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Generic Top Level Domain Name (gTLD) Decisions |
Paisley Park Enterprises v. James Lawson
Claim Number: FA0412000384834
PARTIES
Complainant
is Paisley Park Enterprises (“Complainant”),
represented by Catherine E. Maxson of Davis Wright Tremaine LLP,
1501 Fourth Ave, Suite 2600, Seattle, WA 98101. Respondent is James Lawson
(“Respondent”), P.O. Box 8660, Waco, TX 76714.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <paisleyparkstudios.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.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
16, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on December 20, 2004.
On
December 21, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <paisleyparkstudios.com>
is registered with Network Solutions, Inc. and that the 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
December 21, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of January 10, 2004 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@paisleyparkstudios.com by e-mail.
A
timely Response was received and determined to be complete on January 7, 2005.
A
timely Additional Submission was received from Complainant on January 12, 2005.
A
timely Additional Submission was received from Respondent on January 17, 2005.
On January 17, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s
Domain Name Is Confusingly Similar to Complainant’s Trademarks.
a.
PAISLEY PARK and PAISLEY PARK STUDIOS are famous trademarks
owned by Complainant.
PAISLEY PARK and PAISLEY PARK STUDIOS are
trademarks closely associated with Prince, the legendary musician and
entertainer, and the
sole owner of Complainant. As early as April 22, 1985, Prince’s company Paisley Park
Enterprises released recordings under the mark PAISLEY PARK, and has sold
millions of recordings under this mark throughout the United States and the
world. To solidify its rights in the
mark PAISLEY PARK, Paisley Park Enterprises obtained two United States
trademark registrations as described
above in Section 4(c) of this Complaint. Significantly, the registration for PAISLEY
PARK has become incontestable, meaning that this registration is conclusive
evidence of
Paisley Park Enterprises’ ownership of the PAISLEY PARK mark and
its exclusive right to use this mark in connection with phonograph records, audiotapes, CDs, and videotapes. See
15 U.S.C. § 1115(b). Paisley
Park Enterprises’ other registration, the registration for PAISLEY PARK and
Design, functions as prima facie evidence of its
rights in the mark. See 15 U.S.C. § 1115(a).
In
addition to the sale of audio and video recordings under the mark PAISLEY PARK,
Prince opened the studio complex known as PAISLEY
PARK STUDIOS outside of
Minneapolis, Minnesota in 1987. PAISLEY
PARK STUDIOS quickly became famous throughout the world as a state-of-the-art
recording and film studio. Many of the
world’s top artists have used PAISLEY PARK STUDIOS’ services to create
chart-topping music, full-length feature films,
commercials, and music
videos. See Complainant’s website at
http://www.paisleyparkstudios.net. Famous musicians who have used the studios
for recording and/or rehearsing include REM, Barry Manilow, and the Bee
Gees. This past summer PAISLEY PARK
STUDIOS hosted an open house for many audio and video companies.
Through such use of the mark PAISLEY PARK STUDIOS, which has occurred from
1987 to the present, Complainant has acquired nationwide
common-law rights in
this mark.
Complainant
protects the significant value of the PAISLEY PARK and PAISLEY PARK STUDIO
marks. When
Complainant learned of Respondent’s use of the confusingly similar domain name <paisleyparkstudios.com>,
Complainant promptly demanded that Respondent cease such use and transfer the
infringing domain name to Complainant.
Respondent has refused to comply with Complainant’s demands and has sent
no response. Further emphasizing the
close association of PAISLEY PARK and PAISLEY PARK STUDIOS with Prince, and
Complainant’s efforts to protect
the value of these marks, Complainant has not
licensed anyone outside of Prince’s family of companies to use these marks, and
certainly
has not given Respondent permission to use the PAISLEY PARK STUDIOS
mark.
b.
Respondent’s
domain name <paisleyparkstudios.com> is confusingly similar to
Complainant’s trademarks.
Respondent’s
domain name <paisleyparkstudios.com>
is confusingly similar to Complainant’s marks.
Indeed, <paisleyparkstudios.com>
is identical to Complainant’s mark PAISLEY PARK STUDIOS. A top-level domain (TLD) like “.com” is a
generic term and not a source identifier capable of distinguishing the domain
name from
Complainant’s otherwise identical PAISLEY PARK STUDIOS mark. See
United States Patent & Trademark Office, TMEP § 1215.02 (3rd ed. 2003)
(“When
a trademark, service mark, collective mark or certification mark is composed,
in whole or in part, of a domain name, neither
the beginning of the URL
(“http://www.”) nor the TLD have any source-indicating significance.”), accessible at http://www.uspto.gov/web/offices/
tac/tmep/.
In
addition, <paisleyparkstudios.com>
is confusingly similar to Complainant’s mark PAISLEY PARK. The addition of the generic term “studios”
does not distinguish the domain name from Complainant’s PAISLEY PARK mark. See Trump, v. Volk Amit, FA 99688
(Nat. Arb. Forum Oct. 15, 2001) (“[T]he
<trumpplazahotel.com>
domain name is confusingly similar to Complainant’s mark because the Respondent
has merely added the generic word ‘hotel’ to
the end of the Complainant’s TRUMP
PLAZA mark. It has been established
that the use of generic terms does not defeat a claim of confusing
similarity.”).
In light of the similarity between the <paisleyparkstudios.com> domain
name and the PAISLEY PARK STUDIOS and PAISLEY PARK marks, consumers would
likely think that Complainant was associated with
or controlled the domain name
<paisleyparkstudios.com>. Indeed, Complainant chose the virtually
identical domain name, <paisleyparkstudios.net>, as the web address for
PAISLEY PARK
STUDIOS because consumers would expect to find the website for the
studios at a domain name consisting of “paisleyparkstudios.” Clearly Respondent’s domain name is
confusingly similar to Complainant’s trademarks.
