WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edward Van Halen v. Deborah Morgan
Case No. D2000-1313
1. The Parties
The Complainant is Edward Van Halen, a musician.
The Respondent is Deborah Morgan, of 1296 Parkwood Drive, St. Paul, Minnesota 55125 USA.
2. The Domain Name and Registrar
The domain name at issue is "edwardvanhalen.com". The domain name is registered with Network Solutions, Inc.
3. Procedural Background
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on October 4, 2000, and in hardcopy on October 5, 2000. Following receipt of a notice of deficiency, Complainant filed an amendment to its complaint on October 19 (by email) and 20 (by hard copy). On October 26, 2000, the Center formally commenced this proceeding and notified Respondent that its Response would be due by November 14, 2000. Respondent timely filed a Response. Neither party requested a three-member Panel.
On December 7, 2000, after clearing for potential conflicts, the Center appointed David H. Bernstein as the Panelist, and set December 21, 2000, as the deadline for issuance of a decision.
4. Factual Background
Complainant is a world-famous musician whose commercial success as part of the band Van Halen has been recognized by numerous music industry awards and substantial fame.
Complainant, through his representatives, communicated via email with Respondent about the domain name at issue and Respondent informed Complainant that she would not voluntarily transfer it to Complainant. On August 7, 2000, Complainant sent Respondent a letter via certified mail requesting transfer of the domain name and offering to reimburse her for related costs. Respondent did not reply.
5. Partiesí Allegations
Complainant alleges that it has valid rights in EDWARD VAN HALEN as a common law trademark due to Complainantís performance for over a quarter century in that name and the substantial success and fame his name has achieved in association with the band Van Halen. Complainant further alleges that the domain name "edwardvanhalen.com" is confusingly similar to the mark in which he has rights.
Complainant claims that Respondent lacks any rights in the domain name. Complainant alleges that the domain name is not Respondentís legal name or commonly known name and that Respondent is not a licensee or otherwise an authorized user of Complainantís mark.
Complainant alleges Respondent deliberately chose the domain name in order to: falsely identify her activities with Complainant, misappropriate and use Complainantís goodwill for her own commercial benefit, prevent Complainant from the rightful use of his trademark as a domain name or sell the domain name to Complainant. Complainant further alleges that Respondentís failure to add content to the website for over a year evidences bad faith.
Respondent concedes that Complainant has rights in the mark EDWARD VAN HALEN but argues that, by virtue of being a "fan" of Complainant and intending to put up a fan website, she has rights or legitimate interests in the domain name.
Respondent further alleges that her registration and use is not in bad faith because she is a legitimate fan of Complainant. She further alleges, via affidavit, that she had no prior experience in creating websites, which explains her delay in providing content to the site. She also alleges that the website is "basically ready to go" and that it remains offline only because Complainant requested that she not put any content online pending resolution of this dispute.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") is to prove:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
Respondent concedes that Complainant has established its rights in the mark Edward Van Halen, and that the domain name is identical to that mark. Rita Rudner v. Internetco Corp., Case No. D2000-0581 (WIPO Aug. 3, 2000).
Complainant has also established that Respondent has no rights or legitimate interests in respect of the domain names at issue. Respondent is not known as Edward Van Halen, nor is she using or preparing to use the domain name in connection with a bona fide offering of goods or services. Nor does the domian name clearly indicate the unofficial or fan status of her proposed website.
Her status as a fan might perhaps justify a finding of legitimate interests if she provided evidence of offline fan activity of which the website was an extension or if the website had been operational for a sufficient period. However, under the circumstances, Respondent merely has an expectation of developing a legitimate interest in the domain name at issue. This is insufficient to defeat Complainantís evidence that her use is unauthorized, although, as discussed below, it is relevant to the separate issue of bad faith. Cf. Sumner v. Urvan, Case No. D2000-0596 (WIPO, July 24, 2000) (use of common name online insufficient to develop legitimate interest where Respondent had not yet established website at the domain name); Hero Honda Motors Ltd. v. Tella, Case No. D2000-0365 (WIPO, July 16, 2000) (reaching similar conclusion with respect to trademark).
