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WIPO Arbitration and
Marshall B. Mathers III v. Tim Mcintosh / Visitair Ltd
Case No. D2004-0144
1. The Parties
The Complainant is Marshall B. Mathers III, New York, New York, of United States of America, represented by W. H. Beck, Greener & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Tim Mcintosh / Visitair Ltd, Billericay, Essex and Acton,
London, of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <eminemmobile.com> (herein the "domain
name in dispute") is registered with CSL Computer Service Langenbach GmbH
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2004. On February 25, 2004, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On February 26, 2004, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 25, 2004.
The Center appointed J. Nelson Landry as the sole panelist in this matter on
March 31, 2004. The Panel finds that it was properly constituted.
The Panel has submitted the Statement of Acceptance and Declaration of Impartiality
and Independence, as required by the Center to ensure compliance with the Rules,
4. Factual Background
The Complainant, a most popular music and recording artist, owns all rights, titles and interests in and to the name and trade mark EMINEM ( herein the "Trade Mark"). A listing of five trade mark applications and twelve registrations for the Trade Mark EMINEM in the United States of America and in seven other countries is given in Annex 13 to the Complaint. In the absence of the corresponding documents under Annex 14, the Panel has, with the assistance of the numbers provided in Annex 13, located in the United States Patent Office Records the registrations and observed that the Trade Mark is registered in association with entertainment services and articles of clothing, disclosing 1996, for first use of the services and April 1999, for clothing.
The Complainant performs and records under the pseudonym EMINEM at least since 1996, when he released his debut album and has performed under this name ever since. He has released a large number of recordings under the name EMINEM, more than 30 recordings from 1996, up to the year 2000, as shown in Annex 6 to the Complaint, two of which have sold more than five million copies each world-wide. In 2001, the Complainant won three "Grammy" awards for his musical recordings and in 2003, while he was nominated for five Grammy awards, he won two Grammy awards.
The Complainant has performed under the pseudonym and Trade Mark EMINEM in about 100 cities throughout the United States of America and Canada and in about 20 cities throughout Europe, including London and Manchester in United Kingdom, according to Annex 11. As a consequence of these the Complainant is known throughout the world as "Eminem". A search made in the international "Google", "Yahoo" and "MSN" internet search engines shows that, in each search engine, all of the first 20 "hits" on the name "Eminem" refer to the Complainant, activities as shown in Annex 12.
The Complainant is also the owner of some US copyright registrations in respect of musical recordings which registrations mention both the patronymic name of the Complainant and his pseudonym, EMINEM.
The Complainant like many popular music artists authorized licensees to merchandize items of clothing bearing the Trade Mark since at least 1999. Such clothing has been sold at virtually every performance the Complainant has given since that time, both inside and outside of the United States, as well are being offered on the Complainant's website at <eminem.com>, according to Annex 16. In April 2001, the Complainant appointed Bravado Merchandising as the sole official licensee and supplier of authorised EMINEM clothing and merchandise for Europe responsible for all European authorized sales thereafter.
The Respondent registered the domain name in dispute on March 19, 2003. As put in evidence in Annex 18 a print taken on or around the February 18, 2004, of the page to which the user was directed if he/she accessed <eminemmobile.com> on that date. The panel has observed therein that in the 2004 print, at the very end, there is a notice to the visitor that "Eminen Mobile is an independent and unofficial site and is no way endorsed , affiliated or connected with the artist himself " ( herein the "disclaimer notice") . This disclaimer notice does not appear in the early print of August 2003, shown in Annex 19. The February 2004 print shows that numerous items are offered for sale, such as Favourite Animations and Favourite Picture Messages wherein the word Eminen is presented with the same reversed E letter in the last syllable "nem".
Neither the Complainant, nor his licensee has given any consent, license or authorisation to the Respondent or to any other person, for any use or registration of the domain name in dispute.
On March 1, 2004, Respondent telephoned the Case Manager in this case informing him of a preferred e-mail address to send the Complaint and on March 4, 2004, Respondent send an e-mail to the Case manager acknowledging his going through the "emails received regarding this dispute this morning, and will get back to you later".
Respondent did not file any Response nor any evidence to rebut the evidence
produced by Complainant.
