WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

HELEN FOLSADE ADU known as SADE v. QUANTUM COMPUTER SERVICES INC

Case No. D2000-0794

 

1. The Parties

The Complainant is HELEN FOLSADE ADU known as SADE having a principal place of business at RD Worldwide Management (United Kingdom) Limited, 37, Limerston Street, London, SW10 0BQ, United Kingdom.

The Respondent is QUANTUM COMPUTER SERVICES INC a business corporation organised and existing under the laws of the State Of Louisiana, USA, having a principal place of business at 105, Executive Drive, Slidell, Louisiana, 70460, USA and a mailing address at 100, Royal Drive, Slidell, Louisiana 70460, USA.

 

2. The Domain Name and Registrar

The domain name in issue is "sade.com". The registrar with which the said domain name is registered is Network Solutions, Inc.("the Registrar").

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") on July 14, 2000, by e-mail and a hard copy was received on July 17, 2000, and complied with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules"). The appropriate fees were paid by the Complainant.

In said Complaint, the Complainant inter alia indicated that a copy of the said Complaint had been sent to the Registrar.

On July 17, 2000, the Center sent an Acknowledgement of Receipt of Complaint to the authorized representative of the Complainant by e-mail and at the same time notified the Respondent by e-mail.

On July 20, 2000, the Center sent a Request for Registrar Verification to the Registrar and on July 21, 2000, the Registrar responded stating that the Registrar was not yet in receipt of the Complaint sent by the Complainant, that the current registrant of the said domain name was "The Sade Internet Fan Club" with an address at 105, Executive Drive, Slidell, Los Angeles 70460, that the Administrative and Billing Contacts was Scott Polk with an e-mail address at "abuse@myownmail.com", that the Network Solutions 5.0 Service Agreement is in effect and that the said domain name is in active service.

The Center reviewed the Complaint and was satisfied that it complied with the formal requirements.

On July 29, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent (including the domain name registrant, administrative contact, technical contact, zone contact and billing contact) by post/courier, facsimile and e-mail. A copy of said Notification was sent to the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the administrative proceedings had commenced on July 31, 2000, and that the Respondent was required to submit a Response by August 19, 2000.

On August 17, 2000, the Center received the Response and on August 24, 2000, the Center sent an Acknowledgement of Receipt of Response to the Respondent by e-mail. A copy of said Acknowledgement was sent to the authorised representative of the Complainant by e-mail. On August 24, 2000, the Respondent sent a brief e-mail to the Center expanding on its submissions.

James Bridgeman was invited by the Center to serve as Administrative Panelist in the administrative proceedings and having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman on September 6, 2000, the Center proceeded to appoint this Administrative Panel consisting of a single member on September 11, 2000.

On September 13, 2000, the case file was transferred to the Administrative Panel.

On September 14, 2000, the Center forwarded a further Reply from the Complainant.

In the view of the Administrative Panel, the proper procedures were followed and the Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant is a world-famous singer, songwriter and recording artist. Since 1983, the Complainant has recorded and released the following albums under the stage-name "SADE": Diamond Life (1984), Promise (1985), Stronger than Pride (1988), LoveDelux (1992) and Best of Sade (1994), which have achieved combined sales worldwide in excess of USD $37 million. The Complainant has also recorded and released a number of successful singles with a combined world-wide sales in excess of USD $3 million. The singles released by the Complainant under the name "SADE" include Smooth Operator (1985), Your Love is King (1985), Sweetest Taboo (1985), Never as Good as the First Time (1986), Love is Stronger than Pride (1988), Paradise (1988), No Ordinary Love (1992), Feel No Pain (1992), Kiss of Life (1993) and Cherish the Day (1993).

In addition to her record sales the Complainant has established a world-wide reputation as a performer and has performed on a number of international and world tours.

The Respondent has registered the said domain name "sade.com" using the alias "The Sade Internet Fan Club".