2. Respondent
has no rights or legitimate interests in respect of the domain name.
Respondent holds no rights or legitimate
interests in the <paisleyparkstudios.com>
domain name. To the best of Complainant’s
knowledge, Respondent has never made a bona fide offering of, or made any
demonstrable preparations to
offer, goods or services under the mark
PAISLEYPARKSTUDIOS or anything similar thereto. Complainant has certainly not authorized Respondent to make any
use of its famous trademark, and Complainant’s incontestable U.S.
trademark
registration for PAISLEY PARK is conclusive evidence of Complainant’s exclusive
right to use this mark in connection with
the goods listed in the registration. See 15 U.S.C. § 1115(b). Moreover,
Respondent’s choice of a domain name that is identical to one of Complainant’s
trademarks, and essentially identical to
the other, further indicates that
Respondent cannot have rights or legitimate interests in the domain name. See Trump, v. Volk Amit,
FA 99688 (Nat. Arb. Forum Oct. 15, 2001)
(“Respondent’s choice of a confusingly similar variation of Complainant’s
famous marks supports a finding of a lack of rights or
legitimate interests.”).
Nor is Respondent making a bona fide
offering of goods or services under, or making any use of, the domain
name. Respondent registered the domain
name on June 16, 2003, yet the website associated with the domain name is
inactive. Complainant also has no
reason to believe that Respondent is known by the domain name <paisleyparkstudios.com>. Respondent’s lack of rights or legitimate
interest in the domain name warrants transferring the name to Complainant.
3. Respondent’s
Domain Name Was Registered and Is Being Used in Bad Faith.
Respondent can have had nothing other
than a bad faith basis for registering the domain name <paisleyparkstudios.com> in light of the fame of
Complainant’s identical PAISLEY PARK marks.
Knowingly registering a domain name containing a famous trademark
is evidence of bad faith. See Trump,
v. Volk Amit, FA 99688 (Nat. Arb. Forum Oct. 15, 2001). In the Trump
case, Complainant held U.S trademark registrations for TRUMP and TRUMP PLAZA
for casino, hotel, and entertainment services, and had
built up significant
rights in these marks. Eight years
after the complainant obtained its registrations, the respondent registered the
domain name. In light of the
complainant’s well established and well known rights in the TRUMP marks, the
panel concluded that the registrant had
known of the complainant’s rights in
the TRUMP marks and therefore registered the domain name in bad faith. See
Trump, v. Volk Amit, FA 99688 (Nat. Arb. Forum Oct. 15,
2001).
As in the Trump case, Respondent must have known of Complainant’s famous
marks PAISLEY PARK STUDIOS and PAISLEY PARK when it registered the domain
name <paisleyparkstudios.com>. Complainant has used its marks throughout
the world since the mid-1980s and obtained the registrations for these marks in
1998. However, Respondent did not
register the domain name until June 2003, well after Complainant’s marks had
become famous. Surely these marks were
known to Respondent at the time he registered the domain name. Even if Respondent did not have actual
knowledge of Complainant’s marks (which is unlikely), Respondent had
constructive knowledge
of the PAISLEY PARK marks by virtue of Complainant’s
trademark registrations.
Furthermore, Respondent’s failure to use
the domain name is evidence of his bad faith.
“Evidence of nonuse of a domain name for a period of time demonstrates
use of the domain name in bad faith.” Pueblo Int’l, Inc. v. xtra-Net Internet
Service GmbH, FA 94975 (Nat. Arb. Forum July 17, 2000). Here, Respondent registered the domain name
on June 16, 2003, yet as of December 13, 2004, no use was being made of the
site.
Further still, Respondent’s failure to
respond to Complainant’s correspondence about the domain name is evidence of
bad faith. See Pueblo Int’l, Inc. v.
xtra-Net Internet Service GmbH, FA 94975 (Nat. Arb. Forum July 17,
2000). In sum, Respondent has
registered the <paisleyparkstudios.com>
domain name in bad faith and the domain name should be transferred to
Complainant.
B. Respondent
This
Response specifically responds to the statements and allegations contained in
the Complaint and includes any and all bases for
the Respondent to retain
registration and use of the disputed domain name.
The
Complaints brought against me in this case are based on completely false claims
and/or assumptions.
My use of the domain name <paisleyparkstudios.com>
is not in violation of any of Complainant's claimed PAISLEY PARK trademarks;
Complainant's “Paisley Park” name is currently described
as a "Defunct
Record Label"; and Complainant's Paisley Park Studios has largely been closed
since 1996.
My use of Paisley Park Studios does not infringe on any of
Complainant's claimed PAISLEY PARK trademarks.
There is no resemblance between my use of Paisley Park Studios or <paisleyparkstudios.com> and any
of Complainant's claimed trademarks.
Very
few people know what a “paisley” is. To
most people it's just a design on fabric. Among its many forms, the paisley is
a cosmic spiral, commonly found in nature. A double
paisley forms the yin-yang
symbol, symbolizing the balance of nature.
Paisley designs date back to ancient times, and are full of broad and
deep-rooted cultural symbolism. Above all, the paisley is deeply
rooted in
nature, symbolizing the womb and creation.
The term “park” in this case has a broad meaning, but most specifically
refers to “nature park,” referring to the conservation of
nature through human
stewardship, and human design. The term
“studios” in this case refers to design studio, specifically the ecological
design of urban, industrial, and rural “parks”
or habitats.
