WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla

Case No. D2000-1459

 

1. The Parties

The Complainants are Mr. David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited all c/o Sheridans Solicitors of 14 Red Lion Square, London, United Kingdom. The Respondent is Mr Ermanno Cenicolla of Logic Minds Domains, 17, Herricks Avenue, St. Catherines, Ontario, Canada.

 

2. The Domain Name and Registrar

The disputed domain name is davidgilmour.com and the Registrar is Network Solutions Inc., of Herndon, Virginia, USA.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on October 26, 2000, and in hard copy on October 30, 2000. It was acknowledged on November 1, 2000. By email on November 2, 2000 and in hardcopy on November 7, 2000, the complaint was amended to include an appropriate submission to the jurisdiction of the courts of the principal office of the Registrar. Also on that day, registration details were sought from the Registrar. These were confirmed by the Registrar on November 7, 2000, which stated its Service Agreement version 5.0 is in effect. That agreement incorporates the Policy and requires the respondent to submit to a properly initiated administrative proceeding.

On November 8, 2000 the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. On November 9, 2000, the Center formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainants, the Registrar and ICANN.

The last day specified in the notice for a response was November 28, 2000. On November 28, 2000 a response was filed by email and receipt was acknowledged by the Center on November 30, 2000.

On December 5, 2000, the Center invited Alan L. Limbury to serve as panelist. On December 6, 2000, Mr. Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On December 8, 2000 the Center transmitted the case file to the panel and notified the parties of the projected decision date of December 21, 2000.

The language of the proceeding was English.

The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the complaintís compliance with the formal requirements; the complaint was properly notified in accordance with paragraph 2(a) of the Rules; the response was filed within time and the administrative panel was properly constituted.

 

4. Factual Background (uncontested facts)

The first Complainant, Mr. David Gilmour ("the artist") is a well-known recording artist, being one of the founding members of the band Pink Floyd. He has enjoyed considerable musical success both independently and together with Pink Floyd throughout the last thirty years.

Although the artist has not registered his name as a trademark, he has incorporated two companies which bear his name, the second and third Complainants, which own the right to exploit his artistic services. The name David Gilmour represents the goodwill in the musical works and other projects with which the artist has been involved since the 1970ís. That goodwill is fundamental to the businesses of the Complainants.

The Respondent is also a musical artist and has been working on original music for over fifteen years. He intends to release his premiere album sometime in 2001 and to have his work displayed on his domains WorldLink1.Com and Ceniccola.Com. He was not able to register the domain name by which he is known as a musician, Andrew Herman.

The Respondent has personally supported David Gilmour and Pink Floyd throughout his life by listening to their work, purchasing their albums, and attending their live venues from time to time.

The Respondent registered the disputed domain name with the intention of using it as a means for fans of David Gilmour and Pink Floyd to communicate and share their memories and views of their experiences from these artists throughout their lives. At the time of registration, the respondent also intended making a formal request for a licence to provide any exclusive merchandise available from David Gilmour or Pink Floyd. The respondent is considering making that request in the near future.

 

5. Partiesí Contentions

A. Complainant

Identity or confusing similarity

David Gilmour Music Limited and David Gilmour Music Overseas Limited ("the Companies") own the right to exploit the services of the well-known recording artist, David Gilmour ("the Artist"). The name, "David Gilmour" represents the goodwill in the musical works and other projects with which the Artist has been involved since the

1970s. David Gilmour is one of the founding members of the band Pink Floyd and has enjoyed considerable musical success both independently and together with Pink Floyd throughout the last thirty years. As a result David Gilmour is a household name and the goodwill inherent in this fact is fundamental to the Artist and Companies businesses. Although the Artist has not registered his name as a trade mark, he has incorporated two Companies in his name and these companies are the Second and Third Complainants in this action.

The domain name is identical to the artistís name. It is now the accepted practice when registering a domain name involving more than one word to omit hyphens and other separating punctuation. Accordingly the disputed site is that which visitors looking for the artistís website would first visit.

Illegitimacy

The Respondent has had no sanctioned involvement with any of the Complainants at any time and has not been granted any rights to use the artistís name or hold himself out to represent the artist. No evidence has been put forward by the Respondent to suggest any legitimate rights.

There is no evidence that the Respondent or any of its agents or businesses have been commonly known as the domain name.

Bad faith

There is compelling evidence of the domain name having been registered in bad faith and being registered to an organisation which has reserved a number of domain names including the names of other celebrities with a view to sale rather than a legitimate use.

