Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Yanni Management, Inc., West Palm Beach, FL, USA ("Complainant"). The Respondent is Progressive Industries, Reading, PA, USA ("Respondent").

The domain name at issue is "YANNI.COM", registered with Network Solutions Inc ("NSI").

The Honorable Paul A. Dorf (ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/23/2000; The Forum received a hard copy of the Complaint on 06/23/2000.

On 06/27/2000, NSI confirmed by e-mail to The Forum that the domain name "YANNI.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/28/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/18/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On July 21, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed The Honorable Paul A. Dorf (Ret.) as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant is the owner of the trademark YANNI for various entertainment services and promotional items, and has registered his mark in numerous International Classes with the United States Patent and Trademark Office, as reflected in the Complaint.

The Complainant is professionally known as Yanni, and is an international musical superstar. The Complainant first used the name Yanni in commerce in 1979 and has used the YANNI mark continuously since that time. The Complainant has built up substantial good will and a vast fan base under this mark. Also, the mark is extensively used in the marketing and sale of consumer products related to the music and image of the Complainant through several websites approved by him. The Complainant also promotes his merchandise under the vanity telephone number 1-800-Yanni-17.

The Complainant learned of the registration of the domain when contacted by Respondent through an intermediary at Virgin Records in an attempt to sell the domain name to the Complainant and/or Virgin Records.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The domain name Yanni.com is almost identical to the Complainant’s trademark YANNI, but for the .com. The Complainant holds several registered trademarks for this name, and is known as an international superstar by this name.

However, in reviewing the Complaint, it is noted that the arguments regarding "similarity" as used in the Trademark Manual of Examining Procedure (TMEP), I need not find that there is a likelihood of confusion using this standard. The TMEP similarity standard would not be dispositive even in trademark infringement litigation in Federal District Court, but instead is used solely for purposes of evaluating registerability of trademark applications in the USPTO.

The Respondent offers no proof that he had any rights or legitimate interests in the domain name. It was not used to offer goods or services, and the Respondent has never been commonly known as "yanni.com" nor is the Respondent making a legitimate non-commercial or fair use of the domain name.

The Respondent offered to sell the domain name to the Complainant and/or Virgin Records, Complainant’s recording label, for the sum of $14,000.00, and warned the Complainant that any legal action may hold up the domain name for 6 to 16 months. It would appear that the Respondent’s intent was to sell the domain name to the Complainant for a sum over and above the out-of-pocket costs for registering same.

Secondly, The use of the domain name attracts a vast number of Yanni fans, thereby making the site a prime location for the generation of free advertising for Respondent and for attracting unknowing Yanni fans to Respondent’s own company. The Respondent has three ads on the web site, two of these being banner advertisements for the Respondent’s own company. The third advertisement is one which Respondent derives free advertising from a third party when unknowing Yanni fans click on the advertisement.

On the issue of bad faith, I find the Respondent has acted in bad faith in registering and effectively "squatting on" the domain name "Yanni.com." The facts are persuasive on this count. However, I do not reach, nor are I required to reach, any decision on issues relating to dilution or any violation of the Anti-Cybersquatting Consumer Protection Act. Instead, I merely need to decide whether Respondent’s behavior supports the conclusion the Respondent registered the domain name and otherwise acted in bad faith, thus supporting this element in Complainant’s claim.

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "yanni.com" be transferred from the Respondent to the Complainant.

The Honorable Paul A. Dorf, (Ret).
Dated: August 2, 2000