WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Don Cornelius Productions, Inc. v. Massimiliano Micheli d/b/a Soul Train C.A.B.

Case No. D2001-1038

 

1. The Parties

The Complainant in this Administrative Proceeding is Don Cornelius Productions, Inc., an Illinois Corporation with its principal place of business in California.

The Respondent in this Administrative Proceeding is Massimiliano Micheli, an individual living in Italy and claiming to do business as Soul Train C.A.B.

 

2. The Domain Name and Registrar

The disputed domain name is <soultrain.org>. The Registrar of this domain name is Network Solutions, Inc. of Herndon, VA.

By registering the subject domain name with the Registrar, the Respondent agrees to the resolution of disputes pursuant to the Policy and Rules.

 

3. Procedural History

This is a mandatory Administrative Proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Administrative Panel consisting of one member was appointed on September 21, 2001 by WIPO.

Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 16, 2001 by email and on August 21, 2001, by hardcopy. The Center dispatched to the Registrar a Request for Registrar Verification on August 20, 2001. On August 23, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. The Center received Respondentís Response on September 11, 2001, by email and on September 14, 2001 by hardcopy.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.

 

4. Factual Background

The following information is derived from the Complainantís material.

Since August 17, 1970, the Complainant has produced in the United States a nationally syndicated televised musical variety program using the SOUL TRAIN mark. For the past 14 years, the Complainant also has produced the Soul Train Music Awards.

The Complainant has spent substantial sums of money promoting its SOUL TRAIN mark in the United States, Europe and Japan.

The Complainant registered the service mark SOUL TRAIN with the U.S. Patent and Trademark Office on July 18, 1972 (No. 938,310). The mark is valid and subsisting and has now become incontestable pursuant to 15 U.S.C. ßß 1065 and 1115(b).

The Complainant also possesses a trademark registration for SOUL TRAIN in Japan (Reg. No. 4351855) and has trademark applications currently pending in the United Kingdom (App. No. 2205267 SOUL TRAIN) and with the European Community (App. No. 1951003 SOUL TRAIN).

The Complainant maintains a website at <soultrain.com> (domain name registered 12/22/1999) and at <soultraintv.com> (domain name registered 3/17/1998).

As a result of the Complainantís long and extensive use and promotion of the SOUL TRAIN mark in interstate commerce, the mark has acquired a distinctiveness and secondary meaning signifying the Complainant. The Complainant has built and owns valuable goodwill which is symbolized by the SOUL TRAIN mark. By virtue of the Complainantís extensive use and advertising of its SOUL TRAIN mark, including operation of its official website , the SOUL TRAIN mark and website have become well-known as being associated with the Complainant.

On November 30, 1999, the Respondent registered the subject domain name.

The Respondentís website states in Italian and in its entirety, "Welcome to the site soultrain.org. For more information write to info@soultrain.org".

The words "soul train" have no meaning in the Italian language.

On April 2, 2001, the Complainantís counsel sent a demand letter to the Respondent. The Respondent replied in the Italian language by email on April 21, 2001 and also by regular mail shortly thereafter, stating that "we declare that as of now that we are willing to transfer the registration of the domain name SOULTRAIN.ORG to DCPI in exchange for payment of a fair amount, which we invite you to offer."

In its letter, the Respondent asserted that "the domain name in question was registered and used by the parish club ĎSoul Train CAB,í in order to contact and communicate with its patrons." A search of Italian records did not reveal the existence of such a club.

Also in the Respondentís letter to the Complainant, it is asserted that, due to the "parish club", "[I]t is therefore evident that the domain name SOULTRAIN.ORG was registered in good faith." The Complainantís letter to Respondent made no accusation of bad faith.

In response, on June 21, 2001, the Complainant communicated an offer to the Respondent to acquire the SOULTRAIN.ORG domain name for US$500. The Respondent replied in English: "While I reconfirm my willingness to sell the SOULTRAIN.ORG domain, I urge you to make a more appropriate offer for a transaction of this kind." According to the Registrarís website, the Respondentís out-of-pocket expenses appear to be limited to $US25 to register an .ORG domain name.

The Respondent is not known by the words "soul train" and has not registered or applied to register the words as a trademark.

The following information is derived from the Respondentís material.

The Azio Bonettoís circle is a recreation, cultural sporting center which works in the limits of Montecchio Emiliaís parish. Before starting the business, the manager Massimiliano Micheli, named it SOUL TRAIN.

The name SOUL TRAIN was chosen among other reasons, because the manager and users of the facility love soul music and also because the translation in Italian has a religious meaning that goes in line with the purpose of the circle. It is only by chance that the subject domain name " appears equal to [the Claimantís] label".

The business is well supplied with tools and has "an accommodation contract" dated July 13, 1998. Control of the premises has been entrusted to Mr. Micheli. He is responsible for the management of the facility.

The requirements of the governmentís finance administration and the registration of various contracts for water supply, gas and telephone have been undertaken.

Lately, the Respondent added a number of computers which can make connection through the internet, using the subject domain name to comunicate through e-mail with users.

