WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Joseph Brandstetter v. Attn: Fenderrhodes.Com / James Garfield
Case No. D2007-0628
1. The Parties
Complainant is Joseph Brandstetter, Sherman Oaks, California, United States of America, represented by Donald S. Grier, Prescott, Arizona, United States of America.
Respondent is Attn: Fenderrhodes.Com / James Garfield, c/o Network Solutions, Herndon, Virginia, United States of America.
2. The Domain Names and Registrar
The disputed domain names <fenderrhodes.com> and <fenderrhodes.org> are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2007. On April 27, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On April 27, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that “ Attn: Fenderrhodes.Com” is listed as the registrant of the disputed domain name <fenderrhodes.com>, and that “James Garfiels” is listed as the registrant of the disputed domain name <fenderrhodes.org>, and providing identical contact details for both. In response to notifications by the Center that the Complaint was administratively deficient, Complainant filed amendments to the Complaint on May 3 and May 11, 2007.
The Center verified that the Complaint together with the amendments to the Complaint1 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 May 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2007. Respondent did not submit any response. The Center accordingly notified Respondent’s default on June 11, 2007.2
The Center appointed Richard G. Lyon as the sole panelist in this matter on June 26, 2007. The Panel finds that it was properly constituted and has jurisdiction over this matter. The Panel has submitted his 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 Panel finds the following facts to be established based upon information in the Complaint and the Panel’s examination of the website maintained by Respondent at the disputed domain names.
Complainant owns eighteen registered trademarks or trademark applications, in fourteen countries including the United States of America, for the name “Rhodes,” for musical instruments and related goods and services. Its first registered United States trademark was filed for 1997 and issued in 1999.
Respondent registered the disputed domain names in February 2000 and April 2002. At the present time each resolves to a fan site at which Respondent includes detailed information about Rhodes and Fender Rhodes3 musical instruments, mostly electric pianos. The site includes historical information about Fender and Rhodes musical instruments, a reader forum with numerous topics, product reviews, a thumbnail history of Fender and Rhodes products, a list of models of certain Fender and Rhodes products, pictures of vintage instruments, and a “service” tab. This last includes copies of service manuals and user guides for these products, a list of locations at which a user may obtain service and repairs, with links to the service institutions’ websites, user comments on some of the service providers, and similar information. Respondent’s website includes, as its entire first page, the following information:
WELCOME TO FENDERRHODES.COM!
If you are looking for information about vintage Fender Rhodes Pianos (1965 - 1984), visit The Super Site [hyperlink]. This is a fan site devoted to owners of the original Rhodes pianos from the Fender/CBS era, including both historical information and more importantly, technotes and a discussion forum about maintaining and rebuilding a Fender Rhodes, as well as finding sources for parts and repairs.
If you are looking for information on the Rhodes Mark 7 (a.k.a. the “New Rhodes” shown at NAMM in 2007), visit the official Rhodes Music Corporation’s site at RhodesPiano.com. [hyperlink] Their site is devoted exclusively to the New Rhodes project and is the place to go if you are looking to purchase one of the new pianos.
The Fender and Rhodes brand names and logos are trademarks of their respective owners and are not affiliated with or endorsed by this website. The Super Site © 1996 - 2007 James Garfield & Frederik Adlers. [hyperlink].
Respondent’s site is the first linked site, called “The Super Site.” The home page of that site has a further disclaimer at the bottom: “The Fender and Rhodes brand names and logos are trademarks of their respective owners and are not affiliated with or endorsed by this website.” At no place on this website does Respondent offer any product for sale, although one forum includes postings of products for sale by third parties.
According to the “wayback machine” at “www.archive.org”, this website was first established in late 2000, and has been in continuous use since. Respondent currently includes a statement on its home page that “The Super Site Celebrates Its 10th Anniversary (11/28/06).”
5. Parties’ Contentions
Complainant alleges as follows:
Identical or confusingly similar to rights to a mark in which Complainant has right.
The disputed domain names both incorporate the phrase “Rhodes” which is identical to Complainant’s many trademarks. The disputed domain names are confusingly similar to the Rhodes mark because the addition of the word “Fender,” a trademark name by which one of Complainant’s predecessors sold its products does not obviate but in fact enhances confusion with the Rhodes name.
Rights or Legitimate Interests
Respondent lacks rights or legitimate interests in the disputed domain name. It has not been known by the disputed domain name; it has used the disputed domain names “for musical information and services which confuses Complainant’s customers and accounts.” Respondent has included materials libeling Complainant on its website and refused to transfer the disputed domain names to Complainant after receiving cease-and-desist letters from Complainant. This conduct has tarnished Complainant’s product lines and marks.
