Generic Top Level Domain Name (gTLD) Decisions

The Complainant is George Harrison, London, England ("Complainant") represented by Howard Weller, of RubinBaum, LLP, New York, NY, USA. The Respondent is Mark Elsis LOVEARTH.net, Siesta Key, FL, USA ("Respondent").

The domain names at issue are <george-harrison.com>, <george-harrison.org>, <george-harrison.net>, <georgeharrison.com>, <georgeharrison.org>, <georgeharrison.net>, registered with Internet Domain Registrars.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 19, 2001; the Forum received a hard copy of the Complaint on April 20, 2001.

On Apr 20, 2001, Internet Domain Registrars confirmed by e-mail to the Forum that the domain names <george-harrison.com>, <george-harrison.org>, <george-harrison.net>, <georgeharrison.com>, <georgeharrison.org>, <georgeharrison.net> are registered with Internet Domain Registrars and that the Respondent is the current registrant of the names. Internet Domain Registrars has verified that Respondent is bound by the Internet Domain Registrars registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 14, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@george-harrison.com, postmaster@george-harrison.org, postmaster@george-harrison.net, postmaster@georgeharrison.com, postmaster@georgeharrison.org, postmaster@georgeharrison.net by e-mail.

A timely response was received and determined to be complete on May 14, 2001.

On May 22, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Complainant requests that the domain names be transferred from Respondent to Complainant.

A. Complainant

Complainant, George Harrison, alleges common law trademark rights in his name and that his name has acquired secondary meaning "worthy of the broadest scope of protection." He further alleges that the domain names at issue, <george-harrison.com>, <george-harrison.org>, <george-harrison.net>, <georgeharrison.com>, <georgeharrison.org>, <georgeharrison.net>, are identical or confusingly similar to the trademark in which he has rights. Complainant says that Respondent has no rights or legitimate interests in respect of the domain names at issue and that they were registered and are being used in bad faith.

B. Respondent

Respondent does not deny that the domain names at issue are identical or confusingly similar to a trademark in which the Complainant has rights. However, Respondent claims that he does have rights and legitimate interests in respect of these domain names, in that he is making a legitimate noncommercial and fair use of the domain name at issue without intent for commercial gain or to tarnish the trademark.

Finally, Respondent denies any bad faith in the course of registration or use of the domain names at issue.

C. Additional Submissions

Complainant has timely submitted an Additional Written Statement in which he challenges Respondent’s interpretations of the case of Bruce Springsteen v. Jeff Burgar, D2000-1532 (WIPO Jan. 25, 2001) and provides examples of the alleged unauthorized commercial uses of the domain names at issue.

Complainant, George Harrison, enjoys an exceedingly valuable reputation and goodwill of enormous and inestimable value as a result of (a) the extensive sales and advertising of numerous musical compositions and recordings bearing his name; (b) the fame and acclaim surrounding the musical services of The Beatles and of Mr. Harrison individually and the popularity of the motion pictures in which he has appeared; (c) the widespread public recognition of the name GEORGE HARRISON and the association of that name with Complainant; and (d) the high quality and nature of George Harrison's musical compositions, musical recordings and musical services. This goodwill, which has come to be associated with the unique and distinctive features of Mr. Harrison and his work, has given great monetary value to his exclusive right to exploit the name and trademark, GEORGE HARRISON. This common law trademark has undoubtedly acquired a secondary meaning in the mind of the public and is a strong trademark worthy of protection. Complainant’s name and trademark is distinctive and famous and is widely recognized throughout the United States and the world by millions of music fans. From the allegations of the Complainant and the admissions of the Respondent, it appears that the Respondent has registered the domain names at issue here in order to trade off the considerable good will associated with Complainant’s trademark name.

Respondent has maintained a website at <lovearth.net>, which is operated by Mark Elsis, an individual heavily into the environmentalist movement and the sale of domain names for profit. Respondent's <celebrity-websites.com> home page purports to possess a database of thousands of domain names for sale, including the domain names at issue here as well as the names of numerous other celebrities.

The purported purpose behind Elsis' registrations of George Harrison's name, as well as the registration of hundreds of other celebrity names owned by Elsis, is explained on his <celebrity-websites.com> home page. On page one of the <celebrity-websites.com> home page, Elsis writes that

On the following page, Elsis writes a letter addressed to "Dear Celebrity" which states, in relevant part, that LOVEARTH.net has registered the many celebrity names

Elsis and LOVEARTH.net are admittedly "trying to get to the top people throughout the world" in order to urge them to read Elsis' manifesto on the destruction of the rainforests in exchange for the transfer of their domain names. In this regard, Elsis has attempted to obtain meetings and other forms of assurance from Complainant regarding support for Respondent's environmental causes in exchange for the transfer of all of his George Harrison domain names.

Many of the other "George Harrison" unauthorized sites controlled by Elsis, when accessed, lead to the same "George Harrison" homepage. This unauthorized site attempts to accomplish Elsis' objective of promoting his environmental causes by inundating the unsuspecting George Harrison fan with a variety of environmental literature totally unrelated to George Harrison. Thus, Elsis' "George Harrison" homepage contains numerous links that redirect the public to various of the Respondent's environmental web sites, including the celebrity web site link discussed above; <overpopulation.net>; <humane.net>; and <rainforest.net> which contains Elsis' essay on the destruction of the rainforests which he urges (and urges the public to urge) Complainant to read. The "George Harrison" home page also diverts the public to Elsis' <gods-domains.com> home page -- a site devoted to the sale of domain names owned by Elsis. That site claims to have "[t]housands of the Highest Quality Domain Names for Sale."