For my purpose, “Paisley Park Studios,” and <paisleyparkstudios.com> represent Earth stewardship and
sustainable, ecological design. I have
enclosed a typical paisley design, which exemplifies a “Paisley” or nature
park. It symbolizes “creation,” cornucopia
or abundance, and the conservation of nature through design, or Earth
stewardship.
I have
also enclosed a few sample pages from my projects related to conservation and
environmental design for which I plan to use
this domain name.
Clearly,
I am not in violation of any of Complainant's claimed trademarks.
Complainant
claims that, because I have not used the domain name in the year and a half
since I registered it, that this is an indication
that I registered the name in
bad faith. That is pure folly. The
simple fact is, I have tons of work I want to put up on the Internet, but a
lack of time, and a lack of web skills is a hindrance. Everything I do takes a lot longer than I
plan, including responding to this Complaint.
The reason I have not put the domain name into effect is because of a
lack of time and resources. That does
not mean that I am not working on it. I am working on it. Having to take time away from my work to
respond to this Complaint is an example of the many problems that distract from
and delay
everything I do. I have worse
problems than this that cause my work to back up.
This Complaint has been filed against me by the rock star Prince.
Complainant states: “Respondent can have had nothing other than
a bad faith
basis for registering the domain name <paisleyparkstudios.com>
in light of the fame of Complainant's identical Paisley Park marks.” Prior to this Complaint, I knew almost
nothing about Prince, and based on my research of the history of the “Paisley
Park” name, if
you were not a hardcore fan of Prince, you would almost
certainly have never heard of it. Paisley Park is currently described as
a
“Defunct Record Label,” and has been since 1993 or 1994. And Paisley Park
Studios has been closed since 1996.
Bad
faith is demonstrated by lying. The
Complaint states that I “sent no response” to Complainant's charges of
trademark infringement, and demands to give them the name.
That is not
true! I did send a response to
Complainant. I have enclosed a copy of the response I sent to Complainant. That letter further states my position in
response to this Complaint.
That
letter was almost certainly received by Complainant, and/or his
representatives, long before this UDRP Complaint was filed against
me.
Complainant
claims: “common law rights in the United States in the mark Paisley Park
Studios based on the use of this mark in connection
with recording and
rehearsal studio services, and film production and editing services.” Complainant's Paisley Park Studios has been
closed since 1996.
One page of Complainant's own exhibits is a copy of an ABCnews.com
article, titled, “Prince's Paisley Park Studios Reopens,” which
states “Paisley
Park has largely been closed since 1996...”
See
also the following web page, which says:
“Paisley
Park Studios is no longer open to the public. This site shows the facility as
it was when it closed in 1996.” at
http://www2.bitstream.net/~tgg/tgg/paisleypark/.
Complainant's
registered Paisley Park trademarks are for “goods and services” of “phonograph
records, audiotapes, compact discs, and
videotapes embodying musical
performances.” That trademark was
registered in 1998, and I found no indication that it has ever been used in
practice. Paisley Park is currently
referred to as a “Defunct Record Label,”
and has been since 1993 or 1994, four or five years before the current
trademark was registered. Apparently
Complainant registered the Paisley Park trademark, in 1998, with the intention
of reviving the brand name, but I find no
indication that this has been
implemented, to this day.
The
following web page has a copy of a Billboard Magazine article from 1996, which
refers to:
"Prince's now defunct Warner Bros.-distributed Paisley Park
label." at http://www. millennianet.com/dumyhead/jasonbillb.html.
On
<wikipedia.org>, the most popular encyclopedia on the Internet, Paisley
Park is listed in the category of "Defunct Record
Labels."
I have
enclosed copies of two pertinent web pages from <wikipedia.org>. Here are
some pertinent quotes from those web pages:
“NPG
Records was formed by Prince in 1993 to release his music after Paisley Park
Records was shut down by Warner Bros.”
http://en.wikipedia.org/wiki/NPG_Records
“In 1994, amid Prince's feud with Warner Bros., Warner ended its
distribution deal with Paisley Park, effectively closing the label.
Prince
later started NPG Records.” at http://en.wikipedia.org/wiki/Paisley_Park_Records.
And
here is the homepage for NPG records: http://www.npgmusicclub.com/.
That
web page is described as: “Official Home of Prince and The NPG.”
NPG is
short for Prince's band, the New Power Generation.
Prince
has a well-publicized history of changing names, and then changing back again.
And that certainly appears to play a part in
Prince's use of “Paisley Park” and
“Paisley Park Studios.”
It is
highly likely that Complainant stopped using the name “Paisley Park Studios”
when he stopped recording under the Paisley Park
record label, and created the
NPG record label. Certainly it became
of less interest to him.
Prince's
record label is NPG, and not Paisley Park.
His latest album, in 2004, “Musicology,” was recorded under the NPG
record label.
Every
Prince biography and “discography” I found on the Internet indicates that
Prince has not recorded under the PAISLEY PARK brand
name since 1993 or 1994.
I find
no indication that anybody has produced anything under the Paisley Park brand
name since 1993 or 1994. Certainly it is not
a famous brand that most people
would know about.
The facts
in this case are readily apparent: my use of the domain name is not in
violation of any of Complainant's claimed PAISLEY
PARK trademarks;
Complainant's “Paisley Park” name is or was a defunct record label; and
Complainant's Paisley Park Studios has largely
been closed since 1996.
C.
Complainant’s Additional Submission
1.
The <paisleyparkstudios.com> domain name is
confusingly similar to Complainant’s trademarks.
Respondent does not deny that the domain
name <paisleyparkstudios.com> is confusingly similar to the PAISLEY PARK
STUDIOS and PAISLEY PARK trademarks.
