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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Alvin Joiner p/k/a Xzibit v. Donald Martin

Case No. D2006-0539

 

1. The Parties

The Complainant is Alvin Joiner p/k/a Xzibit, Garden City, New York, United States of America, represented by Moritt Hock Hamroff & Horowitz, LLP, United States of America.

The Respondent is Donald Martin, Corona, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <xzibit.com> is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2006. On April 28, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On May 1, 2006, Wild West Domains, Inc. 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 May 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response May 23, 2006. The Response was filed with the Center May 23, 2006.

The Center appointed William R. Towns, Justin Hughes and Carol Anne Been as panelists in this matter on June 15, 2006. The Panel finds that it was properly constituted. Each member of 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, paragraph 7.

On June 26, 2006, the Panel issued a Procedural Order requesting that the Respondent submit a supplemental statement regarding his claim of rights or legitimate interests arising from use of the disputed domain name. The Complainant was afforded an opportunity to submit a supplemental reply. Both parties provided supplemental statements, which have been included in the record of this proceeding.

 

4. Factual Background

The Complainant, a recording artist and entertainer in the hip hop and rap genre, is the owner of the registered trademark XZIBIT. The Complainant has obtained two registrations of the XZIBIT mark in the United States, with the first of these registrations being issued by the United States Patent & Trademark Office (USPTO) on March 2, 2002. The USPTO registrations reflects the Complainant’s first use of the mark in commerce in 1994, in relation to the Complainant’s musical performances, and the first use of the mark in relation to musical sound recordings in August 1996.¹

The Complainant released his debut solo album “At the Speed of Life” in October 1996, and has since appeared in a number of feature films, television shows, and commercials, as well as being featured on recordings released by other well-known hip hop and rap artists. He serves as the host of the MTV television show “Pimp My Ride”, which aired its first show in March 2004.

The Respondent registered the disputed domain name <xzibit.com> on January 28, 1997. Between June 2000 and January 2001, the disputed domain name directed internet users to a website for the Respondent’s graphic design company “Don Martin Design.”² The parties dispute whether the Respondent made any use of the disputed domain name in connection with that website prior to June 2000, with the Respondent maintaining that he had used the domain name for that purpose since March 1997. The Respondent discontinued the use of the disputed domain name in connection with the Don Martin Design website in January 2001, and the record does not reflect any active use of the disputed domain name by the Respondent since that time.

At the time the Complaint in this proceeding was filed with the Center, the disputed domain name resolved to a “parked” website containing links to various websites containing hip hop and rap content, as well as the website for MTV’s “Pimp My Ride” television show, which is hosted by the Complainant. The Respondent had also offered the disputed domain name for sale to the public on the auction website “The Domain Name Aftermarket.com”, at various asking prices between $50,000 and $4,000,000. The disputed domain name is described on the auction site as “a great name for any company but especially the entertainment field, (namely MTV)”.

In response to the Panel’s Procedural Order of June 26, 2006, inviting the Respondent to submit evidence to support his claim of having made an active, good faith use of the domain name as far back as March 1997, the Respondent submitted reprints from the Internet Archive Way Back Machine site of his website as it existed in November 2000.

The Respondent also directed the Panel to his current website at “www.donmartinstudios.com/xzibit.com”, as evidence of a future <xzibit.com> website he intends to launch exhibiting and offering for sale works of various artists, including his own works.

 

5. Parties’ Contentions

A. Complainant

The Complainant describes himself as a popular music and recording art of the hip hop genre. The Complainant offers evidence of his registration of his XZIBIT mark, and contends that he has used the mark in commerce since at least 1994. According to the Complainant, the mark is an invented word – a play on the common word “exhibit” morphed through Ebonics – and has no meaning other than as a trademark.

The Complainant contends that he performs and markets his music exclusively using the XZIBIT mark. According to the Complainant, millions of dollars have been spent during the last ten years to publicize the XZIBIT mark, and the mark has been extensively used to ensure the automatic identification of the mark with the Complainant in the minds of the public and in the entertainment industry. The Complainant released his debut solo album “At the Speed of Life” in October 1996, and asserts that he and those working on his behalf spent more than $1.5 million promoting the album during the year prior to its release.

The Complaint states that he also promotes various products and merchandize using the trademark, and has used the mark in connection with his appearances in several feature films and as the host of the popular MTV show “Pimp My Ride”, which had its debut in March 2004. The Complainant argues that as a result of his performances, marketing and promotional acts utilizing the XZIBIT name and mark, the XZIBIT mark has achieved significant fame and notoriety.

The Complainant asserts that the disputed domain name is identical to his XZIBIT mark. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not a licensee of the Complainant, has no relationship with the Complainant, and has not otherwise been authorized to use the Complainant’s mark. The Complainant argues that the Respondent has never been commonly known by the domain name, and has no trademark or service mark rights in XZIBIT or <xzibit.com>. Further, the Complainant maintains that the Respondent’s use of the domain name between June 2000 and January 2001 in connection with his graphic design website does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent otherwise cannot establish rights or legitimate interests in the domain name based on passive holding of the domain name or through offering the domain name for sale on an auction website.