In addition, when fans access the link to "Photos of George Harrison" on the left column of Elsis' unauthorized homepage screen, they are connected to Respondent's <george-harrison.org> homepage which consists of a series of photographs of George Harrison with the LOVEARTH logo in the bottom right corner of the screen. When the LOVEARTH logo is clicked, the public is diverted to the LOVEARTH.net homepage. Until recently, users who accessed the link of "Photos of George Harrison" were led to a letter to George Harrison written by Elsis. That letter admits that numerous other GEORGE HARRISON domain names have been acquired by Elsis. In addition, Elsis urges Complainant to read about "Project Internet and consider our proposal." After discussing his Project Internet, Elsis then requests that Complainant "[c]ontribute what you think is just, to create this loving sustainable Earth . . . ." (emphasis in original).

Respondent claims that it maintains legitimate "fans sites" which have freedom of speech rights. It further argues that celebrities, such as Complainant, are merely requested to read the environmental material prior to obtaining a transfer of domain names incorporating their personal names. This Panel finds that the domain names at issue have essentially been held hostage by Respondent to coerce Complainant to take a position of sponsorship of the particular environmental movement espoused by Elsis. The Complainant may or may not share the precise environmental views of Respondent, but the registration and use of the domain names at issue, and the subsequent refusal to transfer those domain names by Respondent without conditions is clearly not a legitimate use and constitutes bad faith.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "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 requires that the Complainant must prove each of the following three elements to obtain an order 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.

Complainant’s name has become a strong trademark worthy of protection. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name "Julia Roberts" has sufficient secondary association with the Complainant that common law trademark rights exist); Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER); see also Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the complaint in the first place).

Complainant contends that the domain names at issue, <george-harrison.com>, <george-harrison.org>, <george-harrison.net>, <georgeharrison.com>, <georgeharrison.org>, <georgeharrison.net>, are identical or certainly confusingly similar to Complainant’s name and famous trademark. See Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (finding that "[S]erious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal.").

The domain names at issue are so confusingly similar that a reasonable Internet user would assume that they is somehow associated with Complainant’s well-established common law mark. See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name confusingly similar "so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement"); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Respondent is not commonly known by the disputed domain names, nor is Respondent licensed or otherwise authorized to use the Complainant’s famous mark. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from Complainant to use the trademarked name); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names "Nokia" and/or "wwwNokia").

Furthermore, Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without misleadingly diverting consumers to its web site or tarnishing Complainant’s famous mark. See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own web site by using Complainant’s trademarks); see also North Coast Medical, Inc. v Allegro Medical, FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing web site).

Finally, Respondent’s various uses of Complainant’s mark as fan sites does not substantiate Respondent’s rights or legitimate interests. See Marino v. Video Images Prod., D2000-0598 (WIPO Aug. 2, 2000) (stating, "[I]n fact, in light of the uniqueness of the name <danmarino.com>, which is virtually identical to the Complainant’s personal name and common law trademark, it would be extremely difficult to foresee any justifiable use that the Respondent could claim. On the contrary, selecting this name gives rise to the impression of an association with the Complainant which is not based in fact."); see also Kasparov v. American Computer Co., FA 94644 (Nat. Arb. Forum May 30, 2000) (finding no legitimate rights and interests when Respondent used Complainant's name as a portal to a web site which, without permission, associated the Complainant as an endorser of Respondent's causes).

I find that Paragraph 4(a)(ii) of the Policy has been satisfied by Complainant.

Respondent has shown bad faith by offering to transfer most of the domain names involving Complainant, and then withholding some of them. ("That’s one for you, nineteen for me…." Taxman, George Harrison, 1966.) See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy).

Respondent registered and uses the domain names in bad faith because Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and the activities therein. See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a web site that contains information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, where a visitor to the web site may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site).

Respondent has shown further bad faith in the course of registration, because the registration of the multiple domain names similar to Complainant’s trademark establishes a pattern of conduct preventing the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. See Time Warner Inc. and EMI Group PLC v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that Respondent registered and used the domain names <emiwarnermusic.com>, <emiwarner.org>, <emiwarner.net>, <warneremi.net> and <warneremi.org> in bad faith when Respondent registered the domain names immediately after an announced merger between Time Warner Inc. and EMI Group. Respondent had also registered 15 other domain names belonging to Complainant, evidencing a pattern of preventative conduct).

Without using a complete citation, Respondent makes repeated references to the "BruceSpringsteen.com" case, which is presumably Bruce Springsteen v. Jeff Burgar, D2000-1532 (WIPO Jan. 25, 2001). Although, as noted by Complainant in his Additional Written Statement, Springsteen can be distinguished from the instant case on its facts, in Springsteen, a divided panel made it clear that its majority decision was contrary to the Roberts and Marino decisions cited above and to the seminal common law trademark decision of Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000). This Panel is persuaded (as was the vigorous dissenting panelist in Springsteen) that the greater weight of authority and the better rule is to the effect that "fan sites," such as Respondent claims to maintain, do cause confusion as to their source, sponsorship, affiliation, or endorsement vis-à-vis the celebrity. Further, the nexus between Respondent’s domain name sales business and its environmental pursuits is close enough to satisfy the commercial gain provision of Paragraph 4(b)(iv) of the Policy. See Jews for Jesus v. Brodsky, 993 F.Supp 282, 309 (D.N.J. 1998) (holding that to be considered commercial, it is not necessary for a website to make a profit).

I find that Paragraph 4(a)(iii) of the Policy has been satisfied by Complainant.

It is the Decision of this Panel that the domain names, <george-harrison.com>, <george-harrison.org>, <george-harrison.net>, <georgeharrison.com>, <georgeharrison.org>, <georgeharrison.net>, be transferred from Respondent to Complainant.