WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Other Half Entertainment v. Jason Fiore aka One Stor
Case No. D2005-1156
1. The Parties
The Complainant is Other Half Entertainment of Greensburg, Pennsylvania, United States of America, represented by an internal representative.
The Respondent is Jason Fiore, also known as (aka) One Stor, of San Dimas, California, the United States of America.
2. The Domain Name and Registrar
The disputed domain name <laurabranigan.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2005. On November 8, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On November 8, 2005, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2005. The Response was filed with the Center on December 7, 2005.
The Center appointed Prof. Frederick Abbott as the Sole Panelist in this matter on December 19, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On December 21 and 22, 2005, respectively, Complainant transmitted an e-mail to the Center indicating its intention to file a supplemental submission. By Administrative Order No. 1, dated December 28, 2005, the Panel declined to receive and review the supplemental submission on grounds that the additional information offered, as described by Complainant, should have been part of its initial Complaint or would impose an undue burden on Respondent. Following request for review and explanation from Complainant, by Administrative Order No. 2, dated January 3, 2006, the Panel accepted to receive and review the supplemental submission. By Administrative Order No. 3, dated January 11, 2006, the Panel accepted that portion of the supplemental submission constituting an agreement headed Artist-Manager-Agency Agreement Management and Production Contract (hereinafter “Artist Agreement”), with signature of Laura Branigan dated July 1, 2004, and Kathy S. Golik dated July 6, 2004, along with such portion of the supplemental submission as directly referred to that contract. The Panel also requested information from Complainant regarding the legal status of the Artist Agreement. The Panel indicated that other elements of the supplemental submission would be addressed later, as required. By Administrative Order No. 4, dated January 13, 2006, the Panel responded to an e-mail request by Complainant to the Center for clarification of the request for information in Administrative Order No. 3. By Administrative Order No. 5, dated January 18, 2006, the Panel granted Complainant’s request for an extension of the time allowed to respond to the request for information. By Administrative Order No. 6, dated January 31, 2006, the Panel received and accepted Complainant’s submission of January 26, 2006, and indicated its intention to render a decision by February 10, 2006.
4. Factual Background
The Complaint in this proceeding is based on asserted common law trademark rights in the personal name of a deceased singer-artist, “Laura Branigan” (hereinafter also the “artist”). The artist died in the United States in August 2004.
Complainant asserts that it is a partnership registered in the State of Pennsylvania, constituted by Kathy Golik and Vincent Golik, and formerly also by Laura Branigan.
Complainant asserts that “Laura Branigan” is a well-known recording artist, songwriter and performer, whose recordings since as early as 1981 have sold over 10 million copies worldwide. Complainant asserts that the artist’s name has also been used on and in connection with the sale of merchandise, including T-shirts and hats. The well-known character of “Laura Branigan” as the personal name of the artist is not disputed by Respondent.
Complainant operates a website at Internet address “www.laurabraniganonline.com”. Laura Branigan authorized Kathy Golik to operate this as her “official website” by letter dated January 15, 2004 (Complaint, Annex 4). By that letter, Laura Branigan indicated that she was “extending and licensing my copyright and trademark rights to you, to utilize any such material in any manner that will mutually benefit us in this relationship, and will advance my music career”. By letter dated June 25, 2004, Laura Branigan wrote to Kathy Golik, “I am giving my endorsement to you to formulate a management company between you, Vince, and I …. Please work on getting a management contract for us to sign, but in lieu of that, I want you and I to be clear, and anyone else this letter needs to be shown to, that from the date of this letter, I am officially recognizing you as my manager, so that we can begin a stable and legitimate comprehensive business relationship beyond the website”. (Id.) By letter of July 14, 2004, Laura Branigan wrote to Kathy Golik with respect to the disputed domain name and other related names registered by Respondent, “I want you and Vince to pursue this WIPO route we discussed … I specifically want all the domain names Jason is holding, to be put in the name of Other Half Entertainment. I want to be clear that once this website issue is cleared up, that our company will own and operate all the domain names that have my name in them. I want to finally be able to bring everything about my music career under one roof, and I specifically want you, Kathy to manage all of this. I want to make sure that everything is collected under one umbrella, and this will make it easier for anyone in the industry to deal with my music, video, website, etc. since everything will be handled by one company, under one roof”. (Id.)