Respondent was aware of Complainant’s marks when it registered the disputed domain names, as evidenced by his use of the disputed domain names to provide information about Complainant’s products. Libelous content and a “clear attempt to cybersquat and financially gain” on Complainant’s marks are clear evidence of registration in use in bad faith. Respondent offered to sell one of the disputed domain names for a price “in excess of $75,000 US.”
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Complainant must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:
(i) Respondent’s Domain Names are 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 respect to the Domain Names; and
(iii) Respondent’s Domain Names have been registered and are being used in bad faith.
Complainant bears the burden of proof on each of these elements. Unlike a civil action in the United States of America, Respondent’s default does not automatically result in admission of the matters pleaded in the Complaint or a decision for Complainant.
Because Complainant offers no proof to support the charging allegations of its Complaint that are necessary for Panel findings meeting the requirements of the latter two of these Policy elements, the Complaint must be denied.
Complainant has submitted no evidence at all beyond the identification, by registration number, of its Rhodes trademarks. Its charges of a proposal to sell the disputed domain name to Complainant, libel, cease-and-desist letters,4 and Respondent’s competing with Complainant have no proof to support them. Allegations of counsel in and of themselves have no evidentiary value; furthermore, they are allegations of legal conclusions, not of facts which if proven would enable the Panel to make the necessary legal conclusions.
The Panel’s examination of Respondent’s website reveals what appears to be a “fan site” with no direct commercial activity by Respondent. While it is possible, that the individuals posting musical instruments for sale and the service providers listed as a source for maintenance and repairs, pay a fee to Respondent for listing on the website, no evidence or convincing argument has been submitted by the Complainant. On its face, the website at the disputed domain name appears to be a far cry from the active commercial activity used to take fan sites out of the safe harbor of paragraph 4(b)(iii) of the Policy. Adhering to his earlier decisions,5 the undersigned Panel adopts View 1 of the WIPO Overview, that “An active and clearly non-commercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademark. The site should be non-commercial and clearly distinctive from any official site.”
That approach is particularly appropriate in this proceeding, given the unmistakable disclaimer Respondent uses prominently on its first page, before an Internet user who enters either of the disputed domain names into his or her browser even enters the website. Such a disclaimer goes a long way – probably as far as possible – to avoid any initial interest confusion on the part of the user.6
There is no apparent competition between Complainant and Respondent. Any incidental commercial activity does not in the circumstances alter this conclusion. See Estate of Francis Newton Souza v. ZWYX.org Ltd., WIPO Case No. D2007-0221; Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551.
One further reason for applying View 1 to this proceeding is that Respondent has used the disputed domain names continuously since at least 2000. So far as the record is concerned, he was notified of this dispute no earlier than a few weeks ago. While not providing an estoppel defense similar to that which may be available under United States of America trademark law, this use may possibly bring Respondent within paragraph 4(c)(ii) of the Policy7 by indicating that he has been commonly known by this name for seven years or more. See, e.g., Primus Telecommunications Group, Inc., Primus Telecommunications (Australia) Pty Ltd v. SullivanFamilyTrust, WIPO Case No. D2006-1165.
However this may be, Complainant has failed to establish with competent evidence that Respondent lacks rights or legitimate interests in the disputed domain name, or that he registered or used the disputed domain name in bad faith. As the requirements of paragraph 4(a) of the Policy are conjunctive, the Panel need not address paragraph 4(a)(i).
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: July 10, 2007
1 All references in this decision to the “Complaint” are to the Complaint as amended.
2 Paragraph 2(a) of the Rules requires that the Center employ “reasonably available means calculated to achieve actual notice to Respondent”. The copy of the Complaint sent by the Center to Respondent at his registered address was duly delivered by post courier. Respondent thus was duly given notice of this proceeding and “given a fair opportunity to present [his] case”. See Rules, paragraph 10(b).
3 Complainant alleges, without any evidentiary support, that “Fender” and “Fenderrhodes” were previously used by Complainant or its predecessor companies for its musical instruments. The information on Respondent’s website confirms this.
4 The Complaint states that a cease-and-desist letter is annexed, but no such document is included.
5 Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551; Freddy Adu v. Frank Fushille, WIPO Case No. D2004-0682.
6 Complainant alleges that Respondent changed the content of its site after receiving Complainant’s cease-and-desist letters. Perhaps the disclaimer came late in the day. As with Complainant’s other allegations (including those of cease-and-desist letters), however, Complainant supplies no evidence to support his counsel’s allegations.
7 “. . . Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.”