The Respondent provides Internet users with "personalised" e-mail addresses by means of one of its www sites viz. "www.myownmail.com". Internet users visiting the Respondentís www site can select and assign to themselves a "novelty" e-mail address incorporating certain selected domain names. The Respondent has registered numerous domain names in order to provide this service and has categorised these domain names into various groupings on its www site. These categories include "music", "TV", "movies", "funny", "attitude", "sexy", "sports", "Internet", Said domain name at issue in these proceedings is one of the domain names available on the Respondentís www site. The said domain name "sade.com" was originally listed in the "music" category and was subsequently moved to the "Internet" category.

 

5. Partiesí Contentions

A. Complainant

The Complainant requests that said domain name "sade.com" be transferred to the Complainant since it is alleged that:-

i) said domain name "sade.com" is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

ii) the Respondent has no rights or legitimate interests in respect of said domain name "sade.com"; and

iii) said domain name was registered and is being used in bad faith.

The Complainant submits that the Complainant is universally known as "SADE" and claims ownership of the unregistered trademark and service mark "SADE" in which she claims to have established significant common law rights in jurisdictions throughout the world through the sales of records and her tours and appearances as a performing artist.

Since 1983 the Complainant has continuously been known as, and has used the name "SADE" in the pursuit of her career as a singer and songwriter and in connection with sales of records, compact discs, videos, CD-ROMs, tickets for live performances, advertising and promotion, clothing and other merchandising.

Although the Complainant has not registered or made any application to register the name "SADE" as a trademark or service mark in any jurisdiction, the Complainant submits that since 1983, the Complainant has achieved international recognition and critical acclaim for her records and performances and has very substantial trading goodwill in the said trademark in the UK, the US and in numerous other jurisdictions.

In support of these submissions, the Complainant has submitted details of sales and chart positions of her albums and singles listed above, in the UK, the US, Germany, Italy, Japan, France and other territories together with details of the Gold and Platinum levels achieved by the sales of those recordings.

In addition to her record sales, the Complainant has given numerous live performances including a tour of the UK in 1984 with 12 concerts and a combined audience of approximately 60,000; a world tour in 1985/6 including the UK, Continental Europe, the USA, Australia and Japan with 88 concerts and a combined audience of approximately 300,000. On 13 July 1985, the Complainant was one of the performers at the ĎLive Aidí event before a live audience of approximately 75,000 and a worldwide television audience of approximately 1.4 billion across 170 countries. The Complainant's world tour in 1988 included appearances in the USA, the UK and Continental Europe in 53 concerts having a combined audience of approximately 500,000 people. In her world tour in 1993, including the Complainant appeared in 105 concerts before a combined audience of approximately 750,000 in jurisdictions including the USA, Japan, the UK and Continental Europe.

In her career to date, the Complainant has received numerous awards for her music, including: the British Phonographic Industry Award for Best Album (1985); the Grammy Award for Best New Artist (1986); the Grammy Award for Best R&B Performance by a Duo or Group (1994); and various ASCAP awards for song writing.

The Complainant submits that sales of official "SADE" merchandise are estimated to be in the region of US$7.5 million.

The Complainant submits that by reason of the foregoing, the use of the said trademark and service mark "SADE" has come to be recognised by the general public as indicating an association with the Complainant and her music. It is further submitted that the decisions of the administrative panels in the following administrative proceedings support the Complainants claims: Cedar Trade Associates Inc v. Greg Ricks (NAF Case No. FA0002000093633, dated February 25, 2000,), Southern Bank and Trust Company v. Bogrebtsky (NAF Case No. FA0002000093673, dated March 15, 2000, and Coleman & Co v. Lalwani and Coleman & Co v. Long Distance Telephone Company (WIPO Case Nos. D2000-0014 and D2000-0015, dated March 11, 2000).

The Complainant further submits that the said domain name is self-evidently identical and/or confusingly similar to the said trademark and service mark "SADE" in which the Complainant has rights.

The Complainant submits that the Respondent has no rights or legitimate interest in the said domain name. The Complainant claims that the said domain name was fraudulently registered with the Registrar in the name of "The Sade Internet Fan Club". The Complainant claims that said registration is a sham and a fiction and there is no such entity as "The Sade Internet Fan Club". In support of these claims, the Complainant states that the Respondent is neither the owner nor the licensee of the goodwill in the said trade mark "SADE".

The Complainant submits that even if, which is not admitted, a person operating a genuine fan site can claim a right or legitimate interest in a domain name, the Respondent does not in fact operate any such fan site.

