Charles Rapier v. Dark Moon Management [2004] GENDND 753 (14 June 2004)

The Complainant is Charles Rapier, of Dallas, Texas, United States of America, represented by Bracewell & Patterson, LLP, United States of America.

The Respondent is Dark Moon Management, of Dallas, Texas, United States of America, of United States of America, represented by Krista J. Balekian.

The disputed domain names <charlierapierchat.com> and <charlierapier.com> are registered with Go Daddy Software

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2004. On March 23, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On March 23, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 27, 2004. The Center verified that the Complaint together with the amendment to 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”).

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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 April 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2004. The Response was filed with the Center on May 19/21, 2004.¹

By email of May 25, 2004, Complainant transmitted a Reply to Response to the Center and Respondent. By email of May 25, 2004, Respondent transmitted a Response to Reply to Response to the Center and Complainant. The parties were notified by the Center that the Panel to be appointed would have discretion whether to accept and consider the supplemental filings.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 27, 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 June 10, 2004, the Center advised the parties that the Panel would forward its decision by June 14, 2004.

Complainant is a musician who performs from time to time at venues in the Dallas, Texas and surrounding area. He has on a limited number of occasions performed to a wider audience. In particular, Complainant has provided evidence of one performance on Fox Sports Net following a Texas Ranger’s baseball game. The preponderance of the performances noted by Complainant are at coffee houses or pubs, and a number of such performances post-date the filing of the Complaint in this matter. (Complaint, 11 & Annex C, and Reply to Response, Annex A-1).

Complainant appears to generally perform under the name “Charlie Rapier” (Complaint, Annex A). However, Complainant has also performed and advertised his appearances under the name “Charlie”, and “Charles Rapier”. Complainant’s promotional CD prominently displays the name “Charlie” in stylized letters. (Response, para. 5 & Exhibits A-C).

On March 11, 2004, Complainant submitted an application for registration of the service mark “CHARLIE RAPIER” on the principal register of the United States Patent and Trademark Office (USPTO), ser. no. 7832795, in International Class 41, covering “entertainment”, claiming date of first use of January 1, 1999, and first use in commerce of November 6, 2001. As of April 23, 2004, no action had been taken by the USPTO with respect to this application.

According to the Registrar’s Verification, Respondent “Dark Moon Management” is the registrant of the disputed domain name <charlierapier.com>. According to a Network Solutions WHOIS database printout furnished by Complainant, the record of registration was created on November 3, 2002. According to the Registrar’s Verification, “Jennifer Maize” is the registrant of the disputed domain name <charlierapierchat.com>. According to a GoDaddy.com WHOIS database printout furnished by Complainant, that name was previously registered to Domains by Proxy, Inc., with the record of registration created on January 3, 2004. Krista J. Balekian, owner of Respondent (Dark Moon Management), has advised the Center that the name Jennifer Maize is a pseudonym for another person said to maintain the registration on her behalf, and that she is the beneficial owner of the registration for <charlierapierchat.com>.

Respondent (Dark Moon Management) is a marketing and promotion company owned and operated by Krista Balekian. It is not disputed by the parties that Charles Rapier and Krista Balekian were romantically involved during the period in which the disputed domain name <charlierapier.com> was registered by Respondent. It appears also that this disputed domain name was used to host a website promoting the career of Mr. Rapier at least until the deterioration of the personal relationship between the parties. The parties also appear to be in agreement that the romantic and business relationship involving Ms. Balekian and Mr. Rapier deteriorated in or about December 2003 or January 2004.

On February 11, 2004, Complainant, through his counsel, transmitted a cease and desist and transfer demand to Respondent regarding the two disputed domain names.

The parties have exchanged numerous factual allegations concerning the nature of the relationship between Complainant and Respondent. Respondent claims to have registered and maintained <charlierapier.com> in the context of her management promotion activities on behalf of Complainant and with the clear knowledge and consent of Complainant. In his supplemental submission, Complainant asserts that Respondent was acting as his legal counsel and had been directed to register the domain name in his name.

Complainant asserts that the disputed domain name <charlierapierchat.com> has been linked to <charlierapier.com>, that the website addressed by <charlierapierchat.com> has been used to tarnish the reputation and service mark of Complainant, and that this website includes links to commercial establishments. Respondent asserts that no such linkage to the <charlierapier.com> website exists, and that any links to local business establishments on the <charlierapierchat.com> website are not for commercial gain.

Because of the disposition by the Panel of the Complaint in this proceeding, it is not necessary to provide further details of the allegations among the parties.

