WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Experience Hendrix, L.L.C. v. Denny Hammerton and The Jimi Hendrix Fan Club

Case No. D2000-0364

 

1. The Parties

Experience Hendrix, L.L.C. ("Complainant"), is a Washington limited liability company with a principal place of business at 14501 Interurban Avenue South, Tukwila, Washington 98168 USA. The company was formed in 1995 by the family of the late Jimi Hendrix, an internationally known guitarist and musician. Experience Hendrix, L.L.C., is the owner and administrator of substantially all rights relating to Jimi Hendrix, including rights in his music, name, image and recordings.

The Respondent, Denny Hammerton ("Mr. Hammerton"), an individual, is listed as the administrative contact for the registration of the domain name in issue and lists a mailing address of P.O. Box 1103, Minneola, Florida 34744 USA. The Respondent, The Jimi Hendrix Fan Club ("Fan Club"), added by amendment to the Complaint, is the registrant of the domain name registration and has the same mailing address as Mr. Hammerton.

 

2. The Domain Name

The domain name in issue is "jimihendrix.com".

 

3. The Registrar of the Domain Name

The Registrar of the domain name in issue is Network Solutions, Inc. ("the Registrar"), located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.

 

4. Procedural History

On May 2, 2000, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy ("Policy") and ICANNís Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") citing Mr. Hammerton as the Respondent.

On May 12, 2000, a Request for Verification concerning the domain name was sent to the Registrar. On May 16, 2000, the Registrar provided a Verification Response to the Center confirming in pertinent part: (i) that it received the Complaint from the Complainant as required by the Policy; (ii) that it is the Registrar of the domain name "jimihendrix.com"; (iii) that The Jimi Hendrix Fan Club is the current registrant of the domain name registration; (iv) that Mr. Hammerton is the administrative contact for the domain name; (v) that the Registrarís 4.0 Service Agreement is in effect; and (vi) that the domain name is currently on "Hold" status.

On May 12, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Mr. Hammerton.

On May 29, 2000, the Center received a Response to the Complaint by Mr. Hammerton.

On June 5, 2000, the Center sent a message to Mr. Hammerton notifying him of deficiencies in the Response.

On June 8, 2000, Mr. Hammerton sent a message to the Center answering the noted deficiencies.

On June 15, 2000, the Center sent an acknowledgment to Mr. Hammerton indicating that he had corrected the noted deficiencies.

On June 22, 2000, the Center sent a Notification of Appointment of Panel to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.

On June 28, 2000, the Panelist sent a message to the Center stating that only Mr. Hammerton, the administrative contact for the domain name registration, had been named in the Complaint and that the registrant, the Fan Club, had not been named as a Respondent. The Panelist asked the Center to send a message to the parties asking for an explanation of the relationship between Mr. Hammerton and the Fan Club and requested the complaint be amended to add the Fan Club as a Respondent based upon that relationship. The Panelist also requested that the parties provide information as to whether there is or was a Web site located at "http://www.jimihendrix.com", and, if so, a description of the contents of the site.

On June 30, 2000, the Center sent a request to the parties for the further information requested by the Panelist.

On July 7, 2000, the Complainant provided a supplemental response and requested amendment of the Complaint to include the Fan Club as a Respondent. Mr. Hammerton did not provide a response to the Panelistís request for further information.

Based upon the Complainantís supplemental response amending the Complaint to include the domain name registrant as a Respondent, the parties subject to the Policy are properly before the Panel. The Fan Club and Mr. Hammerton will hereafter be referred to, both individually and collectively, as the "Respondent".

 

5. Factual Background

The Complainant is the owner of all rights in the name "JIMI HENDRIX", including all common law rights therein, and is the owner of several trademarks and service marks registered or pending with the U.S. Patent and Trademark Office. In support of its Complaint, the Complainant submitted copies of the following U.S. trademark registrations:

JIMI HENDRIX and Design, Reg. No. 2,020,197 (first use 4/93; issued 12/3/96) for printed matter, namely, music books featuring songs

JIMI HENDRIX and Design, Reg. No. 2,021,658 (first use 4/93; issued 12/10/96) for pre-recorded video cassettes featuring musical performances, pre-recorded audio cassettes and compact discs featuring music

JIMI HENDRIX and Design, Reg. No. 2,022,905 (first use 4/93; issued 12/17/96) for clothing, namely, hats and T-shirts

JIMI HENDRIX, Reg. No. 2,322,761 (first use 12/31/82; issued 2/29/00) for clothing, namely, T-shirts, jackets, caps and gloves

The Complainant is also the registrant of the domain names "jimi-hendrix.com", "jimi-hendrix.org" and "jimihendrix.org" and is the owner and operator of the "Experience Hendrix Interactive - The Official Jimi Hendrix Website" located at "http://www.jimi-hendrix.com".

