WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perpetual Images, Inc. v. Michael Turner
Case No. D2002-0551
1. The Parties
The Complainant in this administrative proceeding is Perpetual Images, Inc., a California corporation with principal place of business at 9424 Eton Avenue, Unit F, Chatsworth, California 91311, United States of America. The Complainant is represented in this proceeding by Barry P. Miller of Wilkinson Barker Knauer, LLP, 2300 N Street, N.W., Suite 700, Washington, DC 20037, United States of America.
The Respondent in this proceeding is Michael Turner, an individual, whose address is 711 Ursula Avenue, Pacifica, California 94044, United States of America. The Respondent is represented in this proceeding by Amy Abascal-Turner, 711 Ursula Avenue, Pacifica, California 94044 United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <fallenangel.com>.
The registrar for the disputed domain name is Network Solutions, Inc.(NSI),
21355 Ridgetop Circle, Dulles, Virginia 20166, United States of America.
3. Procedural History
This administrative proceeding will be resolved in accordance with the provisions of the Uniform Policy for Domain Name Dispute Resolution (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 Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on June 16, 2002, by e-mail, and on June 19, 2002, in hard copy. On the latter date, the Center sent a Request for Registrar Verification to NSI, the registrar of the disputed domain name. On June 21, 2002, NSI responded to the Center that the registrant of the disputed domain name was the Respondent in this proceeding.
On June 20, 2002, the Center notified Complainant by e-mail of a Complaint deficiency: the Complaint did not contain the requisite four (4) copies per WIPO Supplemental Rule 3(c) and was not signed. The Center received the hard copies of the Complaint with the deficiency corrected on June 25, 2002.
On June 25, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began. On July 13, 2002, the Center received a response from Respondent by e-mail, and on July 15, 2002, the same in hard copy.
The Administrative Panel submitted a Declaration of Impartiality and Independence on July 23, 2002, and the Center proceeded to appoint the Panel on July 24, 2002. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
The due date of this Decision is August 7, 2002.
4. Factual Background
In 2001, Complainant obtained a registered United States trademark in "Fallen Angel," a trademark Complainant had been using since April, 1997.
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on October 7, 1996. Respondent has used the disputed domain name to create a web site to post personal information and pictures.
5. The Partiesí Contentions (Summarized)
Complainant adopted and began using the trademark "Fallen Angel" in April of 1997.
Complainant obtained a registered trademark in the name "Fallen Angel" in the United States in 2001.
Respondentís domain name is identical or confusingly similar to the Complainant's Trademark.
Respondent has no right or legitimate interest in respect of the disputed domain name. Respondent is merely employing the infringing domain name to point internet users to a site with no content and that previously directed internet users to various other sites.
Respondent has never been commonly known by the disputed domain name or any substantially similar name.
Respondent intentionally used the infringing domain name to capture some of the commercial value and reputation that was developed by Complainant's long use of its trademark. Internet users are diverted to Respondent's web site, which offers none of the goods or services which Complainant's customers expect. This diversion tarnishes Complainant's reputation by creating a likelihood of confusion in the internet user's mind as to whether Complainant is still in business.
The Respondent registered the <fallenangel.com> domain name in bad faith. Circumstances indicate that Respondent registered the infringing domain name for the purpose of selling it. Bad faith is further demonstrated because Respondent is using the disputed domain name to intentionally attract, for commercial gain, internet users to Respondent's web site by creating a likelihood of confusion with the Complainant's domain name.
Respondent has owned and used the disputed domain name since October 7, 1996. Since Respondent's registration and use preceded Complainant's trademark in the same name by at least sixteen months, Respondent could not have been intentionally registering a domain name confusingly similar to the trademarked name of Complainant.
Respondent's use of the domain name in question has been non-commercial, and therefore non-competitive with any goods or services of Complainant. Respondent's use has included e-mail messages, party invitations, family photos, resume hosting, and links to other sites that personally interest Respondent. That content has in no way entered the market in which Complainant competes, i.e., adult entertainment.
"Fallen Angel" is a generic term, used widely and long before Complainant registered its trademark. Thus, Complainant holds no exclusive rights to this phrase.
