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2001 White Castle Way, Inc. v. Glyn O. Jacobs [2004] GENDND 266 (26 March 2004)

1. The Parties

The Complainant is 2001 White Castle Way, Inc., United States of America, represented by Baker & Hostetler, LLP, United States of America.

The Respondent is Glyn O. Jacobs, Winchester, Massachusetts 01890-3017, United States of America.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 1, 2004. On January 8, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On January 8, 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 January 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2004. The Response was filed with the Center on February 19, 2004.¹

The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 11, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

By email of March 24, 2004, the Panel advised the Center that due to exceptional circumstances it proposed to extend the deadline for submitting its decision to March 27, 2004, and the Center advised the parties of such an extension.

4. Factual Background

Complainant has registered the word trademark "PAT BENATAR" on the Principal Register of the United States Patent and Trademark Office (USPTO), reg. no. 2354860, dated June 6, 2000, in international class (IC 009), covering, inter alia, prerecorded musical audio and video cassettes and compact discs, claiming date of first use and first use in commerce of January 17, 1979.² The registration data indicates, "The name `PAT BENATAR' identifies a living individual whose consent is of record".³

Complainant uses the term "PAT BENATAR" in connection with the sale of merchandise, including videos, DVDs, concert tickets for live performances and clothing. Complaint, para. 12.

Complainant is an enterprise acting on behalf of the recording artist "Pat Benatar" which has used the "PAT BENATAR" mark in connection with a high volume of record sales, including three gold records and seven platinum records. Id., para. 12. Complainant operates a commercial Internet website at address "www.benatar.com" where it offers for sale merchandise (such as t-shirts, caps and duffel bags).

According to the Registrar's Verification, Respondent is the registrant of the disputed domain name <patbenatar.com>. According to a Go Daddy WHOIS database printout furnished by Complainant, the record of registration was created on December 8, 1998.

Respondent operates a "fan" website at Internet address "www.patbenatar.com". This website was established in 1998, shortly following registration of the disputed domain name. The website contains a great deal of information concerning the recording artist "Pat Benatar", including a detailed history of her band, a complete chronology of the albums recorded by the artist (both well known and more obscure), and a map showing past and future appearances by the artist. The website includes a recommendation that fans interested in purchasing the artist's albums should try "CD Universe" and a link to the website of that vendor, said to be based on Respondent's experience that this third party vendor has the widest selection of Complainant's recordings. The website states:

There are no disparaging remarks concerning Complainant on Respondent's website. To the contrary, Respondent appears to be a particularly devoted aficionado of the recording artist, and appears to offer only supportive commentary and information concerning her work.

Respondent has submitted a great deal of documentary evidence in support of his assertion that he is a bona fide dedicated fan of the recording artist, Pat Benatar, having listened to and purchased her recordings as early as 1982, having attended many of her live performances, having obtained backstage passes to certain performances and having met the recording artist and her associates. Respondent has been a member of the recording artist's "official" fan club since 1995 (when membership was counted "in the dozens").

Respondent has provided a log of emails from the "official" benatarfanclub.com website. An exchange dated October 21, 2000, is as follows:

Representatives of Complainant corresponded with Respondent on a number of occasions before this dispute arose. For example, on October 25, 2000, the "webmistress" for Complainant sent the following message to Respondent:

It would appear that Complainant's view of Respondent and his activities began to deteriorate toward the end of 2001, as Complainant's legal counsel sent a cease and desist and transfer demand to Respondent (letter from Steve Butler to Glyn Jacobs dated December 31, 2001, Complaint, Exhibit E). This was followed by a similar demand letter of January 29, 2002 (Complaint, Exhibit F). An earlier UDRP proceeding (WIPO Case No. D2003-0210) was initiated for this domain name but was terminated without prejudice to the submission of a new complaint.

Respondent has consistently disclaimed any interest in selling or transferring the disputed domain name, and has stated his intention to continue operating a "fan" website.

The Registration Agreement in effect between Respondent and Go Daddy Software subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties' Contentions

A. Complainant

Complainant asserts rights in the trademark and service mark "PAT BENATAR" based on use in commerce in the United States (and elsewhere) and evidenced by registration at the USPTO (see Factual Background, supra).

Complainant asserts that the disputed domain name <patbenatar.com> is identical to its trademark.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent (a) has not made use of the disputed domain name in connection with a bona fide offering of goods or services, (b) has not been commonly known by the disputed domain name, and (c) that "no evidence indicates that Respondent has made any legitimate non-commercial or fair use of the Domain Name."

