WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Van Morrison and Exile Productions Limited v. Unofficial Club de Van Morrison
Case No. D2002-0417
1. The Parties
The Complainants are Van Morrison ("First Complainant") and Exile Productions Limited, being a company incorporated in England and Wales and having its registered office address at 6 Landsdowne Mews Longon W11 3BH, United Kingdom. ("Second Complainant").
The Respondent is the Unofficial Club De Van Morrison, at Big Fan Club, PO Box 4766-162, Curaco, Netherlands Antilles.
2. The Domain Name and Registrar
The contested domain name is <vanmorrison.com>.
The registrar is Bulkregister.com, Inc.
3. Procedural History
The electronic version of the Complaint was filed on May 2, 2002. The hardcopy of the Complaint form was received by WIPO Arbitration and Mediation Center, ("the Center"), on May 8, 2002.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Policy, ICANN Rules and Supplemental Rules.
Payment in the required amount to the Center was made by the Complainants.
On May 14, 2002, the Center formally notified the Respondent by courier and email of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainants, the Registrar and ICANN.
As discussed below, the Respondent failed to file a response.
Mr. John Swinson accepted to act as Panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
The parties were notified that Mr Swinson had been appointed.
The language of the proceeding was English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN 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 to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; no Response was filed by the Respondent; and the administrative Panel was properly constituted.
4. Factual Background
The Second Complainant, Exile Productions Limited owns the right to exploit the services of the First Complainant, the well-known recording artist and songwriter Van Morrison.
Van Morrison was born in 1945 in Ireland. The top 10 hit song "Brown-Eyed Girl" recorded by Van Morrison in the late 1960ís is regarded as a classic. For example, it is one of the 10 songs from the 1960ís most played on Australian radio today.
No evidence has been presented that shows that the disputed domain name resolves to a website or other internet location or has ever been used.
5. Partiesí Contentions
The Complainant contends that:
(a) the name, "Van Morrison" represents the goodwill in the musical works and other projects with which the First Complainant has been involved in since the 1960s. The First Complainant has enjoyed considerable worldwide musical success throughout the last forty years. As a result Van Morrison is a household name throughout and the goodwill inherent in this fact is fundamental to the Complainantsí businesses;
(b) 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 Van Morrison name;
(c) no evidence has been put forward by the Respondent to suggest any legitimate rights to the domain name. There is no evidence that the Respondent or any of its agents or businesses have been commonly known as the domain name;
(d) the fact that the domain name has been registered by the Respondent who is called the Unofficial Club de Van Morrison and the administrative contact is "Big Fan Club" shows that the Respondent has deliberately set out to associate the contested domain name with the First Complainantís name with the intention of attracting Internet users and exploiting the goodwill in the First Complainantís name;
(e) the domain name is identical or confusingly similar to the "Van Morrison" trade mark or service mark in which the Complainants have rights;
(f) the Respondent has not used the domain name in connection with the bona fide offering of goods and services;
(g) the Respondent intended to divert persons looking for the name "Van Morrison" to the Respondentís web site and to capitalize on the Complainantsí famous trade mark "Van Morrison"; and
(h) the Respondent registered and is using the domain name in bad faith, as the domain name has been held passively now for three years.
The Complainant asserts that the domain name was first registered in 1998 by "Fan Exchange" of New Zealand. The Complainantís London solicitors wrote to Fan Exchange in October 2001 offering to purchase the disputed domain name for reasonable expenses up to 300 pounds. No response was received to this letter. After the date of this letter, the disputed domain name was transferred to the Respondent. The Complainant asserts that the Respondent and the previous registrant are connected parties, but provides no evidence for this belief. The Complainant states it has reason to believe that Fan Exchange has previously held and transferred domain names of famous people for a profit, but provides no evidence to prove this.
As discussed below, the Respondent failed to file a Response within the time limit.
6. Discussion and Findings
On May 14, 2002, the Center sent a Notification of Complainant and Commencement of Administrative Proceedings to the Respondent. The last day for sending the Response was set as June 4, 2002.