The Complainant alleges that the Respondent provides novelty e-mail addresses based on a selection of 200 domain names, many of them of a dubious nature and/or in poor taste, in the following categories: "music", "TV", "movies", "funny", "attitude", "sexy", "sports", "Internet", "misc.1" and "misc.2". The Complainant alleges that until June 2000, said domain name "sade.com" was available on the Respondent's www site as one of the options in the "music" category. The Respondent could therefore offer Internet users an e-mail address of, for example, "johnsmith@sade.com." In support of this allegation, the Complainant has submitted a copy of the relevant page from the www site printed out on June 6, 2000.

On June 8, 2000, the solicitor acting on behalf of the Complainant wrote to the Respondent, and said domain name "sade.com" was subsequently moved to another category and listed as an option in the "Internet" category on the Respondent's www site. The Complainant has furnished this Administrative Panel with a copy of said letter annexed to the Complaint, In support of this allegation, the Complainant has further submitted a copies of the relevant pages from the Respondents www site. The Complainant submits that this was an attempt by the Respondent to muddy the waters as to its use of said domain name "sade.com".

The Complainant submits that the Respondent provides its service for profit. The Respondent trades through its www site at URL "www.myownemail.com". In this regard, the Complainant has annexed copies of pages from the Respondentís www site together with a press cutting describing the Respondentís service, to the Complaint.

The Complainant has submitted a print-out of the Registrar's WHOIS database which shows that the mailing address of "The Sade Internet Fan Club" on the Registrarís database is identical to that given by the Respondent as its address on the registration of the said domain name "myownemail.com". Furthermore, the Complainant has pointed out that the Respondentís name forms part of the address provided as the Administrative Contact for the registration of the said domain name "sade.com".

In the Complainantís submission, the facts as alleged above are compelling evidence that the Respondent registered and has used said domain name "sade.com" using a false name in order to seek to disguise its true use of the said domain name, and said domain name "sade.com" was in reality registered by the Respondent purely for the purpose of trading on the Complainantís goodwill, of which it is neither owner nor licensee, for its own financial gain.

It is alleged that the Respondent is not currently using the said domain name as a URL for a www site. If an Internet user types the URL "www.sade.com" the user is pointed to the Respondentís home page at "www.myownemail.com".

By using the said domain name, it is alleged that the Respondent has therefore intentionally attempted to attract, for financial gain, Internet users to its www site in a manner likely to cause confusion as to its association with the Complainant.

So far as the Complainant is aware, the Respondent has never been commonly known as "SADE".

The Complainant submits that the Respondent has used the said domain name in the course of its business, in conjunction with domain names which the Complainant describes as being of a "dubious nature" such as "ihavepms.com", "antisocial.com", "most-wanted.com", "iamwasted.com", "youareadork.com", and similar. It is alleged that the Respondentís use of said domain name "sade.com" is such as to dilute and tarnish the said trademark and service mark "SADE" in which the Complainant owns the goodwill.

The registration of the Domain Name by the Respondent is a representation to persons who consult the register maintained by the Registrar, and/or to the Respondentís customers and to persons who visit the Respondentís www site at "www.myownemail.com", that the Respondent is connected with or associated with or is the owner or licensee of the goodwill in the said trademark and service mark "SADE", which manifestly it is not. In this regard the Complainant submits that her claims are supported by the decision of the English Court of Appeal in British Telecommunications Plc & Ors v. One in a Million Limited & Ors [1998] 4 All ER 476.

The Complainant submits that said domain name "sade.com" is just one of a number of famous names registered by the Respondent for financial gain, notwithstanding that to the best of the Complainantís knowledge and belief the Respondent has no rights in the goodwill in those names. Other domain names registered by the Respondent and used at its "myownemail.com" www site include:

"the-eagles.com"

"the-police.com"

"wetwetwet.com"

"bay-watch.com"

"beverlyhills-90210.com"

The Complainant alleges that the Respondent has similarly sought to disguise its true identity by registering those domain names using a different alias in each case viz. "the-eagles.com e-mail service", "the unofficial the-police.com e-mail service", "the wetwetwet.com e-mail service" and so forth.

