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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Garth Brooks v Commbine.com, LLC
Claim Number: FA0011000096097
PARTIES
The Complainant is Garth Brooks, USA ("Complainant") represented by Barry Neil Shrum, Gordon, Martin, Jones & Harris, P.A.. The Respondent is Shunit Sarid Commbine.com, LLC d/b/a Garth Brooks unofficial fan club, Magnolia, TX, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "garthbrooks.com", registered with TUCOWS.COM, Inc.
PANELIST
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.
R. Glen Ayers has been selected as the Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on November 20, 2000; The Forum received a hard copy of the Complaint on November 20, 2000.
On November 23, 2000, TUCOWS.COM, Inc. confirmed by e-mail to The Forum that the domain name "garthbrooks.com" is registered with TUCOWS.COM, Inc. and that the Respondent is the current registrant of the name. TUCOWS.COM, Inc. has verified that Respondent is bound by the TUCOWS.COM, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On November 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 19, 2000 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@garthbrooks.com by e-mail.
On December 18, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed R. Glen Ayers as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it originally registered the domain name in question, "garthbrooks.com", in 1998. It then asserts that the domain name registrar did not notify the Complainant of the need to renew the registration, and that Complainant "inadvertently" did not renew the registration. Thereafter, Respondent registered the domain name.
Complainant contends, notwithstanding the ostensible use of the domain name by Respondent as a "fan-site" for the "Garth Brooks", that the Respondent will use the domain name for commercial gain, and in fact that the Respondent does advertise its Internet services by referring to its other businesses on the site. The reference on the site is to "commbine.com". That home page is clearly commercial in nature.
Complainant has, in its contentions, clearly established ownership in the trademark "Garth Brooks". That mark is clearly a mark registered with the United States Patent and Trademark Office.
Complainant asserts that Respondent is a cyber-squatter in the business of buying and selling high profile domain names and that its business plan is to generate revenue from each of its web sites.
Of course, Respondent’s registration of the domain name prevents Complainant from using its own name as a domain name.
B. Respondent
Respondent has responded to the Complainant’s factual assertions on a point by point basis.
The Respondent repeatedly asserts that it makes no commercial use of the domain name and that it is simply operating a "fan-site". Respondent also asserts that it did not know that the "Garth Brooks" name was registered as a trade mark with the U.S. Patent and Trademark Office at the time Respondent registered the domain name.
Throughout the response, Respondent denies that it has registered this domain for commercial gain. It asserts that it no longer is in the business of the brokerage and registration and sale of domain names.
Respondent further asserts that the Complainant made no use of the domain when it held the registration. It also assets that the Complainant never intended to use the site for commercial purposes. Respondent also points out that its "garthbrooks.com" site is not linked to the "commbine.com" site.
Respondent asserts that Complainant is itself acting in bad faith and is attempting to bully Respondent.
Interestingly, Respondent has admitted that Respondent’s initial "garthbrooks.com" site did contain one or more banner ads which were then removed.
FINDINGS
First, it is clear that the domain name registered by the Respondent is identical or confusingly similar to the mark held by the Complainant.
The Respondent is not a licensee of the Complainant and its only possible legitimate interest in the site is that of "fair use". Absent non-commercial "fair-use", Respondent has no rights or legitimate interests in respect of the domain name.
Notwithstanding the Respondent’s contentions to the contrary, the facts, taken as a whole, certainly permit the Panelist, as a finder of fact, to infer that the Respondent is acting in bad faith. As set forth in ¶4(b) of the "Uniform Domain Dispute Resolution Policy", bad faith is evidenced by one or any combination of four (4) factors.