The Claimant and "its label" are unknown in Italy because the Italian television network has never presented any of its programs.

In Italy there is a widespread tendency to use the English language for naming businesses or activities, whether they be private or public.

The premises of the Soul Train CAB circle not only can provide to the users a place to eat or drink, but it offers them also the opportunity to draw nearer to the information world by providing a connection to navigate the Internet.

Because of the importance of these services the Respondent bought the subject domain name in order to communicate with other users through e-mail.

Unfortunately, the cost of this operation slackened the speed of development of the project.

The costs associated with the subject domain include not only previous expenditures, but also and above all, the subsidization of the service for the clients of the circle.

This is why the Respondent refused to transfer the subject domain name to the Complainant for US$500.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on the registration of its mark SOUL TRAIN and says that it is legally identical to the subject domain name. Alternatively, it contends that the subject domain name "Ö is confusingly similar to the Complainantís mark in that the mark is entirely incorporated into the domain name".

Noting the simple message at the website associated with the subject domain which does not relate to the alleged social club of the Respondent, the Complainant asserts that the Respondent does not have a legitimate interest in the subject domain name. It states that a search did not reveal the existence of the alleged club and that the name has no meaning in Italian. It is asserted that the Respondent is not known by the name "soul train".

As to bad faith, the Complainantís main contention is that the registration of the subject domain name by the Respondent was "Ö for the primary purpose of selling it to the Complainant". It says that the Respondent "Ö has twice offered to sell the domain name to Complainant for an amount far in excess of his out of pocket expenses". The Complainant also asserts that the Respondent cannot use the subject domain name without violating the rights of the Complainant.

B. Respondent

The Respondent essentially concedes that the subject domain name is the same as the Complainantís mark, but says that the Complainant is not known in Italy and the activities of the parties are dissimilar.

He contends that he does have a legitimate interest in the words "Soul Train" because the phrase is the name of a social club and it was selected because of the interest in soul music of the organizationís manager, the Respondent, and those involved with the club.

The words "soul train" are said to have in Italian a "Öreligious meaning that goes in line whith the purpose of the circle". The Respondent states that the refusal of the offer to sell the subject domain name to the Complainant for US$500 was based on the fact that considerably more was invested in the name.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;

(ii) the Respondent has no legitimate interest in respect of the domain name;

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that 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 trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;

(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís 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 the website or location or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainant refers to a number of domain name dispute decisions. While these are neither controlling nor binding on this Administrative Panel, they can be of assistance.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the mark Soul Train.

The similarity of the subject domain name to the Complainantís mark is virtually conceded by the Respondent. Whether a domain name is confusingly similar is an objective inquiry related to the mark and the domain name and is not anchored in the activities of the parties.

In this case, the subject domain name differs from the Complainantís mark only by the addition of .org. Essentially it is identical.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Respondentís Legitimate Interest

It is not possible for an Administrative Panel to resolve directly contradictory assertions of fact. For example, in this case the Complainant states that the social club does not exist based on a search of Italian records. The Respondent says that it does and relies on documents and photographs. The contentions of the parties can only be tested in the context of the evidence overall and whatever objective information is available.

The Respondent offered a number of answers to the Complaint - the club does exist; it does have premises; pictures; why the name "soul train" was chosen.

As to the latter, the fact that the Respondent and users of the facility love soul music does not explain the use of the word "train". It is said to have a religious meaning, but there is no information as to what that meaning might be. The fact that the Respondent is willing to sell the subject domain name suggests no legitimate interest in it. There is need to have an identical name to provide e-mail access for members. The associated website is bereft of any reference to the club.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Bad Faith

The fact that a domain name is identical to the interests of a Complainant and that a Respondent does have a legitimate use in the domain name, standing alone generally do not establish bad faith, but the information that gives rise to those conclusions can be relevant to a consideration of the issue.

The bad faith issue concerns not the social club and its activities, as much as the reasons why this particular domain name was selected. The Respondentís explanation for his use of the words of the Complainantís mark is that it merely is a coincidence. There is no explanation for the addition of the word "train" in either the clubís name or the subject domain name. The soul train religious meaning comment is not helpful.

It is not clear that the use of the subject domain name for e-mail communications involving participants in the club was a feature at the time the name was registered. On the information presented in this case, this appears to be linked to the subsequent acquisition of certain computers.

The evidence does not show an offer to sell "Öfor an amount totally unrelated to [the Respondentís] out-of-pocket expenses", but there also are no details to support the Respondentís contention that its costs exceeded the US$500 that was offered for the subject domain name. That it might have had a value in addition to its actual costs, is not of consequence on the facts of this case.

The Respondentís assertion that he was not acting in bad faith when he first was contacted by the Complainant, suggests a familiarity with the requirements of proof in a domain name dispute. That in itself is not conclusive of anything and in some circumstances may be of no consequence. In this case, it is another of the unanswered, troublesome facts that form the context of the dispute.

Considering all of the information, it is the judgment of the Administrative Panel that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case. The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.

 


 

Edward C. Chiasson, Q.C.
Sole Panelist

Dated: October 5, 2001