Indeed, Respondent could not in good faith argue that the domain name
and marks are not confusingly similar as they are identical
in all relevant
respects. Rather than discussing the
confusing similarity between the domain name and the trademarks, Respondent
relies on one erroneous and
two irrelevant assertions in arguing that
Complainant does not have any trademark rights in PAISLEY PARK STUDIOS or
PAISLEY PARK. Such arguments do not
overcome Complainant’s proof that it has acquired and still possesses
common-law and registered trademark rights
in PAISLEY PARK STUDIOS and PAISLEY
PARK, respectively.
First, Respondent erroneously claims that
Paisley Park Studios has been closed since 1996. To the contrary, as Complainant correctly asserted in its
Complaint, Complainant has consistently offered its recording studio and
other
services under the trademark PAISLEY PARK STUDIOS since 1987. PAISLEY PARK STUDIOS is famous throughout
the world as a state-of-the-art recording and film studio, and these facilities
have been
used by many of the world’s top artists. See
http://www.paisleyparkstudios.net (domain name used by Complainant due to
Respondent’s registration of <paisleyparkstudios.com>,
which points to website describing the services Complainant offers at PAISLEY
PARK STUDIOS). Through such
long-term and well-known use, Complainant has established strong common-law
rights in the PAISLEY PARK STUDIOS mark throughout
the United States.
To support its incorrect assertion that
the studios are closed, Respondent points to an ABCnews.com web page that
merely states that
Paisley Park Studios has “largely been closed, though Prince
continued to record and perform there.”
The other web page to which Respondent points, which comes from <bitstream.net>
from 1995, states that the studios were not
open to the public. Importantly, neither of these web pages is
entirely accurate and, in any event, neither claim that PAISLEY PARK STUDIOS
were completely
closed or that Complainant had ceased offering services under
the PAISLEY PARK STUDIOS mark. In fact, the studios never shut down. For a brief period (from 1996 through the
first half of 2004), third parties used the studios at the invitation of
Prince. For example, Larry Graham and
Chaka Khan recorded albums there in 1998.
The studios may not have been generally open to the public, i.e.,
available to any band who might wish to rent out the studios, but
they were by
no means closed (ABCnews.com web page reports that as of August 2004,
Complainant is “‘essentially hanging the ‘open’
sign out front’” of PAISLEY
PARK STUDIOS). Thus, all members of the
general public may not have had the ability to use the studios for a brief
period, but the recording and
rehearsal studio (and related) services that Complainant
offers under the PAISLEY PARK STUDIOS mark were actively used by Prince
and
other musicians throughout this period.
In addition to his erroneous assertion
that PAISLEY PARK STUDIOS is not open, Respondent raises two irrelevant points
in an effort
to argue that Complainant does not possess rights in the
trademarks. Respondent asserts that
because Paisley Park has been described as a former Warner Bros. label that is
now “defunct,” Complainant
does not have trademark rights in PAISLEY PARK STUDIOS
or PAISLEY PARK. Whether Warner Bros.’
Paisley Park record label is active or defunct (and, similarly, whether
Prince’s current record label is called
“NPG”) is wholly irrelevant to this
proceeding and whether Complainant has common-law or registered rights in
PAISLEY PARK STUDIOS
and PAISLEY PARK.
Lastly, Respondent tries to cast doubt on
Complainant’s United States trademark registrations for PAISLEY PARK by
pointing out that
Respondent was not able to find any “indication that [this
mark] has ever been used in practice.”
However, a more persuasive authority, namely the United States Patent
& Trademark Office, has accepted Complainant’s evidence
demonstrating that
Complainant has used the PAISLEY PARK marks.
In order to obtain these registrations, Complainant had to submit
evidence that it made “use” (in the trademark sense, that is, offered
goods or
services to the public under this mark) of these marks. Moreover, PAISLEY PARK
(No. 2,150,287) achieved incontestability status in 2004, meaning that
Complainant submitted, and the USPTO accepted,
evidence of use of the mark in
early 2004. Clearly Complainant
has used and is using the PAISLEY PARK mark in connection with the goods listed
in the registration. Complainant’s United States trademark registration
for PAISLEY PARK (No. 2,150,287) is conclusive evidence of Complaint’s
trademark rights, and PAISLEY PARK and Design (No.
2,150,301) is prima facie evidence of such rights.
In sum, Respondent has failed to counter
the evidence that Complainant has common-law and registered trademark rights in
PAISLEY PARK
STUDIOS and PAISLEY PARK, respectively. Since Respondent has not contested the fact that these marks are
confusingly similar to the <paisleyparkstudios.com>
domain name, Complainant has therefore satisfied this prong in the analysis.
2. Respondent
has no rights or legitimate interests in respect of the domain name.
Respondent holds no rights or legitimate
interests in the <paisleyparkstudios.com>
domain name. Respondent does not deny
that he has failed to make a bona fide offering of, and failed to make any
demonstrable preparation to offer,
goods or services under the
PAISLEYPARKSTUDIOS mark or domain name.
None of the materials that Respondent submitted with his brief
demonstrate use of Paisley Park Studios to identify his services, and
Respondent has offered no excuse for not having used this domain name. Furthermore, Respondent admits that he has
not used the domain name, allegedly because he is busy, even though he has held
the registration
for 1.5 years.
Respondent has not even put up a placeholder to inform others of his
intended use for the domain name, which constitutes further evidence
that
Respondent lacks any legitimate interest in <paisleyparkstudios.com>.
Respondent’s lack of rights or legitimate interest in the domain name
warrants transferring the name to Complainant.