The Complainant argues from the foregoing that the Respondent registered and is using the domain name in bad faith. According to the Complainant, the Respondent had actual or constructive knowledge of the Complainant’s rights in the XZIBIT mark at the time of the domain name registration, which occurred within three months of the release of the Complainant’s debut album, on which more than $1.5 million was expended in promotion. Given this, the Complainant asserts that the Respondent clearly registered the domain name for the purpose of trading on the fame and notoriety associated with the Complainant’s mark, in order to sell or transfer the domain name to the Complainant or another for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain. The Complainant also concludes that the Respondent’s passive holding of the domain name is evidence of bad faith.

B. Respondent

The Respondent maintains that he registered and is using the domain name in good faith, without any intent to trade on the goodwill in the Complainant’s mark. The Respondent states that he registered the disputed domain name as a short and catchy name to use with his graphic design business, as a play on the common word “exhibit”. The Respondent claims he did not learn of the Complainant or the Complainant’s assertion of trademark rights in XZIBIT until sometime after he registered the disputed domain name.

According to the Respondent, after registering the disputed domain name he continuously used the domain name in connection with his commercial graphic design website until January 2001, when he decided to take it down because of “changes in my life and other circumstances.” However, the Respondent maintains that he always had aspirations to re-launch the site, and for this reason he turned down numerous offers to buy the domain name (mostly from cybersquatters, according to the Respondent). The Respondent asserts that he could easily have the website up and running in 24 hours, if need be.

Regarding his offer to sell the disputed domain name on the Domain Name Aftermarket website, the Respondent insists that the description and asking price “were simply key words and numbers to draw attention, and to create dialog with anyone who may have interest in the name.” The Respondent notes that he cancelled the auction on the day he received notice of the Complaint.

In that regard, the Respondent points out that until that time he had never received notice from the Complainant, even though he had registered the domain name more than nine years earlier, and used the domain name in connection with his business. The Respondent argues, in any event, that the Complainant does not have the exclusive right to use “xzibit” on the Internet, and that he inferred from the absence of any notice from the Complainant that his use “xzibit” in connection with non-similar goods or services would be allowed to co-exist with the Complainant’s use of his XZIBIT mark, just as the Respondent believes that the mark XZIBIT DISC, registered with the USPTO in 2001, co-exists with the Complainant’s mark.

The Respondent concludes by stating that his original intention was to use <xzibit.com> in connection with a place or location where artists and creative individuals could come together, showcase and display their works, and that he “happen[s] to be one of these artists on display.” He announced that his plans were to re-launch <xzibit.com> in the near future and continue with his original plans.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either 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 interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a number of panels have concluded that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <xzibit.com> is identical and confusingly similar to Complainant’s XZIBIT mark for purposes of paragraph 4(a)(i) of the Policy. The Complainant beyond question has established rights in his XZIBIT mark through registration and use, and the disputed domain name incorporates the Complainant’s mark in its entirety. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

C. Rights or Legitimate Interests

The disputed domain name incorporates in its entirety the Complainant’s XZIBIT mark. The record demonstrates that, prior to the Respondent’s registration of the disputed domain name, the Complainant had established rights in the mark. It is well settled that the term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218. Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).

The Complainant has demonstrated that the Respondent has never been licensed or otherwise authorized to use the Complainant’s mark or to register and use a domain name incorporating the Complainant’s mark. The Respondent registered the disputed domain name in January 1997, several months after the debut of the Complainant’s first solo album, which was extensively promoted. The Complainant has pointed to the lack of any evidence of the Respondent’s active use of the domain name prior to June 2000, a use which the record reflects continued only until January 2001. The Complainant also has presented evidence that the Respondent subsequently offered the domain name for sale to the public for as much as $4,000,000, and persisted in offering the domain name for sale at a price well in excess of any reasonably anticipated out-of-pocket costs directly associated with the domain until the filing of the Complaint.

Given the foregoing, the Panel concludes that the Complainant had made a prima facie showing under paragraph 4(a)(ii) of the Policy, requiring the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name was in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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 Respondent claims rights or legitimate interests in the disputed domain name based on the use of the disputed domain name, prior to any notice of this dispute, in connection with a bona fide offering of goods or services. The record reflects that, prior to receiving any notice of this dispute, the Respondent made use of the disputed domain name in connection with the Respondent’s graphic design website, at least for a period of roughly six months between June 2000 and January 2001. The dispositive question presented here, however, is whether this constitutes the use of the disputed domain name in connection with a bona fide offering of goods or services. In order for an offering under paragraph 4(c)(i) to be considered bona fide, the domain name use must be in good faith under paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840.

