Complainant is Dr. Billy Taylor, New York, New York, United States of America, represented by Cowan, Liebowitz & Latman, PC, United States.
Respondent is Phil Maher, Denver, Colorado, United States.
The disputed domain name at issue, <billytaylorjazz.com>, is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2009. On February 5, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On February 5, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the 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” or “UDRP”), 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 February 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 9, 2009.
The Center appointed M. Scott Donahey as the sole panelist in this matter on March 18, 2009. 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.
Complainant is a world famous jazz musician. In addition to being a famous jazz pianist, Complainant is a composer, teacher, lecturer, television and radio personality, recording artist, and author. Complainant has been playing the piano professionally since 1944 and has performed with many of the greats of jazz, including Charlie Parker, Dizzy Gillespie, and Miles Davis. Since the 1950's he has been leading his own jazz trios and has been performing with many of the most influential jazz musicians of the twentieth century. The recognition and the awards that Complainant has received are too numerous to recite. Complainant obtained his Masters and Doctorate in Music Education from the University of Massachusetts at Amherst, and since that time has been known as Dr. Billy Taylor. Complaint, Annex 3.
Complainant owns the domain name <billytaylorjazz.net> which resolves to a web site at which information about Complainant's illustrious career is available and on which Complainant offers for sale numerous of his recordings. Complaint, Annex 3.
Respondent registered the domain name at issue on November 30, 2000. Respondent uses the domain name at issue to link to a web site displaying a banner stating “BuyThisProductNow” at which are offered for sale recordings of Complainant and those of other artists. Complaint, Annex 5.
Complainant contends that the continuous and longtime use by Complainant of his name to promote his live performances, his recordings, his television and radio presentations and productions, and his books has given rise to common law trademark rights in his name, that Respondent does not use the domain name as his name, that he has not been authorized by Complainant to use Complainant's name and trademark in any fashion, and that Respondent has no rights or legitimate interests in respect of the domain name at issue. Finally, Complainant contends that Respondent had registered and is using the domain name at issue in bad faith.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
ii) that the respondent has no legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Complainant has been using his name in connection with the promotion and performances of his services and recordings for more than six decades and is known throughout the world by his name. While it might be said that “Billy Taylor” is a common English surname, it cannot be said that “Dr. Billy Taylor” is at all common. Complainant has established common law trademark rights in the marks BILLY TAYLOR and DR. BILLY TAYLOR. Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, decided May 29, 2000 (actress Julia Roberts established common law trademark rights in JULIA ROBERTS for acting services); Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874 (author Michael Crichton established common law trademark rights in MICHAEL CRICHTON for services as author, director, and publisher).
The domain name at issue incorporates Complainant's mark completely and adds the common term “jazz.” Panels have found that such incorporation and addition means that that the domain name at issue is identical or confusingly similar to the mark. Julia Fiona Roberts v. Russell Boyd, supra; Steve Rattner v. BuyThisDomainName, WIPO Case No. D2000-0402, decided July 3, 2000.
Accordingly the Panel finds that the domain name at issue is identical or confusingly similar to a mark in which Complainant has rights.
The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of a domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
Respondent is using the domain name to link to a web site displaying a banner stating “BuyThisProductNow”. On this web site musical recordings are offered. Various recordings of Complainant are featured, although recordings by other artists are also offered for sale. Indeed, the fact that Complainant's recordings are featured show that Respondent was aware of Complainant and that Respondent intended to profit from the good will which Complainant had established in his mark over many decades. Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598 (Respondent's use of celebrity's name in a domain name that linked to another web site offering for sale products about that celebrity was bad faith and an intentional attempt to attract visitors to the web site for Respondent's commercial gain). The Panel finds that Respondent has registered and is using the domain name at issue 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, <billytaylorjazz.com>, be transferred to the Complainant.
M. Scott Donahey
Dated: March 27, 2009