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Generic Top Level Domain Name (gTLD) Decisions |
Pearl Jam, A General Partnership v.
Phoebe\'s Fantasy Playhouse and n/a c/o John Hewell
Claim Number: FA0401000226451
PARTIES
Complainant
is Pearl Jam, A General Partnership (“Complainant”),
represented by Gerard A. Taylor, of Stokes Lawrence, P.S., 800 Fifth Avenue, Suite 4000, Seattle, WA
98104. Respondent is Phoebe\'s Fantasy Playhouse and n/a c/o John Hewell (“Respondent”) 14 Scott
Road, Wanneroo, Wanneroo 6065, Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <pearljammin.com>
and <pearl-jamin.com>, registered with Tucows, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his knowledge has no known conflict
in serving as Panelist
in this proceeding.
Alan
L. Limbury as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 14, 2004; the Forum received
a hard copy of the
Complaint on January 20, 2004.
On
January 15, 2004, Tucows, Inc. confirmed by e-mail to the Forum that the domain
names <pearljammin.com> and <pearl-jamin.com> are
registered with Tucows, Inc. and that Phoebe\'s Fantasy Playhouse is the
current registrant of the name <pearljammin.com> and n/a is the
current registrant of the name <pearl-jamin.com>. Both registrants have the same address and
Mr. Hewell is the Administrative Contact of both names. Tucows, Inc. has
verified Respondents
are bound by the Tucows, Inc. registration agreement and
have 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
January 23, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 12, 2004 by which Respondents could file a Response to the
Complaint, was transmitted to Respondents
via e-mail, post and fax, to all
entities and persons listed on Respondents’ registrations as technical,
administrative and billing
contacts, and to postmaster@pearljammin.com and
postmaster@pearl-jamin.com by e-mail.
A
Response on behalf of both Respondents was received by email and determined to
be incomplete on February 10, 2004. A copy had been
sent to Complainant’s
representative.
On February 20, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Alan L. Limbury
as Panelist.
Despite the failure of the Response to comply with the
Rules, the Panel has taken it into account, in the interests of fairness to
both parties.
Although the disputed domain names are registered in two
different names, the Response, filed by Mr. Hewell, describes them as “my
websites’ names, which I hold legal title of” and “the domain names I
own”. The Panel concludes that each
registrant is an alias for Mr. Hewell and that it is appropriate for
Complainant’s claim for relief
in respect of both disputed domain names to be
considered in the one proceeding. Henceforth
the word ‘Respondent’ (singular) will be used to refer to both registrants.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is a popular and widely known American musical band. It has used the name PEARL JAM since 1991. It has sold over 30 million albums and
performed in concerts worldwide. Between August 15, 1995 and January 30, 1996
Complainant became
the registered proprietor of four United States trademarks
for PEARL JAM in respect of goods and services including musical sound
recordings, clothing, printed matter, and entertainment services. That mark is also registered in other
countries, including Australia, where Respondent resides. Complainant offers its goods and services
via its website at <pearljam.com>.
Complainant’s PEARL JAM marks have been well-known worldwide since
before the disputed domain names were registered.
The
disputed domain names <pearljammin.com> (registered on July 1,
2003) and
<pearl-jamin.com> (registered on January 24, 2002) are
substantially identical or confusingly similar to Complainant’s PEARL JAM
trademarks. Respondent has no rights or
legitimate interests in respect of the disputed domain names, which Respondent
is using to redirect traffic
to a commercial “adult” website unrelated to
Complainant’s mark. Respondent
registered and is using the disputed domain names in bad faith
B.
Respondent
Pearl
jam is an everyday slang phrase for semen.
Respondent was not using the popularity of Complainant for any
gain. The band chose its name from this
phrase to boost their record sales. The
<pearljammin.com> and <pearl-jamin.com> websites are
directed at a specific adult entertainment niche of ejaculating semen. The name was chosen because it made sense to
have a relevant title for the web site’s content—images and movies of “pearl
jamming.” Respondent is merely using a
name that is slang used by the type of traffic it wishes to attract. It does not promote itself to be affiliated
with the music group known as “Pearl Jam.”
The music group’s name neither has nor had anything to do with the fact
that Respondent chose a name appropriate to our website’s
subject matter.
FINDINGS
Complainant has established all elements
entitling it to transfer of the disputed domain names.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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.
Complainant has registered the PEARL JAM
mark.
