WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tracy Marrow p/k/a "ICE-T" v. iceT.com a/k/a Sverrir Geirmundsson
Case No. D2000-1234
1. The Parties
Complainant: Tracy Marrow p/k/a/ "ICE-T" of c/o Rhyme Syndicate, 4902 Coldwater Canyon Ave. Sherman Oaks, California 91423, USA represented by Francois Mombasser of Myman, Abell, Fineman, Greenspan & Light LLP, 11777 San Vicente Blvd., Suite 880 Los Angeles, CA 90049, USA.
Respondent: iceT.com a/k/a Sverrir Geirmundsson of Raudalaek 27, Reykjavik, 105 Iceland.
2. The Domain Name and Registrar
Domain Name: icet.com
Registrar: Network Solutions Inc.
3. Procedural History
The Complaint was filed on September 18, 2000. An Amendment to the Complaint to deal with a slight procedural irregularity was filed on October 5, 2000. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with Rules, paragraph 2 (a) and a Response was filed on October 28, 2000.
The administrative panel was properly constituted on November 9, 2000. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The date scheduled for the issuance of the Panelís decision was November 22, 2000.
4. Factual Background
The Complainant is a successful US entertainer resident in the US. He has used the professional name Ice T since 1984. He has achieved worldwide fame for his creative activities as a composer, performing artist, record producer and actor and has been the recipient of a Grammy award.
The Respondent registered the Domain Name iceT.com on January 27, 1999 and has not attached a web site to the name.
5. Partiesí ContentionsA. Complainant
The Complainant states that:
Complainant is a world famous entertainer, performing artist, composer, record producer, actor and public figure. Since 1984, Complainant has exclusively and continuously used his name, trademark and service mark "Ice-T" (the "Ice-T Mark") in and in connection with a wide variety of entertainment services throughout the world, including, but not limited to, in and in connection with the following activities, performances and the like that have achieved worldwide recognition, success and exposure: films, television programs, television and radio commercials, sound recordings, compositions, merchandise (including, but not limited to, t-shirts, hats, pins, posters, sweatshirts, bandanas and stickers), concerts and books. Furthermore, Complainant has been officially recognized for his worldwide accomplishments as an entertainer by being presented with a "Grammy Award" by the National Academy of Recording Arts and Sciences on international television in 1990. (Appended to the Complaint were general biographies of Complainant from third party web sites, a list of the Complainantís credits as a film and television actor, producer, co-creator and composer from a third-party website, a copy of Complainantís book entitled "The Ice Opinion;" a VHS copy of episode #122 of VH1ís television program "Behind The Music," profiling the Complainantís career; a copy of the Complainantís internationally released 1987 album, entitled "Rhyme Pays;" a copy of Complainantís internationally released 2000 album "Greatest Hits;" and a variety of promotional posters regarding, among other things, Complainantís internationally released albums.)
Complainant is the owner of strong common-law rights in the Ice-T Mark. Through long, extensive and continuous use (including, but not limited to, as set forth above), through extensive advertising and promotion, and through extensive unsolicited media attention, the Ice-T mark has achieved enormous fame, has become synonymous in the minds of the public with Complainant and his activities in the entertainment industries and otherwise as a public figure, and serves as a symbol of the goodwill and reputation associated with Complainant. The Ice-T Mark is famous, creative, original and unique, and, as such, is entitled to the widest scope of protection afforded by law, including, but not limited to, protection against dilution and unfair competition.
The Domain Name is identical in its substantive part to Complainantís world famous Ice-T Mark.
Respondent has registered the Domain Name in bad faith. Respondent should be considered as having no rights or legitimate interest whatsoever in the Domain Name that is subject of this complaint as:
(a) Complainant has been actively and continuously using the mark "Ice-T" throughout the world for the past sixteen (16) years in and in connection with his career as a musician, songwriter, vocalist, actor, director, producer, writer, merchandiser and entertainer, and, as such, is the sole, exclusive and rightful owner of the Ice-T Mark.
(b)Respondent has no connection, affiliation or other relationship with Complainant, nor has Complainant authorized Respondent to exploit the Ice-T Mark in any manner whatsoever.
(c) When Respondent was approached by Complainant via e-mail regarding the possibility of the transfer of the Domain Name to Complainant, Respondent expressed his interest and willingness to discuss the "sale" of the Domain Name to Complainant, and when offered a reasonable sum by Complainant, Respondentís declined, stating that "I think the name is worth considerably more than $1,000 (emphasis added)," indicating that (i) Complainantís worldwide and continuous use of the Ice-T Mark over the past sixteen (16) years has been solely responsible for increasing the commercial value of same over and above the minimal costs and expenses incurred by Respondent in registering the Domain Name, and (ii) Respondent was, in bad faith, seeking to unjustly capitalize on such commercial value so established by Complainant. (A copy of the referenced e-mail exchanges between Complainant and Respondent were attached to the complaint)
(d) Respondent is currently maintaining an active registration of the Domain Name, and has done so since at least January 27, 1999, if not earlier than such date, but Respondent has not and does not currently have a website located at such URL, nor has Respondent utilized the Domain Name for any other purpose whatsoever. Thus, Respondent is currently holding the Domain Name hostage either for the purpose of (i) selling, renting or otherwise transferring the Domain Name to Complainant for valuable consideration far in excess of Respondentís costs, (ii) driving consumers to such URL with the intent of deriving commercial gain through the unauthorized apparent sponsorship of, affiliation with or endorsement by Complainant and/or (iii) preventing Ice-T from using the Domain Name.
