Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Max Cavalera, Phoenix, AZ, USA ("Complainant") represented by Jill M. Pietrini, of Manatt, Phelps & Phillips LLP. The Respondent is 420 Gear, Inc., Barnesville, MD, USA ("Respondent").

The domain name at issue is soulfly.com registered with Network Solutions.

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

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 21, 2000; the Forum received a hard copy of the Complaint on December 22, 2000.

On December 27, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name soulfly.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 December 28, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 18, 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@soulfly.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 23, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

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

A. Complainant

Complainant contends the following with respect to the disputed domain name:

B. Respondent

Respondent has not submitted a response.

Complainant, Max Cavalera, is the leader of Soulfly, a heavy metal musical group. Complainant owns a trademark, registered on the Principal Register, for SOULFLY, in connection with a series of musical sound recordings, clothing, and entertainment services. Complainant first used SOULFLY in commerce on August 16, 1997.

At some point before the dispute arose, Complainant discussed with another member of his musical group, Mr. Dias, the possibility of creating a website for Soulfly. Thereafter, Mr. Dias entered into discussions with Mr. Robert Griffin, owner of 420 Gear Inc., regarding the creation of a Soulfly web site. Mr. Griffin took the first step in this development, acquisition of the domain name. At the time of registration, Mr. Griffin represented to Mr. Dias that he ‘needed to own’ the domain name in order to construct a web site for Complainant. Having convinced Mr. Dias, Respondent obtained registration of the domain name from a third party on November 20, 1998.

Several months later, Complainant learned that Mr. Griffin had registered the domain name in his own name and not in Complainant’s name. Complainant alleges that during a phone conversation with his manager, Mr. Griffin conceded that he did not have permission to register the domain name or use the SOULFLY mark.

Soon thereafter, Mr. Griffin caused the domain name soulfly.com to be linked a web site entitled "The Soulfly Drama," which contained a history of the dispute regarding soulfly.com in addition to a bold print message reading "SOULFLY.COM IS FOR SALE!" In response, Complainant’s attorney sent several cease and desist letters to Respondent.

Thereafter, Respondent removed "The Soulfly Drama" web page and replaced it with a web page entitled 420Bands.com. This web site contained a message indicating that "420Bands.com contains content and discussions about the Legalization of Industrial Hemp and Medical Marijuana." In addition, the web site contained a disclaimer reading "420Bands.com is NOT Affilliated with Soulfly." Finally, the web site contained a message that read "Soulfly.com is For Sale $5,000.00 or Best Offer."

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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.

The Panel must determine whether Complainant has rights in a mark that is identical or confusingly similar to the disputed domain name. For the following reasons, the Panel finds that Complainant has satisfied the first element of ICANN Policy 4(a).

First, Complainant has demonstrated that it has rights in the mark SOULFLY. Complainant owns a registration on the Principal Register for SOULFLY in connection with musical sound recordings, clothing and entertainment services. Therefore, the Panel finds that Complainant has rights in SOULFLY.

Second, the Panel finds that the disputed domain name, soulfly.com is identical or confusingly similar to Complainant’s SOULFLY mark. It is now well established that in determining whether a domain name is identical or confusingly similar under the ICANN Policy, the Panel is to disregard the presence of a generic top-level-domain ("TLD"). This is because all domain names must contain a TLD in order to function. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("the addition of the gTLD ‘.com’ is likewise without legal significance since use of a gTLD is required of domain name registrants").

Therefore, having removed ‘.com’ from the equation, it is apparent that the domain name soulfly.com is identical to Complainant’s SOULFLY mark. See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name nike.net is identical to the Complainant’s famous NIKE mark). Complainant has satisfied ICANN Policy 4(a)(i).

The Panel must next determine whether there is evidence to indicate that Respondent has any rights or legitimate interest with respect to the domain name soulfly.com. Based on all the evidence presented, in accordance with the ICANN Policy, the Panel finds that Respondent has no rights or legitimate interests in soulfly.com.

ICANN Policy 4(c) provides the Panel with a list of circumstances which, "if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii)." The Panel is advised to look for the following circumstances:

Based on an evaluation of the evidence presented, the Panel finds that Respondent has no rights or legitimate interest in soulfly.com.

