WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RICKY SKAGGS v. W. IGNACIO VINCENTE
Case No. D2000-1134
1. The Parties
Complainant is Ricky Skaggs, c/o RS Entertainment, Inc., 329 Rockland Road, Hendersonville, Tennessee, U.S.A., 37075.
Respondent is Ignacio Ijv Vincente, Asuncion 2030, Don Torcuato, Buenos Aires, Argentina, 1611.
2. The Domain Name and Registrar
The domain name at issue (the Domain Name) is "rickyskaggs.com". The registrar of the Domain Name is Easyspace, Ltd., Rosemount House, Rosemount Avenue, West Byfleet, Surrey, KT14 6LB, UK.
3. Procedural History
On August 28th, 2000, Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in a letter to the Complainant dated the same date. On September 1st, 2000, the Center informed the registrar, Easyspace, Ltd., that the Complaint had been submitted to the Center regarding the Domain Name.
The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on September 1st, 2000.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated September 20th, 2000, the Center informed the Respondent of the commencement of the proceedings as of September 20th, 2000, and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
In a letter dated October 25th, 2000, the Center informed the Respondent that he was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or Prior to November 22nd, 2000, in the English language.
4. Factual Background
The Complainant is a physical person and award-winning musician. Since the 1970s the Complainant has released country and bluegrass recordings under his personal name, Ricky Skaggs. The Complainant has made Billboardís "Top 20 Artists of the Decade" and was also included in the list of "Top 100 Artists of the Past 50 Years". During the 1980s the Complainant made 12 recordings which reached number 1 and an additional 7 which were in the top 10. The Complainant has one platinum and 4 gold albums. In 1985 the Country Music Association declared the Complainant "Entertainer of the Year". He has won seven Grammy Awards, the first in 1984 and the last in February 2000. These are just a few of the Complainantís achievements.
Nothing is known as to the activities of the Respondent.
According to the Whois database the Respondent registered the Domain Name with the Registrar on September 25th, 1999.
On July 2nd, 2000, the Complainantís representative contacted the Respondent and inquired whether or not the Respondent would release the Domain Name to the Complainant. The Respondent replied that he was a fan of the Complainant and was intending to set up a fan club website for fans of the Complainant. The Complainant offered to exchange transfer of the Domain Name to the Complainant for free web hosting and space on the iBluegrass web-site as well as to reimburse the Respondent for out of pocket expenses related to the registration of the Domain Name.
On August 5th, 2000, the Respondent replied that he would not transfer the Domain Name unless compensation received exceeded US$15,000.
5. Partiesí Contentions
At paragraph 12(1) to the Complaint, the Complainant maintains that he has a common law trademark and service mark in the name RICKY SKAGGS which identifies the goods and services of the Complainant. This, the Complainant bases on music performed and recorded under his name RICKY SKAGGS.
At paragraph 12(2) to the Complaint the Complainant maintains that the Domain Name is identical and confusingly similar to his common law mark RICKY SKAGGS. The Complainant continues by maintaining that by registering the Domain Name the Respondent has created a likelihood of confusion with the Complainantís common law mark RICKY SKAGGS, that Internet users would reasonably assume that the Complainant sponsors, is affiliated with or endorses the website located at the Domain Name.
At paragraph 12(3) to the Complaint the Complainant states that the Respondent has no relationship with or permission from the Complainant to use the common law mark RICKY SKAGGS nor has the Respondent demonstrated any preparations to use the Domain Name in connection with a bona fide offering of goods or services. On these grounds the Complainant alleges that the Respondent has no legitimate rights or interests in the Domain Name.
At paragraph 12(4) to the Complaint the Complaint maintains that the series of e-mail messages between the Respondent and the Complainantís representative demonstrate the Respondentís bad faith. The Complainant states that in one of the e-mail messages the Respondent requested US$15,000 as minimum compensation for transferring the Domain Name as this would be "...enough to start a new project". This, the Complainant continues, confirms that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding name. Furthermore, continues the Complainant, the Respondentís e-mail message to the effect that "... I just wanted something because I think I deserved something ... do you thin [sic] I need $70 dollars or a web space? I have my own server and I donít need it ..." confirms that the Respondent is not interested in a legitimate use of the website. Finally, the Complainant maintains that the Respondentís bad faith is also supported by the Respondentís refusal of the Complainantís offer to provide free space and hosting for a legitimate fan club site (the Panel is unsure as to the bona fides of this offer, as iBluegrass appears to offer free web space for bands and therefore it may not have cost the Complainant anything to make such an offer).
The Respondent failed to file a response with the Center within the foreseen delays and has failed to file a response since.
6. Discussion and Findings
Referring to paragraph 14 of the ICANN Rules, in the absence of a response to a complainantís allegations by the respondent, the Panel is to consider those claims in the light of the unchallenged evidence submitted by the Complainant. However, the Panel cannot decide in the Complainantís favor solely given the Respondentís default, but is entitled to draw, and does such inferences as it feels just from the Respondentís failure to respond.
