DECISION

Mr. Clive Davis c/o J Records, LLC v. Michael Spicer c/o Spicer Industries

Claim Number: FA0211000133761

PARTIES

Complainant is Clive Davis c/o J Records, LLC, New York, NY (“Complainant”) represented by Brad D. Rose, of Pryor Cashman Sherman & Flynn, LLP.  Respondent is Michael Spicer of Spicer Industries, Burnsville, MN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <clivedavis.com>, < clivedavis.net> and <clivedavis.org> registered with Go Daddy Software, Inc.

PANEL

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 20, 2002; the Forum received a hard copy of the Complaint on November 20, 2002.

On November 20, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <clivedavis.com>, <clivedavis.net> and <clivedavis.org> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 November 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 2002 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@clivedavis.com, postmaster@clivedavis.net, and  postmaster@clivedavis.org 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 December 27, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <clivedavis.com>, <clivedavis.net>, <clivedavis.org> domain names are identical to Complainant’s CLIVE DAVIS mark.

2. Respondent does not have rights to or legitimate interests in the <clivedavis.com>, <clivedavis.net>, <clivedavis.org> domain names.

3. Respondent registered and used the <clivedavis.com>, <clivedavis.net>, <clivedavis.org> domain names in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Clive Davis, is a legend within the music industry.  Davis is the former head of Arista Records and was instrumental in the success of such popular artists as Whitney Houston, Patti Smith, Kenny G, Barry Manilow and Sarah McLachlan.  The New York Friars Club honored him as 1992’s “Man of the Year.”  In 1993, he was named “The Most Influential Record Executive of the Past Twenty Years” by Radio and Records.  In 1997, Davis received a star on the Hollywood Walk of Fame.  In 1999, Davis received a lifetime achievement award at the Grammy Award ceremony and, in 2000, Davis was inducted into the Rock and Roll Hall of Fame.  After leaving Arista, Davis launched J Records in August 2000.  In its first year, J Records had four albums debuting in the top 10. Among the artists with J Records are Alicia Keys, Luther Vandross, Busta Rhymes, O-Town, Rod Stewart, and Abra Moore, and new artists Mario and Lamya.

Complainant has acquired substantial fame and secondary meaning in the CLIVE DAVIS name and mark, such that the general public has come to associate CLIVE DAVIS as a leader in entertainment commodities.

Respondent registered the disputed domain names of <clivedavis.com> on July 11, 2001, <clivedavis.net> and <clivedavis.org> on May 7, 2002. Respondent’s websites are not licensed or authorized to use Complainant’s mark for any purpose.  The websites remain dormant, with no activity since inception.

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant has acquired common law rights in the name and mark CLIVE DAVIS as the term has sufficient secondary meaning to be associated with Complainant.  Through numerous awards and notoriety, Complainant has become more than a name, but a music icon.  Common law rights vest in a name when the name has become so famous as to become commonplace, the proverbial “household name.”  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 Complainant that common law trademark rights exist); see also Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER).

Respondent’s <clivedavis.com>, <clivedavis.net>, and <clivedavis.org> are identical to Complainant’s common law mark.  Respondent incorporates Complainant’s entire mark in its domain name. Given the fame and media attention that Complainant receives, the mere addition of a general top-level domain while incorporating the entire mark of Complainant is not adequate to create a distinct and unique domain name that is not identical.  See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 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").

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has thus been satisfied.

Rights or Legitimate Interests

Respondent has not submitted a response to the complaint, thereby permitting the Panel to conclude that all reasonable inferences made by Complainant are true and accurate unless there is evidence that is clearly contradictory.  Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true);  Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).  There is no evidence that contradicts the allegations of Complainant.  Complainant has presented evidence that substantiates its claim that Respondent has no legitimate rights or interests in the contested domain names.

The disputed domain names have remained inactive and undeveloped since they were registered. Respondent’s <clivedavis.com> domain name was registered on June 11, 2001, and the <clivedavis.net> and <clivedavis.org> domain names were registered on May 7, 2002.  There has been no attempt to try to utilize these domains for a bona fide offering of goods and services.  There are no rights or legitimate interests in a domain name when there has been no attempt to develop a website into a genuine use in connection with a offering of goods and services under Policy ¶ 4(c)(i).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

There has been no evidence submitted to indicate that Respondent has a substantial affiliation with, or is known by the <clivedavis.com>, <clivedavis.net>, and <clivedavis.org> domain names.  Since Respondent has not come forward with a viable alternative for its use of Complainant’s common law mark and name and Respondent does not have the authorization or consent, the Panel finds that Respondent has no rights to the domain names under Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Nor has Respondent used the domain names for a legitimate noncommercial or fair use purpose under Policy ¶ 4(c)(iii).  See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has thus been satisfied.

Registration and Use in Bad Faith

At the time of registration of the disputed domain names, Respondent knew, or should have known, of Complainant’s famous name and mark.  Since the disputed domain names are identical to Complainant’s name and mark, Respondent must have registered the domain names in bad faith by intentionally trying to infringe on Complainant’s mark.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

There is a definite pattern that has arisen in the bad faith registration of the disputed domain names.  Respondent registered <clivedavis.com> on June 11, 2001, and <clivedavis.net> and <clivedavis.org> were registered on May 7, 2002.  Respondent engaged in a pattern of trying to monopolize Complainant’s mark by registering multiple infringing domain names.  It is evidence of bad faith registration and use when a party engages in a pattern of registration of infringing domain names, with intent to prevent another party from being able to reflect their own mark under Policy ¶ 4(b)(ii).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 8, 2000) (finding bad faith where (1) Respondent knew or should have known of the Complainant’s SONY marks and (2) Respondent registered multiple domain names which infringed upon Complainant’s mark); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).

Given the nature of Complainant’s mark in commerce, there can be no conceivable good faith use of the infringing domain names in the future.  Respondent’s passive holding of the disputed domain names shows an intent to use the domain names in bad faith.  Respondent did not refute any allegation proposed by Complainant, so it must be assumed that there was no intent to utilize the domain names except in bad faith.  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has thus been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel hereby concludes that the requested relief shall be GRANTED.

Accordingly, it is ordered that the domain names  <clivedavis.com>, <clivedavis.net>, <clivedavis.org> be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: December 31, 2002

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