3. Respondent
registered <paisleyparkstudios.com> in bad faith and the domain
name is being used in bad faith.
Respondent had not rebutted the evidence
of his bad faith registration and use of the domain name. First, to explain his selection of <paisleyparkstudios.com> as a
domain name, Respondent only offers the utterly implausible assertion that he
chose to combine the words “paisley” “park” and
“studios” as the name for
bioregional planning work services.
Given that “paisley” is commonly associated with a fabric design (as
Respondent admits), a “park” is a tract of land set aside for
public use
(American Heritage Dictionary, Second College Edition), and a “studio” is an
artist’s work room or a room or building
where tapes and records are recorded
(American Heritage Dictionary, Second College Edition), it defies belief that
Respondent selected
Paisley Park Studios to identify his alleged bioregional
planning work. How does Paisley Park
Studios represent “‘creation, cornucopia or abundance, and the conservation of
nature through design, or Earth
stewardship” as Respondent claims? The fact that Respondent has apparently
never used “Paisley Park Studios” in connection with his services may
constitute an acknowledgment
that the name bears no relation to his services.
Second, even if the
panel were to accept Respondent’s assertion that he did not have actual
knowledge of Complainant’s marks (which is unlikely),
Respondent had
constructive knowledge of the PAISLEY PARK marks by virtue of Complainant’s
United States trademark registrations,
and therefore registered the domain name
with knowledge of Complainant’s trademark rights.
Third, Respondent’s
admitted failure to use the domain name is evidence of his bad faith. Pueblo
Int’l, Inc. v. xtra-Net Internet Service GmbH, FA 94975 (Nat. Arb. Forum
July 17, 2000).
Fourth, to
Complainant’s knowledge, Respondent failed to respond to Complainant’s
correspondence about the domain name, further evidence
of bad faith. See
Pueblo Int’l, Inc. v. xtra-Net Internet
Service GmbH, FA 94975 (Nat. Arb. Forum July 17, 2000). Although Respondent claims to have responded
to one of the letters that Complainant’s attorneys sent to him, no such
response was
ever received by Complainant or its attorneys. Complainant has never misled the Panel on
this point, as Respondent has claimed.
Moreover, Respondent has not submitted an actual copy of his alleged
response or any evidence that it was mailed.
Also, Respondent did not attempt to communicate with Complainant when he
knew or should have known that Complainant did not receive
his alleged
response. Respondent’s letter was dated
October 18, 2004, the day before Complainant’s attorneys sent their second
letter to Respondent in which
the attorneys indicated that they had not
received a response from Respondent.
Presumably Respondent received Complainant’s attorneys’ second letter
after he had sent his response, yet, incredibly, Respondent
ignored the
attorneys’ express request that Respondent call. If Respondent truly wanted to explain his position to
Complainant, his receipt of a letter reflecting the non-receipt of Respondent’s
correspondence would have prompted Respondent to contact Complainant’s
attorneys. (Respondent had
Complainant’s attorneys’ mail and email addresses, and telephone and fax
numbers, so could easily be reached if Respondent
had desired to do so.) Yet Respondent does not deny that no such
efforts were made.
In sum, Respondent has registered the <paisleyparkstudios.com> domain
name in bad faith and the domain name should be transferred to Complainant.
D. Respondent’s additional submission.
Complainant maintains that “PAISLEY
PARK STUDIOS is famous throughout the world.”
The
claim to fame of Paisley Park and Paisley Park Studios has been laid to rest.
These names clearly do not have the name recognition
that Complainant claims.
It's a defunct record label and a recording studio that has largely been closed
since 1996. How famous can
that be?
Complainant claims that it is “unlikely” that I was not aware of Complainants clamed
trademarks.
I registered <paisleyparkstudios.com>
to use with my environmental design and environment education projects. In my registration of <paisleyparkstudios.com> there was no knowledge, no idea, no
connection between Prince, any name associated with Prince, any company,
organization or facility
associated with Prince, or anything to do with Prince
in any way, nor with the music industry. Prince was a complete zero in the
registration of <paisleyparkstudios.com>. I am no fan of Prince. I have never had any
of his music, or saw his movie, or known much of anything about him. I've seen Prince mentioned in the news
numerous times, but there was no mention of Paisley Park or Paisley Park
Studios.
Complainant
does not have exclusive use of the name “Paisley Park.” Other people use the
name “Paisley Park,” and have the right to
do so, if they are not using the
name in connection with the goods or services listed in Complainant's claimed
trademarks.
The
Yellow Pages online (<switchboard.com>) lists these businesses, a
delicatessen, apartment, and hair salon, with the name
“Paisley Park.”
Paisley Park
827 Lexington Avenue
Mansfield, OH 44907-1920
Phone: (419) 756-3357
Fax: (419) 756-3797
http://www.Paisley-Park.com
Cuisine: Delicatessen
Services: Lunch, Banquet Facilities, Take Out/Carry Out, more...
Business Types: Caterers, Banquet Rooms, Miscellaneous Personal
Services, more...
Paisley Park Apartments
1120 South Ave Apt C1
Forest Park, GA 30297-3903
Phone: (404) 361-4410
Business Types: Apartments
Paisley Park Hair Salon
7295 Highway 85 Ste 202
Riverdale, GA 30274-2966
Phone: (770) 991-2793
Business Types: Beauty Salons
Clearly,
none of these businesses are in violation of Complainant's claimed trademarks.
These businesses are not using the name “Paisley
Park” in connection with the
goods or services listed in Complainant's claimed trademarks, and neither am I.
