WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Slipknot, Inc v. For Sale
Case No. D 2001-1099
1. The Parties
The Complainant is Slipknot, Inc, a California corporation with a principal place of business at 2934 Beverly Glen Circle, Los Angeles, California 91403, United States of America. The Respondent is "For Sale", 5 Tpagrichnery Street, #33 Yerevan, Armenia 375010. See paragraph 6 below as to the precise identity of the Respondent.
2. The Domain Name and Registrar
The domain name in issue is <slipknot2.com> ("the Domain Name"). The Registrar is Dotster, Inc. ("Dotster").
3. Procedural History
3.1 The Complaint was dated September 4, 2001, and was received by e-mail by the WIPO Arbitration and Mediation Center ("the Center") on September 4, 2001. "Acknowledgement of Receipt of the Complaint" was provided by the Center on September 5, 2001.
3.2 On September 10, 2001, a request for Registrar verification was transmitted to Dotster by the Center, requesting it to supply certain details in relation to the domain name registration. Dotster replied by e-mail dated September 21, 2001, supplying such details but raising a query in relation to the meaning of the final question as to "whether the domain-name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name(s) (Rules, Paragraph 1)". The Panel has not been provided with any evidence that the Center answered this question. A formal requirements compliance checklist was completed by the Center on October 1, 2001.
3.3 By e-mail on September 18, 2001, the Complainant informed the Center that the couriers it had employed to serve the hard copy of the Complaint on the Respondent had stated that no such entity existed at the listed address. However, the Complainant confirmed that the Complaint had been transmitted to the e-mail address supplied in the "Who-is" search for the Domain Name and there was nothing to indicate that this e-mail had not gone through.
3.4 No formal response to the Complaint has been filed. By e-mail on October 1, 2001, the "Notification of Complaint and Commencement of Administrative Proceeding" ("the Notification") was served on the Respondent by the Center in accordance with the rules applicable to the Uniform Domain Name Dispute Resolution Policy ("the Policy"). This e-mail message was sent to both the e-mail address supplied in the "Who-is" search and the address <firstname.lastname@example.org>. The Center received an e-mail failure message in relation to its transmission to the latter e-mail address. The hard copy of the Notification which was sent to the Respondent was returned according to the package tracking record that has been supplied by the Center.
3.5 The "Notification of Respondent Default" was served on October 23, 2001. A Panel was constituted on November 2, 2001, with a single Panelist, Nick Gardner. The "Statement of Acceptance and a Declaration of Impartiality and Independence" has been filed by the Panelist. The date scheduled for the Panel to render its decision is November 16, 2001.
3.6 The Complainant is represented by Peter E. Nussbaum Esq., Wolff & Samson P.A., 5 Becker Farm Road, Roseland, New Jersey 07068 United States of America.
4. Factual Background
4.1 The facts according to the Complainant (and which have not be challenged by the Respondent) are as set out below.
4.2 The Complainant is said to be the popular rock group "Slipknot" (more accurately it is the corporate vehicle through which that rock group conducts its commercial activities) and is the owner of United States trade mark and service mark applications (each with filing date 23, September 1999) for the mark SLIPKNOT including (1) trade mark application no. 75/807,219 in respect of pre-recorded CD Roms, compact discs, DVDs, audio cassettes, phonograph albums and videotapes, featuring music (Class 9), (2) trade mark application no. 75/807, 212 in respect of T-shirts, sweat shirts, long sleeve shirts, ski hats, baseball caps, hockey jerseys and jackets (Class 25) and (3) service mark application no. 75/807, 210 in respect of entertainment services, namely, live performances by a musical group.
4.3 The Complainant is also the registered owner of the domain name <slipknot1.com> with Registrar, Network Solutions, Inc. The website accessed by this domain name is dedicated to promoting and marketing the Slipknot musical group. The Complainant says that it was the registered owner of the Domain Name until recently when it "inadvertently lapsed", following which the Respondent registered the Domain Name. Until the registration lapsed, the Complainant says that this website was also dedicated to promoting and marketing the Slipknot musical group.
4.4 The Complainant states that it has used the mark SLIPKNOT in connection with its goods and services since at least as early as 1995. During this time the Complainant says it has performed as "Slipknot" at major venues throughout the US and the rest of the world and has sold millions of recordings which have been distributed globally. It says it has expended substantial time, money and resources in advertising, marketing and promoting its music and merchandise under the mark SLIPKNOT and that the mark is widely recognised as a "source identifier" of the Complainant. It also states that sales of sound recordings and band related merchandise have generated many millions of dollars in revenue. However, the Panel notes that no evidence has been adduced by the Complainant to support of any of these statements.
The Respondent's registration of the Domain Name <slipknot2.com> appears to have occurred on July 2, 2001. The Complainant states that it has recently learned of this.
5. The Complainantís Contentions
5.1 These are set out in the Complaint as follows:
- The Complainant's mark consists predominantly of the main element of Domain Name.
- The Domain Name is identical to the Complainant's prior domain registration which inadvertently lapsed and is virtually identical to the SLIPKNOT mark which the Complainant owns.
- The Respondent has created a website which indicates that the Domain Name is available for purchase, followed by a link to a pornography website. Anyone who visits the website has the option of (a) clicking on ĎEnterí, in which case they are taken to a third partyís website that features pornography or (b) clicking on a link which states: "Click here to buy this Domain" which takes the visitor to a form that says "Any offer below $550.00 USD will be Ignored!".