5. Parties' Contentions
The Complainant alleges that the domain name in dispute is confusingly similar to the Trade Mark and the name EMINEM, owned and registered by the Complainant. The sole distinguishing element of the domain name in dispute is the word `Eminem', the "com" element being non-distinctive and the "mobile" element being descriptive of goods and services pertaining to mobile telephones.
The Complainant submits that the element EMINEM in the domain name in dispute is identical or virtually identical to the following reasons: first the uninterrupted use of the pseudonym of the Complainant; second the Complainant's stage and trading name; third the subject matter of the Complainant's Trade Mark applications and registrations and fourth the Trade Mark which is used under license from the Complainant by his licensees to identify, produce and sell items of clothing and other merchandise.
The Complainant represents that already before the March 19, 2003, the date of registration of the domain name in dispute, he was one of the world's highest profile and known popular music recording and performing artists and continues to be so, was known internationally as EMINEM in 1999, with the release of his first album THE SLIM SHADY LP.
The Complainant further represents that Respondent has no rights or legitimate interests in respect of the domain name in dispute in that there is no evidence that the Respondent conducts any legitimate business or activities under the name eminemmobile nor that he has any present or bona fide interests in establishing any legitimate business or activities under the name. The Complainant contends that to the extent that the Respondent conducts or intends to conduct a business or non-profit making activity by reference to the Trade Mark EMINEM any such use would not be bona fide or legitimate for the purpose of these proceedings and furthermore that the Respondent, by implication, admits that the domain name in dispute means and will be understood to mean the Complainant by posting a link to "Official Eminem Site" on the web page accessed by the domain name in dispute. This, according to Complainant, shows that the Respondent was fully aware that the domain name in dispute would be understood as indicating the Complainant.
Finally the Complainant contends that the domain name in dispute was registered and is being used in bad faith for a number of reasons. In view of the enormous promotion and public recognition of the trade mark EMINEM generated by the Complainant and his licensee, the Respondent, when he registered the domain name in dispute on the March, 19, 2003, must have been aware of the Complainant's pseudonym and Trade Mark EMINEM. It is submitted that in these circumstances, mere registration of the domain name constitutes bad faith use and registration for the purpose of the policy and these proceedings.
The web page headed "www.eminemmobile.com" attached to the domain name in dispute and shown in Annex 18 is liable to deceive the public into believing that the website is authorized and controlled by the Complainant, since the only distinctive element of this mark being Complainant's pseudonym and Trade Mark EMINEM. The deception is likely to cause damage to the Complainant in the form of lost sales and damage to his reputation as the domain name is used by an entity over which the Complainant has no control. It is submitted that this use of the domain name in dispute constitutes bad faith use and registration for the purpose of the Policy and these proceedings.
The Complainant submits that the likelihood of confusion is not diminished by the link to the "Official Eminem Site". A visitor to the site will expect to see the name EMINEM and it is to that name that such a visitor's eye will be directed. Even if the link to the official website were noticed by internet users it would not convey the message that the site was not endorsed by the Complainant or his licensees. Visitors to the websites may come from all over the world. It cannot be assumed that they would understand the meaning of the word "official". It cannot be assumed that the link to the official EMINEM website means that the website <eminemmobile.com> is unofficial. In any event the word "official" or "unofficial" tells the user nothing as to whether or not the website is authorised.
Referring to the above facts and representations, Complainant submits that the elements set out in paragraph 4(b) of the Policy, more particularly paragraphs 4 (ii), (iii) and (iv) apply. The term for "commercial gain" for the purpose of this Policy and Rules should be interpreted to include the prospective or intended sales of ring tones, operator logos, screensavers, posters, mobile telephone fascias, all bearing the Trade Mark EMINEM under paragraph 4(b)(iv)).
The Complainant represents that it is well settled that the four criteria set
out in paragraph 4(b) of the Policy are non-exhaustive and thus relies on the
WIPO Panel decision in Peter Frampton v Frampton Enterprises Inc, WIPO
Case No. D2002-0141. If contrary to the Complainant's submissions it is
found that the registration and domain name in dispute by the Respondent does
not fall within the indicia of bad faith listed in paragraph 4(b) of the Policy,
Complainant submits that the Panel should in any event find the Respondent's
intent in registering the said domain name, as evidence by its subsequent activities,
constitutes bad faith in registration and use of the domain name in dispute,
sufficient for a decision that the domain name in dispute should be transferred.