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)).

Complainant asserts that he has common law service mark rights in the term “CHARLIE RAPIER” based on his use of that term to identify his services as a musician. Complainant states that the name “CHARLIE RAPIER” is “famous and distinctive”, and also refers to the alleged mark as “well known”. Complainant refers to Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, dated May 29, 2000, in support of the proposition that a service mark need not be registered to enjoy common law rights enforceable under the Policy. Complainant notes that he has filed an application for service mark registration.

Complainant contends that the disputed domain names are identical or confusingly similar to his service mark.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that Respondent had not been licensed or authorized to use his service mark in the domain name <charlierapier.com>, and that any deemed implied license “was clearly revoked by Complainant and expressly communicated to Respondent as early as December 2003”.

Complainant alleges that the domain name <charlierapierchat.com> was registered after Complainant broke off relations with Respondent, and that the website has been used to tarnish Complainant’s name, service mark and goodwill associated therewith. Complainant alleges that Respondent established the “fan” website only following notice of a dispute, and that this does not constitute a bona fide offering of goods or services. Complainant states that a legitimate fan website must be non-commercial, and that the instant website provides links to three commercial establishments.

Complainant asserts that <charlierapier.com> was initially set up when Respondent acted as Complainant’s “agent”, but is now used to divert Internet users to a website which is harmful to Complainant. Respondent’s failure to voluntarily transfer the domain name is alleged to constitute bad faith.

Complainant argues that the website addressed by <charlierapierchat.com> was established and is being used to disrupt the business of Complainant. Links provided to commercial establishments are alleged to confuse Internet users by suggesting that Complainant sponsors or endorses the referenced establishments. Establishment of the website is alleged to have followed notice of a dispute and this is argued to evidence bad faith. Finally, Complainant argues that Respondent provided false and misleading contact information with regard to <charlierapierchat.com>, which is evidence of bad faith and a breach of the Go Daddy Software, Inc. Domain Name Registration Agreement.

Complainant requests the Panel to direct the registrar to transfer the disputed domain names to him.

Respondent contends that Complainant has failed to establish rights in a trademark or service mark. Respondent asserts that Complainant has used various names to promote his musical services. Respondent argues that Complainant has performed infrequently under the alleged service mark. Respondent argues that Complainant has not registered his name as a service mark and enjoys no presumption of rights, that establishing common law service mark rights in a personal name requires the demonstration of secondary meaning, and that Complainant has provided no evidence that his name is recognized as distinctive among any group of consumers. Respondent states that Complainant’s few performances involving more than his local area were arranged by her (e.g., on Fox Sports Net) and not because of recognition of his name as a service mark.

Respondent asserts that she has rights and legitimate interests in <charlierapier.com> because she registered this name with the clear knowledge and consent of Complainant, acting as a promotional manager, and that the website operated under that name has been used to promote the career of Complainant.

Respondent claims that <charlierapierchat.com> was created as a constitutionally protected fan website that does not attempt to tarnish or disparage the goodwill of Complainant’s alleged service mark. Respondent states that messages posted on this website discussing Complainant’s personal life are posted by third parties, and that Respondent has not posted any messages that disparage Complainant. Respondent states that although this website contains links to three local venues where music is performed, she receives no compensation from such links.

Respondent states that <charlierapier.com> was registered and used with the full knowledge, consent and support of Complainant, and not for any reason that would constitute bad faith under the Policy.

Respondent asserts that although she registered the disputed domain name <charlierapierchat.com>, she has not acted as the host of the site addressed by that domain name. This activity was performed by the person using the pseudonym “Jennifer Maize”, whose identity Respondent has not disclosed, but from who she offered to provide an affidavit. Respondent alleges that she and Jennifer Maize had agreed to transfer this disputed domain name to Complainant, but that Complainant elected to reject such offer and initiate this proceeding.

Respondent claims that Complainant has committed perjury by stating in an affidavit that she represented him as legal counsel when registering the disputed domain name <charlierapier.com>.

Respondent argues that the Complainant has engaged in reverse domain name hijacking because he clearly authorized Respondent to register and use <charlierapier.com> to promote his business interests, and only initiated this proceeding in retribution as a consequence of a failed personal relationship.

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.

Complainant and Respondent have each filed a supplementary submission. The Panel exercises its discretion under the Policy to accept them. The added facts aid in clarifying certain elements of the initial submissions.

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.