The Ice-T Mark has a strong reputation and is world famous. Respondent can make no good faith use of the Domain Name, and "it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainantís rights under trademark law." Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Arbitration and Mediation Center Case No. D2000-0003.
The Respondent states:
Despite the exhibits submitted with the Complaint the Respondent denies all knowledge of the Complainant being a "world famous" entertainer, performing artist, composer, record producer, actor and public figure. The Respondent points out that he is an Icelandic citizen and based on the Respondentís previous knowledge of the Complainant his "fame" is certainly not evenly harmonized throughout the world. Furthermore the Respondent denies all knowledge or information as to the Complainant having registered a trademark or service mark for "Ice-T".
The Respondent has registered the Domain Name "icet.com". The Respondentís Domain Name is identical to the Complainantís mark apart from a hyphen in the mark and a ".com" ending in the Domain Name. The Respondent has not registered the Domain Name in bad faith. The Respondent should not be considered to have no rights or legitimate interest in "icet.com". The Respondent has not shown any attempts to exploit the "Ice-T" mark in any manner.
The Complainant approached the Respondent first and offered on his own initiative to "purchase" the registration of "icet.com" and the Respondent has in connection therewith informed the Complainant that he was free to make an offer The Respondent refused an offer of $1.000 for the registration. The Respondent did not register the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or to other parties, when the Complainant showed interest in purchasing the Domain Name the Respondent believed that according to his best knowledge the sale of the Domain Name did not violate any trademarks or service marks that he was aware of and the Respondent has not had any initiative in discussing a "sale" of the Domain Name.
The Respondent denies the allegation that his passive holding of the Domain Name means that he is holding it "hostage". The Respondent points out that there is no obligation on a Domain Name registrant to use it for any purpose, commercial or otherwise, nor is there any obligation to transfer it to any other person for a sum exceeding the costs of obtaining and maintaining it provided that the Domain Name has not been registered in bad faith which is not the case here
The Respondent has made demonstrable preparations to use "icet.com" in connection with bona fide offering of services and the Respondent has not shown any attempts of trafficking the Domain Name or to prevent the Complainant from using it and the Complainant does not provide any evidence to prove otherwise.
The Respondent denies that the Complainant has established that all the aforementioned conditions of the policy are met on the following grounds:
(i) Domain Name identical or confusingly similar to Complainantís trademark or service mark
The Respondent admits that the domain name "icet.com" is identical to Complainantís "Ice-T" mark. However, this does not relieve the Complainant from showing how confusion is likely. The Respondent is not in competition with the Complainant and has no plans to use the Domain Name in any of the fields in which the Complainant operates.
There is no evidence in the Complaint to prove that the Complainant is the owner of a trademark or service mark registration for "Ice-T".
(ii) Respondentís Rights or Legitimate Interests in the Domain Name
The Respondent, who is an Icelandic citizen, registered the Domain Name "icet.com" on January 27, 1999, for the purpose of setting up a booking and information web site called ICET for the Icelandic tourism industry (an abbreviation of Iceland Travel, pronounced "iceet"). The Respondent wanted to register the Domain Name "icelandtravel.com", but that domain name was taken. Appended to the Response was a who is search for this name where it is stated that this Domain Name was registered on April 29, 1997. On the other hand, the Domain Name "icet.com" was available and the Respondent considered that name appropriate as it had the advantage of being short as well as having a reference to "ice" for Iceland and "t" for travel.
The Respondent later registered the descriptive Domain Names "icelandonline.com" (October 8. 1999), "reykjavikhotels.com" (January 12, 2000), "icelandhotels.com" (March 28, 2000) and "reykjavikcity.com" (April 27, 2000) which is intended to transfer visitors seeking information and booking services on Iceland to the "icet.com" main page. The Respondent has been seeking partners and working on obtaining financing for this booking web site which explains why the Respondent has not yet established a web site on "icet.com" or on other Domain Names.
Thus the Respondent had made preparations to use "icet.com" in connection with a bona fide offering of services before he had any notice of the dispute. The fact that the Respondent was registering descriptive Domain Names relating to Iceland until April 27 of this year demonstrates that he has been working on setting up a web site on Icelandic tourism. The Respondent believes that he has the right to use the Domain Name for the above-mentioned purpose.