Finally Complainant further submits that none of the elements in paragraph
4(c) of the Policy applies. The Respondent conducts no legitimate business or
any legitimate offering of goods and services from any web pages established
under the domain name in dispute. In this regard it is submitted that no offering
of goods and services in reference to the Complainant's well known pseudonym
and Trade Mark would be legitimate and that the Respondent is not and has never
been known by the domain name in dispute and that the Respondent is not making
legitimate non-commercial or fair use of the domain name in dispute. On the
contrary, the domain name in dispute is intended and is being used by the Respondent
to divert internet users to the Respondent's website for commercial gain by
causing confusion with the Complainant's pseudonym stage name and trade mark.
Such uses cannot be considered legitimate for the purposes or the UDRP. See
Peter Frampton v. Frampton Enterprises Inc,
WIPO Case No. D2002-0141.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
i. 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. The respondent has no rights or legitimate interest with respect to the domain name; and
iii The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has clearly established that it has rights in the Trade Mark EMINEM, both common law rights from use since 1997, and then rights under the numerous subsequent registrations identified in Annex 13.
The Panel observes that the work EMINEM is a coined or fanciful word which conveys to the Trade Mark a highly distinctive character. Such distinctive character has been significantly enhanced by the continuous and extensive use of the Trade Mark in the numerous countries put in evidence in association both with entertainment services and the sale of items normally associated with music entertainment. There is no doubt that the domain name <eminemmobile.com> is confusingly similar with the EMINEM Trade Mark of the Complainant for purposes of the Policy. The domain name in dispute incorporates in its entirety the Trade Mark.
The domain name in dispute is also confusingly similar with the pseudonym of the Complainant and with the website address <eminem.com> of the Complainant. In the opinion of the Panel, the addition of the descriptive word "mobile" does not deter the reader from the fact that the EMINEM Trade Mark has been taken and associated with description word "mobile" and the suffix ".com" which result in the domain name in dispute.
This view and assessment of Complainant's rights by the Panel is further reinforced by the number of registrations, pending applications for registration, of countries in which the Complainant has performed his entertainment activities, either on stage or by the sale of over 10 millions of recordings, the whole contributing to the rapid increase of goodwill in and fame attached to Complainant's Trade Mark.
The Panel finds that the domain name in dispute is confusingly similar with the registered Trade Mark EMINEM of the Complainant.
The criteria of paragraph 4(a)(i) have therefore been met.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interest in the domain name in dispute by alleging that the Respondent has never been known by the name EMINEM or the domain name in dispute, is not making legitimate non commercial or fair use of the domain name and in fact, according to Respondent's own behavior, is not using the domain name in dispute in connection with bona fide offering of goods and services.
The Complainant's representations are based on one UDRP decision, the Peter Frampton case cited herein above, supporting in significant part its representations which the Panel considers well founded, the said decision referring or adopting relevant teachings and dicta in earlier UDRP decisions mentioned therein.
Respondent has been made aware of the Complainant's position in the Complaint that was served upon him, the former having acknowledged to this Case manager the reception of the Complaint and his intention to respond thereto. However, the Respondent has either neglected or decided not to file any evidence which may rebut the prima facie case that Complainant has made.
The Panel adopts the representations made by the Complainant that by posting a link to "Official Eminem Site" on the web page access by the domain name in dispute, this shows that the Respondent was fully aware that the domain name in dispute will be understood by the visitors as indicating the Complainant, and that the domain name in dispute has been adopted and registered with the full knowledge of the EMINEM Trade Mark as well as the constructive notice of the status of said Trade Mark arising out of its registration in several countries.
The Panel believes that the Respondent has yet to provide any base that would legitimize any claim it has to the domain name in dispute. In fact, it is extremely unlikely in the present circumstances that the Respondent can even make such a claim which he had an opportunity of so doing, having acknowledged in communication with the Case manager reception of the Complaint.