Complainant's
claimed trademarks only gives Complainant rights to use PAISLEY PARK and
PAISLEY PARK STUDIOS in connection with the
goods or services listed in
Complainant's claimed trademarks (products and services related to recordings
and recording studio services).
Therefore I have the right to use “Paisley Park
Studios” and <paisleyparkstudios.com>
for my intended purposes of conservation, environmental design, and
environmental education.
My use
of the term “Paisley Park Studios” has ancient roots in natural design, and
that is precisely why I chose it.
Complainant claims as "utterly implausible" my combination of
the words paisley-park-studios to describe conservation and
environmental
design (bioregional planning).
Complainant uses Paisley Park to refer to a recording studio, which
cannot plausibly be defined as a Paisley Park.
Complainant
asks: “How does Paisley Park Studios represent ‘creation, cornucopia or
abundance, and the conservation of nature through
design, or Earth
stewardship?’”
This
argument is especially appalling in light of the fact that this lawyer
represents an artist. The nature of
symbols is the pondering of their meaning. Instead of seeing the meaning of
things, Complainant has taken the position
of distorting the meaning of things.
Paisleys
are artistic designs that symbolize nature, creation, cornucopia, and
diversity, and that easily translates to the conservation
of nature through
design.
Dictionaries
don't say much about the paisley. So,
I present quotes from the Internet in an exhibit, together with my comments,
which should help cast light on this debate.
I also included notes on the cornucopia, which is a sister symbol
of the paisley.
It's
easy to see why I chose the paisley to represent my environmental design and
environmental conservation work.
Here
are some comments about symbols that I sent to someone recently:
“It's often said in the advertising business, ‘Image is
everything.” An article in the news
discussed Waco's need to create a new image for itself before it can meet its high-tech
potential. I was already working on
that before I read that article, and have developed many ideas. My work is all about image. That's all I've ever thought about: images
and symbols. Symbols are very powerful.
Image is what sells products. I'm
trying to create images to inspire humanity to buy our potential, rather than
leaving it sitting on the shelf. Image is how you
inspire and motivate
people. Image is the framework on which
everything is built.”
Complainant's selection of the most shallow dictionary definitions
for “paisley” and “park” to refute my use of Paisley Park Studios
is shallow
and corrupt. Paisley designs are
inherently symbolic of nature and creation. Parks are designed and engineered.
In a stylized sense <paisleyparkstudios.com>
describes a nature park design studio. These terms are highly appropriate for
my use, but if you apply Complainant's own dictionary
criteria to a recording
studio, it sounds more like a sewing factory, and makes no sense at all.
The paisley is all about natural design. The <paisleyparkstudios.com>
domain name represents sustainable ecological design.
Complainant's
selected definition for park is deliberately corrupted. Parks are designed and
engineered. Park designs are specialized
fields of engineering. Design is the
underlying feature, whither it's a nature park, industrial park, business park,
urban park,
amusement park, fair park, sports park, ski park, skate park, or
swim park.
Botanical
gardens are parks. There are gene parks, fruit parks, biotech parks,
agro-parks, wildlife parks, forest parks, desert parks,
ocean parks, research
parks, innovation parks, technology parks, medical parks, science parks,
discovery parks, wind parks, energy
parks, venture parks, adventure parks—just
to name a few. For my purpose, park has just as much meaning as the paisley.
Here is
a park that is particularly relevant to this case: <aerospacepark.com>.
I registered <aerospacepark.com>
and <hostoftexas.com> two months,
<itvillage.com> three months, and <locationx3.com> five months,
before I registered
<paisleyparkstudios.com>,
and I'm not using any of those names yet either! But I did draw up an outline
for using them a few weeks ago. Complainants claim
that I registered <paisleyparkstudios.com> in bad
faith because I am not using it is pure folly. And here are four examples of
how foolish that claim is. Here are four domain
names that were registered
months before I registered <paisleyparkstudios.com>,
and they are not being used yet either.
Those names were all registered to use for my "Image
Waco" project to create a new image and public relations campaign for
Waco, the same way I registered <paisleyparkstudios.com>
to use for my environmental design and environmental education projects. And
there is a connection to all of these projects.
I have enclosed the ideas I drew up recently to use <aerospacepark.com>, <hostoftexas.com>, <itvillage.com>, and
<locationx3.com>. These four names were registered months before I
registered
<paisleyparkstudios.com>.
I have not used them, and I only recently began drawing up an outline for using
them. These are three parts of a much larger "Image
Waco" project to
create a new image and public relations campaign for Waco and central Texas.
There are 17 elements in the Image
Waco project, so far. The element I'm
working on now is called "Design Science Revolution." There is a
conservation and
environmental design connection to the Image Waco project,
which is not readily apparent in the four elements I have enclosed. The
Image Waco
project is designed to lead into elements related to conservation and
environmental design, particularly housing, global
computer simulations, a
global bioregional information and technology exchange, the New Apollo Project
(ApolloAlliance.org, economic
analysis conducted by a Waco economist, Ray
Perryman) and other issues.
More recently I registered <greencitydesign.com>, which is
part of the Waco Image project. The <greencitydesign.com> project
is also
part of my environmental design and environmental education projects, for which
purpose I registered <paisleyparkstudios.com>. I enclosed the outline I have written for
the GreenCityDesign.com project, as an example of the work for which I
registered <paisleyparkstudios.com>.
One of the famous sayings of Buckminster Fuller is: “Rule 1: Never show half–finished
work.” I'm
working hard on these things, and a whole lot more, and I certainly intend to
move this stuff to the Internet, but I am working
on broad concepts, and the
Internet has not been a focus so far.
