WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dire Straits (Overseas) Limited v. Alberta Hot Rods
Case No. D2007-0778
1. The Parties
Complainant is Dire Straits (Overseas) Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by The Official Community Corporation, Canada.
Respondent is Alberta Hot Rods, High Prairie, Canada.
2. The Domain Name and Registrar
The disputed domain name <direstraits.com>is registered with CORE Internet Council of Registrars.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2007. On May 31, 2007, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain name at issue. On May 31, 2007, CORE Internet Council of Registrars transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on June 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 11, 2007.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on August 3, 2007. 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.
4. Factual Background
The domain name was registered on November 26, 1996.
Complainant claims to be the owner of the intellectual and other property of the musical group “Dire Straits”, referred to in the Complaint as “the Band”. The Band was formed in 1977 and quickly became a highly successful group selling in excess of 100 million albums and winning many music industry awards, including “Grammy” awards in 1985 and 1988.
There is no evidence that either the Band or the Complainant owns any registered trademarks for the words “Dire Straits”.
Complainant asserts that it communicated with Respondent by email on April 13, 2007 and by facsimile on April 19, 2007 seeking the transfer of the domain name. No reply was received to these communications.
There is no direct evidence relating to Respondent, however, Respondent and its principal (Jeff Burger) have been the respondent in many domain name disputes. In one of those cases Tom Cruise v Operations Carter/Alberta Hot Rods, WIPO Case No. D2006-0560, he, Burger, gave sworn evidence that he is president of Respondent.
The domain name leads to a portal site on which there appear several sponsored links to commercial sites offering goods and services relating to the music industry as well as to other goods and services. Included among the links are song titles and names associated with the Band. Since shortly after Complainant’s email and facsimile communications to Respondent in April 2007, a disclaimer has appeared on the domain name homepage stating that:
“This is an UNOFFICIAL Dire Straits fan site. This site is not affiliated or endorsed in any way by Dire Straits or any other party”.
5. Parties’ Contentions
(a) Identical or Confusingly Similar Trademark.
Complainant contends, and supports by documentary evidence, that the Band is famous and is identified universally by reference to its name and common law trademark DIRE STRAITS, and that the disputed domain name is identical or confusingly similar to it. Complainant exhibits many examples of advertisements and “Google” entries of its music albums and other items offered by reference to its DIRE STRAITS mark. Complainant contends that it has therefore established strong common law trademark rights in DIRE STRAITS and that the domain name is identical to it. Complainant cites well established authority that the addition of the domain designation “.com” does nothing to distinguish the domain name from its mark.
(b) Rights or legitimate interests
Complainant asserts that it has not given any license or authority to Respondent to use its trademark in the domain name. Complainant asserts that Respondent is not known as “Dire Straits” and that its use is neither legitimate, non-commercial nor fair. According to Complainant, Respondent’s site is not a fan site and the references on the site to the Band, its songs or its members are mere window dressing. Complainant contends that the sole purpose of the domain name is to attract persons to the site for redirection to the sponsored links to the commercial advantage of the Respondent. Thus, Respondent’s use of the domain name is not in connection with a bona fide offering of goods or services by reference to the domain name.
(c) Use and Registration in Bad Faith
Complainant points to many prior panel decisions involving celebrities to show that Respondent or persons associated with it have established a pattern of registering a stockpile of domain names incorporating the names of celebrities including, Celine Dion, Jeffrey Archer, Michael Crichton, Julie Brown, Kevin Spacey, Bruce Springstein, Larry King, Pamela Anderson and others. In all of these cases, panels have found registration and use in bad faith by Respondent or its associates.
In this, as in prior cases, Respondent has used a famous name or mark to attract Internet users to its website in order that they may be diverted through sponsored links to commercial sites thereby attracting revenue to Respondent.
Complainant does not explain why it took no action until April 2007 to object to a domain name which was first registered to in 1996. Complainant submits, however, that such delay should not prejudice its case. Complainant cites in support the decision in the Tom Cruise case, supra where the unanimous finding of the three member panel was that:
“This Panel does not accept that there is meaningful precedent under the Policy for refusing to enforce trademark rights on the basis of a delay in bringing a claim following use of a disputed domain name. ….Respondent registered a substantial number of celebrity name-based domain names, and over the past several years, it has lost a number of those as a consequence of proceedings under the Policy. There is no evidence that Respondent has altered its behavior as a result of Complainant's delay, or that Respondent has suffered because of it.”
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed in the Complaint, Complainant must establish each of the following grounds:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Although the onus in these proceedings is on Complainant, in cases such as this where Respondent has had the opportunity to contest Complainant's contentions but has failed to do so, the Panel is entitled to draw such inferences as it considers appropriate – see paragraph 14 of the Rules, The Vanguard Group, Inc. v. Lorma Kang, (WIPO Case No. D2002-1064).
A. Identical or Confusingly Similar
Complainant does not hold any trademark registrations. Nevertheless Complainant has shown that the Band is famous world-wide and that it has established a very extensive reputation in the name “Dire Straits”. Further and importantly, it has established that “Dire Straits” is not merely the name of the Band but also the common law trademark under which it offers its services. Complainant is the owner or custodian of the intellectual property of the Band and therefore has rights in the trademark. The domain name differs from the mark only in the addition of the domain designation “.com” which does not alter the identity of the mark in the context of the domain name.
The Panel therefore finds that the domain name is identical to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant asserts that it has not licensed or authorized Respondent to use its mark and there is no reason to think that Respondent may be commonly known by the domain name. Complainant’s evidence clearly demonstrates that Respondent’s use of the domain name is commercial. The question is then whether that use has been in connection with the bona fide offering of its goods or services? It is well established that bad faith adoption and use of the domain name may infect the bona fides of the offering of goods or services with respect to it. Here Complainant has shown that Respondent has repeatedly misappropriated celebrity names in its domain names and has used them illegitimately to attract users to its website. Complainant contends that Respondent’s designation of the website as a fan site is a sham. Inspection of the Respondent’s website pages annexed to the Complaint confirms this contention. In the face of Complainant's prima facie showing, the onus to demonstrate rights or legitimate interests reverts to Respondent. Respondent had the opportunity to rebut Complainant’s evidence and submissions but failed to do so.
The Panel, in the absence of evidence to the contrary, therefore finds that Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
As shown by Complainant’s evidence and the many prior instances cited in prior panel decisions, Respondent has been found to be a serial cybersquatter specializing in the misappropriations of celebrity names and marks. At the time of registration of the domain name in 1996, the Band was, and had been for a number of years, world famous. It is inconceivable that at the time Respondent was not aware of the Band and its rights in the “Dire Straits” name and mark. It proceeded to add the name to its stockpile without regard to those rights.
Respondent’s subsequent use of the domain has demonstrably been to attract users to its website in the belief that the site is associated with the Band, and therefore Complainant. It did so for commercial gain from the diversion of users to its sponsored links.
The length of time which has elapsed between the registration of the domain name and the bringing of the Complaint, in other circumstances, may have been cause for concern. In the light of Respondent’s proven pattern of behavior, however, that delay may partly be excused. The Panel adopts the reasoning of the learned panel in the Tom Cruise case, supra. Respondent has not suffered from the delay and that delay does not negatively impact on Complainant’s right to relief.
The Panel therefore finds that the domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <direstraits.com>, be transferred to Complainant.
Desmond J. Ryan
Dated: August 17, 2007