The Panel finds that the Respondent has failed to establish rights or legitimate interests in the disputed domain name arising from the use of the domain name in connection with his graphics design website. There is no convincing evidence that the Respondent attempted to make such use of the domain name until more than three years following its registration, and then for a period of only six months. By that time, the record leaves little doubt that the Complainant’s mark had achieved a degree of fame and notoriety. Further, while the Complainant acknowledges that the XZIBIT mark is a play on the common word “exhibit”, even so “xzibit” is an invented word with a distinctive spelling, and the Complainant has presented convincing evidence, based on Google searches, that “xzibit” is almost exclusively associated on the Internet with the Complainant and the products and services identified by the XZIBIT mark.

The Panel concludes from the record as a whole that the Respondent adopted the disputed domain name for use with his website primarily in an attempt to trade on the goodwill and reputation of the Complainant’s mark. This does not constitute a good faith use of the domain name under the Policy, and consequently the Respondent has failed to demonstrate rights or legitimate interests in the domain name through such use. The Respondent has presented no evidence that he has been commonly known by the disputed domain name, or evidence of extensive and continuous use sufficient to establish common law trademark or service mark rights in the name. The Respondent does not claim to have made a legitimate noncommercial or fair use of the domain name; nor is there any evidence in the record to support such a claim.

The Respondent alleges but has failed to demonstrate his use of the disputed domain name in connection with his graphic design website prior to June 2000. The Respondent merely directs the Panel to screens from his website as it existed in November 2000. This is not evidence of the Respondent’s use of the domain name prior to June 2000. Further, the Respondent has offered inconsistent versions of how he used the disputed domain name prior to June 2000. One the one hand, the Respondent maintains that he used the domain name exclusively with his graphic design website. On the other hand, the Respondent states that he registered the domain name for a website to display his art work and the works of other artists, a website that the Respondent now says he is preparing to “re-launch”.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Panel concludes from the totality of the circumstances of this case, as discussed above, that the Respondent registered and is using the disputed domain names in bad faith. The record is replete with indicia of the Respondent’s attempt to profit from and exploit the Complainant’s mark, including offering the domain name for sale to the public at prices as great as $4,000,000, with a description of the domain name that leaves little room for doubt that the Respondent was aware of the Complainant’s rights in the mark, and the goodwill and reputation of the mark.

Nevertheless, Paragraph 4(a)(iii) of the Policy embodies a requirement that is “satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith”. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. See Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782; Teradyne Inc. Teradyne, Inc. v. 4tel Technology, WIPO Case No. D2000-0026.

To establish bad faith registration of the disputed domain name, the Complainant must demonstrate from the circumstances attendant to the registration that the Respondent’s primary motivation was to profit from and exploit the Complainant’s rights in the XZIBIT mark. The Panel cannot infer solely from indications of subsequent bad faith use of the domain name that the Respondent initially registered the domain name in bad faith. However, the Respondent’s failure to provide credible evidence of any legitimate use of the domain name for more than three years following its registration, even after a specific request from the Panel, brings into focus the timing of the registration of the disputed domain name in connection with the much publicized release of the Complainant’s debut solo album.

In the final analysis, the Panel concludes from the totality of circumstances surrounding the Respondent’s registration of the disputed domain name that the Respondent was aware of the Complainant and the Complainant’s rights in the XZIBIT mark, which the Complainant began using in commerce as early as 1994. As noted above, the Complainant’s mark is an invented word with a distinctive spelling. The Respondent registered the disputed domain name, which is identical to the Complainant’s mark, within several months of the debut of the Complainant’s first solo album, which had been extensively promoted and publicized. The Panel also notes from its review of the exemplar website provided by the Respondent that, among other services, the Respondent prominently held himself out as specialized in trademark and brand development, as well as website development. Yet, the Respondent was unable to provide any evidence of a legitimate use or even demonstrable preparations to make such a use of the domain name for more than three years following the registration of the domain name, despite the Panel’s specific request for such information.

The Panel further finds from the totality of the circumstances in this case that the Respondent’s primary motive for registering the mark was an intent to profit from and exploit the Complainant’s trademark rights, which constitutes bad faith registration, and that the Respondent is continuing to act in bad faith. Accordingly, the Panel finds that the Complainant has met his burden of establishing bad faith registration and use under paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <xzibit.com>, be transferred to the Complainant.

William R. Towns Presiding Panelist
Justin Hughes Panelist	Carol Anne Been Panelist

Dated: July 31, 2006

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¹ The Complainant’s applications to register the XZIBIT mark were both filed with the USPTO on April 30, 2001.

² This use is reflected in archived web pages maintained at the Internet Archive Way Back Machine website, “www.archive.org”, and submitted by the Complainant as an exhibit to the Complaint. There is no archival evidence of the Respondent’s use of the domain name before June 23, 2000 available at this website. The archived web pages indicate that the Respondent asserted trademark rights in “Xzibit”, as suggested by the “tm” superscript employed on the page.