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
As stated above, the Complainant does not rely on a registered trademark but rather alleges that RICKY SKAGGS is a very strong common law service mark in the United States. Common law rights have been found sufficient for the purposes of the Complaint in a number of cases (see e.g. Monty and Pat Roberts, Inc. v. Bill Keith, Case D2000-0299, Jeanette Winterson v. Mark Hogarth, Case No. D2000-0235, Julia Fiona Roberts v. Russel Boyd, Case No. D2000-0210 and this Panelís decision in Steven Rattner v. BuyThisDomainName (John Pepin), Case No. D2000-0402).
Traditionally at common law personal names used in the context of a business have often been protected by the Courts, and English jurisprudence provides examples of some even quite common names being afforded protection. It is perhaps important to point out, however, that protection at common law is determined on a case by case basis and depends greatly on the factual basis of each individual case. At common law, as the primary task is to determine if there is confusion in the mind of the consumer, the notoriety of a particular mark is gauged relative to a number of factors, including the territory within which the mark is used, the products for which it is being used, etc..
The above tradition has been continued by panelists in the context of domain name disputes. For example, in Monty and Pat Roberts, Inc. v. Bill Keith, Case No. D2000-0299, it was held that, for a claim to be brought under the ICANN Policy based on a personal name, the Complainant must establish the distinctive character of the name. The panelist in that decision goes on to equate the distinctive character with whether or not the person in question is sufficiently famous in connection with the services offered by that Complainant. The Panel agrees with this manner of proceeding and based on the materials provided by the Complainant finds that the Complainant holds a common law mark in connection with country and bluegrass music which is well known.
Given that the Domain Name is for all intents and purposes identical to the Complainantís name and common law trademark, the Panel is of the opinion that the Complainant has met the burden of proof as required by paragraph 4(a)(i) of the ICANN Policy.
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Names; and (iii) legitimate non-commercial or fair use of the Domain Names.
The Panel is of the opinion that no evidence has been provided which would support a finding under paragraph 4(c)(i) and (ii) of the ICANN Policy, i.e. the Panel is of the opinion that the circumstances do not show use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services nor do they show that the Respondent has commonly been known by the Domain Names. The Panel is also of the opinion that the circumstances do not warrant a finding of legitimate rights or interest under paragraph 4(c)(iii) of the ICANN Policy but feels the decision in this regard merits some discussion.
In his correspondence with the Complainant the Respondent alleged he had registered the Domain Name with the intention of using it to establish and maintain a website dedicated to a fan club for the Complainant. Other panels have addressed the question of web-sites dedicated to famous personalities. For example, in Monty and Pat Roberts, Inc. v. Bill Keith, Case D2000-0299, the respondent intended to use the domain name in question to establish and maintain a website critical of complainant. In the panelís opinion this did not give the respondent the right to identify himself as the complainant (it should be noted that the opinion was based partially on a finding that goods were offered for sale via the website). In Jules I. Kendall v. Donald Mayer Re skipkendall.com, Case No. D2000-0868, the panel toyed with the issue of whether or not such non-commercial uses were protected by rights of free speech but came to no definitive finding in this regard.
In Helen Fielding v. Anthony Corbert aka Anthony Corbett, Case No. D2000-1000, which contains similar facts to the case at hand, the panel avoided addressing the issue of whether or not operating or intending to operate a fan club is sufficient to support a finding of legitimate rights and interest for the purposes of the ICANN policy. Instead, the panel concentrated on the lack of use of the domain name (the respondent registered the disputed domain name approximately two years prior to the dispute, had not made any active use of the domain name to host a web-based fan club, had not made any other apparent use of the name nor had he provided any evidence of plans for such a fan club) and went on to find that the mere allegation of the use for a fan club was insufficient as a basis for a finding of legitimate rights or interest. In the case at hand the Panel is of a similar opinion and finds that the Complainant has provided prima facie evidence of no legitimate rights on behalf of the Respondent, who in turn has failed to rebut this. Therefore, the Panel is of the opinion that the Respondent has no legitimate rights or interest.
In any case, the Respondent has failed to rebut the Complainantís allegation that he has no legitimate interests in respect to the Domain Name, which failure has been held to show, on balance, that the Respondent has no legitimate right or interest (see e.g. Alcoholics Anonymous World Services, Inc. v. Raymond, Case No. D2000-007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., Case No. D2000-0011).
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in Bad Faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(i) of the ICANN Policy holds that, if the circumstances indicate that the Domain Name was registered for the purpose of selling the Domain Name to the Complainant, that the Complainant is the owner of the trademark and that the consideration sought by the Respondent is in excess of documented out-of-pocket costs directly related to the Domain Name, then this is evidence of bad faith registration and use on behalf of the Respondent.
The Panel is of the opinion that the Respondent has registered and is currently using the Domain Name in bad faith. The Panel has concluded that there is no evidence to support a finding that the Domain Name was registered for use as the terminal address as a fan-club for the Complainant. Therefore, the only conclusion the Panel is able to come to is that the Respondent obtained the Domain Name for the purposes of selling it to the Complainant for valuable consideration in excess of out of pocket expenses. This finding is supported by the Respondentís offer to part with the Domain Name in consideration of a sum in excess of US$15,000.
For the foregoing reasons, the Panel concludes that:
- that the Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, the Panel finds that the complaint should be allowed and the Domain Name, "rickyskaggs.com" should be transferred to the Complainant.
Hugues G. Richard
Dated: December 18, 2000