On June 6, 2002, the Center sent a Notification of Respondent Default by email to the Respondent and the Complainant.
On June 5, 2002, the Respondent "Unofficial Club de Van Morrison Big Fan Club" (from email@example.com) send an email to the Center requesting an extension of time to file the Response. The Respondent stated that it only just became aware of the Complainant because of travel to remote locations with no access to postal and email.
On that day, the Center sent the following email to the Complainant, with a copy to the Respondent:
"We would be grateful if you could respond to the Center, with your comments on that request within this week. After that date, and regardless of whether we receive the requested comments, the Center will consider the Respondentís request for extension."
The Complainants by email that day asserted that an extension was not justified, because the Complainants notified the Respondents of the Complainant by email and post on May 2, 2002.
On June 7, 2002, the Respondentís legal representative, Stephen Sturgeon, sent an email to the Center requesting an extension of time for filing a response, requesting a three member panel and requesting that "the panel consider this request and the Response which we are preparing soon and will send soon."
The June 7, 2002, email stated:
"The Respondent receives an enormous amount of email (with considerable junk mail) through the email address that was likely used to transmit notice of the complaint. If the Respondent viewed the header of the email, the Respondent, being unfamiliar with such matters, would not have viewed the email as being important. In fact, with substantial attachments, it could have been considered to be carrying a virus"
"It was only after a telephone call from a news reporter that the Respondent begun to investigate the matter."
The Center responded on June 11, 2002, stating that the Center will proceed to appoint a single member panel, and for the panel to decide on its appointment and "whether to consider an eventual late filed response."
As at the date of this decision, no Response had been filed. The Respondent has had more than three additional weeks to file a Response, and has not done so.
Paragraph 5(d) allows the Provider to extend the time to file a response in exceptional cases.
The Panel does not believe that exceptional circumstances exist that warrant any extension to file a response.
In accordance with Rule 5(e) of the Rules, this dispute shall be decided on the basis of the Complaint alone.
The panel decides that a single member panel has been properly constituted. Paragraph 7(c) of the WIPO Supplementary Rules states:
"(c) Respondent Default
Where the Respondent does not submit a response or does not submit the payment provided for in Paragraph 5(c) of the Rules by the deadline specified by the Center, the Center shall proceed to appoint the Administrative Panel, as follows:
(i) If the Complainant has designated a single member Administrative Panel, the Center shall appoint the Panelist from its published list; Ö"
Thus, this dispute will be decided by a single-member Panel.
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, ("ICANN Policy"), namely:
(i) the domain name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements is that of the Complainant.
6.1 Identical or confusingly similar to a trade mark or service mark
It is clearly established under the UDRP that personal names of well-known people can support common law trade mark rights within Paragraph 4(a)(i) of the Policy.
Van Morrison has enjoyed considerable worldwide musical success over a long period of time. "Van Morrison" is not a typical name. "Van Morrison" is a well-known name in which the First Respondent has common law trade mark rights.
Accordingly, the Panel finds that the First Complainant is the owner of the common law trade mark "Van Morrison" and that the disputed domain name is identical to this common law trade mark.
The Complainants contend that the Respondent has no legitimate interest in the use of the contested domain name as the Respondent:
(a) has had no sanctioned involvement with any of the Complainants at any time and has not been granted any rights to use the First Complainantís name or hold itself out to represent the First Complainant;
(b) has not provided any evidence to suggest any legitimate rights in the domain name or that the Respondent or any of its agents or businesses have been commonly known as the domain name; and
(c) the domain name does not resolve into a website or other online presence (despite having been registered for over 3 years) and there is no evidence that the Respondent plans to use the domain name for a legitimate non-commercial use.
