WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross
Case No. D2001-1042
1. The Parties
The Complainants are the Estate of Gary Jennings and Joyce O. Servis, 52 Brookside Avenue, Caldwell, New Jersey 07006, U.S.A.
The Respondents are Submachine and Joe Ross, 154-33 20th Avenue, Dept. 707, Whitestone, New York 11357, U.S.A.
2. Domain Name and Registrar
The Domain Name at issue is <garyjennings.com>. The registrar is Global Knowledge Group, 2700 Earl Rudder Freeway South, Suite 1300, College Station, Texas 77845 U.S.A.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by hardcopy on August 17, 2001, and by email on August 30, 2001. The Center has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel (the "Panel") is satisfied that this is the case.
On August 19, 2001, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant. On August 20, 2001, the Center sent to the registrar a request for verification of registration data. On September 5, 2001, the registrar confirmed that it is the registrar of the Domain Name in dispute (the "Domain Name") and that it is registered in the Respondentís name.
Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on September 5, 2001, sent to the Respondent, with a copy to the Complainant, the Complaint and a Notification of Complaint and Commencement of Administrative Proceeding. The Center set September 25, 2001, as the date for the submission of a Response by Respondent. Respondent submitted a Response to the Center by email on September 17, 2001.
The Center appointed the single member administrative panel (the "Panel"). The Panel was properly constituted. The undersigned Panelist, Maxim H. Waldbaum, submitted the Statement of Acceptance and Declaration of Impartiality and Independence. The Center sent the parties the Notification of Appointment of Administrative Panel on October 11, 2001, by email.
For the purposes of clarification, the Panel notes that Joe Ross, in his response, indicated that "ĎSubmachineí is not an entity that he is aware of." No response was received from the entity Submachine. As used herein, Respondent shall refer to Joe Ross.
In consequence of the above, the original date scheduled for the issuance of the Panelís decision was October 25, 2001.
4. Factual Background
Complainants own the intellectual works of the author Gary Jennings. The records of the United States Patent and Trademark Office do not reveal any pending trademark applications or registrations for the mark "Gary Jennings."
Respondent registered the Domain Name <garyjennings.com> on August 1, 1999. The Respondent uses the Domain Name <garyjennings.com> to operate a web site. The web site appears to provide various book reviews on the works of Gary Jennings and additional biographical information on Gary Jennings. Additionally, when a consumer clicks on one of the books listed on the web site, he is linked to <amazon.com>, where there are additional book reviews and the book may be purchased.
5. Partiesí Contentions
The Complainantsí Factual and Legal Grounds are quoted in full as follows:
The Estate of Gary Jennings owns intellectual works of the author Gary Jennings. The estate seeks to be the source of information about the author and his works and to promote and advertise the web site as a source of information regarding the author and his works.
Submachine and Joe Ross are using the Domain Name to advertise the intellectual works of Gary Jennings and provide commercial links without identification of the ownership of the Domain Name. The web site prominently and repeatedly features the name of the author Gary Jennings. The web site publishes in full the copyrighted obituary from the New York Times.
Submachine and Joe Ross have no legal connection to the name Gary Jennings and have no permission to use the name of the author.
We believe that it is a practice of Submachine and Joe Ross to register the names of famous people for presumed personal gain. In addition to <GaryJennings.com> Submachine and Joe Ross have registered the domain names <richarddawkins.com>, <kratingdaeng.org> and possibly others.
The Respondent has replied as follows:
In response to Complainantsí allegation, Respondent denies he is using the Domain Name to "advertise" the intellectual works of Gary Jennings with "commercial" links. Respondent further asserts that the web site exists as a fan-created web site to share information on the author Gary Jennings, and the links on the page direct you to the single largest resource and gathering of Gary Jennings related information and fans on the internet, with by far the most reviews and opinions of Mr. Jennings and his novels (over 500 at last count).
In response to Complainantsí allegation, Respondent denies that he failed to supply identification of the ownership of the Domain Name. When Mr. Gary Jennings died, the Respondent placed the obituary information on the web site, and at that point, he did not believe there was need to specify that the owner of the site was not Mr. Jennings, so he removed the statement "<GaryJennings.com> is not affiliated or endorsed by Gary Jennings" because he assumed it was obvious at best, and poor taste at worst. However, when Respondent became aware of the existence of the "Estate of Gary Jennings", the disclaimer was immediately put back where it remains at the bottom of the page, so as not create any confusion.
