DECISION

Sheryl Crow c/o Provident Financial Management v. LOVEARTH.net

Claim Number:  FA0310000203208

PARTIES

Complainant is Sheryl Crow c/o Provident Financial Management, Los Angeles, CA (“Complainant”) represented by Steven M. Weinberg, of Greenberg Traurig, LLP., 2375 E. Camelback Road, Phoenix, AZ 90404.  Respondent is LOVEARTH.net, 5683 Midnight Pass Road, Suite 106, Siesta Key, FL 34242 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sheryl-crow.com>, registered with Network Solutions, Inc.

PANEL

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 Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 16, 2003; the Forum received a hard copy of the Complaint on October 20, 2003.

On October 21, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <sheryl-crow.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 October 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 11, 2003 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@sheryl-crow.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 November 16, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <sheryl-crow.com> domain name is confusingly similar to Complainant’s SHERYL CROW mark.

2. Respondent does not have any rights or legitimate interests in the <sheryl-crow.com> domain name.

3. Respondent registered and used the <sheryl-crow.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has registered the SHERYL CROW mark with the United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 2328375 and 2313643) for entertainment and musical sound recordings.  Complainant has used its mark, which is well-known, famous, and valuable, continuously since 1986.  Complainant also has registered domain names that incorporate the SHERYL CROW mark, such as <sherylcrow.com> and <sherylcrowworld.com>.   

Respondent registered the domain name <sheryl-crow.com> on October 1, 1998.  Respondent uses the domain name to link Internet users to <celebrity-websites.com>, which then links to other celebrity sites, as well as an unauthorized webpage of Complainant.

Respondent has registered numerous celebrity names and links them in a similar fashion.  Respondent profits from these registrations by requesting payment from the appropriate celebrity personality for the domain name. Respondent requested that Complainant purchase the domain name for $2000.

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 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 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

Respondent has rights in the SHERYL CROW mark through registration with the USPTO and continuous use since 1986.

The disputed domain name <sheryl-crow.com> is confusingly similar to Complainant’s SHERYL CROW mark, pursuant to Policy ¶ 4(a)(i), because the former contains Complainant’s mark in its entirety and merely adds a hyphen.  See Chernow Comm. Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to Complainant's EASYJET mark and therefore that they are confusingly similar).

Therefore, Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not asserted any rights or legitimate interests in the domain name.  Therefore, the Panel is free to draw reasonable inferences from Complainant’s allegations, without the benefit of a Response.  See Vertical Solutions Mgmt., Inc. v. Webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

It is neither a bona fide offerings of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant or by attempting to sell the domain name.  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., 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 website); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).

There is no evidence that Respondent has ever been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  Additionally, the WHOIS registration information fails to imply that Respondent is commonly known by the name.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (Respondent does not have rights in a domain name when Respondent is not known by the mark).

Therefore, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

By requesting consideration of $2000, in excess of any out-of-pocket costs incurred by Respondent, in exchange for the transfer of the disputed domain name registration, Respondent has evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Tech. Prop., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where Respondent offered the domain names for sale for $2,000); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because it offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when it requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).

Additionally, Respondent engages in a pattern of acquiring domain names reflecting celebrity marks and personalities, and then requesting payment for the transfer of the domain name registrations.  This activity prevents the legitimate owners of the famous marks from reflecting their marks in the corresponding domain names, which also evidences bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others).

Therefore, Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <sheryl-crow.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  November 28, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/1070.html