WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nik Carter v. The Afternoon Fiasco
Case No. D2000-0658
1. The Parties
1.1 Complainant is Nik Carter, an individual whose business address is WBCN-FM, 1265 Boylston Street, Boston, Massachusetts 02215, U.S.A. ("Complainant").
1.2 Respondent is The Afternoon Fiasco, located at 69 Blow Me Drive, Holyland, Heaven 02215, U.S.A. Complainant is represented by counsel, Naomi B. Waltman, Esq.
2. The Domain Name and Registrar
2.1 The domain names which are the subject of this proceeding are "nikcarter.com", "nikcarter.net" and "nikcarter.org" owned by The Afternoon Fiasco. The domain names are registered with Domain Direct, c/o TUCOWS.com, Inc., 96 Mowat Avenue, Toronto, Ontario M6K, 3M1, Canada.
3. Procedural History
3.1 Complaint was filed via e-mail on June 22, 2000.
3.2 Complaint was received in hard copy on June 26, 2000.
3.3 Registrarís verification response was submitted on July 17, 2000.
3.4 Notification of Complaint was submitted on July 20, 2000.
3.5 Notification of Respondent Default was submitted on September 14, 2000.
3.6 Transmission of Case File to Administrative Panel took place by letter dated September 26, 2000.
4. Factual Background
4.1 Complainant is a popular and well-known on-air personality (i.e., DJ) at WBCN-FM (104.1), a radio station in Boston, Massachusetts. WBCN is the top-ranked alternative or "modern" rock station in the Boston market. Complainant has been in the radio broadcasting business for many years.
4.2 Over the years, Complainant has been the subject of numerous news reports in connection with his radio broadcasting services, including news reports published in newspapers, such as the Boston Globe and Boston Herald and in trade magazines, such as Broadcasting and Cable. (See, e.g., Annex C).
4.3 Complainant has also made many personal appearances on behalf of WBCN, including live appearances at the River Rave Concert held at Foxboro Stadium in Massachusetts, Woodstock í99 in Rome, New York and the WBCN College Rave.
4.4 In 1998, Complainant was honored as the national radio station personality of the year at the Billboard Music Awards. In 1999, Complainant was nominated for a WB Radio Music Award as on-air personality of the year in the alternative/adult alternative stations category.
4.5 On April 12, 2000, the three domain names in issue were requested.
5. Partiesí Contentions
5.1 The name Nik Carter is distinctive, has received a high degree of recognition and has come to be associated in the minds of the public with Complainant and his radio broadcasting services.
5.2 Complainant owns common law trademark rights in the name and mark NIK CARTER. See, e.g., Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 at ∂ 6 (holding that the "Panel does not require that the Complainant should have rights in a registered trademark or service mark. It is sufficient that the Complainant should satisfy the Administrative Panel that she has rights in common law trademark or sufficient rights to ground an action for passing off"); Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 at ∂ 6.3 (same).
5.3 On April 12, 2000, Respondent registered the domain names NIKCARTER.COM, NIKCARTER.NET and NIKCARTER.ORG, which are virtually identical and confusingly similar to the Complainantís NIK CARTER mark. The elimination of the space between the words "Nik" and "Carter," and the addition of the generic top-level domain (gTLD) names "net," "com" and "org" are without legal significance. See, e.g., Sportyís Farm v. Sportsmanís Market, 202 F.2d 489, 498 (2d Cir. 2000) (citing Brookfield Comm. Inc. v. West Coast Entertainment Group, 174 F.3d 1036 (9th Cir. 1999)).
5.4 Respondentís website uses Complainantís name and likeness without his consent, and is devoted to statements that tarnish and disparage Complainant, including a reference to Complainant as "No-Talent Nik Carter, founder of ĎFat Nikís Donuts,í" and the suggestion that Complainant should "get a pair of corrective glasses for the lazy eye." The website also uses WBCN sound files in violation of applicable copyright laws.
5.5 Respondent has no rights or legitimate interests in the trademark NIK CARTER or the disputed domain names. Respondent is not commonly known by the name NIK CARTER or NIKCARTER.COM, NIKCARTER.NET or NIKCARTER.ORG.