The simple reason is that the domain name in dispute includes the Complainant's Trade Mark on the one hand and that the Complainant has never authorized the Respondent to utilize the Trade Mark in conjunction with any goods, even less the specific goods or services which the Complainant or its exclusive licensees provide under that Trade Mark, nor does that Complainant have any relationship or association whatsoever with the Respondent.
The Panel concludes that the Respondent has not made any use of the domain name in dispute in connection with the bona fide offering of goods and services.
Accordingly there is no evidence that the Respondent has any right of legitimate interest in the domain name in dispute and the conditions for the second criteria have been fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4 (b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(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 the 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 website or other on-line location, by creating a likelihood or confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
It should be noted that the circumstances of bad faith are not limited to the
above as the Respondent has mentioned in relying in the Panel decision Peter
Frampton v. Frampton Enterprises Inc., WIPO
Case No. D2002-0141.
The Panel has determined from the well documented evidence that the domain name in dispute was registered in March 2003, many years after the beginning of the Complainant's artistic career and its rapidly growing popularity if not fame,
The Panel finds that the Respondent's action constitutes bath faith registration
and use of the domain name in dispute. Upon considering the fact that the Trade
Mark is a fanciful and coined word, that the Complainant has performed numerous
concerts or representations in the world and in particular in United Kingdom
where the Respondent resides, it is inconceivable to this Panel that when the
Respondent chose and registered the domain name in dispute in 2003, it had not
been fully aware of Complainant's Trade Mark and particularly in view of the
wide spread success Complainant has enjoyed, a success being illustrated in
the facts, as put in evidence, that two recordings of Complainant were sold
in at least five millions copies each and that Complainant received two Grammy
Awards in two different years.
The Panel finds significant that, as put in evidence in annexes 18 and 19, it is only after one year of registering the domain name in dispute that Respondent modified its website to introduce at the end thereof the disclaimer notice. This appears to this Panel to be an after the fact acknowledgement of Respondent awareness of the Trade Mark of Complainant at the time of registration of the domain name in dispute.
The Panel therefore concludes that the domain name in dispute has been registered in bad faith.
Does the insertion of this notice normalize the situation for Respondent and thereafter makes his activities ones of good faith? This Panel does not find so. The fact of the matter remains that EMINEM is not only the pseudonym of the artist but it is a very well-known Trade Mark which enjoys exclusive rights and substantial goodwill. The Panel finds significant that while the disclaimer notice was introduced in 2004, there are still in Respondent's website several graphic representations such as "the Eminem show" and at least three others under "Your Favorite Operator's Logo", "Your Favorite Animations" and "Your Pictures Messages" wherein the word EMINEM is spelled as the artist's distinctive spelling with the second E reversed left to right as well several ring tones of Complainant's songs with the title identified, all showing association to or capitalizing on Complainant's goodwill and all of this prior to the said disclaimer notice. These are not activities conducted in good faith.
As the Panel stated in to Helen Folasade Adu known as Sade v. Quantum Computer
Services, Inc. WIPO Case No. D2000-0794,
referred to in the Peter Frampton case "this Administrative Panel
is convinced that the Respondent, despite its denials, has intentionally associated
the said domain name with the Complainant's reputation and goodwill." The
Panel in this case finds that, notwithstanding the disclaimer notice, the various
associations mentioned in the preceding paragraph constitute one or several
indications of a continuation of Respondent's deliberate efforts and attempts
at capitalizing and benefiting from the renown and popularity of the artist
name EMINEM as well as from the goodwill associated with the Trade Mark.
As it was represented by Complainant and found substantiated by the Administrative Panel, in said Helen Folasade case, "it was 'inconsistent' for a Respondent to have associated a domain name with a music category on a Respondent website and to simultaneously deny that Respondent was representing a connection between that domain name and the complainant, a famous singer". We have a similar connection or association in the present case.
Therefore the Panel finds that the domain name in dispute was registered and
is being used in bad faith.
The Panel concludes that:
(a) the domain name <eminemmobile.com> is confusingly similar to the Complainant's Trade Mark EMINEM;
(b) the Respondent has no rights or legitimate interest in the domain name in dispute;
(c) the domain name in dispute has been registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <eminemmobile.com> be transferred to the Complainant.
J. Nelson Landry
Dated: April 7, 2004.