Complainant’s supplemental submission of December 22, 2005, attached the Artist Agreement. That agreement is styled as a letter from Laura Branigan to Kathy S. Golik.
At paragraph 1(a), the Artist Agreement provides that it is for an initial term of five years, renewable indefinitely for five-year terms, and provides: “Said options shall be exercised automatically by either party unless thirty (30) days prior to the end of the then current term you or I give the other party written notice to the contrary.”
Paragraph (1)(b) provides to each party an option for interim termination at the end of any single year if the artist does not achieve certain financial performance goals.
The Artist Agreement includes several provisions regarding license, assignment and transfer of ownership rights of Laura Branigan in her given name.
Paragraph 8, titled “authority”, states:
“(a) I hereby transfer to you an irrevocable extension, license, assignment, and transfer of ownership of all rights and privileges pertaining to the use, display, broadcast, or any other presentation of any material to which I hold or share any type of copyright; as well as an irrevocable extension, license, assignment, and transfer of ownership of all rights and privileges pertaining to my name ‘Laura Branigan’, image, trade and service marks, by which I have been known throughout my life as they constitute my legal birth name, image, trade and service marks, and by which I, over the course of my career have been professionally known, have used, furthered, and promoted, to achieve worldwide fame, honors, monies and other considerations, and sundry recognitions. This extension, license, assignment, and transfer of rights ownership from me to you shall carry the full privileges and benefits of ownership of the rights to protect, defend, use, further, and otherwise positively promote and, benefit my name, image, copyrights, trade and service marks, as outlined in this Agreement and will carry the full weight of my personal authority for the maintenance of my past, present, and future career-related material and activities as outlined in this Agreement, in order to maintain a positive career image for me, which will serve to mutual benefit.
(c) As has already been assigned by official Letter of Sanction, you are authorized to own in the name of the Partnership, operate, and maintain, under the terms and conditions of said Letter of Sanction and any additional terms and conditions as outlined in this Agreement my sole official website and sole official online store. I hereby authorize the maintenance of my official website and official online store, to remain under said ownership and operation, for the periods as outlined in this Agreement.”
Paragraph 1(c), under “engagement and term” provides:
“In order to provide a stable environment for the maintenance and promotion of my past and present accomplishments as an entertainment and music artist, I hereby grant you irrevocable authority, mandate, and license to maintain and continue to perform and act according to all the terms and conditions set forth in this Agreement, in the event of my death. In such case, it is clearly understood and agreed that the then current term of this Agreement shall be extended indefinitely and shall not be terminated, altered, or revoked by any party, and shall expire only upon the cessation of the Partnership we are creating by this Agreement (‘Other Half Entertainment’) due to the death of all financial partners, herein understood as yourself and your spouse, Vincent A. Golik. In the event I precede the financial partners of this Partnership in death, I hereby extend the ownership rights to my legal given name ‘Laura Branigan’, image, copyrights, trade and service marks, which I hereby transfer to you by the execution of this Agreement, to you for perpetuity. This perpetual extension, license, assignment, and transfer of rights ownership from me to you shall carry the fill privileges and benefits of ownership of the rights to protect, defend, use, further, and otherwise positively promote and benefit my name, image, copyrights, trade and service marks, as outlined in this Agreement, and will carry the full weight of my personal authority for the maintenance of my past, present and future career-related material and activities, including but not limited to, awards, compositions, music and other recorded works, possessions, officially-sanctioned website owned and operated by you as set forth in this Agreement monies and/or other compensations, and the like, in order to establish and maintain a legacy for my entertainment, amusement, music, recording and literary accomplishments, for perpetuity. Should such death occur during any term during which this Agreement is in effect by the execution of the affixation of our signatures below, this Paragraph shall remain in full legal effect, and shall not be affected in any way by any other Agreement, decision, or action made or taken by any family member, executor, executrix, or Court, so that my career legacy may remain stable and active. In the event that all financial parties of the partnership hereinabove mentioned should precede me in death, this entire Agreement will thus cease, and I shall be considered free to engage in an Agreement with a party of my choosing. This Paragraph shall only be amended or removed by thirty (30) days prior written notice of either of us to the other party.