I'm also not good at computers and webmastery. I prefer to focus on my limited time on what I am good at. The examples of my work that I have
presented are only a tiny fraction of what I'm working on, and none of it is on
the Internet. That doesn't give
Complainant any rights to my domain names.
I don't
think the following has much bearing on this case, but I feel obligated to
respond to it.
Complainant
is deliberately creating confusion regarding the letter that I sent to
Complainant, weeks before this UDRP Complaint was
filed. A reading of the note
appended to the top of the letter clearly indicates that the letter was mailed
after I received Complainant's
second letter.
It starts by saying "I am in receipt of your second letter."
And then states when the letter was written: "I wrote
this soon after I
received your first letter, and then put it aside". The date on the letter
is the date the letter was written,
not the date it was mailed. A lawyer should
have the intelligence to easily discern this, and truly, I believe Complainant
does discern
this, but is creating confusion.
Either
Complainant is confused or is trying to create confusion. Complainant states
"Respondent did not attempt to communicate
with Complainant when he knew
or should have known that Complainant did not receive his alleged
response."
It
didn't happen this way, but according to Complainant, I sent a letter, and then
shortly thereafter, received another letter from
Complainant stating that
Complainant had not received a reply from me.
If it had happened that way, I would have naturally assumed that our
letters had crossed in the mail, and that Complainant would receive
my second
letter shortly. It doesn't really
matter, because that is not how it happened. I sent my letter after receiving
Complainant's second letter, not before.
Complainant
says, “Respondent has not submitted an actual copy of his alleged response or
any evidence that it was mailed.” I
don't know what Complainant accepts as and "actual copy", but Complainant
has obviously read the copy of the letter that
I submitted to the forum.
The
letters that Complainant sent to me were not certified, and neither was mine. I
sent the letter, they almost certainly received
it, but they are claiming that
I didn't send it, and that this is evidence of bad faith. Isn't that
convenient.
Complainant
states “incredibly, Respondent ignored the attorneys’ express request that
Respondent call.” What's incredible
about that? I'm not beholden to these people. They want to act like I owe them
something. I owe them nothing. And
that’s the attitude I had when I receive their letter. Their letter is dated Oct. 4, and they gave
me till Oct. 8 before they initiate legal proceedings against me. A letter like that from a big lawyer for
Prince is not going to intimidate a born and bred country boy from Texas. But it will get you laughed at.
I have demonstrated my rights to <paisleyparkstudios.com>. The Respondent respectfully
requests that the Administrative Panel denies the remedy requested by the
Complainant.
FINDINGS
The Panel makes
the following findings:
(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.
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 established rights in the PAISLEY PARK
mark by registering it with the United States Patent and Trademark Office
(“USPTO”)
(Reg. No. 2,150,287 issued April 14, 1998). See Men’s
Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently
distinctive and
have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive and
that Respondent has the burden
of refuting this assumption).
Additionally,
Complainant acquired common law rights in the PAISLEY PARK STUDIOS mark through
operation of its studio complex opened
outside Minneapolis, MN since 1987. Complainant’s PAISLEY PARK STUDIOS provides
recording and rehearsal studio services and film production and editing
services. The studios have become known
throughout the world as a state-of-the-art recording and film studio and famous
musicians, including
REM, Barry Manilow and the Bee Gees have recorded
there. The studio hosted an open house
this past summer for many audio and video companies indicating it was “open for
business” – once again. The studios
were open consistently and have never shut down, although during the period
from 1996 until the first half of 2004, only
Prince and third parties he
specially invited used the studio (meaning third parties could not rent studios
without Prince’s invitation).
Complainant’s use of the PAISLEY PARK STUDIOS mark is sufficient to find
secondary meaning and to establish common law rights in the
mark. See S.A. Bendheim Co., Inc. v.
Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that
Complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection
with its banking business, it has
acquired rights under the common law); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (finding that Complainant had provided evidence
that it had valuable goodwill in the <minorleaguebaseball.com>
domain
name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).
The
<paisleyparkstudios.com> domain name registered by Respondent is
confusingly similar to Complainant’s PAISLEY PARK mark because the domain name
incorporates
Complainant’s mark in its entirety, adding only the generic term
“studios.” The mere addition of a
generic term to Complainant’s registered trademark is insufficient to distinguish
the domain name from the
mark. See
Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant
combined with a generic word or term); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
subject domain name incorporates the VIAGRA mark in its entirety, and
deviates
only by the addition of the word “bomb,” the domain name is rendered
confusingly similar to Complainant’s mark).
Respondent’s
<paisleyparkstudios.com> domain name is identical to its PAISLEY PARK
STUDIOS mark because the disputed domain name differs from the mark only by the
addition
of the generic top-level domain (gTLD) “.com.” The addition of a gTLD is irrelevantm eaning
the domain name is identical to the mark.
See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the
top-level of the domain name such as “.net” or “.com” does not affect the
domain
name for the purpose of determining whether it is identical or
confusingly similar); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding
that "the addition of the generic top-level domain (gTLD) name ‘.com’ is .
. . without
legal significance since use of a gTLD is required of domain name
registrants").
Policy ¶ 4(c)
provides a list of three factors for the Panel to consider if Respondent has
acquired any rights or legitimate interests
to the domain name:
(i) before any notice to you of the dispute, your
use of, or demonstrable preparations to use, the domain name or a name
corresponding
to the domain name in connection with a bona fide offering of
goods or services; or
(ii) you (as an individual, business, or other
organization) have been commonly known by the domain name, even if you have
acquired
no trademark or service mark rights; or
(iii) you are making a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly
divert consumers or to tarnish the trademark or service
mark at issue.