There is no site currently operating at the disputed domain other than the Logic Minds home page site for sale of domain names. This is further evidence that the Respondent has no intention of using the site for a bona fide offering of goods and services. The fact that the Logic Minds website advertises the David Gilmour domain name for sale under the celebrities section indicates that the Respondent is seeking to exploit it using the goodwill of the artist. There is no evidence that the Respondent plans to use the site for a legitimate non-commercial use.

A letter before action was sent to the Respondent on October 23, 2000 informing the Respondent of the artists claim to the name and requesting transfer of the name to the artist. The Respondent was offered his reasonable expenses directly related to the domain name and also any assistance required in order to transfer the name.

The Respondent replied on October 24, 2000 by email using abusive and uncooperative language.

B. Respondent:

The domain name davidgilmour.com was not registered to be used in "bad faith" in any way.

The name was registered as a means for fans of David Gilmour and Pink Floyd to communicate in the same way as do hundreds of other websites on the Internet which use the names David Gilmour and Pink Floyd. Some of these websites also offer David Gilmour and Pink Floyd merchandise and David Gilmour and Pink Floyd do not seem to have any problem with this fact.

Including any David Gilmour or Pink Floyd merchandise on davidgilmour.com, would do nothing but help promote their work and make them money which is no different from many other websites.

The domain name davidgilmour.com also appeared in the listings at LogicMinds.Com of domain names the respondent currently owns. LogicMinds.Com is an index of all domain names owned by the respondent and others and there are many names that although listed, are not for sale. The name davidgilmour.com has been removed from this list along with some others in order to avoid any confusion by internet surfers.

The response of October 24, 2000 did not come from the Registrant of the disputed domain name.

The disputed domain name is being hosted at a third partyís web server at the moment which permits access to the files by others as well and therefore any comments or opinions that may be seen are not necessarily those of the Respondent.

 

6. Discussion and Findings

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

- that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

- that the respondent has no rights or legitimate interests in respect of the domain name; and

- that the disputed domain name has been registered and is being used in bad faith.

Rights

In this case common law trade mark rights are sought to be demonstrated. Some of the highest courts of the common law world have held that, provided a plaintiff can establish goodwill or reputation in its name, the plaintiff may prevent passing off at common law: Erven Warnink BV v. J Townend (Hull) Ltd, [1979] AC 731 (House of Lords); Hornsby Building Information Centre Pty Ltd v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 (High Court of Australia); Cadbury Schweppes Pty Ltd v. Pub Squash Co Pty Ltd [1980] 2 NSWLR 851(Privy Council).

Numerous cases under the Policy have decided that the Policy affords protection to those having common law trademark rights as well as to those having rights in registered trademarks: Cedar Trade Associates, Inc., v. Gregg Ricks (NAF93633); Bennett Coleman & Co. Ltd. v. Steven S. Lafwani (D2000-0014); SeekAmerica Networks Inc. v. Tariq Masood (D2000-0131) and Passion Group Inc. v. Usearch, Inc. (AF-0250).

Many of those cases have involved personal names (including names of recording artists and musicians) that have, through use and publicity, acquired the distinctiveness necessary to become trademarks or service marks: Julia Fiona Roberts v. Russell Boyd (D2000-0210); Jeanette Winterson v. Mark Hogarth (D2000-0235); Monty and Pat Roberts, Inc. v. Bill Keith (D2000-0299); Steven Rattner v. BuyThisDomainName (John Pepin) (D2000-0402); Estate of Stanley Getz aka Stan Getz v. Peter Vogel (D2000-0773); Daniel C. Marino, Jr. v. Video Images Productions, et al. (D2000-0598); Isabelle Adjani v. Second Orbit Communications, Inc.(D2000-0867); MPL Communications Limited v. Denny Hammerton (NAF95633); Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com"(D2000-0847); Nik Carter v. The Afternoon Fiasco (D2000-0658); Pierre van Hooijdonk v. S.B. Tait (D2000-1068); Frederick M. Nicholas, Administrator, The Sam Francis Estate v. Magidson Fine Art, Inc. (D2000-0673); Jaap Stam v. Oliver Cohen (D2000-1061); Helen Folsade Adu known as Sade v. Quantum Computer Services Inc. (D2000-0794); Michael J. Feinstein v. PAWS Video Productions (D2000-0880) and Estate of Tupac Shakur v. Shakur Info Page (AF-0346). See also the discussion in Sean Michaels Inc. v. Mark Allan Online Entertainment (AF-0214).

The "Sting" case, Gordon Sumner, p/k/a Sting v. Micheal Urvan (D2000-0596), distinguished between personal names that have become trademarks (to which the Policy applies) and personality rights (to which the Policy was not intended to apply).

There is no dispute that there is goodwill in the name David Gilmour. The panel finds that the name David Gilmour has become a trademark distinctive of the first Complainant and his artistic services in the musical field in which he has engaged for 30 years. The first Complainant and, by virtue of the arrangements between the Complainants, the second and third Complainants also, have rights in that trademark.