Paragraph 11 provides, inter alia:
(a) This instrument sets forth the entire Agreement between us with respect to the subject matter hereof and, no modification, amendment, waiver, termination or discharge of any provision hereof shall be binding upon the parties unless confirmed by a written instrument executed by the parties. No waiver by either you or me of any term or provision of this Agreement or of any default hereunder shall affect your or my right hereafter to enforce such term or provision, or to exercise any right or remedy in the event of any other default, whether or not similar, This Agreement shall not become effective until accepted and executed by you. The parties hereby represent and warrant that no statement, promise, representation, or inducement, except as herein set forth, has been made on any party’s behalf or by any of such party’s employees or representatives, Should any provision of this Agreement be void or unenforceable by any means, such provision shall be deemed severed and this Agreement with such provision severed shall remain in full force and effect; provided, however, that in the event such severance shall materially affect your right to receive compensation under this Agreement, you shall have the right to elect to treat your obligations under this Agreement as terminated. This Agreement shall inure to the benefit of the parties hereto and to their respective successors, assigns and heirs.
(b) This Agreement shall be construed as the creation of a Partnership between you and me, to be named ‘Other Half Entertainment’. This Agreement, and any amendments that shall be made from time to time, shall serve as an official evidence of a Partnership Agreement, as may or may not be required by the Government of the United States of America, the State of New York, or the Commonwealth of Pennsylvania Under this provision, it is understood that you and your partner/spouse’s actions under this Agreement shall be construed as fulfilling the duties of primary, financial partners in all respects to this Partnership, to wit, operating the daily business of the Partnership as outlined in this Agreement, whereupon my actions under this Agreement shall be construed as fulfilling the duties of a non-financial partner to this Partnership, and providing creative, entertainment, amusement, music, recording and literary services and expertise, and hereby transferring ownership of all rights and privileges to my name ‘Laura Branigan’, image, trade and service mark to the Partnership, for the overall mutual benefit of all three partners.
(c) As this Agreement constitutes the creation of a Partnership between us, the death of any single partner shall not alter or affect the Agreement or the Partnership in any way. The death of both primary/financial partners shall render this Agreement subject to the laws of the Commonwealth of Pennsylvania, at which time provision shall be made for the continuance of my career and/or career legacy, as outlined in this Agreement.
(f) I represent and warrant that I have been advised of my right to seek legal counsel of my own choosing in connection with the negotiation and execution of this contact, if I so choose.
(g) I represent and warrant that I am wholly free to enter into this contract and to grant the rights herein granted to you, and that I am not a party to any agreements, and that I do not have any obligations, which conflict with any of the provisions hereof.
(h) All notices to you hereunder and payments to you hereunder shall be sent to your address written above. All notices to me shall be sent to my address written above.
(i) Upon any dispute under or relating to the terms of this Agreement and Contract, or the breach thereof, it is agreed that the matter shall be submitted for arbitration to the American Arbitration Association in New York in accordance with the then prevailing rules of that Association. Judgment upon the award rendered by the arbitrator(s) may be entered in any court having jurisdiction thereof. If in any arbitration or litigation under this Agreement, the prevailing party shall be entitled to recover from the other party any and all costs reasonably incurred by the prevailing party in such arbitration or litigation, including without limitation, reasonable attorneys’ fees.
(n) This Agreement shall be deemed to be executed in the State of New York and shall be construed in accordance with the laws of said State.”