A search result from a query of the Registrarís Whois database shows that the domain name in issue was registered on April 5, 1996 to "The Jimi Hendrix Fan Club" with Mr. Hammerton listed as the administrative contact.

Some time between the domain name registration and April 30, 1997, the Respondent created a Web site at "http://wwwjimihendrix.com" that offered for sale vanity e-mail addresses incorporating the "jimihendrix.com" domain name ("Site").

The Complainantís representatives communicated with the Registrar and asked the Registrar to initiate the Registrarís Domain Name Dispute Policy then in effect with respect to the domain name "jimihendrix.com". On April 30, 1997, the domain name was placed on "Hold" status by the Registrar.

In a letter dated March 21, 2000, the Registrar notified the Complainantís representatives that on May 2, 2000, the Registrar would terminate the dispute, remove the domain name registration from "Hold" status and reactivate the domain name unless the Registrar received either a complaint filed pursuant to the Policy or a file-stamped complaint filed in a court of competent jurisdiction which involved the subject domain name registration and named the domain name registrant as a party. The Complainant commenced this proceeding in response to the Registrarís March 21st letter.

 

6. Partiesí Contentions

 

Complainant

The Complainant contends that the domain name "jimihendrix.com" is identical or confusingly similar to the name and marks owned by the Complainant (Complaint, para. 12b).

The Complainant contends that the Respondent has no rights or legitimate interests in the domain name based upon:

(i) the Respondent choosing the domain name in issue not arbitrarily but intending to misappropriate and use the goodwill in the Complainantís marks for his own commercial benefit by advertising vanity e-mail addresses for sale on a Web page located at "http://www.jimihendrix.com" (Complaint, para. 12c, Supplemental Response q.2 and Ex. A).

(ii) the Complainant having not at any time, assigned, granted, licensed, sold or otherwise transferred any of its rights in the name and mark JIMI HENDRIX to the Respondent (Complaint, para. 12a).

(iii) the Respondentís use of the domain name being purely commercial in nature with the effect of diluting and harming the Complainantís legitimate rights in the name and mark (Complaint, para. 12c).

(iv) the Respondent, Mr. Hammerton, being a domain name speculator and registering and selling domain names for no legitimate purpose other than to profit from the name relying on a front page article in the San Francisco Chronicle quoting Mr. Hammerton as saying "[s]ome people like it, some people donít - thatís toughÖ. Itís real estate is what it is. If I buy land that somebody wants, then lucky me." The Complainant further quotes the article as stating that Mr. Hammerton claimed to own rights to "some 2,000 Web site names, including, www.jimihendrix.com, www.jethrotull.com and www.fleetwoodmac.com." (Supplemental Response, q.1, q.2 and Ex. F).

The Complainant contends that the Respondent has registered and used the domain name in bad faith based upon:

(i) the Respondent knowing at all times prior to, during, and following registration of the domain name that he did not own or have any legal rights to the name or mark JIMI HENDRIX (Complaint, para. 12d).

(ii) the Respondent trying to benefit commercially by offering to sell the domain name to the Complainant for "an exorbitant amount of money"(Complaint, para. 12d).

(iii) a recent search of a domain name reseller site showing Mr. Hammerton advertising to sell the "jimihendrix.com" domain name for $1 million dollars as "the most unique domain/jimi was a Ďhití maker"(Supplemental Response, q.1 and Ex. D).

(iv) the Respondent having made it clear to the Complainant and the world that the Respondent intends to prevent the Complainant from reflecting the Complainantís mark in a corresponding domain name based on comments posted on the Web site located at "http://www.johnlennon.com" (Complaint, para. 12b and Annex L) and an e-mail message from Mr. Hammerton. (Complaint, para. 12d and Annex N).

(v) Mr. Hammerton being a domain name speculator that registers and sells domain names for no legitimate purpose other than to profit from the name. (Supplemental Response, q.1, q.2 and Ex. F).

(vi) Mr. Hammerton advertising to sell the domain names "elvispresley.net" for $39,000, "jethrotull.com" for $8,000, "lindamccartney.com" for $15,000 -$25,000, "mickjagger.com" for $25,000, "paulmccartney.com" for $25,000 - $51,000, "ringo.com" for $15,000 -$21,000, "rodstewart.com" for $15,000 -$21,000, and "twiggy.com" for $10,000 on different domain name reseller sites (Complaint, para. 12d, Supplemental Response, q.1 and Exs. C, D and E).