The Complainant alleges that the Respondent has ignored attempts made on behalf of the Complainant to settle this matter amicably.

The Complainant submits that registration by the Respondent of said domain name "sade.com" has prevented the Complainant as owner of the goodwill in the said trademark and service mark "SADE" from registering the name in the ".com" domain. In the Complainantís submission, it is common ground among online traders and advertisers that a ".com" domain (as opposed to a ccTLD) is generally perceived by consumers as having the greatest cachet and is therefore most effective from a marketing point of view. It is alleged that the fact that the Complainant has been prevented from registering the said domain name threatens seriously to hamper the marketing and advertising of the Respondentís forthcoming album.

In support of these claims the Complainant points to the decisions of the administrative panels in Jeanette Winterson v. Mark Hogarth, (WIPO Case No. D2000-02345, dated May 22, 2000) and Julia Roberts v. Russell Boyd (WIPO Case No. D2000-0210, dated May 29, 2000).

The Complainant sought to furnish further argument in an e-mailed Reply on September 14, 2000. As there is no provision in this procedure for such a Reply this Administrative Panel has not considered the content of same.

B. Respondent

The Respondent does not deny and implicitly accepts that it is the Registrant of domain name "sade.com". In its Response, the Respondent states that it offers Internet users free "personalized" e-mail addresses at one of its www sites viz. "www.myownmail.com". Users can assign to themselves an e-mail address using any of the available domain names. New domain names are constantly being added and removed to keep up with user demand and to maximize user enjoyment.

Said domain name "sade.com" is one of hundreds of domain names available on the Respondent's www site. Shorter domains such as "hehe.com" and domain name "sade.com" are some of the favourites among users and they make for short, easy to remember e-mail addresses.

The Respondent submits that whereas it is unfortunate that one of its domains, shares the same name as the Complainant, the Respondent makes no representation that this domain name pertains to her. Furthermore the Respondent states that it makes no mention of the Complainant whether by text, pictures or other references of any sort. Said domain name "sade.com" is simply listed as an available domain name on the Respondent's sign-up page "http://register.myownmail.com". The Respondent asks this Administrative Panel to note that said domain name "sade.com" is not listed on the Respondent's "music" section.

The Respondent submits that there are many uses and meanings of the word "SADE". Many users of this domain name are attracted to it in the context of the "Marquis de Sade". However the Respondent makes no representations of this use either. The Respondent has submitted a list of 20 e-mail addresses registered on domain name "sade.com" commencing with the letters "marq", such as "marquis de", "marquee", "marquis of" etc. The Respondent states that obviously these users are not using the said "sade.com" domain in respect of any reference to the Complainant.

The Respondent also points out that there are others who use the word "SADE" in connection with their business. The Respondent claims to have received a financial offer from an organisation by the name of Sade & Associate Public Relations, although the Respondent has not submitted any evidence in respect of this. Furthermore the Respondent refers to a number of www sites which make commercial use of the word "SADE", including Solutions Adaptťes Š Demain et Š l'Enterprise which has registered "www. sade.fr".

The Respondent claims to fully respect the copyrights and trademarks of other individuals and organisations and points out that the word "SADE" is not a registered trademark.

As a gesture of the Respondent's good faith the Respondent states that it would be happy to supply a re-direct from the www site "www. sade.com" to a www site of the Complainant's choice so that a message would be displayed stating that the Respondent is not affiliated to the singer and pointing to a link designated by the Complainant.

Finally in an e-mail sent on August 24, 2000, the Respondent submitted that the Administrative Panel should consider the decision in Gordon Sumner p/k/a Sting v. Michael Urvan (WIPO Case No. D2000-0596, dated July 20, 2000).

 

6. Discussion and Findings

Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy Adopted on August 26, 1999 (Implementation Documents Approved: October 24, 1999) (hereinafter the "Policy"), places on the Complainant the onus of proving that

(i) the domain name in dispute 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 said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.

The Complainants Trademark or Service Mark Rights

The Complainant has since 1983 used the stage-name SADE as a mark to distinguish her goods and services as a singer, songwriter, performer and recording artist. In that time the Complainant has established a substantial goodwill in that trademark and service mark in connection with sales of records, compact discs, videos, CD-ROMs, tickets for live performances, advertising and promotion, clothing and other merchandising in many jurisdictions throughout the world.