In response to the Complainantsí allegation that the Respondent has never received permission to use the name of the author, Respondent submits evidence from an email received from Mr. Hiram Jennings, the brother of Gary Jennings, on Thursday, August 3, 2000. Mr. Jennings states in his email that "Gary had told me some months before his death that he had discovered that there was a web site devoted to him. He seemed bemused or maybe bewildered to report this, though not at all bothered."
In response to Complainantsí allegation that it is a practice of Submachine and Joe Ross to register the names of famous people for presumed personal gain, Respondent asserts that Complainant has provided false evidence and cannot meet this element of their claim: (a) These web sites were not registered for personal gain or because the authors are famous; (b) Just as the author Gary Jennings was "not at all bothered" by <garyjennings.com>, a fan-created web site devoted to sharing information on him and his work, so has the author Mr. Dawkins approved of his; (c) There is no profit or monetary/personal gain made from those sites, they were singled out and registered selectively based upon the Respondentís admiration of their books and a desire to dedicate a web site to them, which the authors and the fans have understood since the beginning; and (d) As far as <KratingDaeng.org>, perhaps the Complainant should have done further research: Krating Daeng is not a "famous person", or any other kind of person, but an authorized web site and a legitimate business enterprise regarding a beverage.
Respondent further asserts that Complainant has the burden of proving that Respondent has no legitimate interest in the disputed name and cannot do this. Respondent indicates that he has spent years since the 1998 registration date, compiling information on the author, to create an informative site for other fans; information on the Respondentís nearly four year old web site that you will not find anywhere else on the Internet.
Respondent further submits the following email which he sent to Mr. Hiram Jennings, the brother of Gary Jennings, as follows:
"Hiram...it all started on my twenty-first birthday, when I received Aztec as a gift. I recognized something special, and purchased the other novels. The more I read (the works of Gary Jennings), the more confused I was. Why haven't I heard about this author? So, back in the ancient days of the Internet, I wanted to learn about Gary Jennings, and I did some searching. And found nothing. Except for <amazon.com>, which let people review books. On January 19, 1997, I wrote the third review for "Aztec" on <amazon.com>, which still remains there in all its horribly written glory. (I wrote another slightly improved review on May 23, 1999), Less than two years later, there was still nothing on the Internet about this person I admire so greatly. I decided something needed to be done, and as a fan, I plunked down $70 dollars of my own hard-earned money to purchase <garyjennings.com>. That was about two years ago. After much effort, the site is as you see it now. You will note the links go to <amazon.com>, a company I will forever remain loyal to for reasons stated above."
Respondent further submits Mr. Hiram Jenningsí August 3, 2000 reply to the above email, which states as follows:
"Hey, Joe. "It's actually good to hear from you.....I am inclined, though, and I have some time ago shared my inclinations with Joyce and Marc (who haven't checked in lately, but may be traveling), to believe that the site was, indeed, founded by someone who cherished Gary's work and who, for cherishing Gary's work, is helping to keep it and him alive. For which I am grateful...Gary was a remarkable guy, as I am more privileged to know than just about anyone else extant. If you know him only from Aztec and the other doorstop novels, check into some of his earlier works, notably The Terrible Teague Bunch and Sow The Seeds of Hemp. There's a web site devoted to fantasy and science fiction--I have its address somewhere here, but searching fantasy and science fiction ought to turn it up--which lists an armful of Gary's short stories which appeared in, you guessed it, Fantasy & Science Fiction. I at least vaguely remember most of them, and they--most of them--are really delightful."
In further support of a finding of Respondentís legitimate interest and making a legitimate fair use of the Domain Name, without intent for commercial gain, or to misleadingly divert consumers, or to tarnish the trademark or service mark, Respondent submits the many reviews of Gary Jennings novels that he has written over the years.
Respondent submits the second review that he wrote for "Aztec" on May 23, 1999, as follows:
"Gary Jennings is the best novelist in history", May 23, 1999, Reviewer: email@example.com from NYC I think there should be an exception made, so I could give this book 10 stars. In Aztec lies the entire spectrum of humanity; emotion, sensation, adventure, philosophy... The experiences of Mixtli, from young to old, are told with so much attention to detail that it isn't surprising the author spent a decade in Mexico to write it. Aztec is so powerful that it will not only stay with you for your entire life, it will change you."
Respondent asserts that Complainant cannot prove that Respondent has registered or ever used the disputed name in bad faith as defined in the Policy. Respondent further states that "the domain <garyjennings.com> never has been and never will be about money. It never has been or will be offered for sale, and it is, never has been and never will be a commercial enterprise; no fees, no banners, affiliations, or endorsements, or anything of that nature. It was registered by a fan, for other fans who respect and admire this author and his work, and it was done in a legitimate non-commercial and fair use without intent for commercial gain."
