WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Don Cornelius Productions, Inc. v. Bob Williamson d/b/a 1Domains
Case No. D2001-1376
1. The Parties
The Complainant is Don Cornelius Productions, Inc., an Illinois Corporation with its principal place of business at 9255 W. Sunset Blvd, Suite 420, West Hollywood, California 90069, U.S.A. The Complainant is represented by Kevin MacKinnon, Esq., Katten Muchin Zavis, 525 West Monroe Street, Suite 1600, Chicago, Illinois 60661-3693, U.S.A.
The Respondent in this proceeding is Bob Williamson, an individual doing business as 1domains whose address is 16515 Hexham, Spring, Texas 77379, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is <soul-train.com>.
The registrar for the disputed domain name is Registrars.com, One Bentall Centre, Suite 1900, 505 Burrard Street, Vancouver, BC V&X 1M6, Canada.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on November 19, 2001, by e-mail and on November 22, 2001, in hard copy. On November 26, 2001, the Center requested that the registrar, Registrars.com, ascertain the registrant for the domain name <soul-train.com>. On December 11, 2001, Registrars.com reported that the registrant was the Respondent, 1domains with administrative contact Bob Williamson. Registrars.com also confirmed that the registration agreement called for disputes to be settled through the Policy.
On December 13, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. The Respondent did not file a Response within the 20 day time frame specified by Rule (5), and on January 4, 2002, was declared in default. Per Rule (5)(e), the Panel has proceeded to this Decision based on the Complaint alone.
The Administrative Panel submitted a Declaration of Impartiality and Independence on January 17, 2002, and the Center then appointed the Panel on January 21, 2002.
The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by February 4, 2002.
4. Factual Background
Since 1970, the Complainant has produced a nationally syndicated televised musical variety program using the Soul Train mark. For the past 14 years, Complainant has also produced the Soul Train Music Awards. Complainant registered the service mark Soul Train in the United States on July 18, 1972 (no. 938, 310). Complainant maintains its own official website at soultrain.com, which was registered on December 22, 1999 (Complaint Annexes D and E)
The Respondent apparently is in the business of selling domain names over the internet. For example, Respondent's disputed domain name website at <soul-train.com> also leads to his 1domains website where some 16 domain names are for sale (Complaint Annex F).
The Complainant wrote to the Respondent on January 4, 2001, and on October 26, 2001, and alleged trademark infringement. The Respondent did not reply (Complaint Annex H).
The Complainant now seeks to gain transfer of the disputed domain name <soul-train.com> through this proceeding.
5. The Parties' Summarized Contentions
Complainant's Summarized Contentions:
- As a result of Complainant's long and extensive use and promotion of the Soul Train mark in interstate commerce, the mark has acquired a distinctiveness and secondary meaning signifying Complainant, and Complainant has now built up and owns valuable goodwill which is symbolized by the Soul Train mark.
- By virtue of Complainant's extensive use and advertising of its Soul Train mark, including its official website, the Soul Train mark and website have become well-known as being associated with Complainant.
- On January 21, 2000, long after Complainant's adoption and first use of the Soul Train mark, and after the Soul Train mark had acquired distinctiveness and secondary meaning, Respondent commenced use of the Soul Train mark by registering for use on the Internet the <soul-train.com> domain name and attempting to sell the name (Complaint Annex F).
- Respondent has held an internet auction for the <soul-train.com> domain name (Complaint Annex G).
- Respondent is a classic domain name broker. Respondent currently has registered and is selling 16 domain names on his website which can be accessed through the <soul-train.com> domain name (Complaint Annex F).
- Respondent registered the <soul-train.com> domain name with the intent to profit by using Complainant's mark to sell, either to Complainant or its competitors, a domain name containing Complainant's mark.
- By virtue of Complainant's federal service mark registration and the fame of the Soul Train mark, Respondent was put on constructive notice of Complainant's rights to the Soul Train mark prior to registering the <soul-train.com> domain name.
- In addition, prior to Complainant instituting this administrative proceeding, Respondent had been placed on actual notice of Complainant's rights by virtue of two demand letters sent by Complainant's counsel to Respondent on January 4, 2001, and on October 26, 2001 (Complaint Annex H). Respondent has not responded to either letter.
- Respondent's <soul-train.com> domain name is legally identical to Complainant's Soul Train mark. To the extent the panel may find the domain name and mark are not identical, Respondent's domain name is confusingly similar to Complainant's mark in that the mark is entirely incorporated into the domain name.
