CMG Worldwide, Inc. v. James Dean Internet Club

[Indexed as: CMG v. James Dean]
[Indexed as: jamesdean.net]

National Arbitration Forum

Forum File 0002000094187
Judgment: 11 April 2000 

Presiding Panelist: Marilyn W. Carney

Domain name - Domain Name Dispute Resolution Policy - Trademarks - Service marks - Identical - Confusingly similar - Legitimate interests - Bad faith registration - Bad faith use - Unauthorized use - Internet club.

Complainant is the exclusive agent for James Dean, Inc. and holds a number of trademark registrations in over twenty countries.  Respondent registered the domain name, JamesDean.net.  Complainant alleged that its registered marks and the registered domain name were identical, that Respondent had no legitimate rights or interests to the name, and that Respondent registered and used the name in bad faith.

Held, Name Transferred to Complainant

Complainant must establish that the domain name registered is identical or confusingly similar to a trademark in which the complainant has rights; that the respondent has no legitimate interests in respect of the domain name; and the domain name has been registered and used in bad faith.

It is clear that the domain name JamesDean.net is identical and confusingly similar to trademarks and service marks to which the Complainant has rights. Complainant has demonstrated their rights to the use of the name.  It is clear that Respondent has no interests in respect of the domain name.  There is no evidence to show that the Club has any interests in respect of the domain name.

Through ignorance or wilful neglect, the domain name has been registered and used in bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy

Carney, Panelist: -

This is a DOMAIN NAME dispute pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"). Arbitration was requested in this case and Marilyn W. Carney, Arlington, VA, was assigned as arbitrator.
For the reasons explained below, the Arbitrator has reached the conclusion that the domain name should be transferred to the Complainant.

THE DOMAIN NAME
This dispute concerns the domain name JamesDean.net. The registrar for this domain name is Network Solutions, Inc.

THE PARTIES
The Complainant is CMG Worldwide, Inc. (hereinafter CMG), 10500 Crosspoint Blvd., Indianapolis, IN and represented by Erik Carter, Corporate Counsel. James Dean Internet Club (hereafter the Club) has not responded to this complaint, but the record shows an address at 358-1 Seogyo-dong, Mapo-gu, Seoul, Korea, with administrative contact Sung-Min Jo; electronic mail address Miguel@United.Co.Kr.

FACTUAL BACKGROUND
CMG is in the business of representing living and deceased celebrities and the heirs, families, and estates of deceased celebrities for the purposes of licensing to third parties permission to commercially utilize the names, likenesses, voices, etc., together with the trademarks and related rights associated with same. CMG is the exclusive worldwide agent for James Dean, Inc., the legal entity formed by the heirs of the late actor and movie star, James Dean. James Dean, Inc. is the holder of trademark registrations in over twenty countries, including Korea. It authorizes the use of these various registered marks on a variety of items, but has not granted any such use to the group known as the James Dean Internet Club.

CMG shows that the Club has registered the domain name, JamesDean.net, with Network Solutions, Inc. This record was created on October 28, 1997 and last updated on January 11, 2000.

In December 1999, CMG sent a letter to the Club by e-mail and first class mail outlining their position regarding James Dean, Inc. and demanding that the Club discontinue the unauthorized use of the name. They also demanded that the JamesDean.net domain name be transferred to CMG (Ex. B). No response was received to this demand or to any following letters. The record does not show that these communications failed to be delivered.

ALLEGATIONS OF PARTIES
CMG accuses the Club of registering the domain name JamesDean.net in bad faith and in order to prevent CMG, the owner of the various trademarks and servicemarks, from using the name in a corresponding domain name. CMG further accuses the Club of intentionally attempting to attract for commercial gain Internet users to the Club’s website by creating a likelihood of confusion with Complainant.

CMG alleges that the Club has no legitimate interest in the domain name and is using it in bad faith. CMG notes that the Club has neither used, nor has demonstrated any preparations to use, JamesDean.net or a name corresponding to the domain name in connection with a bona fide offering of goods or services. In addition, CMG alleges that the Club is not making a legitimate or fair use of JamesDean.net and by registering this domain name has prevented James Dean, Inc. from using the domain name corresponding with its various trademarks and servicemarks. CMG also alleges that the Club has registered this domain name for the purpose of disrupting the business of a competitor.

James Dean Internet Club has not responded to letters sent to it by Complainant and has not responded to this Complaint. Consequently, it is impossible to know what allegations the Club might have.

DISCUSSION
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following:

(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or servicemark in which the complainant has rights;

(2) that the respondent has no legitimate interests in respect of the domain name; and

(3) the domain name has been registered and used in bad faith.

There can be no question that the domain name JamesDean.net is identical and confusingly similar to trademarks and service marks to which the Complainant has rights. Mr. James Dean was a movie star of some celebrity and that celebrity status remains today even though he died many years ago. CMG has aptly demonstrated their rights to the use of this name.

Inasmuch as James Dean Internet Club has not responded to this Complaint, there is no evidence to show that the Club has any interests in respect of the domain name.

Further, whether through ignorance or willful neglect, the domain name has been registered and used in bad faith.

DECISION
It is the decision of this Arbitrator that the JamesDean.net domain name shall be transferred to the Complainant.

Domain Name Transferred to Complainant