(vii) the Respondent also having registered and having since transferred or sold the domain names "johnlennon.com", "eltonjohn.com", "otisredding.com", "whitneyhouston.com" and "barrymanilow.com" based on archived news, a domain resale bulletin board and Whois records (Supplemental Response, q.1 and Exs. F, G and H).

(viii) the Respondent, by using the domain name, having intentionally attempted to attract, for commercial gain, Internet users to his Web site by creating a likelihood of confusion with the Complainantís mark as to source, sponsorship, affiliation and endorsement of his Web site or the services he offers on the site (Complaint, para. 12d);

(ix) a search by the Complainant of a database of fictitious names in Florida, where Mr. Hammerton resides, showing that the name "The Jimi Hendrix Fan Club " is not registered as a "dba" in that state and that no such entity has ever been created in Florida (Supplemental Response, q.1);

(x) the Respondent, although having registered the domain name "jimihendrix.com" in the name of a fan club, not being a true "fan club" existing at the address "http://www.jimihendrix.com" or providing any traditional fan club services, but being nothing more than a sales promotion site - selling vanity e-mail addresses (Supplemental Response, q.1, q.2 and Ex. A).

(xi) Mr. Hammerton operating or having operated under a number of aliases including "Benny Hammerton," "D, Ralph," "Denny Rhammerton," "Denny Thedom Hammerton," "Denny Trad Hammerton," "King, Richard," "Denny Nexus Hammerton," "Denny McBeatle Hammerton," and "Count Cybergod" (Supplemental Response, q.1 and Exs. A and B).

(xii) Mr. Hammerton understanding that using a trademarked name has legal consequences, as can be seen from his Trademark Services Web site at "http://www.dalemabry.com/mark.htm" which states, "[r]eserving your Domain Name does not guarantee that the name will be free of trademark conflicts. If your Domain Name matches a registered trademark, the owner of that trademark has the power to take the Domain Name away from you. Donít let this happen to your business." (Supplemental Response, q.1 and Ex. I).

Based upon the above, the Complainant requests that the Panelist transfer the domain name "jimihendrix.com" to it.

Respondent

The Respondent, Mr. Hammerton, contends that he registered the domain "jimihendrix.com" on April 5, 1996. Before registering the domain name, he contends that he conducted a search of the USPTO database for any trademarks on "Jimi Hendrix" and found none.

The Respondent contends that from April of 1996, he ran a Web site for "The Jimi Hendrix Internet Fan Club" on the Internet until a complaint by the Complainant was sent to the Registrar in 1997 resulting in the domain name "jimihendrix.com" being placed on Hold.

The Respondent contends that his registration of the domain name precedes the Complainantís trademark.

The Respondent contends that a word with a .com on the end is not identical to a word without a .com on the end and inferentially asserts that the domain name is not identical or confusingly similar to the Complainantís mark.

The Respondent contends that he has never offered "jimihendrix.com" as a domain name for sale.

The Respondent contends that he has never used the domain name "jimihendrix.com" in bad faith.

The Respondent contends that "it becomes a violation of human rights and free speech that an arbitrary board such as WIPO which contradicts itself case after case should have any rights over any domain which is owned by the original paying domain name owner."

The Respondent contends that "once WIPO takes [sic] that domain name away from the original owner it constitutes theft under the American Constitution in that the Jurisdiction under Human Rights should not allowed."

 

7. Discussion and Findings

 

Jurisdiction

In the Response, the Respondent questioned whether this Panelist appointed by the Center can transfer or cancel a domain name registration that had been paid for by the paying domain name owner. According to the Registrarís Policy in effect at the time of Respondentís registration, "[r]egistrant acknowledges and agrees that these guidelines may change from time to time and that, upon thirty (30) days posting on the internet, Network Solutions, Inc., may modify or amend this Policy, and that such changes are binding upon Registrant." Since the Respondent has continued to maintain and renew the domain name registration since 1996 and has never requested the Registrar to delete either the Fan Club or Mr. Hammerton from the registration or delete the registration itself, such action and inaction by the Respondent are viewed as acceptance of any changes in the Registrarís policy. The Respondent is thus bound by the Policy, which the Registrar implemented on January 1, 2000, and which is incorporated by reference in all registration agreements in existence at that time including the registration agreement of the Respondent. The appointment of the Panelist is therefore proper in view of the Policy and the Panelist may accordingly hear and decide this proceeding.

The Proceeding - Three Elements

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute provider that:

(i) the domain name holderís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and

(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").