Identity or confusing similarity

This issue is to be resolved by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used. The suffix ".com" and the absence of spacing between the words are inconsequential.

The panel finds the disputed domain name to be virtually identical and confusingly similar to the trademark David Gilmour. The Complainants have established this element.

Illegitimacy

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrantís rights or legitimate interests to the disputed domain name.

On the evidence, the Respondent has known of the first Complainant "throughout [the respondentís] life" and the Respondent registered the disputed domain name with the intentions of:

(a) using it as a means for fans of David Gilmour and Pink Floyd to communicate with each other; and

(b) seeking a licence to provide any exclusive merchandise available from David Gilmour or Pink Floyd.

There is no dispute that the Respondent was not authorized by any of the Complainants to use the name David Gilmour and that the Respondent is not commonly known by that name. Nor is it disputed that, at the time of the initiation of this Complaint, the disputed domain name was offered for sale, together with the names of other celebrities, on the Logic Minds home page, with which the Respondent is associated.

The panel finds that the disputed domain name was selected by the Respondent with intent to attract Internet users to his website by trading on the goodwill of the Complainantís trademark and that the Respondent intended using the site for commercial gain by selling any exclusive merchandise associated with the first Complainant, if he could obtain a licence to do so. "Use which intentionally trades on the fame of another cannot constitute a Ďbona fideí offering of goods or services": Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com"(D2000-0847).

In Monty and Pat Roberts, Inc. v. Bill Keith (D2000-0299), the learned panelist said:-

"[T]he right to express oneís views is not the same as the right to use anotherís name to identify oneís self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify oneís self as the New York Times or Time Magazine.

"In the instant case, Respondent is using as its identifier the domain name "montyroberts.net". When an Internet user searches for Complainantís mark, it will find Respondentís website address. There is nothing in the domain name to indicate that the site is devoted to criticism of Complainant, even though this criticism is apparent upon visiting Respondentís site. By using Complainantís mark, Respondent diverts Internet traffic to its own site, thereby potentially depriving Complainant of visits by Internet users".

In this case one of the purposes for which the Respondent registered the disputed domain name was to provide a forum for David Gilmour fans, most of whom, one might think, would have favourable comment to make about the first Complainant and his artistic work. But whether the site be devoted to praise or to criticism, the reasoning in Monty and Pat Roberts, just quoted, is of equal application.

The panel finds the Complainants have established that the Respondent has no rights or legitimate interest in the disputed domain name.

Bad faith

Paragraph 4(b) of the Policy specifies circumstances which, if proved (but without limitation) shall be evidence of both registration and use in bad faith.

In SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (FA94737); Canada Inc. v. Sandro Ursino (AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (FA95037).

Here there is no dispute that the Respondent knew of the name and reputation of David Gilmour as a recording artist and musician long before he registered the disputed domain name. The panel finds that the Respondent registered the disputed domain name in order to trade off that reputation by creating a false association between that domain name and the Complainantís trademark, so as to attract to the Respondentís site Internet users (being David Gilmour fans) seeking the first Complainant or his authorized site. The Panel finds this to be bad faith registration.

There has been no active use of the domain name prior to this dispute except to offer it for sale. There is no indication that such offer was for a price in excess of the costs of registration and the panel does not so find.

Inaction has been determined as being within the concept of Ďuseí for the purpose of the Policy: Telstra Corporation Limited v. Nuclear Marshmallows, (D2000-0003); Barneyís, Inc. v. BNY Bulletin Board (D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (D2000-0400); Video Networks Limited v. Larry Joe King (D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company (D2000-0194) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (D2000-0468).

In light of the Respondentís choice of domain name with knowledge (as the panel has found) of the Complainantsí mark and reputation in the music industry and the Respondentís expressed intention to use the domain name to sell any exclusive David Gilmour and Pink Floyd merchandise if he can obtain a licence to do so, the panel finds the Respondent is using the domain name (albeit passively) in order to advance his aim of obtaining any such exclusive merchandise, knowing that the domain name represents the goodwill of the Complainants and that, while the Respondent remains the registrant of the disputed domain name, the Complainants may be coerced into dealing with the Respondent so as to maximize their opportunities to market any of their exclusive merchandise on the Internet. The panel finds such use to be use in bad faith.

Accordingly, the Complainants have established that the disputed domain name was registered and is being used in bad faith.

 

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the domain name davidgilmour.com be transferred to Mr. David Gilmour, the first Complainant.

 

 


 

 

Alan L Limbury
Sole Panelist

Dated: December 15, 2000