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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Stephan Jenkins Productions Inc. v. Third Eye Blinds & Curtains

Case No. D2008-1656

1. The Parties

The Complainant is Stephan Jenkins Productions Inc., of California, United States of America, represented by Dreier LLP, United States of America.

The Respondent is Third Eye Blinds & Curtains, of Maharashtra, India.

2. The Domain Name and Registrar

The disputed domain name <thirdeyeblind.net> is registered with Lead Networks Domains Pvt. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2008. On October 31, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On November 11, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 11, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 13, 2008. The Center verified that the Complaint together with the amended Complaint (for convenience, referred to together as “the Complaint” below) satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2008. The Response was filed with the Center on December 9, 2008.

The Center appointed James A. Barker as the sole panelist in this matter on December 17, 2008. 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, paragraph 7.

4. Factual Background

The Complainant provides evidence (a copy of a WhoIs record) that on September 26, 2008, the disputed domain name was registered in the name of “Abadaba S.A.”. The Complaint as originally filed therefore named “Abadaba S.A.” as the Respondent (the Respondent’s identity is discussed below), with an address in Panama. The Complainant points to that entity having been unsuccessfully involved in a number of prior proceedings under the Policy. Those proceedings include: Rediff.com India Ltd. v. Abadaba S.A., Domain Admin, WIPO Case No. D2008-0803; Forest Laboratories Inc. v. Abadaba S.A., Domain Admin, WIPO Case No. D2008-0413; MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325; Banco do Brasil S.A. v. The Tidewinds Group, Inc., Abadaba S.A. Domain Admin, WIPO Case No. D2007-1657; Eldorado Stone Operations, LLC v. Abadaba S.A., Domain Admin, WIPO Case No. D2007-1580; Sanofi-Aventis v. Abadaba S.A., WIPO Case No. D2006-1611. No response was filed in any of those cases.

The disputed domain name was first created in 1999 (as indicated by the “creation date” in the WhoIs record). At the date of this decision, the disputed domain name did not revert to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name was transferred from Abadaba S.A. to the Respondent between October 17 and 23, 2008. The Complainant has conducted research and has determined that the Respondent is not a legitimate business entity. The Complainant sought to contact the Respondent at the contact details for it in the WhoIs record, but those details were incorrect or inoperative.

The Complainant claims rights in a common law trademark for THIRD EYE BLIND. That mark has been in use since 1993 in connection with live and recorded performances by the musical band “Third Eye Blind”. The Complainant has also made applications for related registered trademarks in the United States. The Complainant provided various evidence of the reputation and album sales of the band �Third Eye Blind’, including evidence of various on-line articles, interviews and advertisements relating to the band.

The Complainant operates a website at “www.3eb.com” in connection with the band and its mark.

The Complainant provides evidence of various exchanges, including letters of demand, sent to the previous registrant, “Abadaba S.A.” In one email dated October 3, 2008, Abadaba S.A. responded to the Complainant, denied all allegations in the Complainant’s letter of demand, claimed that the law of the United States did not apply to Abadaba S.A. in Panama, and offered to sell the disputed domain name for USD $7,500. Following a lower offer from the Complainant, Abadaba S.A. then offered to transfer the disputed domain name for USD $6,000 by email on October 15, 2008.

The Complainant did not accept that offer and filed these proceedings. The Complainant provides evidence that, on October 24, 2008, the disputed domain name was then registered in the name of the Respondent, and that on June 17, 2008 reverted to a portal website. That website contained various links to e.g. “Free Music Download”, “Thirdeyeblind Pictures Download Music” and “ American Pie New Girl”.

The Complainant makes the allegations against the Respondent under paragraph 4(a) of the Policy, as follows. (In doing so, and although the Complainant does not make the claim explicitly, the Complaint, read together with the original and amended Complaint, appears to treat the current and former registrants as interchangeable.)

The Complainant claims that the disputed domain name is identical to its mark.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant points out that the previous registrant “Abadaba S.A.” registered the disputed domain name sometime after 1998, whereas the Complainant began using its mark in 1993. The Complainant also claims that there is no evidence of the Respondent having rights or legitimate interests of the type illustrated in paragraph 4(b) of the Policy. The Respondent is, instead, using the disputed domain name in connection with a “portal” or PPC landing website and receiving a commercial benefit from that use.

The Complainant, finally, claims that the Respondent registered and has used the disputed domain name in bad faith. The Respondent has, in effect, sought to trade on the fame of the Complainant’s mark by diverting fans of the band “Third Eye Blind”. The Complainant also points to bad faith from the Respondent’s (i.e. Abadaba S.A’s) unsolicited offers to sell the disputed domain name, and pattern of bad faith registrations. The Respondent has also transferred the domain name registration after notice to it of this dispute, which is itself evidence of bad faith.