Respondent is
not commonly known by the <paisleyparkstudios.com> domain name
(nor does it claim to be). Complainant
has not authorized Respondent to make any use of its PAISLEY PARK or PAISLEY
PARK STUDIOS marks. Respondent has not
established rights in the disputed domain name pursuant to Policy ¶
4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known
by the domain name prior to registration of the domain name to
prevail"); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known
by the mark).
Respondent has not made any use of the <paisleyparkstudios.com> domain name and the domain name has remained
inactive since its registration (there is a conflict in the record about the
actual registration
date), more than a year before the filing of the
Complaint. Respondent’s failure to use
the disputed domain name constitutes passive holding and is not a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Nike, Inc. v. Crystal Int’l, D2001-0102
(WIPO Mar. 19, 2001) (finding no rights or legitimate interests where
Respondent made no use of the infringing domain
names); see also Chanel, Inc. v. Heyward, D2000-1802
(WIPO Feb. 23, 2001) (finding no rights or legitimate interests where
“Respondent registered the domain name and did
nothing with it”); see also
Flor-Jon Films, Inc. v. Larson, FA
94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to
develop the site demonstrates a lack of legitimate
interest in the domain
name). While it is not necessary for
Respondent to use the domain name for a web site, the domain name should be
used for some purpose to
avoid a finding the domain name was being passively
held.
Respondent has
made no demonstrable preparations to use the domain name in some fashion , pursuant to
Policy ¶ 4(c)(ii). While he claims to be working
on the project, he provides no evidence of the fact.
Once
Complainant makes a prima facie case under
Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or
legitimate interests in the domain name.
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once Complainant asserts that Respondent has no rights or
legitimate interests with
respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate
interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has
no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate
interest does exist).
Respondent has not met his burden.
Respondent’s suggestion other people have
rights to the name “Paisley Park” is unavailing. The question under a UDRP proceeding is not whether a
hypothetical respondent might have sufficient rights or legitimate interests in the domain name to defeat this Complainant, but
whether this Respondent has sufficient rights or legitimate interests in the domain name to defeat this
Complainant. This Respondent does not.
UDRP
Policy ¶ 4(b) has a non-exclusive list of four factors that can be considered
to determine bad faith:
(i)
circumstances indicating that you have registered or you have acquired the
domain name primarily for the purpose of selling, renting,
or otherwise
transferring the domain name registration to Complainant who is the owner of
the trademark or service mark or to a competitor
of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs
directly related to the domain name;
or
(ii)
you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in
a corresponding domain name,
provided that you have engaged in a pattern of such conduct; or
(iii)
you have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv)
by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or
other on-line location, by
creating a likelihood of confusion with Complainant's mark as to the source,
sponsorship, affiliation,
or endorsement of your web site or location or of a
product or service on your web site or location.
Additional
factors and circumstances can also be used to support findings of bad faith
registration and use. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel
must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
failure to use the <paisleyparkstudios.com>
domain name for more than a year
since its registration in 2003 is some evidence of bad faith registration and
use. See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see
also Caravan Club v. Mrgsale, FA
95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of
the domain name or website that connects with the
domain name, and that passive
holding of a domain name permits an inference of registration and use in bad
faith); see also Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that merely holding an infringing domain name without active use can
constitute use in
bad faith).
Respondent
had knowledge of Complainant’s PAISLEY PARK mark at the time Respondent
registered the <paisleyparkstudios.com>
domain name because this is an
incontestable mark registered with the United States Patent & Trademark
Office. As such Respondent is presuimed
to have knowledge of the mark and the fact it is registered whether or not
Respondent actually has
such knowledge.
The Panel will not re-examine the USPTO’s decision
to register a trademark. See Opus
Northwest Constr. Corp. v. Opus Realty, FA 318960 (Nat. Arb. Forum Oct. 19, 2004); see
also MGW Group, Inc. v. Gourmet Cookie Bouquets.com, FA 273996
(Nat. Arb. Forum Aug. 16, 2004); see also RMT, Inc. v. Domain Finance Ltd., FA 313843
(Nat. Arb. Forum Nov. 3, 2004).
Respondent has avenues available to redress such decisions and it has
not taken advantage of them.
Respondent’s argument Complaintant’s studio was
closed must be rejected. Complaintant
filed an affidavit of use with the USPTO, dated Janaury 26, 2004. Respondent did not object to that
affidavit. More importantly, the USPTO
accepted the affidavit, making the mark incontestable. That affidavit claimed the registered mark
was in use for 5 consecutive years.
This Panel will not review the veracity of that affidavit. The Panel also declines to review the USPTO’s decision to
accept the affidavit and declare the trademark incontestable.
Respondent
also must have had knowledge of Complainant’s PAISLEY PARK STUDIOS common law
mark at the time Respondent registered the
<paisleyparkstudios.com>
domain name, even if Respondent did
not listen to Prince’s music or watch Prince’s movie. The common law mark is simply too close to the registered mark to
be ignored. Respondent had actual or
constructive knowledge of Complainant’s rights in its marks and that
registration of a domain name containing
these marks is evidence of bad faith
regitration and use pursuant to Policy ¶ 4(a)(iii). See E.
& J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000)
(finding bad faith where (1) Respondent knew or should have known of
Complainant’s famous GALLO
marks and (2) Respondent made no use of the domain
name <winegallo.com>); see also Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should
have been aware of
Complainant’s trademarks, actually or constructively”); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue,
Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla.
2001) (noting that “a Principal Register registration [of a trademark or
service mark] is constructive
notice of a claim of ownership so as to eliminate
any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
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 <paisleyparkstudios.com>
domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry
Dated: Tuesday, February 1, 2005
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