In response to Administrative Order No. 3, Complainant indicated that Laura Branigan did not leave a will, that no executor was appointed for her estate, and that there are no potential beneficiaries of her estate. Complainant indicated that he was given this information over the telephone by Mark Branigan, the brother of the decedent. Complainant also transmitted a probate search report from the Surrogate’s Court of Suffolk County, New York, indicating that there was no record of probate regarding Laura Branigan. However, while indicating that there were no potential beneficiaries of the estate, Complainant stated that the decedent was estranged from family members, writing that “It must be clearly understood that Mr. Branigan was absolutely adamant in his decision that neither he nor his siblings, as he clearly understood from them, wanted any part, interest, or assignment with anything related to their sister Laura, whether personal or business-related”.
According to the Registrar’s Verification, Respondent is the registrant of the disputed domain name <laurabranigan.com>. According to Network Solutions WHOIS database printout furnished by Complainant, the record of registration was created on November 6, 1998.
Respondent operates a commercial website at the Internet address identified by the disputed domain name <laurabranigan.com>, and asserts that it has operated this website since 1998. While the website includes “fan” information and discussion, it also advertises and offers for sale recordings by Laura Branigan, and it has offered for sale various merchandise related to the artist, such as posters. Respondent asserts that he was authorized as early as 1998 by the artist to operate said website. This is disputed by Complainant.
A great deal of additional information regarding the activities of Complainant and Respondent has been submitted by the parties. However, in view of the disposition of the Complaint, such information is not relevant to the outcome of the proceeding.
The Registration Agreement in effect between Respondent and Register.com subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
In the initial Complaint, Complainant identifies itself as “Laura Branigan, …, being represented by and through her management company, Other Half Entertainment, …, per exclusive management and marketing agreement. Ms. Branigan entered into exclusive agreement, assigning and extending to Other Half Entertainment full rights, licenses, and responsibilities with respect to her copyright holdings, and the trade and service mark ‘Laura Branigan’, and this agreement survives her death in August 2004. Therefore, the company Other Half Entertainment is the duly-appointed licensee and rights holder for the trade and service mark ‘Laura Branigan’, and it is submitted to the Panel that as a result of the aforementioned facts, Other Half Entertainment is the duly appointed representative regarding the rights and career/Legacy interests of Laura Branigan”.
In its supplemental filing of December 22, 2005, Complainant indicated that it intended to correct errors and omissions. It indicated that it had not initially submitted the Artist Agreement to maintain its confidentiality, particularly from Respondent. It stated that Ms. Branigan had drafted the Artist Agreement. It stated that:
“given that according to the management and production agreement, Ms. Branigan transferred and vested all license, authority, use, and ownership rights to the trade and service mark “Laura Branigan” to the partnership Other Half Entertainment, the Complainant respectfully requests the Panel to consider our clear intent that Other Half Entertainment, as duly-authorized rights owner, and the late Laura Branigan as prima facie party to many of the assertions in the Complaint, be the named Complainant(s). To the extent that the foregoing may have been unclear in the original writing of the Complaint, Complainant regrets any confusion, affirms that any such confusion was accidental and unintentional, and if any confusion may have arisen in the Panel’s view, that the Panel consider the facts that this Complaint is Complainant’s only experience with such a filing, and that Complainant is not being materially directed or assisted by legal counsel.”
In the initial complaint, Complainant alleges that it is the owner of common law rights in the “Laura Branigan” trademark and service mark. Those rights are based on the artist’s long and successful use of the trademark in commerce, as evidenced by a large volume of sales of recordings.
Complainant claims that the disputed domain name is identical to the common law trademark.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name because, inter alia, its use of that domain name was never authorized by Complainant. Complainant further argues that Respondent has not been known by the disputed domain name and that it has not made a legitimate noncommercial or fair use of the name.
Complainant alleges that Respondent registered and has used the disputed domain name in bad faith. It claims that Respondent is using the disputed domain name to direct Internet users to its website for commercial purposes by creating confusion as to Complainant’s sponsorship of or affiliation with its website. Complainant further indicates that Respondent has demonstrated a pattern of registering and using domain names of well known artists without their consent, and registered and used additional domain names incorporating the Laura Branigan trademark.