Element (i) - Domain Name Identical or Confusingly Similar to Mark

The Complainant is the owner of both the common law trademark rights in the name JIMI HENDRIX as well as the registered trademarks identified above. Although the Respondent contends that a word with a ".com" on the end is not identical to a word without a ".com" on the end, the COM suffix is not relevant in determining whether a domain name is identical or confusingly similar to a mark. Rather, one looks to the second-level domain "jimihendrix" of the domain name for such a determination since the suffix COM is merely descriptive of the registry services and is not an identifier of a source of goods or services. Accordingly, the Panelist concludes that the domain name is identical to the mark JIMI HENDRIX and that Element (i) has been satisfied.

Element (ii) - Rights or Legitimate Interests in the Domain Name

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proved based on its evaluation of all evidence presented, can demonstrate the holderís rights to or legitimate interests in the domain name. These circumstances include:

(i) before any notice to the holder of the dispute, the holderís 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder 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 contends that he registered the domain name prior to the Complainantís registration of the Complainantís marks and was unaware of the Complainantís trademark registrations at the time of registration. However based upon the evidence presented, the registration and use of the domain name by the Respondent do not predate the Complainantís use and rights in the name and mark but rather appears to be an attempt to usurp the Complainantís rights therein. Indeed, the registration of the domain name by "The Jimi Hendrix Fan Club" is a clear indication of the Respondentís awareness of the wide recognition and fame associated with the name JIMI HENDRIX. The Respondentís alleged lack of knowledge concerning the trademark registrations involved in this proceeding is insufficient.

The Respondent further contends that the domain name was registered to "The   Jimi Hendrix Fan Club" and that he was operating a Web site for the Fan Club. A review of the submitted evidence, however, shows that the Respondent was not operating as a fan club site but rather had created a site at "http://www.jimihendrix.com" advertising vanity e-mail addresses incorporating the domain name "jimihendrix.com" for sale on the Site. No evidence was presented that at any time had the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the name and mark JIMI HENDRIX in any manner. Accordingly, the Panelist finds that the Respondent, prior to any notice of this dispute, had not used the domain name in connection with any type of bona fide offering of goods or services.

Additionally, no evidence has been presented that the Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. Indeed, the Respondentís use of the domain name cannot be characterized as non-commercial or fair use based on: (i) the creation and use of the Site located at "http://www.jimihendrix.com" for selling vanity e-mail addresses incorporating the "jimihendrix.com" domain name; (ii) the offering for sale of the domain name itself for $1,000,000 on a domain name reseller site; and (iii) a news article identifying Mr. Hammerton as a domain name speculator and quoting him as the owner of the rights to some 2,000 domain names for sale including "jimihendrix.com".

The Respondent also contends that this proceeding is a "violation of human rights", "free speech" and "theft under the American Constitution." The Panelist finds that these contentions lack foundation and that no evidence has been submitted by the Respondent to support these contentions.

Based upon the above, the Panelist concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.

Element (iii) - Domain Name Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has 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 the holderís documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderí s web site or other online 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 or service on the holderís web site or location.

Based upon the Respondentís contention that he registered the domain name prior to the Complainantís registrations of the above-identified marks, the Panelist finds that the Respondent had actual knowledge at the time he registered the domain name of the use and rights of the Complainant in the name JIMI HENDRIX. Indeed, the record demonstrates that at the time of registering the domain name "jimihendrix.com" the Respondent was well aware of the name JIMI HENDRIX and the Respondent has not submitted evidence or argued to the contrary.

The Complainant also contended that the Respondent offered to sell the domain name to the Complainant for "an exorbitant amount of money". However, the Complainant provided no evidence in support of this contention. The Respondent has contended that he never offered the domain name "jimihendrix.com" for sale and has never used the domain name in bad faith. The Complainant did submit copies of Web pages from a domain name reseller site located at "http://www.domainsmart.com" where the domain name "jimihendrix.com" is being offered for sale for $1,000,000. The Respondent has provided no evidence in rebuttal.

To further support its contention of bad faith by the Respondent, the Complainant submitted evidence of other domain names incorporating the names of well-known celebrities that the Respondent registered and which are being advertised for sale on different domain name reseller sites. Additionally, the Complainant submitted news articles that identified Mr. Hammerton as a domain name speculator who had registered and sold several domain names incorporating names of other celebrities.

Based upon these facts, the Panelist finds that the Respondent registered the domain name "jimihendrix.com" in order to prevent the Complainant from reflecting the name and mark in a corresponding domain name and that the Respondent has engaged in "a pattern of such conduct" of registering and offering for sale domain names incorporating well-known names in which the Respondent has no rights or legitimate interests.