- The possible use of the Domain Name by the Respondent will only serve to disrupt the business of the Complainant. It is likely to confuse the public as to the source of the Respondent's goods or services and will suggest a relationship with, approval by or affiliation with the Complainant which it does not have.
- The Respondent's use of the famous SLIPKNOT mark dilutes its strength under federal law.
- The Respondent has not utilized the Domain Name for any legitimate business purpose, but has registered it with the intent of offering it for sale and in the meantime using the Domain Name as a source of revenue through a link to a pornographic website.
- Upon information and belief the Respondent has never commonly been known by the domain name.
- The Respondent's course of conduct supports a finding of bad faith as it has concealed its identity and "For Sale" is obviously not a real entity.
- The Respondent's only interest is to sell the domain name to the Complainant or another bad faith cybersquatter.
- Fans of the SLIPKNOT musical group who visit Slipknot2.com will mistakenly believe that the band has authorized and/or is operating a pornographic website; this is designed to coerce the Complainant into buying the Domain Name.
- The Respondent's registration of the domain name in issue is likely to misleadingly divert web users trying to locate the legitimate Slipknot website, thus tarnishing and disparaging the reputation and goodwill associated with the SLIPKNOT mark and also diluting the mark by frustrating web users trying to conveniently locate the Complainantís website.
5.2 The Respondent has not provided any submissions to this Panel.
6. The Respondent
6.1 The Complaint is directed against an entity described as "For Sale", that being the name that appears on the "Who-is" search for the Domain Name. As stated at paragraphs 3.3 and 3.4 above, the couriers employed by the Complainant and the Center were not able to find such an entity at the address in Armenia supplied in the search. However, there is nothing to indicate that the e-mail sent to the e-mail address supplied in the search did not go through.
6.2 With this in mind and given that no Response has been submitted, the Panel considers that "For Sale" is not a real business entity and that the Respondent is deliberately concealing its true identity.
7. Discussion and Findings
7.1 The Panel has reviewed the Complaint and documents annexed to the Complaint as referred to above. In the light of this material this Panel finds as set out below.
7.2 The Panel accepts that the mark SLIPKNOT is confusingly similar to the Domain Name. The next question is whether the Complainant has established a protectable right in the mark. Registration of a mark is prima facie evidence of its distinctiveness. In this case the Complainantís trade mark applications in respect of the name have not yet achieved registration. The Panel notes that the Complainant has not adduced any evidence in relation to its use of the mark or any goodwill that it owns in the mark but asserts that it has used the mark since at least 1995 in connection with its goods and services as follows:
- It has performed as "Slipknot" in major venues (in the US and the rest of the world) and released recordings that have sold millions and which have been distributed globally.
- It has produced and sold band related merchandise.
- It has expended substantial time and money in promoting this music and merchandise under the mark.
- It anticipates that its upcoming album entitled "Iowa" will debut at Number 1 in the Billboard Charts.
7.3 The Complainant is curiously silent as to the existence and ownership of <slipknot.com> itself. The Complainantís reliance on its domain name <slipknot1.com> gives rise to an inference that someone else owns <slipknot.com>. In the absence of a Response the Panel takes the view that this issue is not before the Panel and does not propose to consider it further.
7.4 If the Respondent had challenged the Complainantís rights in the name the Panel would have required further factual evidence to be filed by the Complainant, supporting assertions made in the Complaint. As matters stand, given the failure of the Respondent to file any Response, and the concealment of the Respondent of its identity, the Panel accepts that the matters of fact stated in the Complaint are correct in this regard.
7.5 The Complainant contends that the Respondent has no legitimate interest in the Domain Name because, inter alia, it has not utilized the Domain Name for any legitimate purpose including the creation and maintenance of a website in connection with a bona fide offering of goods and services. It has instead provided a link to a pornography site and the option of purchasing the Domain Name. Neither has the Respondent to the Complainantís knowledge ever been known by the Domain Name.
7.6 The Panel finds that the Respondent has no legitimate interest in the Domain Name.
7.7 The Complainant contends that the Respondent registered the Domain Name in bad faith and that its conduct supports this because it has concealed its true identity so as to enable the sale of the domain name without exposing its identity. Further, the offer for sale of the Domain Name combined with the link to the pornographic website is designed to coerce the Complainant to purchase the Domain Name to avoid its fans being directed to this website.
7.8 The Panel finds that the Respondent registered the Domain Name in bad faith, primarily for the purpose of selling, renting of otherwise transferring the Domain Name registration to the Complainant. The Panel considers it very likely on the balance of probabilities that the Respondent registered the Domain Name with the intent of offering it for sale (as borne out by its alleged corporate name) and in the meantime has used it as a source of income through the link to the pornographic website.
8.1 In the light of the above findings, the Panelís decision is as set out below.
8.2 The Domain Name is confusingly similar to the Complainantís trade mark (see paragraph 4 (a)(i) of the Policy).
8.3 The Respondent has not got any legitimate interests in the Domain Name (see paragraph 4(a)(ii) of the Policy).
8.4 The name has been registered and is being used in bad faith (see paragraph 4(a)(iii) of the Policy).
8.5 The Panel directs that the Domain Name <slipknot2.com> be transferred to the Complainant.
Dated: November 15, 2001