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Taylor Eigsti v. N/A and Peter Jones [2004] GENDND 1501 (8 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Taylor Eigsti v. N/A and Peter Jones

Case No. D2004-0751

1. The Parties

The Complainant is Taylor Eigsti of the United States, c/o Tomlinson Zisko, LLP of Palo Alto, California, United States of America.

The Respondent is N/A and Peter Jones of Hereford, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <tayloreigsti.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2004. On September 16, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the subject domain name. On September 16, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2004.

The Center appointed Edward C. Chiasson Q.C. as the sole panelist in this matter on October 26, 2004. The Administrative Panel finds that it was properly constituted. The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The following information derives from the Complaint.

The Complainant is a jazz pianist, who has attained significant fame and name recognition around the world. A search of TAYLOR EIGSTI using the Google search engine turned up 2,590 hits, virtually all of which dealt with the Complainant, his recordings and his performances.

The Complainant has appeared on stage with such recording artists as Dave Brubeck, James Moody, Bobby Hutcherson, David Benoit, Kevin Mahogany, Bill Watrous, Frederica von Stade and many others. He has performed for former President Bill Clinton, former Senator Bill Bradley and former Colorado Governor Roy Romer. The Complainant has recorded four CD’s and has performed at venues throughout the United States. He has been the subject of a number of articles in publications such as the Palo Alto Weekly, the San Jose Mercury News, the Honolulu Star-Bulletin, and the San Francisco Chronicle, to name only a few.

The Complainant has been performing under his own name for more than ten years. His name has acquired secondary meaning as the source of jazz piano performances and recordings.

Originally, the Complainant registered the subject domain name and linked it to his commercial web site at “www.tayjazz.com.” That registration inadvertently lapsed and the Respondent immediately registered the subject domain name on June 30, 2003. The Respondent has used the subject domain name to link to a pornographic Internet site.

The Complainant’s legal counsel attempted to contact the Respondent by telephone at the number given on the registration and reached a recording that indicated no service was available at that number. The Complainant’s counsel attempted to contact the Respondent by email at the email address given on the registration and the email was returned as “failed,” “no mailbox available.”

The Respondent has not been authorized to use the words “Taylor Eigsti” in a domain name or in any fashion.

The Respondent did not participate in the proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant asserts: “[t]hrough the use of his name over a more than ten year period in conjunction with his musical performances and CD recordings, Complainant has acquired a common law trademark and service mark” and contends that the subject domain name is identical to the Complainant’s mark.

A lack of legitimate interest in the subject domain name is said to be apparent because the Respondent has no authority to use the Complainant’s mark which is very distinctive, being a person’s name, and the Respondent uses the subject domain name to attract Internet users to a pornographic site.

As to bad faith, the Complainant says: “[The] Respondent has intentionally attempted to attract Internet users to a pornographic web site for purposes of financial gain by creating a likelihood of confusion with Complainant’s mark.” The Complainant also states that bad faith is evidenced by the Respondent’s use of false contact particulars.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy the Complainant is obliged to establish that:(i) the subject domain name is identical or confusingly similar to his mark; and (ii) the Respondent does not have a legitimate interest in the subject domain name; and (iii) the subject domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has used his name publicly and extensively for many years. He has established a common-law trademark or service mark for the words TAYLOR EIGSTI. There is no material difference between the subject domain name and the Complainant’s mark.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

A respondent is not obliged to participate in a domain name dispute but if it were to fail to do so, it would be vulnerable to the normal inferences that flow from the reasonable assertions of fact of a complainant.

The Complainant’s mark is distinctive, being essentially his name. This alone raises concerns about the legitimacy of the Respondent’s interest in the subject domain name which is identical to the Complainant’s mark. Using a domain name which resolves to a pornographic web site is not per se illegitimate, but in the circumstances of this case, the use adds weight to the contention that the Respondent’s interest in the subject domain name is not legitimate. Also relevant is the timing of the registration.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

A finding that a respondent does not have a legitimate interest in a domain name that is identical to the mark of another does not automatically lead to a bad faith conclusion, but the facts upon which the finding is based may be relevant to the bad faith inquiry.

The timing of the Respondent’s registration of the subject domain name, the fact that essentially it is the Complainant’s name, the lack of any connection between the subject domain name and the Respondent and his use of the subject domain name raise an inference of bad faith registration and use.

The Complainant attempted to raise the matter with the Respondent, but the contact particulars provided by him were inoperative. The Respondent has done nothing to meet the inference of bad faith.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel orders that the subject domain name be transferred to the Complainant.

Edward C. Chiasson Q.C.
Sole Panelist

Dated: November 8, 2004