The Panelist therefore concludes that the Respondent has registered and used the domain name "jimihendrix.com" in bad faith and that Element (iii) has been satisfied.

 

8. Decision

The Panelist concludes: (i) that the domain name in issue is identical to the Complainantís mark; (ii) that the Respondent has no rights or legitimate interests in the domain name; and (iii) that the Respondent registered and used the domain name in bad faith. Accordingly, the Panelist requires that the registration of the domain name "jimihendrix.com" be transferred to the Complainant.

 


 

Marylee Jenkins
Panelist

Dated: August 2, 2000

 


WIPO

 

WIPO Arbitration and Mediation Center

 

ADDENDUM TO ADMINISTRATIVE PANEL DECISION

Experience Hendrix, L.L.C. v. Denny Hammerton and The Jimi Hendrix Fan Club

Case No. D2000-0364

 

This is an Addendum to the Administrative Panel Decision ("Decision") dated August 2, 2000 with regard to the domain name dispute between the parties involving the domain name "jimihendrix.com."

 

Further Procedural History

On August 8, 2000, the Respondent, Mr. Denny Hammerton ("Respondent"), contacted the WIPO Arbitration and Mediation Center ("Center") by e-mail indicating that he would challenge the Decision. The Respondent indicated that his challenge was based on the Panelist indicating in the Decision that no supplemental response ("Supplemental Response") was received from the Respondent when in fact the Respondent had sent a Supplemental Response on July 1, 2000 to the Center by e-mail. On August 8, 2000, the Center contacted the Panelist concerning the Respondentís e-mail message of August 8. It was determined that, as a result of an e-mail communication error, the Panelist never received such Supplemental Response. Based upon this occurrence, the Panelist agreed to review and consider the Supplemental Response. The Center forwarded the Supplemental Response to the Panelist by e-mail on August 8, 2000. The Panelist acknowledged receipt of the Supplemental Response by e-mail to the Center on August 9, 2000.

 

Respondentís Contentions

The Respondent contends in pertinent part:

I Denny Hammerton registered the domain name "jimihendrix.com" with the sole intention of a Jimi Hendrix Internet Fan Club. I created the Jim Hendrix Internet Fan Club in April of 1996. Designed initially as subscription form in the way of e-mail addresses for fans, primarily so that all new and old information on Jimi Hendrix could easily be relayed via the fans e-mail addresses. i.e. yourname@jimihendrix.com, my e-mail address was "purplehaze@jimhendrix.com" other subscribers had "foxylady@jimihendrix.com" "watchtower@jimihendrix.com" and so on. Ė see attached jpeg file, this was the front page that opened up when you typed in www.jimihendrix.com on your browser. I have pasted this front page on an html page just in case the attached file does not open. http://www.bodyguards.com/jimi.html. My intentions were that once I had accumulated a large number of subscribers I would then add links to other Jimi Hendrix web sites, gather all info about Jimi Hendrix (especially recent (1997) uncovered material Ė such as the UKís British Broadcasting Association (BBC Television) discovered in their vaults live recording of Jimi Hendrix when he was interviewed by the BBC on one of his many visits to the UK. Jimi Hendrix toured extensively and there is numerous concert film footage taken by the fans, and a large amount of photographs taken by fans which have never been viewed publicly. I also planned to offer free postings for memorabilia for sale, a chat rooms for fans to interact and anything else related to the Legend Jimi Hendrix. The domain name "jimihendrix.com" that I registered was always designed as a Jimi Hendrix Internet Fan Club web site.

 

Further Discussion and Findings

The Respondentís above contentions and submitted Web page do not alter the Panelistís findings and decision concerning the "jimihendrix.com" domain name. While the Respondent may have intended to design a Jimi Hendrix Internet Fan Club Web site, such intentions do not dispel the fact, and the Respondentís submitted Web page shows, that the Respondent created a Web site located at "http://www.jimihendrix.com" to sell vanity e-mail addresses incorporating the "jimihendrix.com" domain name and that he acknowledged selling such e-mail addresses through the site. Such use cannot be characterized as non-commercial or fair use of the domain name. The Panelist therefore adheres to the finding that the Respondent has no rights or legitimate interests in the domain name.

 

Decision

The Panelist accordingly reaffirms the Decision in favor of the Complainant and reaffirms the requirement that the registration of the domain name "jimihendrix.com" be transferred to the Complainant.

 

 


 

Marylee Jenkins
Panelist

Dated: August 15, 2000