Although the Complainant has not registered the word " SADE " either as a trademark or as a service mark in any jurisdiction, the Complainant has adapted the word "SADE" as her stage-name and as a trademark and service mark and this Administrative Panel this Administrative Panel is further satisfied that the Complainant has established that she has common law rights in the said mark. In Kerly's Law of Trademarks and Trade Names (12th ed.) at page 389, the authors state: "The name under which a business trades will almost always be a trade mark". This Administrative Panel is satisfied that the Respondent carries on a substantial business as a recording artist, songwriter, performing artist and is engaged in merchandising of products under her stage-name "SADE".

This Administrative Panel accepts the Complainant's submissions that the said domain name is self-evidently identical to the said trademark "SADE" in which the Complainant has rights.

The Respondent Rights to and Legitimate Interests in the Domain Name

The Policy sets out how the Respondent can demonstrate rights to and legitimate interests in the domain name in responding to a Complaint. Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Administrative Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name in issue or a name corresponding to the said domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the said domain name, even if the Respondent 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 Complainant has established prima facie that the Respondent has no rights or legitimate interest in the said domain name. While not needing to decide if, as alleged by the Complainant, said domain name "sade.com" was fraudulently registered or if that said registration was a sham and a fiction, this Administrative Panel accepts and it is admitted by the Respondent, that the said domain name was registered by the Respondent under name "The Sade Internet Fan Club" for commercial purposes. The Complainant has used said domain name "sade.com" for the purposes of offering its e-mail services.

Despite its denial, it is clear that the Respondent has set out to deliberately associate this service with the Respondent through offering the service in the "music" section of its www site. Given the Complainantís established common law rights to the goodwill in the mark "SADE" such unauthorised use is not bona fide. This Administrative Panel accepts the Complainantís submission in this regard that this point is dealt with by the principles of law set out in British Telecommunications Plc & Ors v. One in a Million Limited & Ors [1998] 4 All ER 476.

In reaching this decision, this Administrative Panel has considered that persons visiting the Respondent's www site might on the face of it understand that there is no business connection claimed, however this is not necessarily the case, given that the Respondent chose to register the said domain name in the name of "The Sade Internet Fan Club" in circumstances where the Respondent is not connected with any such fan club and it would appear that there is no such entity. Furthermore the Complainant has prima facie established that the Respondent is neither the owner nor the licensee of the goodwill in the said trade mark. This allegation has not been refuted by the Respondent

The Respondent makes no claim whatsoever to any right or interest in the said domain name, does not explain how it came to choose said domain name "sade.com" and although it identifies a number of third parties who might well have a right or legitimate interest in the use of the word "SADE" in appropriate contexts, the Respondent makes no claim to having any such right or interest itself.

It is clear furthermore that the Respondent, unlike the Respondent in Gordon Sumner p/k/a Sting v. Michael Urvan (WIPO Case No. D 2000-0596, dated July 20, 2000), considered in detail below, makes no claim to being commonly known by the name "SADE" and that the Respondent's use of the said domain name is purely commercial.

This Administrative Panel therefore must conclude that the Complainant has established that the Respondent has no right or legitimate interest in the said domain name.

Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
(ii) the Respondent 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 Respondent has engaged in a pattern of such conduct; orÖ

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

It is common cause that the Respondent is engaged in a commercial activity providing novelty e-mail addresses based on a selection of approximately 200 domain names set out on its www site in categories such as: "music", "TV", "movies", "funny", "attitude", "sexy", "sports", "Internet", "misc.1" and "misc.2". The Complainant has established that the Respondent originally placed said domain name "sade.com" in the "music" category on its www site. Subsequently after contact from the Complainant's solicitor by letter of June 8, 2000, the said domain name was subsequently listed as an option in the "Internet" category on the Respondent's www site. The Respondent has stated that "[w]hile it is unfortunate that one of our domains, "sade.com", shares the same name as a singer, we make no representation that this domain name pertains to her." This Administrative Panel finds that it is inconsistent for the Respondent on the one hand to have the domain name placed in a "music" category on its www site, while at the same time denying that it is representing a connection between the said domain name and the Complainant. This Administrative Panel accepts that this change was an attempt by the Respondent to "muddy the waters" as to its use of the said domain name.