Under Paragraph 4(c) of the ICANN Policy, the Respondent may demonstrate its rights and interests in the contested domain names by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparations to use, the contested domain names or names corresponding to the contested domain names in connection with a bona fide offering of goods or services before any notice to it of the dispute; or
(ii) it (as an individual, a business, or other organization) has been commonly known by the contested domain names, even if it has acquired no trademark or service mark rights; or
(iii) it is making a legitimate non-commercial or fair use of the contested domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests. The Respondent had the opportunity to respond and present evidence of the Respondentís rights or legitimate interests in the disputed domain name. The Respondent chose not to respond or present evidence. The Complainants are not entitled to win simply by default, but the Panel can and does draw evidentiary infancies from the failure of the Respondent to provide evidence of its rights or legitimate interests in the disputed domain name.
As stated in Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847, "use which intentionally trades on the fame of another cannot constitute a Ďbona fideí offering of goods or serviceÖ.. to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."
There is no evidence before the Panel that suggests that Respondent has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant satisfies Paragraph 4(a)(ii) of the ICANN Policy.
6.3 Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith as:
(A) based on a number of factors, the Respondent knew of the name and reputation of the First Respondent at the time of registering the domain name;
(B) the Respondent registered the disputed domain name in order to exploit the reputation of the First Respondent;
(C) the Respondent registered the disputed domain name in order to create a false association between the disputed domain name and "the Complainants trademark."; and
(D) Fan Exchange, a previous owner of the disputed domain name, has a history of bad faith celebrity registrations.
The Panel agrees that (A) above is true, but knowledge of anotherís trademark rights alone does not prove bad faith.
In relation to (D) above, it is possible for bad faith to follow the domain name when transferred. As stated in Miles D., Ltd dba Jazz Alley v. Tokaido Shosha, eResolution Case No. AF-0318:
"One cannot pass good title to a domain name where it does not have good title. Similarly, in certain circumstances, illegitimacy and bad faith of a prior domain name owner may "attach to" the domain name, and pass with the transfer to a subsequent domain name owner. This would be the case, for example, where the transfer was a sham or to a related entity."
However, in this dispute, the Complainants have not provided any tangible evidence of any history of registering domain names for the purpose of profit by any owner (past or present) of the disputed domain name. In determining bad faith, the Panel cannot rely on the fact that the Complainants have "reason to believe" the Respondent is connected with the previous registrant (Fan Exchange) as the Complainants have not provided any evidential proof of this, only their Ďreasonable beliefí. Any prior history of Fan Exchange registering celebrity names for sale at a profit cannot be used against the Respondent in this case as the Complainants have failed to prove that such a connection exists.
The Panel notes that bad faith registration (without use) may satisfy Paragraph 4(a)(iii) of the ICANN Policy. This is because Paragraphs 4(b)(ii) and (iii) of the ICANN Policy, which relate to registration only, are stated to be "evidence of the registration and use of a domain name in bad faith." That is, the ICANN Policy itself recognizes that bad faith registration is evidence of the registration and use of a domain name in bad faith to satisfy Paragraph 4(a)(iii).
In this dispute, the Panel decides that there is bad faith within Paragraph 4(a)(iii) of the ICANN Policy, even though no use of the disputed domain name has been shown, because of the combination of all of the following factors:
1. the trade mark supporting the Complainant is very well known and has a strong worldwide reputation;
2. the Respondent knew of the reputation of that trade mark at the time of registering or acquiring the disputed domain name;
3. the disputed domain name is not a generic word or phrase; and
4. there is no evidence of the Respondent having any right or legitimate interest in the disputed domain name.
If these four factors are present, it is possible to draw the conclusion that the disputed domain name was registered in order to improperly exploit the reputation of the First Complainant. The Panel draws that conclusion here.
If factors 1 to 3 are present, but the Respondent can demonstrate a right or legitimate interest in the disputed domain name, such as bona fide plans for a non-commercial free speech use of the domain name, then this could tend to show that the registration was not in bad faith.
Accordingly, the Panel finds that the Complainants have established the element set out in Paragraph 4(a)(iii) of the ICANN Policy.
For the reasons set forth above and pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain name be transferred to the First Complainant, Van Morrison.
Dated: June 28, 2002