Likewise, many cases have established
that the test of confusing similarity under the Policy is confined to a
comparison of the disputed
domain name and the trademark alone, independent of
the other marketing and use factors, such as the "Sleekcraft
factors" (AMF Inc. v. Sleekcraft
Boats, [1979] USCA9 691; 599 F.2d 341, 346 (9th Cir. 1979)) usually considered in trademark
infringement or unfair competition cases.
See e.g. BWT Brands, Inc.
v. NABR, D2001-1480 (WIPO Mar. 26, 2002); Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum
Feb. 19, 2001).
The Panel finds the disputed domain names
<pearljammin.com> and <pearl-jamin.com> are
confusingly similar to Complainant’s trademark PEARL JAM.
Complainant has established the elements of Policy ¶
4(a)(i).
Respondent does not dispute that
Complainant’s band is well-known worldwide under the mark PEARL JAM. The Macquarie Dictionary defines
‘pearl jam’ solely as Complainant’s rock band and makes no reference to its
slang meaning. Complainant has not
authorized Respondent to register the disputed domain names.
These circumstances are sufficient to
constitute a prima facie showing by
Complainant of absence of rights or legitimate interest in the disputed domain
name on the part of Respondent. The
evidentiary burden therefore shifts to Respondent to show by concrete evidence
that it does have rights or legitimate interests
in that name. See Do The Hustle, LLC v. Tropic Web D2000-0624 (WIPO Aug. 21, 2000)
and the cases there cited.
Respondent relies on the slang meaning of
the expression as accurately describing the content of his websites and
suggests Complainant
itself selected its mark by reference to the slang
meaning. This contention in
unpersuasive for the following reasons:
First, whether or not Complainant
selected its mark by reference to the slang meaning, the mark has become
distinctive of Complainant
and represents its valuable goodwill in the field of
music.
Second, the slang expression had scarcely
entered the mainstream before Complainant adopted it as its mark. This distinguishes the circumstances of this
case from one in which a commonly used descriptive word (such as apple) may be
used without
objection as a domain name resolving to a site that sells apples,
despite the fame of that word as a mark in the field of computers.
Third, as the Response makes clear, the
“min” and “in” suffixes are intended to refer to the present participle of the
verb “to jam,”
which has a distinct musical connotation. These suffixes serve to detract from the
descriptive slang meaning of the disputed domain names for which Respondent
contends.
Respondent denies using Complainant’s
popularity for any gain. However, he
does not deny knowledge of Complainant and its mark prior to registering the
disputed domain names or the worldwide reputation
of that mark. The Panel concludes that Respondent did have
such knowledge and that he chose the disputed domain names with their
particular musical
connotation in mind so as to attract to his web sites web
surfers seeking Complainant or its goods and services, who would not otherwise
find Respondent’s sites. Use of this
kind, which intentionally trades on the fame of another, cannot constitute a
‘bona fide’ offering of goods or services.
See Madonna Ciccone v.
Parisi, D2000-0847 (WIPO Oct. 12, 2000).
Complainant has established the elements
of Policy ¶ 4(a)(ii).
The Panel has found that Respondent
registered the disputed domain names with Complainant’s mark in mind, intending
to attract to
his web sites web surfers seeking Complainant or its goods and
services. This justifies a finding of bad faith registration. See e.g. SportSoft Golf, Inc. v.
Hale Irwin’s Golfers’ Passport, FA 94956 (Nat. Arb. Forum July 11, 2000); Marriott
Int’l, Inc. v. Marriot, FA 94737 (Nat. Arb. Forum June 15, 2000); Canada
Inc. v. Ursino, AF-0211 (eResolution July 3, 2000); Centeon L.L.C. v.
Ebiotech.com, FA 95037 (Nat. Arb. Forum July 20, 2000).
The Panel also finds that Respondent has
used the domain names intentionally to attract, for commercial gain, Internauts
to his web
sites by creating a likelihood of confusion with Complainant’s mark
as to the source, sponsorship, affiliation or endorsement of
his web sites.
Under Policy ¶ 4(b)(iv), this constitutes evidence of both bad faith registration
and bad faith use.
It matters not that, once arrived at
Respondent’s sites, those web surfers would soon realize they had been led to
the wrong place.
It is the element of intending misleadingly to convey in the
domain name an association with the trademark that justifies a finding
of bad
faith.
Complainant has established the elements
of 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 <pearljammin.com>
and <pearl-jamin.com> domain name be TRANSFERRED from
Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 5, 2004
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