(iii) Domain Name Registered and Used in Bad Faith
The Respondent did not register the Domain Name with any reference to the Complainantís artist name "Ice-T" and had no knowledge of the Complainantís "Ice-T" mark when he registered the Domain Name. In the Respondentís e-mail to the Complainantís manager on June 28, 1999, three days after the Complainantís Manager first approached the Respondent on his own initiative, the Respondent commented: "I donít know much about the musician Ice-T and I certainly did not have his artist name in mind when I registered icet.com as you might think. I have other plans for it. However I will listen to any offers." (Emphasis added)
When the Respondent registered the Domain Name he found no evidence to the effect that the Domain Name conflicted with any registered trademarks or service marks.
The Complaint does not state clearly that the Complainant had the sole initiative "to discuss the sale" of icet.com. When the Complainantís manager first approached the Respondent in e-mail on June 25, 1999, his precise words were as follows: "Hi, I manage Ice T. Are you interested in selling him iceT.com? Thanks, Jorge Hinojosa" (emphasis added). Subsequently the Complainant has offered the Respondent a "partnership" for the use of the Domain Name, cf. an e-mail dated 27 July, 2000 from Mr. Todd Ryan who manages the Complainantís current site at "mcicet.com" The Respondent did therefore not initiate contact with the Complainant regarding "sale" of "icet.com".
There is no obligation to transfer Domain Name registrations to any other person for a sum exceeding the costs of obtaining and maintaining it if the Domain Name has not been registered in bad faith.
The fact that the Respondent has declared interest in discussing the "sale" of the Domain Name without having any initiative to that effect does not prove that the Respondent registered the domain name primarily for the purpose of selling it to the Complainant, cf. paragraph 4(b)(i) in the Policy.
The Respondent does not prevent the Complainant from reflecting his mark in the disputed Domain Name or is by any other means trying to disrupt the business of the Complainant or trafficking on the URL, cf. paragraphs 4(b)(ii) - 4(b)(iv) in the Policy. All the Complainantís allegations to this effect are completely unfounded.
The Respondent denies the Complainantís statement that the Respondent "can make no good faith use of the Domain Name", and "it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainantís rights under trademark law.
The Respondent has received inquiries from various other parties regarding the Domain Name.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
a) Complainantís Rights
The Complainant is a world famous entertainer and there is no doubt that he is the owner of unregistered trade mark rights in the name ICE-T. The panelist agrees that the mark is fanciful and distinctive of the Complainant in the field of entertainment services.
b) Identical or confusing similarity
It is prima facie obvious that the Domain Name is identical to the Complainantís ICE T mark and, therefore, that they are confusingly similar.
c) Rights or Legitimate Interest of the Respondent
The Respondent has not produced any documentary evidence to support the reasons it puts forward for registration of a domain name identical to the very famous and distinctive ICE-T mark . He does not claim to have any experience or background in the travel and tourism industry. He does not produce any evidence of the preparations he says he has made to use the name. The further travel related domain names which he has registered were registered after the Complainant approached the Respondent regarding recovery of the ICET domain name. I therefore conclude that the Respondent does not have any rights or legitimate interest in the Domain Name.
d) Bad Faith
Paragraph 4 (b) of the Rules sets out non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including "the Respondent 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 trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name".
Since it has become commonly known that an approach to a trade mark owner to sell a domain name containing its trade mark will be taken as evidence of bad faith, it is becoming increasingly common for registrants of domain names containing trade marks to sit and wait for an approach from the trade mark owner. I, therefore do not put much weight on the fact that it was the Complainant who contacted the Respondent to see if it was interested in selling the name. The first response the Respondent, in fact, made to the e mail from the Complainantís representative asking if the respondent was interested in selling the name was "I might be interested" and that e mail makes no mention of any plans for the name.
I also see it as highly significant that the Respondent thought that the domain name that it had never used was worth considerably more than $1,000. This can only be as a result of the added value attached to the domain name as a result of the reputation and goodwill of the Complainant in the ICE T mark. This also exhibits an intent to profit over and above the registration and other costs invested in the Domain Name by the Respondent.
If the Respondent had truly needed the Domain Name for its business it would not have attempted to negotiate a higher price with the Complainant for sale of the name. In any event I regard the Registrantís story about how it came to register the name with some scepticism. It seems to me that there are more obvious choices to attract customers to a tourism business in Iceland, such as IcelandTour, IcelandT or a number of other possible options.
Finally I note that although the Respondent claims to have never heard of ICE T when he registered the name, he responds in his e mail referring to the "musician ICE T". The original e mail to the Respondent does not indicate the field of activity that the Complainant was in. I also think that due to the extensive renown of the Complainant and the fanciful nature of the name chosen by the Respondent, that it is unlikely that the Respondent registered the name without being aware of the Complainantís rights.
Accordingly, the Respondent appears to have registered and is using the domain name in bad faith within the meaning of the Policy.
In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainantís trade mark and that the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and is being used in bad faith.
Accordingly, in the light of the above, the panelist requires that the registration of the Domain Name ICET.COM BE TRANSFERRED to the Complainant.
Dated: November 22, 2000