WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Michael J. Feinstein v. PAWS Video Productions

Case No. D2000-0880

 

1. The Parties

Complainant is Michael Feinstein located at 9152 Kent Avenue, Suite A-25, Indianapolis, Indiana 46216 USA.

Respondent is PAWS Video Productions with a mailing address of P.O. Box 7172, Thousand Oaks, California 91359-7172 USA.

 

2. The Domain Name(s) and Registrar(s)

The domain names at issue are "michaelfeinstein.com", "michaelfeinstein.net" and "purefeinstein.com" (the "Domain Names"). The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.

 

3. Procedural History

On July 28, 2000 after receiving a copy of the Complaint of Complainant via email, the WIPO Arbitration and Mediation Center (the "Center") sent an Acknowledgment of Receipt of Complaint to Complainant.

On August 2, 2000, the Center received a hardcopy of the Complaint. The Complainant paid the required fee.

On August 9, 2000, after sending a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

On August 19, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On August 21, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On September 20, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On September 30, 2000, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Sole Panelist.

 

4. Factual Background

Michael Feinstein is an internationally known entertainer and musician. The personal name and unregistered trademark "Michael Feinstein" is also his stage name and the name featured on all of Mr. Feinstein's popular recordings and albums. In his successful twenty-year career, Mr. Feinstein has promoted himself under this name and trademark. One of Mr. Feinstein's more popular albums is entitled "Pure Feinstein."

Mr. Feinstein's counsel has attempted to contact PAWS Video Productions in an effort to resolve this domain name dispute. PAWS Video Productions has refused to respond to any correspondence or messages left by Mr. Feinstein's counsel. After receiving email correspondence from Mr. Feinstein's counsel regarding these domain names, PAWS Video Productions placed minimal content on the website located at "www.michaelfeinstein.com", which had been blank for over a year. PAWS Video Productions did not make any use of the domain name "michaelfeinstein.com" until after it received notice from Mr. Feinstein's representatives.

The websites "www.michaelfeinsten.net" and "www.purefeinstein.com" are unused. PAWS Video Productions has recently created a firewall against Mr. Feinstein's counsel on these two websites so Mr. Feinstein's counsel cannot access or monitor the content located at these two websites.

PAWS Video Productions has registered additional domain names that are identical to well-known names and/or trademarks, and is not using these domain names. PAWS Video Productions has registered the domain name "kookiemonster.com". The website located at this domain is an advertisement for a company entitled Register.com.

 

5. Partiesí Contentions

A. Complainant contends that he has common law trademarks in MICHAEL FEINSTEIN and PURE FEINSTEIN. Complainant further contends that the Domain Names are identical with and confusingly similar to the MICHAEL FEINSTEIN and PURE FEINSTEIN trademarks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent does not contest Complainantís assertion that he has common law trademarks in MICHAEL FEINSTEIN and PURE FEINSTEIN or that the Domain Names are identical with and confusingly similar to the trademarks.

Respondent failed to contest Complainantís assertion that Respondent has no rights or legitimate interest in the Domain Names.

Respondent failed to contest Complainantís assertion that Respondent registered and used the Domain Names in bad faith.

 

6. Discussion and Findings

Even though Respondent has failed to file a Response or to contest Complainantís assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Identity or Confusing Similarity

Complainant asserts that he has common law trademarks in MICHAEL FEINSTEIN and PURE FEINSTEIN. The Complaint contains the bare allegations that Michael Feinstein is an internationally known entertainer and musician and that "Michael Feinstein" is also his stage name and the name featured on all of Mr. Feinstein's recordings and albums. Complainant alleges that his career has spanned twenty years and that one if his more popular albums is entitled "Pure Feinstein." While these allegations do not describe the number of his recordings and concerts or the extent of their distribution, the allegations are uncontested. See, Julia Roberts v. Russell Boyd (WIPO Case No. D2000-0210). Therefore, the Sole Panelist finds that Complainant has common law trademarks in MICHAEL FEINSTEIN and PURE FEINSTEIN.

Complainant further asserts that the Domain Names "michaelfeinstein.com" and "michaelfeinstein.net" are identical with or confusingly similar to Complainantís common law trademarks. Because the Domain Names contain the phrase "Michael Feinstein," the Sole Panelist finds that they are identical with the MICHAEL FEINSTEIN common law trademark. See, e.g., Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165 (holding that the domain name "ROBOHELP.COM" is identical to complainantís registered ROBOHELP trademark, and that the "addition of ".com" is not a distinguishing difference"); Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 ("the addition of the generic top-level domain (gTLD) name Ď.comí is likewise without legal significance since use of a gTLD is required of domain name registrants"); InfoSpace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075 ("The domain name "info-space.com" is identical to Complainantís INFOSPACE trademark. The addition of a hypen and ".com" are not distinguishing features").

The Domain Name "purefeinstein.com" not only incorporates Mr. Feinstein's surname, but also is identical to the title of one of Mr. Feinstein's more popular albums. Therefore, the Sole Panelist finds that the Domain Name "purefeinstien.com" is identical with the PURE FEINSTEIN mark and confusingly similar to the MICHAEL FEINSTEIN mark.

The Sole Panelist finds that the Domain Names are identical with and confusingly similar to each of the MICHAEL FEINSTEIN and PURE FEINSTEIN marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the use of the MICHAEL FEINSTEIN or PURE FEINSTEIN marks.

The Policy paragraph 4(c) allows three non-exclusive methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Names:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.

Respondent has offered no evidence that the use of the Domain Names meets the elements for any of the non-exclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have 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.

Complainant alleges that Respondent has registered the Domain Names for the purpose of preventing Complainant from reflecting his marks in the corresponding Domain Names. Complainant further alleges that the registration of three Domain Names related to Complainant and another domain name related to the well-known character Kookie Monster constitute a pattern. Respondent has not contested these allegations and the Sole Panelist finds them sufficient under the Policy paragraph 4(b)(ii).

The four criteria set forth in the Policy paragraph 4(b) are non-exclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003.

Prior decisions have determined that the registration of a domain name without taking any affirmative action to post content or to use the domain name can constitute bad faith. In Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.

The Sole Panelist finds that the Respondent posted no content on the corresponding website prior to receiving notice of this dispute and that such failure to post content constitutes "inaction" under Telstra. This inaction considered together with the refusal of Respondent to communicate with Complainant and with the creation of a firewall to block Complainantís monitoring of content constitute a separate basis for finding bad faith.

Therefore, the Sole Panelist finds that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Names "michaelfeinstein.com", "michaelfeinstein.net" and "purefeinstein.com" are identical with or confusingly similar to Complainantís common law trademarks MICHAEL FEINSTEIN and PURE FEINSTEIN, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Michael J. Feinstein.

 


 

Richard W. Page
Sole Panelist

Dated: October 21, 2000