- Respondent has no rights or legitimate interests in the <soul-train.com> domain name. At no time before or after he registered the domain name has Respondent ever had any legitimate business relating to or incorporating the term Soul Train; nor has Complainant ever granted Respondent a license or other permission to use the Soul train mark.
- Respondent has never used the disputed domain name in a bona fide offering of goods or services, and has never been commonly known by the term Soul Train.
- Respondent's registration of <soul-train.com> was in bad faith because Respondent had actual or at least constructive notice of Complainant's Soul Train mark at the time he registered the domain name; and he only registered the name to sell later for an amount exceeding out-of-pocket costs.
- Respondent's website shows that he registered the domain name with the intention of reselling it for a profit in violation of para 4(b)(i) of the Policy. The Respondent has attempted to sell the disputed domain name both on his own website and at auction for U.S. $1,250.
- Respondent's bad faith use of <soul-train.com> is further shown by his registration of other domain names that contain a third party's trademark and attempting to sell them.
- Respondent's bad faith use is also shown by the lack of any active website at <soul-train.com> and the fact that Respondent could not make any legitimate, non-infringing use of the <soul-train.com> mark.
- The disputed domain name should be transferred to the Complainant.
The Respondent is in default in this proceeding and thus did not file any contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name <soul-train.com> transferred to it, Complainant must prove the following (the Policy, para 4(a)(I-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has exhibited an exemplary copy of its Soul Train service mark registered on the principal register of the United States Patent and Trademark Office on July 18, 1972, no. 0938310 in international class 41 for television entertainment services (Complaint Exhibit D). In registering the disputed domain name, <soul-train.com>, the Respondent has only added a hyphen, an insignificant addition. Furthermore, the top level domain name .com is not relevant for assessing identicality or confusing similarity under the Policy. Therefore, the Panel finds the disputed domain name is confusingly similar to the Complainant's Soul Train service mark. (see e.g. The Channel Tunnel Group Ltd. v. John Powell, WIPO/ICANN Case No. D2000-0038, April 10, 2000, regarding de minimis additions to marks when creating domain names).
Legitimate Rights or Interests
The Complainant has asserted it has not licensed or authorized the Respondent to use its Soul Train mark in any way. Being in default, the Respondent has not attempted to demonstrate any legitimate rights or interests per the Policy at 4(c)(i). Also, from the record, it is evident that the Respondent is attempting to sell the disputed domain and other domain names for sums in excess of registration fees: this is not a legitimate right or interest under the Policy.
Registered and Used in Bad Faith
As the Complainant points out, the strength of the Complainant's mark and the 30 some years during which the Complainant's service mark has been registered in the United States virtually guarantee that the Respondent knew about the Complainant's service mark rights when he registered the disputed domain name. The Complainant also has shown that the Respondent has attempted to sell the disputed domain name for a minimum of U.S. $1,250 (Complaint Exhibit G).
The Respondent thus registered and is using the disputed domain name in bad faith per the Policy at 4(b)(i): "circumstances indicating that you have registered or you have 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;"
The Panel also agrees with the Complainant that the Respondent's registering and holding for some two years (without using it) a famous service mark constitutes registration and use in bad faith. While not one of the specifically mentioned examples of bad faith registration and use under the Policy, the Policy's list is not exhaustive, and Rule (15) allows the Panel to seek additional legal grounding for decisions as the Panel may find appropriate (on passive holding and bad faith, see Guerlain S.A. v. Peikang, ICANN/WIPO Case No. D2000-0055, March 21, 2000).
The Panel finds the Respondent has registered and is using the disputed domain in bad faith.
The Panel has found that the disputed domain name, <soul-train.com>, is confusingly similar to the Complainant's Soul Train service mark. The Respondent has no legitimate rights or interests in the disputed domain name. The Panel also has found the Respondent registered and is using the disputed domain name in bad faith because he attempted to sell the domain name back to the Complainant or its competitors for more than he paid for it.
Accordingly, pursuant to ICANN Policy para 4(i) and Rule 15, the Panel orders that the disputed domain name, <soul-train.com>, be transferred from the Respondent, Bob Williamson d/b/a 1domains, to the Complainant, Don Cornelius Productions, Inc.
Dennis A. Foster
Dated: February 4, 2002