Furthermore, the Respondent's denial that it is making any representation that the said domain name pertains to the Complainant cannot be sustained when the Respondent has clearly registered the said domain name under the name "The Sade Internet Fan Club".

This Administrative Panel also accepts that the Respondent has registered the said domain name under a false name purely for the purpose of trading on the Complainantís goodwill, of which it is neither owner nor licensee, for its own financial gain. Furthermore, this Administrative Panel accepts that by using the said domain name, which it has associated with the Complainant through making it available for novelty e-mail addresses in the "music" category on its www site, the Respondent has intentionally attempted to attract, for financial gain, Internet users to its www site , in a manner likely to cause confusion as to its association with the Complainant.

In reaching this conclusion, this Administrative Panel is confirmed in its decision by

the fact that the said domain name is just one of a number of famous names registered by the Respondent for financial gain in circumstances where the Complainant has alleged that the Respondent has no rights in the goodwill in those names and the Respondent has not addressed this allegation in its Response.

Furthermore, this Administrative Panel accepts that registration by the Respondent of the said domain name has prevented the Complainant from registering that name as a ".com" domain name and that the Complainant has established a prima facie case that the the Respondent has engaged in a pattern of such conduct

The Respondent has requested this Administrative Panel to consider the relevance of the decision of the administrative panel decision in "sting.com". The Complainant has submitted that her case is supported by the decisions of the administrative panels in Jeanette Winterson v. Mark Hogarth, (WIPO Case No. D2000-02345, dated May 22, 2000); Julia Roberts v. Russell Boyd, (WIPO Case No. D2000-0210, dated May 29 2000).

The present case can be distinguished from the facts in the STING case as regards the characteristics of the respective trademarks. The Administrative Panel in "sting.com" distinguished the decision in Jeanette Winterton and Julia Roberts on the grounds of distinctiveness. In this case, the Complainant has established that the word "SADE" while not necessarily an invented word in that it is the name of a historical character, otherwise it has no meaning in the English language and the Respondent has not suggested that it has any meaning in any other language. In the view of this Administrative Panel, the "SADE" trademark is highly distinctive.

The administrative panel in the STING case was not happy to decide that the word "STING" was a trademark or service mark of the Complainant, whereas in this case, this Administrative Panel is satisfied that the Complainant has rights at common law in the use of the said mark "SADE" in the sale of goods and provision of her entertainment services. In this regard, this Administrative Panel is following the line of reasoning taken by the administrative panels in Jeanette Winterton and Julia Roberts.

Furthermore, in the present administrative proceedings, the Respondent has not given any explanation whatsoever as to how it came to choose said domain name "sade.com", although this Administrative Panel is satisfied that an inference can be taken from the fact that the Respondent has registered a number of names of famous musicians and groups and that said domain name "sade.com" was initially offered as an Internet address in the "music" section of the Respondent's www site whereas in the STING case, the Respondent claimed to have used the name "Sting" as an alias or nickname for a number of years.

In STING, the Complainant did not succeed in convincing the administrative panel that the Respondent was making any connection between his www site and the Complainant. In this case, however, this Administrative Panel is convinced that the Respondent, despite its denials, has intentionally associated the said domain name with the Complainant's reputation and goodwill. The domain name was offered on the "music" section of the Respondent's www site and the Respondent registered the domain name in the name of "The Sade Internet Fan Club".

Furthermore, in STING, there was no question that the Respondent had engaged in a pattern of conduct relating to the registration of domain names whereas in this case the Complainant has established a prima facie case that there has been such a pattern of conduct.

This Administrative Panel is therefore satisfied that the said domain name has been registered and is being used in bad faith.

 

7. Decision

With specific reference to paragraph 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel decides that the domain name in dispute is identical to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of said domain name "sade.com" and that said domain name "sade.com" has been registered and is being used in bad faith. This Administrative Panel therefore decides that said domain name "sade.com" shall be transferred to the Complainant.


 

James Bridgeman
Presiding Panelist

September 26, 2000