and others can legitimately use an official Bill Withers website for business and licensing purposes.
5. Parties’ Contentions
A. Complainant contends that he has a common law trademark in BILL WITHERS. Complainant further contends that the Domain Name is identical with and confusingly similar to the BILL WITHERS mark pursuant to the Policy, paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy, paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii).
B Respondent failed to contest Complainant’s assertion that it has registered/common law marks in BILL WITHERS or that the Domain Name is identical with and confusingly similar to the marks.
Respondent failed to contest Complainant’s assertion that Respondent has no rights or legitimate interest in the Domain Name.
Respondent failed to contest Complainant’s assertion that Respondent registered and used the Domain Name in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that the Respondent has no legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Identity or Confusing Similarity.
Complainant contends that he has a common law trademark in BILL WITHERS. Complainant further contends that the Domain Name is identical with and confusingly similar to the BILL WITHERS mark pursuant to the Policy paragraph 4(a)(i).
An individual may be entitled to a common law trademark or service mark without registering the mark with the appropriate authority. See, Steven Rattner v. BuyThis Domain Name, (WIPO D2000-0402); Jeanette Winterson v. Mark Hogarth, (WIPO D2000-0235); Julia Fiona Roberts v. Russell Boyd, (WIPO D2000-0210). The individual must show that his or her name has achieved has sufficient secondary meaning or association with Complainant.
This result is consistent with United States trademark law in which personal names are protectable as trademarks or service marks upon a showing that the name has become distinctive through the acquisition of secondary meaning. See Adray v. Adray-Aart, Inc., 68 F.3d 362 (9th Cir. 1995), amended on other grounds, 76 F.3d 984 (9th Cir. 1996) (personal names are capable of becoming strong trademarks upon a showing of secondary meaning). See also McCarthy on Trademarks and Unfair Competition '13:2 (4th ed. 2000). Secondary meaning is the consumer=s association of the mark with a particular source or sponsor and is established out of long association of the name with the business, whereby the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favor of its meaning as a word identifying that business. See Visser v. Macrese et al., 214 Cal. App. 2d 249, 253, 29 Cal. Rptr. 367, 369 (Cal. Dist. Ct. App. 4th 1963); see also Levis Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1991) (en banc). In assessing secondary meaning, one must consider a variety of factors, including, but not limited to, A(1) advertising expenditures, (2) consumer ... linking [of] the mark to the source, (3) unsolicited media coverage of the product, (4) sales success, ... and [(5)] length and exclusivity of the mark=s use.@ Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F.Supp. 2d 305, 313 (S.D.N.Y. 2000) (quoting Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1222 (2d. Cir. 1987).
The Complainant has presented a lengthy list of his credits and the publicity that has surrounded his career as a performer. The Sole Panelist finds that a registered trademark or service mark is not necessary, because the name "Bill Withers" has sufficient secondary association with Complainant that common law trademark rights do exist under United States trademark law.
In addition, the Respondent has not contested the assertions by Complainant that he has valid common law trademark rights in BILL WITHERS. Therefore, the Sole Panelist finds that Complainant has a common law trademark in BILL WITHERS.
Complainant further contends that the Domain Name is identical with and confusingly similar to the BILL WITHERS trademark pursuant to the Policy paragraph 4(a)(i).
The Sole Panelist notes that the entirety of the mark BILL WITHERS is included in the Domain Name. Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). The addition of ".com" is required for registration of a domain name and in non-distinctive. In addition, the Domain Name is confusingly similar in that the offending domain name is misleading. The Domain Name <billwithers.com> suggests an association or relationship to Complainant which does not exist and, if used by parties other than Complainant, will cause confusion in the marketplace. See Nike, Inc., ICANN Case No. D2000-0167, id.
Therefore, the Sole Panelist finds that the Domain Name is identical with and confusingly similar to the BILL WITHERS mark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest.
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant alleges that Respondent has no relationship with or permission from Complainant for the use of the BILL WITHERS marks.
The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that it has rights or a legitimate interest in the Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The file contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
When Vectranet contacted Respondents on behalf of Complainant to inquire concerning the registration of the Domain Name, Respondents offered to sell the Domain Name to Complainant for $20,000. No evidence exists that Respondents ever used the Domain Name or that the Domain Name resolved to a website with posted content. The Sole Panelist concludes that the out-of-pocket costs directly related to the Domain Name are far less than $20,000. Therefore, the Sole Panelist finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b)(i).
The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
One such factor is that Respondent has made no use of the Domain Name. Complainant alleges that Respondent has not developed any active website at www.billwithers.com or made any other use of the Domain Name <billwithers.com>. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.
To quote a prior Panel decision, "[B]ecause Respondent is contributing no value-added to the Internet -- it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." Educational Testing Service v. TOEFL, ICANN Case No. D2000-0044.
See also, Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Prods. Corp. v. Yosef, D2000-0468 (WIPO July 27, 2000) (citing cases where panel found inaction constitutes bad faith).
In World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case No. D2000-0290 (June 20, 2000) the Panel made a finding of bad faith based on the fact that the domain name website had not been developed, stating "the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts." Id. at 10.15. See also, Mondich v. Brown, WIPO Case No. D00-0004 (February 16, 2000) (bad faith evidenced by "failure for a substantial period of time to make good faith use of the domain name for [respondent's] business");
In the present case, the Domain Name was registered on February 16, 2000. The Domain Name has not yet been used for any legitimate purpose. The lack of any legitimate, good faith use suggests bad faith.
The Sole Panelist finds that Complainant has shown sufficient facts, in addition to the elements of the Policy paragraph 4(b)(i), to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Sole Panelist concludes (a) that the Domain Name <billwithers.com> is identical with and confusingly similar to Complainant’s common law trademark BILL WITHERS, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Bill Withers.
Richard W. Page