Complainant states that Respondent registered and is using the disputed domain name in bad faith. Complainant alleges that Respondent is using the disputed domain name to attract Internet users to Respondent's website to promote goods and services offered by Respondent. Complainant alleges that Respondent is intentionally confusing the public into "thinking that Complainant was affiliated with Respondent's website. For example, Respondent has placed links from Respondent's web site to sites where Complainant's musical recordings and videos can be purchased thereby creating the appearance that Complainant is somehow affiliated with, or endorses, Respondent's activities."

B. Respondent

Respondent acknowledges that Complainant has registered the trademark "PAT BENETAR" and that registration is not necessary to establish rights in a mark under the Policy. Respondent notes, however, that Complainant failed to disclose that its mark was not registered until 2000, significantly after Respondent registered the disputed domain name, and that this failure to disclose was intended to prejudice Respondent in this proceeding. Respondent also acknowledges that the disputed domain name is identical to Complainant's trademark.

Respondent asserts that he has rights or legitimate interests in the disputed domain name. Respondent claims that (a) he is a long time fan of the recording artist, (b) he has purchased and listens to the entire library of her recordings (b) he owns many rare and collectible items relating to the recording artist (c) he has attended numerous performances of the recording artist (d) that he was one of the first members of the recording artist's official fan club, (e) that he "has advocated the talents of Pat Benatar to more people than could ever be counted", (f) he secured tickets to see the recording artist perform before a sitting Lieutenant Governor and (g) "Additionally, Respondent has conversed with Complainant and Complainant's representatives about Respondent's interest in Complainant on occasions too numerous to count".

Respondent claims that the disputed domain name was not registered, nor has it been used, in bad faith. Respondent argues that he has never attempted to rent, sell or transfer the disputed domain name to Complainant or anyone else, even after being approached by Complainant. He asserts that "Respondent purchased and has always wished to maintain the domain name for Respondent's use as a fan site". Respondent claims that he does not now, nor has he ever, held the registration of a domain name for another artist. Respondent asserts that his refusal to transfer the disputed domain name to Complainant is not evidence of bad faith.

Respondent notes that Complainant registered and operates a commercial Internet web site, having registered the domain name <benatar.com> in 1996, more than two years before the disputed domain name was registered, and that Complainant registered the domain name <benatarfanclub.com> in 1998, prior to Respondent's registration of the disputed domain name. Respondent concludes that he did not act to prevent Complainant from registering its trademark as a domain name, and that Complainant elected not to register <patbenatar.com> when it might readily have done so.

Respondent argues that his suggestion of the best Internet retail seller of Complainant's recordings is an exercise of free speech based on his research, and that the recommended retailer (<cduniverse.com>) is an authorized seller of Complainant's products. He says that while Complainant eventually requested that he remove links to its "official site" (which the Respondent honored), that Complainant never requested removal of his link to the authorized retail seller.

Respondent states that Internet users are not led to believe that his website is sponsored or endorsed by Complainant, or that his website is an "official" website of Complainant. Respondent asserts that he clearly disclaims any connection with Complainant on various pages of his website, and has always disclaimed such an "official" association. Respondent asserts that while he modified the terms of his disclaimer in response to a specific demand from Complainant, this was only a change in the form of his disclaimer.

Respondent asserts that he has rights or legitimate interests in the disputed domain name. He says that he made a good faith offering of services prior to notice of a dispute by providing extensive information concerning the recording artist, including a discography, which ironically is attached to Complainant's Complaint as evidence of the recording artist's use in commerce of the mark. Respondent indicates that Complainant was demonstrably well aware of his website and activities and that there was no objection to his use of the disputed domain name until recently.

Respondent claims that he is engaging in legitimate noncommercial or fair use of the disputed domain name within the meaning of the Policy. The disputed domain name directs Internet users to a "fan" website that provides current information and news about the recording artist, including a history of the band and its recordings, past and future events, television appearances, and so forth. Respondent refers to the following decisions under the Policy in support of his position that he is engaging in legitimate noncommercial or fair use the disputed domain name: "Edward Van Halen v. Deborah Morgan (WIPO Case No. D2000-1313, December 20, 2000), Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club (WIPO Case No. D2000-1532, January 25, 2001), Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross (WIPO Case No. D2001-1042, October 25, 2001), and Marty Stuart. v. Marty Stuart Fan Page C/O Sherry Mattioli (NAF 192600, October 22, 2003)." Respondent asserts that the decision in Estate of Tupac Shakur v. Barranco (eResolution AF-0348, October 23, 2000) is particularly supportive of his position on policy grounds.