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
To succeed under the UDRP, the Complainant first has to prove that he has rights in a trademark or service mark. Failure to demonstrate such rights is fatal to Complainantís case. Jazid, Inc./Michelle McKinnon v. Rennemo Steinar, eResolution Case No. AF-0807 (May 25, 2001). Complainants have not alleged that the name "Gary Jennings" is the subject of a trademark application or registration in the United States or in any other country. Complainants have also not asserted common law rights in the name, which are also protectable under the Policy. Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000); Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000).
The Domain Name <garyjennings.com> is identical or confusingly similar to the name "Gary Jennings."
Based upon the record, the Panel finds that Complainants have failed to establish that they have trademark or service mark rights in the name "Gary Jennings." Therefore, the requirement of Paragraph 4(a)(i) is not met. Although not obligated to do so, the Panel addresses the issues of legitimate interests and bad faith as follows.
C. Rights or Legitimate Interests of the Respondent
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed Domain Name by demonstrating in accordance with Paragraph 4(a)(ii) of the Policy:
(i) Before any notice to Respondent of the dispute, its use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainants have asserted that Respondent has no legal connection to the name "Gary Jennings" and has no permission to use the name of the author. Respondent has submitted the communications quoted herein in support of a finding that Complainants have given Respondent permission to use the name "Gary Jennings." These email communications do not indicate that Complainants object to or have objected to Respondentís use of the Domain Name. However, they do not support a finding that Complainants have granted Respondent permission to use the name "Gary Jennings" in the disputed Domain Name.
Complainants have further alleged that Respondents are using the Domain Name to advertise the intellectual works of Gary Jennings and provide commercial links without identification of the ownership of the Domain Name. Respondent denies that he is using the Domain Name to advertise the intellectual works of Gary Jennings. Respondent claims that the links direct you to the single largest resource and gathering of Gary Jennings related information and fans on the Internet. Based upon a review of Respondentís web site, Respondent appears to be providing reviews of Gary Jenningsí books; and not advertising.
Based on the record, before any notice to Respondent of the dispute, it appears that Respondent was using the Domain Name in connection with a bona fide offering of goods or services. Respondent has been using the Domain Name in connection with a web site to share information on the author Gary Jennings. The Panel finds on this basis that Respondent has a legitimate interest in the Domain Name.
This Panel also finds that Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish any rights Complainant may assert at issue or not. Providing reviews of the author Gary Jenningsí works is fair use of the Domain Name. Respondent does not appear to obtain commercial gain from operating the web site. Respondent clearly indicates on its web site that "GaryJennings.com is not affiliated or endorsed by Gary Jennings" and is therefore not misleadingly diverting consumers. Further, as no trademark rights have been established, Respondent is neither committing trademark infringement nor tarnishing a trademark.
The Panel finds that Respondent has a legitimate interest in the Domain Name. Therefore, the requirement of Paragraph 4(a)(ii) is not met.
D. Bad Faith
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a Domain Name in bad faith:
(i) circumstances indicating 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 that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) Respondent has registered 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainantsí mark as to the source, sponsorship, affiliation, or endorsement of Respondentís web site or location or of a product or service on Respondentís web site or location.
With respect to the issue of bad faith, Complainants allege that Respondent registers the names of famous people for presumed personal gain. Complainants specifically cite Respondentís registration of <richarddawkins.com> and <kratingdaeng.org>. The domain name <richarddawkins.com> resolves to a web site which provides reviews of Richard Dawkinsí books and links to <amazon.com> where there are more reviews and the books may be purchased. The domain name <kratingdaeng.org> resolves to a web site which appears to be selling a beverage having the name "krating daeng."
The Panel is not persuaded that Respondent has 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 as required by the Policy pursuant to subparagraph (ii) above.
The Respondent has made no effort to sell the subject Domain Name.
It does not appear that Respondent seeks to disrupt Complainantsí business.
Although the subject Domain Name links to a commercial outlet, based on the evidence presented, Respondent has not sought commercial gain.
The Panel finds that Respondentís registration and use of the disputed Domain Name was not in bad faith. Thus, the requirement of Paragraph 4(a)(iii) is not met.
The Panel, having found that (1) Complainants have failed to establish that they have trademark or service mark rights in the name "Gary Jennings," (2) Respondent has some legitimate interest in the disputed Domain Name and (3) there is no evidence to support the conclusion that the Domain Name has been registered and/or is being used in bad faith, finds in favor of Respondent.
The Panel directs that the Complaint be dismissed.
Maxim H. Waldbaum
Dated: October 25, 2001