Six years of continual use of the disputed domain name for identification purposes clearly establishes that Respondent and his wife have been commonly known by the domain name, regardless of trademark ownership.
Respondent did not intend to divert Complainant's customers. Respondent had no knowledge of Complainant or Complainant's business before receiving this Complaint.
As Respondent registered the disputed domain name sixteen months before the Complainant first used the term "Fallen Angel", Respondent did not register the name in bad faith. Also, Respondent has not used the disputed domain name in bad faith.
6. Discussion and Findings
If Complainant is to prevail in these proceedings and have the disputed domain name <fallenangel.com> transferred, it is necessary for Complainant to prove, per the Policy sections 4(a)(i), (ii) and (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
Respondent concedes and the Panel finds that Complainant owns a valid registration of the trademark "Fallen Angel" in the United States (i.e., U.S. Registration No. 2,499,540, dated October 23, 2001, for pre-recorded videocassettes, DVDs, CD-ROMs, audio cassettes featuring adult entertainment). Again, Respondent concedes and the Panel finds, that Complainant began using that trademark in April, 1997.
The disputed domain name <fallenangel.com> differs from Complainant's trademark, "Fallen Angel", only in regard to the addition of the gTLD ".com" and the absence of a space between the words "Fallen" and "Angel". Panels operating under the provisions of the Policy have held that the inclusion of a gTLD such as ".com" is immaterial in distinguishing between trade or service marks and domain names (see for example Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF Case No. FA95856 (December 18, 2000) and MSNBC Cable, LLC v. Tysys.com, WIPO Case No. D2000-1204 (December 8, 2000)). Similarly, it has been well recognized by such panels that the elimination of spaces between words is not a pertinent basis for finding a lack of identity between a domain name and a trademark (see Laerdal Medical Corporation v. Locks Computer Supply, WIPO Case No. D2002-0063 (April 18, 2002): "The use of one word or two words in a trademark or a domain name is also irrelevant as long as the two words forming the one word are the same.")
Per the above, the Panel concludes that Complainant has shown that the disputed domain name is identical to a trademark or service mark in which Complainant has rights.
No Rights or Legitimate Interests
Respondent does not contend nor does the record indicate that Respondent received permission, consent or a license from Complainant to use the Complainant's trademark, "Fallen Angel."
However, the Policy provides in its section 4(c) three ways for a respondent to establish that it has rights or legitimate interests in a disputed domain name. In this case, the Panel finds 4(c)(iii) to be the most relevant. According to section 4(c)(iii), Respondent may sustain his right to retain the disputed domain name by presenting evidence to demonstrate that he is "making a legitimate noncommercial or fair use of the domain name, without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Respondent has presented plenty of evidence to the Panel of his rather benign non-commercial use of the disputed domain name over the years since registration for such purposes as party announcements (Response Attachments VII through X), resume listings (Response Attachment XI) and family pictures (Response Attachment XII). As the dates of domain name registration and trademark use in this case are agreed to by both parties, the evidence shows that Respondent clearly registered the disputed domain name prior to Complainant's first use of its trademark and therefore did not intend to divert consumers or tarnish Complainant's mark at the time of registration. Furthermore, there is no material evidence in the record to suggest that Respondent adopted such a malevolent intention later.
The Panel thus finds that, per section 4(c)(iii) of the Policy, Respondent has rights and legitimate interests in respect of the disputed domain name.
Since the Policy requires Complainant to prevail under each section of the Policy at sections 4(a)(i), (ii) and (iii), the Panel does not need to consider section 4(a)(iii), i.e., whether the Respondent registered and is using the disputed domain name in bad faith.
The Panel has found that Complainant failed to show that Respondent had no rights or legitimate interests in respect of the disputed domain name <fallenangel.com> per the Policy at section 4(a)(ii). Therefore, pursuant to the Policy, section 4(i), and Rule 15, the Panel orders that the disputed domain name, <fallenangel.com>, remain registered to Respondent, Michael Turner.
Dennis A. Foster
Dated: August 5, 2002