Respondent asks the Panel to make a finding of reverse domain name hijacking primarily on grounds that Complainant's Complaint failed to disclose a long history of dealings between Complainant and Respondent that were well known to Complainant. He argues that the absence of this history may have led the Panel, had he not filed his Response, to have found for Complainant. This is argued to constitute bad faith use of the Policy.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

In this case, the Respondent has filed a timely Response. The Panel is satisfied that the Respondent had adequate notice of the proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent's domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has submitted evidence of registration of the trademark "PAT BENATAR" (in the form of reference to a registration number) and asserts long use of the term "PAT BENATAR" in commerce. Respondent has provided evidence in the form of a USPTO TESS printout that the trademark was registered on June 6, 2000.

The Panel notes that Complainant provided only a registration number for the trademark, no supporting documentation for the registration, and did not disclose the date of registration. Complainant's failure to provide such evidentiary support appears to be deliberate. The provision of evidentiary support of registration by a complainant is a matter of customary practice and is "ordinary course" in disputes under the Policy. Complainant provided a chronology of events regarding this dispute, yet failed to include the date of registration of its mark in that chronology. Registration of the trademark post-dated Respondent's registration of the disputed domain. While referring to common law rights in its mark, Complainant made no mention of the significance of those rights in relation to its trademark registration.⁴ The registration date of a mark may be material to the question whether a respondent had actual or constructive notice of rights in a mark. In the instant proceeding the date of registration might be material to a determination regarding Respondent's knowledge of asserted rights in a mark. The Panel notes Complainant's apparently deliberate withholding of facts material to this proceeding.

Respondent, while calling attention to Complainant's failure to disclose, has acknowledged his awareness of a strong association between the recording artist's name and her products, and has not questioned Complainant's rights in the mark, noting that registration is not necessary to establishing rights in a mark under the Policy.

The Panel determines that Complainant has rights in the trademark "PAT BENATAR" based on long use in commerce and as evidenced by registration in 2000, at the USPTO. Complainant's common law rights in the mark arose prior to Respondent's registration of the disputed domain name on December 8, 1998. The disputed domain name is identical to the trademark within the meaning of the Policy.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

Respondent asserts that he made a bona fide offering of services before notice to him of a dispute. The services consisted of providing information on his fan website (without charge) to the public.

Respondent registered the disputed domain name in December 1998, and Complainant registered its mark in June 2000. Complainant's common law rights in its mark as of the time Respondent registered the disputed domain name were not of a sufficiently well known legal character (as a trademark) to cause Respondent to conclude that by registering the disputed domain name he was entering into a dispute with Complainant.

Respondent has provided substantial evidence that Complainant was aware of his website and its content at least as early as October 2000, and did not object to his use of the disputed domain name. At that time Complainant requested that Respondent link his "fan" website to Complainant's "official" website. It appears that as of October 2000, Respondent (a) was offering services to the public and (b) was not in a dispute with Complainant. Respondent appears to have made a bona fide offer of services prior to notice of a dispute.

The Panel considers that the term "services" under Paragraph 4(c)(i) is not limited to commercial services, but may include noncommercial services to the public (See Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross, WIPO Case No. D2001-1042, decided October 25, 2001, finding provision of information to the public under similar circumstances a bona fide offering of services under Paragraph 4(c)(i)).

The term "services" might be argued to be limited to "commercial services" since Paragraph 4(c)(iii) provides an express basis for establishing legitimate noncommercial or fair use. However, there are distinctions between Paragraph 4(c)(i) and 4(c)(iii) other than such a hypothetical distinction. For example, Paragraph 4(c)(i) refers to "demonstrable preparations to use" a domain name, while Paragraph 4(c)(iii) refers to "making" a legitimate noncommercial or fair use of a name. There may be circumstances in which a prospective noncommercial service would be established under Paragraph 4(c)(i) more readily than noncommercial or fair use would be established under Paragraph 4(c)(iii).⁵ Limiting Paragraph 4(a)(i) to commercial or for-profit services would import a limitation that is not expressly provided by the Policy, and the Panel does not find a basis for doing that.

Respondent also asserts that he registered and is using the disputed domain name for a legitimate noncommercial or fair use.

Respondent's website provides a wide range of information concerning Pat Benatar, the recording artist. There are clear disclaimers on the website stating that it is not endorsed by or an official website of the recording artist. There is no evidence on the record of this proceeding that Respondent obtains any commercial benefit from the website. While he does make a recommendation regarding the Internet retailer which he believes to stock the widest selection of the recording artist's work, there is no evidence that Respondent receives compensation from the retailer.⁶ Respondent is not seeking to disparage the recording artist. Complainant was aware of Respondent's website and activities for a substantial period, and requested that his website be linked to its official website before changing its view and attempting to obtain a transfer of the disputed domain name. The combination of these factors leads the Panel to conclude that Respondent is engaging in legitimate noncommercial use of the disputed domain name.