B. Respondent

The Respondent denies all the contentions in the Complaint.

The Respondent “states that they are not aware and do not admit that the Complainant owns its claimed mark, or that any such mark is identical or confusingly similar to the disputed domain name”.

The Respondent also appears to deny any awareness of the correspondence between the Complainant and the previous registrant, “Abadaba S.A.” Although not claiming to represent that previous registrant, the Respondent goes on to say that it does not understand why the Complainant first offered USD $2,000 for the disputed domain name but then reduced that offer to USD $1,300 following further correspondence. The Respondent states that the correspondence is false and the Complainant has fabricated the emails to deprive the Respondent of its rightful ownership of the disputed domain name.

The Respondent claims to have acquired the disputed domain name because it matches the name of its business. The Respondent claims to have been developing a website in connection with that domain name, which is almost complete. As supporting evidence, the Respondent provides various copies of what it says to be draft webpages. The Respondent therefore claims to have a legitimate interest in the disputed domain name based on demonstrable preparations to use it, for the purpose of paragraph 4(c)(i) of the Policy.

The Respondent also claims to have a legitimate interest because it is “commonly known by” the disputed domain name for the purpose of paragraph 4(c)(ii) of the Policy. The Respondent provides a copy of what it says is a registration card with the Government of India and the Income Tax Department of India stating the firms name to be “Third Eye Blinds & Curtains” and that the date of formation has been given in the said card as April 15, 2007. The Respondent provides other evidence, including a brochure and an “estimate memo” under the name of “Third Eye Blinds and Curtains”, which it says it provides to its clients.

The Respondent denies that it ever offered the disputed domain name for sale. The Respondent denies that there is otherwise any evidence of bad faith as illustratively set out in paragraph 4(b) of the Policy. The Respondent states that it is a legitimate business and that the reason the Complainant could not find it on an Internet search is that it is a very local business and that it has not used the Internet to promote itself. The Respondent denies that the contact details, to which the Complainant directed communications, were false or inoperative. The Respondent claims that the Complainant has created false evidence against it.

6. Discussion and Findings

To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name 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 in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

These issues are discussed in turn as follows.

A. Identical or Confusingly Similar

Rights in a mark

The first question is whether the Complainant has demonstrated that it has rights in a trademark, for the purpose of paragraph 4(a) of the Policy. The Complainant does not claim that it has a registered mark, and the Complainant’s trademark applications confer no rights on it in this respect. And it is well settled under the Policy that a mere application for a mark does not confer such rights including, like the Complainant’s in this case, an application for a federal trademark in the United States. Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083.

The Complainant appears to argue that it has an unregistered trademark arising from the use of those marks since 1993 in connection with the musical band, “Third Eye Blind”. The Complainant states that the band’s name “is a coined phrase which was developed by Mr. Jenkins”. The Complaint does not identify who Mr. Jenkins is. (It is only by reading the voluminous attachments to the Complaint that it is clear that Mr. Jenkins is a member of the band.) It seems implicit from simply the corporate name of the Complainant that Mr. Jenkins is probably legally associated with the Complainant (a separate legal entity): Stephan Jenkins Productions, Inc. Neither does the Complaint explain the legal relationship between the Complainant and the band “Third Eye Blind”. There is no evidence that the band is a legal entity, separate to the individuals that comprise it.

The Complaint also does not identify how the Complainant comes to own rights in its claimed common law mark. To the extent that there is a mark, it has been used inseparably with the name of the band. It has not been used in association with the Complainant per se.

What is required to demonstrate rights in an unregistered mark is outlined in the WIPO Overview of WIPO Panel Views. The consensus of prior panels is relevantly set out under the heading: “1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?”, as follows:

“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such �secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition…” (emphasis added).

There is sufficient evidence in this case that the term “Third Eye Blind” is a distinctive identifier of the band, and could therefore comprise a common law mark. It seems clear that it is an arbitrary or fanciful phrase which has the capacity to distinguish for trademark purposes. There is also sufficient evidence that the phrase has been used in association with the band and, as such, used to promote the business of the band, including its performances and recordings. It is well-settled that performers may have unregistered trademark rights in their own names for the purposes of the Policy. (Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182.) While the majority of cases in that respect relate to the personal names of performers, there is no logical reason why the same principle should not, as here, relate to a pseudonym used by a number of individuals engaged in a joint endeavor.

