CMG Worldwide, Inc. v. Alessandro Bottai
[Indexed as: CMG Worldwide v. Bottai]
[Indexed as: chuckberry.com]
National Arbitration Forum
Administrative Panel Decision
Forum File No.: FA0004000094661
Commenced: 24 April 1998
Judgment: 31 May 2000
Presiding Arbitrator: Herman D. Michels
Domain Name - Domain name dispute resolution - U.S. Service mark - U.S. Trademark - Supplemental user - Public Website - Identical - Confusingly Similar - Bad faith registration - Bad faith use.
Complainant was registrant of United States service mark and United States trademark. Respondent registered the domain name chuckberry.com'. Complainant alleged that its registered marks were identical and Respondent registered and used the domain name at issue in bad faith. Complainant requests the domain name be transferred to itself.
Held, Domain Name Transferred to Complainant
Complainant has the exclusive right to use and license the Chuck Berry mark as an agent for the musician Chuck Berry, and the responsibility of enforcing their rights against unauthorized use. Respondent's domain name CHUCKBERRY.COM is identical to the Chuck Berry mark of which Complainant has exclusive rights. Respondent has caused substantial harm by intentional attempts to attract for commercial gain from Internet users by creating a likelihood of confusion with the Chuck Berry mark in suggesting there is an affiliation, connection, sponsorship or approved association between Respondent and Complainant.
Respondent is not a licensee of Complainant, nor is it otherwise authorized by Chuck Berry to use the registered marks. Respondent has no rights or legitimate interests in the domain name. Respondent registered the domain name in bad faith in order to prevent the owner of the mark from reflecting the mark in a corresponding domain name and such activities constitute infringement of Complainant's rights in its mark.
Policies referred to
Rules for Uniform Domain Name Dispute Resolution Policy. October 24, 1999.
National Arbitration Forum Supplemental Rules of ICANN's Uniform Domain Name Dispute Resolution Policy.
Panel Decision referred to
Michels, Herman D:
The above entitled matter came on for an administrative hearing on May 30, 2000 before the undersigned Arbitrator on the complaint of CMG Worldwide, Inc. (Complainant), represented by Erik Carter, Esq. (Corporate Counsel) (Telephone: 317-570-5035; E-mail: firstname.lastname@example.org) against Alessandro Bottai (Respondent). Upon the written submitted record consisting of the Complaint, I hereby render the following decision:
Domain Name: CHUCKBERRY.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: ALESSANDRO BOTTAI
Date of Domain Name Registration: August 19, 1998
Date Complaint Filed: April 24, 2000
Date Response Filed: No Answer Filed by Respondent
After reviewing the Complaint and determining it to be in administrative compliance, the
National Arbitration Forum (Forum) forwarded the Complaint to Respondent in compliance with Rule 2(a) and the administrative proceeding was commenced pursuant to Rule 4(c) in compliance with Rule 4(d). The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and Respondent that the administrative proceeding had commenced. Respondent has not submitted a Response to the Forum within twenty (20) days pursuant to Rule 5(a) which time has now expired. The Complaint was docketed and forwarded to the undersigned Arbitrator for decision.
On August 19, 1998, Respondent registered the domain name CHUCKBERRY.COM with the domain name registrar Network Solutions, Inc., the entity that is the registrar of the domain name. Network Solutions, Inc. verified that Respondent is the registrant for the domain name CHUCKBERRY.COM and by registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any disputes regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution policy. Neither Complainant nor Respondent has contested the jurisdiction of the Forum or the assigned Arbitrator to resolve this controversy.
FINDINGS OF FACT
1. Complainant is engaged in the business of representing living and deceased celebrities and their heirs, families and estates of deceased celebrities for the purposes of licensing to third-parties permission to commercially utilize the names, likenesses, voices, rights of publicity and endorsement and other visual and aural depictions of such celebrities, together with the trademarks and related rights associated with same. Complainant advertises and promotes the availability of its client's properties both in the United States and foreign commerce.
2. Complainant is the exclusive worldwide agent for Chuck Berry, the legendary musician, songwriter, performer, and proprietor of certain rights protecting any unauthorized use of his name, image, or likeness, including his rights of publicity, association, sponsorship and endorsement. Complainant is charged with the responsiblility of enforcing said rights and protecting said rights against unauthorized uses.
3. Chuck Berry possesses trademark registration Serial No. 74-702936, for the "Chuck Berry" service mark in International Class 41 (entertainment, namely live vocal and guitar musical performances).
4. Complainant is authorized to use and to license use of the name, image or likeness of Chuck Berry on musical instruments and accessories, sheet music, audio recordings, video recordings, clothing, T-shirts, footwear, calendars, posters, advertising, cologne, electronic devices, and publicity services registered on the Principal Register of the United States Patent and Trademark Office.
5. Complainant has the exclusive right to use and to license the Chuck Berry mark.
6. Respondent is not a licensee of Complainant nor is it otherwise authorized by Chuck Berry to use Chuck Berry marks.
7. Respondents domain name CHUCKBERRY.COM is identical to the famous mark in which Chuck Berry has exclusive rights.
8. Respondent's use of the Chuck Berry mark creates a likelihood of confusion and Complainant's users and consumers are likely to be confused into believing that there is some affiliation, connection, sponsorship, approval or association between Respondent and Complainant when, in fact no such affiliation or association exists. See Rule 4(a)(i).
9. Respondent has no rights or legitimate interests in the domain name CHUCKBERRY.COM which consists primarily of the Chuck Berry mark in which Respondent has no legitimate rights or interests.
10. The domain name CHUCKBERRY.COM should be considered as having been registered by Respondent in bad faith due as evidenced by the fact that Respondent has registered the domain name CHUCKBERRY.COM in order to prevent the owner of the mark, Chuck Berry from reflecting the mark in a corresponding domain name. See Rule 4(b)(i). Additionally, by using the domain name CHUCKBERRY.COM, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line locations, by creating a likelihood of confusion with the Chuck Berry mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service of his website or location. See Rule 4(b)(iv).
11. Respondent's activities constitute infringement of Chuck Berry's rights in its mark and Complainant's rights thereto and have caused and will continue to cause substantial and irreparable harm to Complainant and Chuck Berry in its and his business reputation and good will. Complainant therefore has demanded that Respondent transfer the domain name CHUCKBERRY.COM to Complainant on behalf of Chuck Berry.
The undersigned Arbitrator certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial and neutral, the undersigned Arbitrator makes the following findings and conclusions:
1. The domain name CHUCKBERRY.COM registered by Respondent on August 19, 1998, is identical or confusingly similar to Chuck Berry's mark, registered trademark and service mark registered on the principal register of the United States Patent and Trademark Office by Chuck Berry. Chuck Berry has all rights and interests in his marks and Complainant has all rights and interests in said Chuck Berry marks.
2. Respondent does not have any substantial rights or legitimate interests in respect to the
domain name CHUCKBERRY.COM.
3. Respondent has registered and used the domain name CHUCKBERRY.COM in bad faith.
Based upon the above findings and conclusions and pursuant to Rule 4 (1) of the Rules of the Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum Supplemental Rules of ICANN's Uniform Domain Resolution Policy, I hereby Order that:
1. The domain name CHUCKBERRY.COM registered by Respondent Alessandro Bottai be transferred forthwith to Complainant CMG Worldwide, Inc. on behalf of Chuck Berry, and
2. Respondent Alessandro Bottai shall forthwith cease and desist from any and all use of the domain name CHUCKBERRY.COM.
Dated: May 31, 2000 Herman D. Michels, Arbitrator
Domain Name Transferred