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.
Respondent asserts that Complainant has not demonstrated rights in a “Laura Branigan” trademark.
Respondent claims that it registered the disputed domain name and established its website upon oral authorization from Laura Branigan in 1998. In further asserts that Laura Branigan and persons associated with her management were familiar with and supported Respondent’s activities and its website until recently, including by furnishing information regarding events involving the artist.
Respondent argues that it did not register or use the disputed domain name in bad faith because (a) it had been authorized by Laura Branigan to establish and maintain the website and (b) any goods or services related to the artist and offered for sale on the website respected the copyright laws and, through Internet sales, generated royalties and other income for the estate of Laura Branigan.
Respondent requests the Panel to reject the Complaint.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)). The Panel is satisfied that Respondent had adequate notice of the proceedings and that the parties have been given adequate opportunity to participate.
Complainant filed a supplemental submission following receipt of Respondent’s Response. In that supplemental submission, Complainant sought, inter alia, to rebut Respondent’s allegation that it did not have rights in a trademark by submission of an agreement through which it claimed to demonstrate such rights. Complainant also sought to submit information concerning activities of Respondent which it asserted were discovered only after the filing of the Complaint, and also newly referred to a WIPO Panel decision of October 31, 2005 (Estate of Frank Gorshin v. [no name provided in the Whois] aka Terry Martin, WIPO Case No. D2005-0803. Because the establishment of rights in a trademark is a predicate to successful pursuit of a complaint under the Policy, and because the initial Complaint and Response raised doubts on this issue, the Panel accepted only that part of the Complainant’s supplemental filing that addressed this issue, holding any further determinations regarding the remainder of the supplemental submission, or leave for a reply by Respondent, in abeyance. The Panel also requested additional evidentiary support from Complainant, as discussed below. Because of the disposition of the case, the Panel did not need to make a decision about acceptance of the remainder of Complainant’s supplemental submission, or provide an opportunity for Respondent to further reply.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
In order to successfully pursue a complaint under the Policy, a complainant must first establish that it has rights in a trademark or service mark. See Backstreet Boys Productions, Inc. v. John Zuccarini, Cupcakeparty, Cupcake Real Video, Cupcake-Show, and Cupcakes-First Patrol, WIPO Case No. D2000-1619, and The Church in Houston v. Jim Moran, Light of Truth Ministries, WIPO Case No. D2001-0683. This involves at least two inquiries: (1) whether there is a valid trademark, and (2) whether the complainant owns the trademark or otherwise has sufficient authority from the trademark owner to pursue the complaint.
This proceeding involves an alleged common law trademark embodying the name of a deceased artist, “Laura Branigan”. Numerous decisions under the Policy have addressed the factors that should be assessed in determining whether common law trademark rights in the name of an artist should be recognized. See discussion and references in Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073, including reference to Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of names in the Internet Domain Name System (September 3, 2001/http://wipo2.wipo.int). Complainant has made a prima facie showing that Laura Branigan, the individual artist, prior to her death established common law trademark rights in her name based on a successful recording career. Respondent has not disputed that Laura Branigan, as an individual, acquired such common law trademark rights. The Panel assumes, without needing to decide, that Laura Branigan as an individual artist acquired common law trademark rights in her name prior to her death.
Complainant here asserts that it is a partnership owning rights to the “Laura Branigan” common law trademark.
The trademark is not registered and Complainant therefore enjoys no presumption of rights in the mark. It must satisfy the affirmative burden of proving that it has such rights. See The Church in Houston v. Jim Moran, Light of Truth Ministries, WIPO Case No. D2001-0683.