In order to succeed on a claim of abusive domain name registration and use under the Policy, a complainant must first establish that it has rights in a trademark or service mark. Complainant in this proceeding has not carried that initial burden.

Complainant has only recently filed an application for registration of the claimed service mark “CHARLIE RAPIER” with the USPTO. The filing of an application for trademark or service mark registration creates no presumption of rights under the Policy.²

Complainant alleges rights in a common law service mark. This sole panelist has on a number of occasions elaborated the criteria for establishing common law service mark rights in a personal name under the Policy,³ as have other panelists.⁴

“From the standpoint of countries such as the United States that accord protection to ‘common law’ marks, a personal name may be protected under the UDRP if it has taken on the characteristics of a trademark or service mark: that is, if it has become well known among the relevant public (i.e., acquired sufficient secondary meaning) to distinguish the goods or services of one enterprise from those of others. Whether a personal name has acquired sufficient secondary meaning so as to take on the legal characteristics of a trademark or service mark will depend on a variety of factors, including the distinctiveness of the name, the extent of its usage in connection with goods or services, and the degree to which the name is recognized by the relevant public in connection with goods or services. Because a personal name might be common among the general public, the burden to demonstrate secondary meaning might be high in a particular case.”⁵

The names of a number of well-known media personalities and recording artists have been protected as service marks under the Policy. Complainant has referred, for example, to recognition of rights in the name “Julia Roberts”.⁶ However, in order for the personal name of an entertainer to enjoy protection as a service mark, the claimant must establish secondary meaning. That is, the claimant must demonstrate the personal name is recognized by the relevant public as being associated with the entertainment services of a particular person.

The evidence provided by Complainant in this proceeding is that he has performed at several local establishments and that in connection with those performances his name has been listed on an announcement. On one occasion he appeared on television, and Respondent has indicated that she secured this appearance for him. Respondent provided evidence that Complainant has used different name identifiers in connection with his musical activities, including prominently displaying the stylized term “Charlie” on a promotional CD. Complainant has provided no evidence of recognition of the identifier “CHARLIE RAPIER” by the consuming/listening public, such as a level of sales of music recordings, volume of ticket sales to live performances, or consumer survey. Respondent has asserted that Complainant enjoys virtually no local name recognition, and even less recognition on a wider geographic basis. Complainant bears the burden of proof in establishing consumer recognition and secondary meaning, and he has not carried this burden.

Because Complainant has failed to establish rights in a trademark or service mark, he cannot establish that Respondent has engaged in abusive domain name registration and use. The Panel need not consider the other elements necessary for success by Complainant in this proceeding.

The Panel rejects Complainant’s request to direct the registrar to transfer the disputed domain names to him.

Respondent alleges that Complainant has engaged in reverse domain name hijacking (RDNH). The main allegation is that Complainant was aware that he authorized her registration and use of the disputed domain name <charlierapier.com>, and brought this action primarily for the purpose of harassment.

Complainant has failed in this proceeding to meet the threshold requirement of establishing rights in a trademark or service mark. Although the case presented as a whole with regard to the two disputed domain names is weak from the standpoint of the Policy, it is not so lacking in substance as to constitute an exercise undertaken in bad faith. The Panel rejects Respondent’s request for a finding of RDNH.

For all the foregoing reasons, the request for a finding of reverse domain name hijacking is denied.

¹ Email correspondence forwarded by Respondent indicates that initial transmission of the Response was attempted on May 19, 2004 and that transmission was not successful due to a difficulty on the receiving end of the transmission. Notification of the difficulty was transmitted by the Respondent on May 20, 2004, and retransmission of the Response succeeded on May 21, 2004. The Panel considers the Response to have been filed in a timely manner.

² An application creates a presumption of use contingent on subsequent registration. 15 USCS § 1057(c).

³ See, e.g., Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case D2000-0299 (June 9, 2000) and Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case D2000-0300 (June 13, 2000); Marvin Lundy and Law Offices of Marvin Lundy, LLP v. Scott E. Idmaond (Scott E. Diamond), WIPO Case No. D2001-1327, decided February 14, 2002; Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073, decided February 21, 2003 (concurring with separate opinion) 2001; White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001, March 26, 2004.

⁴ A list of decisions concerning this subject matter is incorporated in Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names in the Internet Domain Name System, , September 3, 2001 (http://wipo2.wipo.int). More recent decisions are cited in Planned Parenthood, id.

Generic Top Level Domain Name (gTLD) Decisions

Charles Rapier v. Dark Moon Management [2004] GENDND 753 (14 June 2004)

World Intellectual Property Organization