The next issue then is whether that trademark is “associated with the complainant or its goods or services”. As noted above, the mark is not directly associated with the Complainant per se. The question is therefore whether the band is, in effect, the Complainant’s “goods or services”. That is, does the Complainant have rights in relation to the trademark as a valuable property associated with the band?

The starting point is that rights in such an unregistered mark would ordinarily vest jointly in the individuals in the band. It is clear that such rights can be assigned. Such an assignment of rights has been recognized in prior proceedings under the Policy: DreamWorks L.L.C. v. Grantics, WIPO Case No. D2000-1269.

The Complainant provides no direct evidence of receiving an assignment of those rights. Rather, the evidence of such an assignment is indirect. That includes evidence that the Complainant is an applicant for registered marks associated with the band, and it could be inferred that the Complainant was authorized by the band to make that application. The Complainant claims to have coined the phrase “Third Eye Blind” itself (assuming that Mr. Jenkins is inseparably associated with the Complainant). As Stephan Jenkins is a member of the band it also reasonable to assume that he would at least have joint rights in the unregistered trademark of the individuals that comprise the band.

On the basis of this evidence, the Panel considers that, on the balance of probabilities, there is sufficient evidence that the Complainant has rights in THIRD EYE BLIND, for the purpose of paragraph 4(a)(i) of the Policy.

Identical or confusingly similar

It is clear that the disputed domain name is relevantly identical to the Complainant’s unregistered mark. The Respondent denies this, but does not offer any explanation why. The Panel finds that there is no substance to this denial. The only differences are immaterial for the purposes of the Policy. Those differences are the “.com” extension and the lack of spaces between the words “Third Eye Blind”. It is well-established that those elements are disregarded for the purpose of comparing a mark and a disputed domain name: Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499.

B. Rights or Legitimate Interests

The Respondent claims that it has rights or legitimate interests in the disputed domain name, on the basis that the disputed domain name corresponds to the Respondent’s business name, and that the Respondent has been developing a related website. The Respondent therefore says that it has demonstrated rights or legitimate interests for the purpose of both paragraphs 4(a)(i) and (ii) of the Policy. The Respondent provides what purports to be evidence for this, noted above.

“Commonly known by” - paragraph 4(c)(ii) of the Policy

The Respondent does not explain how it came to be called “Third Eye Blinds & Curtains”. Neither does the Respondent explain why, if its name is “Third Eye Blinds & Curtains” (emphasis added), it registered the domain name incorporating instead the phrase “third eye blind”. The absence of the “s” and the words “& Curtains” appears to be significant to the Panel. In particular, the absence of the “s” either gives the phrase an entirely different meaning or, at best, could be characterized as a misspelling of the phrase as the Respondent claims to use it. Having regard to this, the Respondent’s failure to say why it chose this particular domain name is unsatisfactory. Panels in similar circumstances have drawn a negative inference from failures of a respondent to provide any such explanation: See e.g. Chi-Chi’s, Inc. v. Restaurant Commentary (Restaurant Commentary), WIPO Case No. D2000-0321.

Nevertheless, for the purpose of these proceedings, the Panel accepts that the Respondent conducts business in India under the name “Third Eye Blinds and Curtains”. To find otherwise would require the Panel to find that the Respondent had engaged in a fraud. In summary proceedings of this kind, make such a finding difficult with the limited powers of, and information before, the Panel.

But the difference between the disputed domain name and the Respondent’s claimed business name is significant, in relation to the Respondent’s claim that it has a right or legitimate interest for the purpose of paragraph 4(c)(ii) of the Policy. That paragraph provides for a right or legitimate interest to be demonstrated if there is evidence that the Respondent is “commonly known by” the domain name. The Respondent is not known by the domain name, commonly or otherwise. In the disputed domain name, the lack of the “s” after the word “blind”, together with the lack of the words “& curtains” means that there is a significant difference between the disputed domain name and the Respondent’s business name. For similar reasons, neither does it appear to the Panel that the disputed domain name is an obvious abbreviation or permutation of the Respondent’s business name.

Accordingly, the Panel does not find that the Respondent has a right or legitimate interest for the purpose of paragraph 4(c)(ii) of the Policy.

Demonstrable preparations to use – paragraph 4(c)(i) of the Policy

Paragraph 4(c)(i) of the Policy provides that a respondent may demonstrate rights or legitimate interests if, before any notice of the dispute, the respondent uses, or makes 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. The Respondent alternatively claims that it has such a legitimate interest because it has made demonstrable preparations to use the disputed domain name in connection with a proposed website for its business. The Respondent gives evidence of what it says are draft webpages for this purpose.