In the United States, determinations regarding the distribution of property owned by a person at the time of his or her death can be made in a number of ways, depending upon which state has jurisdiction over the decedent’s estate.1 The determination may be made by an executor appointed in accordance with a testamentary instrument, typically a will, or may be made by an administrator appointed by a probate court. Depending upon the state jurisdiction and the circumstances (including the value of the estate), the appointment of an executor, or a determination by an executor or administrator, particularly if contested by potential beneficiaries, may be confirmed by a probate court. Depending on the jurisdiction and circumstances, the disposition of the estate may require confirmation by a probate court. If there is no testamentary instrument, state law will make provision for how the assets of the estate are to be distributed, including by distribution among familial beneficiaries (this in accordance with the state’s intestate succession laws). Intestate succession laws usually include children, parents and siblings among beneficiaries. Determining which state has jurisdiction over a decedent’s estate can be a complex matter.
An individual may arrange his or her affairs so as to avoid probate, such as by establishing joint ownership in property while living, so that surviving joint owners may take over the interests of the decedent.
In this proceeding, Complainant initially referred to several letters by which Laura Branigan authorized Kathy and Vincent Golik to pursue claims against Respondent as the basis for rights in the common law “Laura Branigan” trademark. Subsequent to challenge by Respondent, Complainant submitted the Artist Agreement as the basis for establishing rights in the common law “Laura Branigan” trademark.
By doing so, Complainant invited the Panel to make a decision concerning whether Laura Branigan intended to assign and transfer rights in her common law trademark to a partnership that would survive her death. The Panel reviewed the Artist Agreement following its submission by Complainant and identified a number of elements that, on their face, raised difficulties in interpretation and application.
First, the Artist Agreement is drafted (in paragraph 1(a)) as a five-year renewable contract, with renewals occurring automatically in the absence of prior notification of intent to terminate from a party. However, each party also is permitted to terminate on an annual basis should certain performance targets not be met (in paragraph 1(b)). The provisions relating to rights of Laura Branigan in a trademark are couched in alternative language of license, assignment, ownership and transfer. It is, in the Panel’s view, an unusual arrangement for an artist entering into a five-year renewable management contract to fully divest herself of ownership of rights in her own name in perpetuity by an assignment and transfer of that name. The partnership agreement – if given the benefit of the doubt in establishing a partnership – does not indicate what would happen to the trademark in the event of termination, except by reason of death of the partners. The finding of a partnership requires resolving doubt because the agreement most commonly refers to “I” for Laura Branigan, and “you” as Kathy Golik, as in the creation of a management or agency agreement (and the Artist Agreement is, in fact, headed as “Artist-Manager-Agency Agreement Management and Production Contract”, and not as a partnership agreement) with references to the creation of a “partnership” appearing episodically.
Complainant states that the Artist Agreement was drafted by Laura Branigan. If this is the case, it is not clear that the artist appreciated the distinction between a license of her name and its complete assignment and transfer, as these terms appear inconsistently in various parts of the contract. A license or temporary authority granted in connection with a personal management agreement, on one hand, and an assignment and transfer of a trademark, on the other, have substantially different legal effects.
Second, the Artist Agreement in paragraph 1(c) makes provision for “extending” rights in her trademark upon her death, while at the same time stating that those rights have been transferred “in perpetuity” during her life. Yet this particular paragraph in which rights are transferred in perpetuity and extended in the event of death expressly permits amendment or removal by the parties on one month’s notice. What was intended? Might someone who has purported to immediately and irrevocably transfer her rights change that disposition ex post facto?
Moreover, the provision on testamentary extension specifically provides that it “shall not be affected in any way by any other Agreement, decision, or action made or taken by any family member, executor, executrix, or Court, so that my career legacy may remain stable and active”. It is doubtful as a matter of public policy whether private parties can negate the powers of courts by contract.
In its Administrative Order No. 3, the Panel raised concern about provisions of the contract and indicated that it would be disinclined to give effect to the Artist Agreement absent some evidence of approval of its terms as a testamentary instrument by the executor of the estate, a probate court or some other governmental authority. In response to the Administrative Order, Complainant indicated that there was no will or other testamentary instrument appointing an executor for the estate, and submitted a probate search report from the clerk of the Suffolk County New York Surrogate’s Court indicating no record of probate for Laura Branigan. In addition, Complainant indicated that there are no potential beneficiaries who take an interest in the decedent’s estate. At the same time, it made reference to siblings of the decedent.