Complainant has failed to establish that Respondent has no rights or legitimate interest in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel's determination that Respondent has rights or legitimate interests in the disputed domain name effectively renders moot the question whether Respondent registered and used the disputed domain name in bad faith. Nonetheless, the Panel notes:

There is no evidence that Respondent registered the disputed domain name with the intention of offering it for sale to any party.

The evidence does not support that Respondent registered the disputed domain name to prevent Complainant from registering it, or engaged in a pattern of such registrations. Respondent has affirmatively demonstrated his reason for registering the disputed domain name, which is to operate a fan website. He has not prevented Complainant from using its mark to promote its interests.

There is no evidence that Respondent is attempting to harm the interests of Complainant as a competitor.

There is no evidence that Respondent registered and used the disputed domain name intentionally for commercial gain to attract Internet users to his website by creating confusion as to Complainant's sponsorship or endorsement of his website. There is no evidence that Respondent is making a commercial gain from the website, or that he acted with the intention of such gain. Respondent's website clearly disclaims sponsorship or endorsement by Complainant and the recording artist.

Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith.

The Panel will therefore not request the Registrar to transfer the disputed domain name to Complainant.

D. Reverse Domain Name Hijacking

Complainant has in its Complaint failed to disclose material facts that were known to it (i.e., the date of registration of the trademark). Complainant has also in its Complaint failed to disclose material facts that either were known to it or with some modicum of diligence should have been known to it (i.e., the course of dealing with Respondent).

Complainant failed to disclose that its trademark registration post-dated Respondent's registration of the disputed domain name. Its failure to provide documentary support of its trademark registration, a matter of routine in proceedings under the Policy, or to indicate in its Complaint the date of trademark registration (while providing the registration number) suggests a deliberate effort to mislead the Panel.

Complainant failed to disclose a history of dealings with Respondent, including its acknowledgement of Respondent's website and activities, and its implied consent to those activities (by requesting a link to its official website and by publicly indicating that it did not object to Complainant's activities). These facts were clearly material to this proceeding. Complainant chose to disclose only those facts which it considered to support its case, and to withhold inconvenient facts.

The Panel admonishes Complainant and its counsel for material omissions in the Complaint. The Policy and Rules are not designed to compel the production of evidence, and panels making determinations under the Policy and Rules place reliance on the parties and their counsel to provide information that is materially accurate.

However, the Panel in the circumstances of this proceeding is reluctant to make a finding of reverse domain name hijacking that might perhaps unfairly be attributed to the recording artist.⁷ The Panel will not assume that the recording artist was directly involved in deciding on the more technical aspects of the preparation of the Complaint, such as whether to disclose the date of trademark registration, or the prior course of dealing. Respondent has made a particular point of stressing his admiration for the recording artist, and the Panel takes that opinion evidence into account here. Therefore, while critical of counsel's tactics, the Panel does not find that Complainant's conduct in this case justifies a finding of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

The Panel does not find that Complainant has engaged in reverse domain name hijacking.

¹ Respondent appears to have transmitted the Response by email after midnight of February 18, 2004, in the United States, and so technically on February 19, 2004. The Panel does not regard this apparent technical tardiness as material to the proceeding, and accepts the Response.

² Complainant did not provide evidence of its trademark registration, such as a Trademark Electronic Search System (TESS) printout. Respondent provided a TESS printout regarding the subject registration (Response, Exhibit R1).

³ TESS Printout, id.

⁴ The prospects for a complainant to succeed under the Policy without establishing rights in a mark prior to registration of a domain name are remote because, inter alia, a complainant must demonstrate bad faith in relation to the mark at the time of domain name registration. See, e.g. USA Video Interactive Corporation v. B.G. Enterprises, WIPO Case No. D2000-1052, decided December 13, 2000, and Windsor Fashions, Inc. v. Windsor Software Corporation, WIPO Case No D2002-0839, decided November 14, 2002.

⁵ The Panel notes, however, that the active term "making" in Paragraph 4(c)(iii) does not preclude the establishment of legitimate noncommercial or fair use without actual use. There are a variety of circumstances in which delay in active use may be justified. See Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399, decided July 16, 2003, and decisions referred to therein.

⁶ Evidence of a commercial relationship between Respondent and the retailer might have affected the Panel's determination on the question of legitimate noncommercial or fair use. A determination under such other circumstances would involve a contextual analysis regarding which the Panel need make no suggestion here. See, e.g., Pfizer Inc v. Van Robichaux, supra note 4.

⁷ Compare, e.g. Windsor Fashions, Inc. v. Windsor Software Corporation, WIPO Case No D2002-0839, decided November 14, 2002, in which reverse domain name hijacking was found when the complainant waited until after it had registered its mark (in which it also asserted prior common law rights) before initiating a proceeding in circumstances in which it knew or should have known of the legitimate interest of the respondent in the disputed domain name (pre-dating the trademark registration).