The Panel finds that the Respondent cannot demonstrate rights or legitimate interests for the purpose of paragraph 4(a)(i), essentially for the following reasons.

As noted above, the disputed domain name was previously registered by “Abadaba S.A.”, shortly before this dispute was filed, but after the Complainant gave the previous registrant notice of the dispute via a cease and desist letter dated September 26, 2008. From the evidence given by the Complainant, it is evident that the previous registrant transferred the disputed domain name to the Respondent sometime between October 17 and 23, 2008. Between the notice of the dispute to the previous registrant and the transfer of the disputed domain name to the Respondent, the Complainant and previous registrant negotiated in response to the previous registrant’s offer to sell the disputed domain name. The Respondent suggests that the Complainant’s evidence in this respect is fraudulent, but offers no explanation for or evidence to support this statement. As such, and for the similar reasons set out above in relation to the Respondent’s evidence of its business name, the Panel has no reason to believe that the Complainant’s evidence is anything other than what it purports to be.

What that evidence suggests is that, after some exchanges of offers and counter offers, the Complainant offered a lower amount (USD $1,300) than one previously offered, on the basis that the Complainant had come to believe that the Respondent was a serial cyber-squatter. The previous registrant then transferred the disputed domain name to the current registrant, shortly before the Complaint was filed.

It is difficult to avoid the impression from this evidence that the previous registrant transferred the disputed domain name to frustrate possible proceedings under the Policy (noting that both parties made reference to prior proceedings under the Policy in their correspondence). But the Policy does not exclude the possibility that a Respondent might have a right or legitimate interest in a domain name that it has received in this way. Should the Panel find that the Respondent has such rights despite the apparent conduct of the former registrant?

In the particular circumstances of this case, the Panel is skeptical that the Respondent has demonstrated that it has made a bona fide preparation to offer services in relation to the domain name. The Respondent is unclear about when it began its claimed preparations for a website. The Panel considers it unlikely that the Respondent could have done this in the short time between the transfer of the disputed domain name and the filing of this dispute by the Complainant. As such, to accept the Respondent’s contention would require finding that the Respondent had developed a website some (indeterminate) time before acquiring the disputed domain name. It would also require a finding that the Respondent then, fortuitously, snapped up this domain name some time after developing that proposal, and then immediately finalized the proposed website. The Respondent provides no evidence of acquiring any other domain name for this purpose – including any domain name that more accurately or naturally corresponds to its claimed business name, as noted above in relation to paragraph 4(c)(ii). This lack of correspondence makes is difficult to find a bona fide connection between the disputed domain name and the Respondent’s claimed business.

For these reasons, the Panel finds that there is no evidence that the Respondent has rights or legitimate interests in the disputed domain name. This is not to say that the Respondent may have some bona fide business more generally, separate to its relationship to the domain name in dispute. This is not however a matter for the Panel.

C. Registered and Used in Bad Faith

Bad faith may be found if the Respondent knew or, in appropriate cases, ought to have known of the Complainant. (See, for example, Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524 in which the then panel stated that a finding of bad faith can be made when the respondent “knew or should have known of the registration and use of the trademark prior to registering the domain”, and cited decisions to similar effect.)

In this case, most of the Complainant’s evidence and argument relating to bad faith applies against the previous registrant. There is little evidence to support treating the Respondent as if it was the previous registrant. That is, there is little direct evidence that those entities are the same in fact. And the Respondent flatly denies prior knowledge of the Complainant’s mark.

However, the Panel considers it more likely than not that the Respondent had such knowledge. As noted above, the Respondent’s business name does not exactly or naturally correspond to the disputed domain name. The Complainant’s mark also appears arbitrary and fanciful, and is therefore likely to be distinctive for trademark purposes. The Respondent did not provide evidence to suggest otherwise. It also seems to the Panel unlikely that the Respondent, in searching for an appropriate domain name for its website, would not have conducted any basic Internet search for that term. All the top results on the most simple Google search relate to the band “Third Eye Blind” and, as such, its mark.

While this evidence against the Respondent is circumstantial, the burden on the Panel is to make its finding on the basis of all the evidence, circumstantial and otherwise, and to reach its decision on the balance of probabilities. (In relation to the burden of proof generally See e.g. ARAG Allgemeine Rechtsschutz-Versicherungs-AG v. Seung Nam Kim, WIPO Case No. D2006-1001 and the cases cited in that one.) The Panel considers that, in the circumstances of this case, the balance of probabilities suggest that the Respondent was aware of the Complainant and its mark when it registered and used the disputed domain name.

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, <thirdeyeblind.net>, be transferred to the Complainant.

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James A. Barker
Sole Panelist

Dated: January 8, 2009