5.6 Respondent registered the domain names in bad faith. By using NIKCARTER.COM, NIKCARTER.NET and NIKCARTER.ORG to divert individuals looking for Complainant to Respondentís web sites, Respondent improperly benefits from the goodwill that Complainant has developed in his mark. See Brookfield Comm. Inc. v. West Coast Entertainment Group, 174 F.3d 1036 (9th Cir. 1999) (finding initial interest confusion in use of trademarks). While Respondent is free to express its opinion about Complainant, Respondent cannot use the disputed domain names to confuse Internet users about the sponsorship of the web sites or to attract people to its cause through confusion. As one court has recognized, "[t]he mere fact that defendant seeks to criticize plaintiff cannot automatically immunize a use that is otherwise prohibited by the Lanham Act." Planned Parenthood Federation of America v. Bucci, 97 Civ. 0629, U.S. Dist. LEXIS 3338 (S.D.N.Y. 1997), affíd mem, 152 F.3d 920 (2d Cir.), cert. denied, 119 S. Ct. 90 (1998).
5.7 Directly on point is the Panelís decision in Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299. In that case, the respondent registered the domain name MONTYROBERTS.NET, predominantly for the purpose of offering a web site that contained negative information about Monty Roberts, a well-known horse trainer. The Panel rejected the respondentís argument that it was making legitimate use of the website solely to disseminate information about Monty Roberts, and ordered that the name be transferred to the complainant. In so holding, the Panel reasoned as follows:
[T]he right to express oneís views is not the same as the right to use anotherís name to identify oneís self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify oneís self as the New York Times or Time Magazine.
In the instant case, Respondent is using as its identifier the domain name "montyroberts.net." When an Internet user searches for Complainantís mark, it will find Respondentís website address. There is nothing in the domain name to indicate that the site is devoted to criticism of Complainant, even though this criticism is apparent upon visiting Respondentís site. By using Complainantís mark, Respondent diverts Internet traffic to its own site, thereby potentially depriving Complainant of visits by Internet users.
5.8 Respondentís bad faith is further confirmed by the fact that its sites are registered to a fictitious name and address (The Afternoon Fiasco, 69 Blow Me Drive, Holyland, Heaven 02215, US) in violation of the registration agreement. See Telestra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0242 at ∂ 7.12.
5.9 While Respondent has provided fictitious contact information, on information and belief, Complainant believes that Respondent is affiliated with a competitor of Complainantís employer in Boston. (In fact, both the zip code and area code provided by Respondent on its contact information are for the Boston area). Thus, the disputed domain names have been registered in bad faith primarily for the purpose of disrupting the business of a competitor.
5.10 Respondent also has registered the disputed domain names to prevent Complainant from reflecting the NIK CARTER mark in his domain name. By registering the names NIKCARTER.COM, NIKCARTER.NET and NIKCARTER.ORG, Respondent has engaged in a pattern of such conduct in bad faith.
5.11 Finally, as the Panel noted Jeanette Winterson v. Mark Hograth, WIPO Case No. D2000-0235, because the term trademark "includes the rights of any third party to his/her name, then it must have been abundantly clear to the Respondent that registration of the domain names in issue could not be bona fide." Id. at ∂ 6.20. The Panelís statement in that case is equally applicable herein.
5.12 The Respondent is in default and has not filed a Response.
6. Discussion and Findings
6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.
6.2 The Panel has reviewed the evidence submitted by the Complainant concerning ownership of the trademark NIK CARTER and is satisfied that the Complainant has proven trademark rights in his own name. Furthermore, the Panel finds that the domain names are confusingly similar to the trademark in which the Complainant has rights.
6.3 The record does not contain any evidence of Respondentís legitimate non-commercial use or fair use of Complainantís name. The Panel hereby finds that Respondent has not shown any legitimate rights in the domain names.
6.4 Finally, the Panel needs to examine the issue of bad faith. Respondentís false contact information is evidence of use and registration in bad faith. Accordingly, the Panel finds that Complainant has met its burden of proof as to Policy 4(a)(iii) in that the domain name was registered and is being used in bad faith.
7.1 The Panel decides that the domain names are identical or confusingly similar to the trademark and service mark of Complainant, that Respondent has no rights or legitimate interests in such domain names, and that the domain names in issue have been registered and are being used in bad faith.
7.2 The Panel hereby orders that the registrations of the domain names be transferred to Complainant.
Clark W. Lackert
Dated: October 17, 2000