The requirement of bad faith is separate and distinct from the requirement that the Respondent lack any rights or legitimate interests in the disputed domain name. Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO, June 6, 2000). The Policy could have forced registrants to surrender a domain name when they could not show a legitimate interest in it, as long as someone else had trademark rights in that name (or a confusingly similar name). Under the Policy as enacted, however, something more is required: bad faith registration and use of the domain name. The Policy is, thus, not designed to combat trademark infringement on the Internet or even questionable cases of cybersquatting, but rather, abusive, bad faith cybersquatting.
In this case, Complainant has failed to show the requisite bad faith. None of the circumstances evidencing bad faith listed in the Policy apply, nor has Complainant suggested that there is other evidence of bad faith. Respondent did not offer to sell the domain name to Complainant or to others and apparently declined Complainantís offer. Respondent has not engaged in a pattern of registering domain names "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name," Policy ∂ 4(b)(ii); to the contrary, Respondent swears that this is the only domain name she ever registered. Although the examples listed in the Policy are not all-inclusive, that ∂ 4(b)(ii) requires a pattern of "blocking" domain name registrations suggests that Complainantís inability to register the one domain name at issue is not itself evidence of bad faith. Indeed, if it were, the bad faith element would be tautological.
Nor is there evidence that Respondent has used the domain name for commercial gain by attempting to create a likelihood of confusion with Complainantís mark. Policy ∂ 4(b)(iv). Because Respondent has not actually used the site at all, there also is no evidence that she is not trying to confuse visitors, but, because the burden on each factor rests with Complainant, the Panel cannot infer bad faith without other evidence. If Respondent were to make use in the future and seek commercial gain by creating confusion, then Complainant might at that time have a better case, but that is not the circumstance presented here. See Nintendo Inc. v. Alex Jones, Case No. D2000-0998 (WIPO, Nov. 17, 2000).
Complainant argues that Respondentís delay in putting up any content shows bad faith. Yet delay in putting up a site is not dispositive, particularly for an individual with limited website experience. See Apple Computer, Inc. v. DomainHouse.com, Inc., Case No. D2000-0341 (WIPO, July 5, 2000) (delay in response to cease and desist letter may be reasonable); Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477 (WIPO, July 20, 2000) (immediate use not required to show good faith; legitimate use may take time). Had Respondent offered to sell the domain name for more than her documented out-of-pocket costs, however, her delay might justify a finding of bad faith. See Fielding v. Corbert, Case No. D2000-1000 (WIPO, Sept. 25, 2000) (bad faith found where respondent offered no real evidence of preparations to start online fan club, failed to use site for two years after registration, and offered to sell domain name to Complainant for $15,000); Jordan Grand Prix Ltd. v. Sweeney, Case No. D2000-0233 (WIPO, May 11, 2000) (bad faith found where Respondent took no steps to use domain name before receiving notice and offered to sell site to Complainant before putting it up for auction); cf. R&A Bailey & Co. v. WYSIWYG, Case No. D2000-0375 (WIPO, July 4, 2000,) (bad faith found based on offer to sell where Respondent argued that Complainantís mark was not famous, inconsistent with what a true fan would argue, and did not raise purported intention to create fan site when Complainant first requested he cease use of domain name).
Simply put, the evidence here is insufficient to justify a finding of bad faith. Instead, Respondent claims that she has a desire to use the domain name for a legitimate fan site and, if she follows through on that intention, it would not constitute the kind of abusive, bad faith cybersquatting that the Policy is designed to prevent.
Complainant has failed to establish that Respondent registered and is using the domain name "edwardvanhalen.com" in bad faith. The Panel therefore denies the Complainantís request that the domain name be transferred from Respondent to Complainant.
David H. Bernstein
Dated: December 20, 2000