In submitting its response to Administrative Order No. 3, Complainant argued that the Panel was taking an overly technical view of apparent inconsistencies in the contract. It suggested that the Panel should instead view it as a whole. Complainant also argued that the Panel should not take an interest in questions such as whether an executor was appointed, or whether the contract was reviewed by a government authority.
The Panel appreciates that a broad view of the Artist Agreement could be taken and that a finder of fact could ask itself, what was the true intent of the deceased in signing this document? If the Panel concluded that the true intent was to assign and transfer rights in her common law trademark to Complainant, the Panel could determine that Complainant has rights in the trademark. But, the Panel is unwilling to engage in this exercise of determining the true intent of the decedent in light of a less than clear contract. The Panel would need to determine how the law of the State of New York should apply to the contract (assuming that choice of law would dictate application of New York law), and what evidence of the intent of the deceased would be relevant. The Panel would need to consider whether it was necessary to seek the views of any beneficiaries or potential beneficiaries of the estate who might take an interest in the determination. Even assuming that the Panel could engage in some more limited form of examination that would establish the intent of the decedent (and exclude other interests), it does not believe that this is the role that panelists in proceedings under the Policy are intended to play. The assessment of a complex, internally inconsistent and confusing “partnership agreement”, or management agreement, to establish the genuine intent of the parties (in a testamentary context) is a role better suited to a civil court or other government authority. None of the Panel’s above observations is in any way intended to influence any such determination.
In The Estate of Marlon Brando v. WhoisGuard c/o WhoisGuard Protected, NAF Case No. FA0506000503817, the panel declined to determine whether a decedent had made an inter vivos transfer of a domain name for lack of jurisdiction under the Policy. The instant proceeding involves a broader issue of property ownership, that is, ownership of rights in the trademark that underlies the claim to rights in the disputed domain name. There is even more reason here for a panelist to exercise caution about assessing a complex legal and factual matter involving rights in an estate.
The Panel has considered that it might leave aside the question of “ownership” of the common law trademark, and rely on the fact that before her death, the decedent “Laura Branigan” authorized Complainant to initiate a complaint against Respondent. This would put Complainant in the position of a licensee of a trademark that had been authorized to act in a proceeding under the Policy on behalf of the licensor. However, whatever rights as licensee Complainant may have are defined by the Artist Agreement, and the Panel is not prepared to find alternative interpretations of that contract for purposes of giving effect to whatever the true intent of the decedent may be. Because a finding in favor of Complainant would result in transfer of the disputed domain name to it, it should, subsequent to the death of the artist, have a definable right to receive and hold registration of the name.
Because Complainant has not established rights in a trademark, the Panel is dismissing its Complaint without considering the other elements necessary to establish abusive domain name registration and use under the Policy. See Backstreet Boys Productions, Inc. v. John Zuccarini, Cupcakeparty, Cupcake Real Video, Cupcake-Show, and Cupcakes-First Patrol, WIPO Case No. D2000-1619, and The Church in Houston v. Jim Moran, Light of Truth Ministries, WIPO Case No. D2001-0683, Thelonious S. Monk v. The Holding Company, WIPO Case No. D2003-0828, and The Estate of Marlon Brando v. WhoisGuard c/o WhoisGuard Protected, NAF Case No. FA0506000503817. In doing so, the Panel is making no determination, express or implied, regarding other elements of the Policy.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Date: February 6, 2006
1 A general description of the legal processes involved in distribution of a decedent’s estate can be found at CCH Financial Planning Toolkit, Estate Planning, at “http://www.finance.cch.com/text/c50s00d010.asp”, including references to the State of New York rules on intestate succession, at “http://www.finance.cch.com/pops/c50s10d190_NY.asp”, visited February 4, 2006. The full text of the laws of the State of New York concerning estates, powers and trusts can be found at http://public.leginfo.state.ny.us/menugetf.cgi?COMMONQUERY=LAWS.