The Panel notes that Respondent’s first use of the domain name was to post its "The Soulfly Drama" web page, wherein Respondent outlined the dispute between it and Complainant and offered the domain name for sale. This use of the domain name came after, not before, notice of the dispute, as Respondent appears to have posted the web page in response to Complainant’s manager demanding return of the domain name to Complainant. Therefore, respondent’s first use came after notice of the dispute, and does not qualify as a bona fide use under the ICANN Policy. See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the Respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the Complainant’s "cease and desist" notice).

In addition, part of Respondent’s first use of the domain name was to offer it for a sale. In light of Complainant’s pre-established rights, and Respondent’s knowledge of those rights, such use is not a bona fide offering of goods or services. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

Next, the Panel finds that Respondent is not commonly known by either soulfly.com or SOULFLY. Instead, Respondent’s only interest in the domain name appears to be its desire to gain commercially, initially from the construction of a web site for Complainant, and subsequently from the sale of the domain name. Such interest is contrary to the interest embodied in ICANN Policy 4(c). See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the Complainant).

Finally, the Panel finds that Respondent’s use of the domain name has none of the characteristics of noncommercial or fair use. All along, Respondent’s use of the domain name has included an offer to sell the domain name for valuable consideration. Currently, Respondent is asking $5000.00 for soulfly.com. Such use does not qualify as noncommercial fair use under the ICANN Policy.

Therefore, based on the evidence presented, the Panel finds that Respondent has no rights or legitimate interest in soulfly.com.

ICANN Policy 4(a)(iii) requires the Panel to determine whether Respondent registered and used the domain name in bad faith. In making its determination, the Panel is directed to consider the following:

and

Even before registration of the domain name, Respondent misrepresented critical facts in order to obtain the registration for soulfly.com. At that time, Respondent, through Mr. Griffin, insisted that he ‘needed to own’ the domain name to construct a web site. This is not true. Respondent could have registered the domain name in Complainant’s name and still constructed a web site for Complainant. Instead, Respondent registered the domain name in his own name, giving himself control over Complainant’s domain name and perhaps a bargaining tool for later discussions. See Metallica v. Schnieder, FA 95636 (Nat. Arb. Forum Oct. 18, 2000) (finding bad faith based on Policy ¶ 4(b)(i) where the Respondent offered to transfer the domain name in return for non monetary consideration (i.e., if the Complainant met with the Respondent, called two of his friends, and granted the Respondent on interview)).

Respondent’s unabashed conduct after registration indicates his intent to sell the domain name for valuable consideration. Each web page posted by Respondent to the soulfly.com domain name has included a message indicating that the domain name is for sale. This conduct clearly indicates bad faith, especially in light of Respondents previous negotiations with Complainant. See World Wrestling Fed’n Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).

Therefore, the Panel finds that Respondent’s conduct indicates bad faith under ICANN Policy 4(b)(i).

Creating a Likelihood of Confusion

In addition, the evidence indicates that Respondent has violated ICANN Policy 4(b)(iv). By linking the soulfly.com domain name to its 420band.com web site, Respondent is attracting Internet users to its own web site, by creating a likelihood of confusion about the source, sponsorship, affiliation or endorsement of Respondent’s web site or a product or service on Respondent’s web site. See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

Respondent’s web site explicitly states that it contains content and discussions about the Legalization of Industrial Hemp and Medical Marijuana. Complainant has not authorized Respondent to associate its SOULFLY trademark with such content, and any such use indicates bad faith. See Eddy’s (Nottingham) Ltd., v. Smith, D2000-0789 (WIPO Sept. 7, 2000) (finding bad faith where the Respondent initially used the web site to promote Complainant’s goods, but later changed the content of the web site, causing confusion with Complainant’s mark).

It must be noted that Respondent’s web site contains a disclaimer that "420Bands.com is NOT Affiliated with Soulfly." The Panel agrees with the rational in the UDRP decision Madonna v. Dan Parisi, which found that

Madonna v. Dan Parisi, D2000-0847 (WIPO, Oct. 12, 2000) (citing Brookfield Comm., Inc. v. West Coast Entertainment Corp., [1999] USCA9 225; 174 F.3d 1036 (9^th Cir. 1999)).

Therefore, the Panel finds that Respondent has registered and used the domain name in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

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