First, at ¶4(b)(i) bad faith can be shown by circumstances indicating that Respondent registered the site for purposes of transferring the site to either the Complainant or a competitor for valuable consideration in excess of the direct out-of-pocket costs. In the alternative, bad faith can be shown, under ¶4(b)(ii) that the registration was done in order to prevent the owner of the mark from using the domain name, so long as the Respondent has engaged in such a pattern of conduct. Under ¶4(b)(iii) bad faith may be demonstrated by a finding that the registration was primarily for the purpose of disrupting a competitor’s business. Finally, at ¶4(b)(iv) bad faith may be found if there is an intentional attempt by the Respondent "to attract, for commercial gain, Internet users" by creating "a likelihood of confusion" with the mark and the by implying an affiliation or endorsement of either the site or a product or service advertised on the site.
The Panelist must find that there is sufficient evidence that the mark was either registered for the purpose of resale [¶4(b)(i)] or for the purpose of attracting business or for other commercial gain by creating confusion between the holder of the mark and the Respondent’s of the site, [¶4(b)(iv)], for the other two tests, at ¶4(b)(ii) and (iii) do not apply.
Certainly, the facts do not indicate that the Respondent has yet taken significant direct action that can be described as "bad faith". Nevertheless, it is also clear that Respondent, because of the nature of its other business activities, has certainly not registered this domain name for the simple purpose of creating a "fan-site" supporting or benefiting Complainant. The evidence, while not overwhelming, is sufficient to find bad faith under either ¶4(b)(i) or (iv). While the Respondent has not yet attempted to sell the site, it is or has been in that line of business. In the alternative, given the nature of Respondent’s other businesses, it is reasonable to infer that Respondent registered the domain name with the intent to attract Internet users for commercial gain.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:
(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.
Identical and/or Confusingly Similar
Finding for the Complainant
The Respondent’s domain name, garthbrooks.com, is identical to Complainant’s registered mark, Garth Brooks. See Hormel Foods Corp. and Hormel Foods, LLC v. Spotted Cow Media, FA 95067 (Nat. Arb. Forum July 31, 2000) (finding that the domain name <kidskitchen.com> is identical to the Complainant’s trademark KIDSKITCHEN); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO April 27, 2000) (holding that the domain name ROBOHELP.COM is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
Rights or Legitimate Interests
Finding for the Complainant
Respondent is not commonly known by the domain name in question, nor has Respondent used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
While the respondent admits it is not commonly known by the domain name in question, it contends the domain name is being used as a fan site for a legitimate noncommercial purpose. See IG Index PLC v Index Trade, D2000-1124 (WIPO Oct. 16, 2000) (finding that the Respondent has rights in the domain name because the Respondent’s claimed use of the domain name is a "plausible explanation" to which the Panelist must give weight).
However, here, the Respondent’s explanation is not "plausible." The Respondent’s business operations are all - save this site- commercial in nature. It has a history of domain name trading and brokerage, although it currently has no "banners" or links to its own or other commercial sites, it at least initially ran one or more banners on this site.
Respondent, by monitoring domain name registrations, apparently learned that the Complainant had allowed its registration to lapse and leapt at the opportunity to acquire the domain name. It had no prior connections to or relationship to Garth Brooks or his fans and none of its explanations are plausible. The obvious inference is that the Respondent intended, and still intends, commercial exploration.
Registration and Use in Bad Faith
Finding for the Complainant
The Complainant alleges that Respondent has acted in bad faith because the domain name at issue was registered to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or services. Policy ¶ 4.b.(iv). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a web site sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that web site); see also Perot Systems Corporation v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).
If Respondent had registered and was using "garthbrooks.com" in good faith and the use of the domain name in question could be confined to the promotion of Complainant, in a non-commercial capacity, then there would be no "bad faith." See Eddy’s (Nottingham) Ltd. v. Smith, D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the domain name where the Respondent registered the domain name in good faith, in the interest of promoting the Complainant’s business).
Once again, the inference from Respondent’s conduct is obvious, as set out above.
DECISION
The domain name shall be transferred to Complainant.
R. Glen Ayers, Jr., Esq., Panelist
Dated: January 3, 2001
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