[Indexed as: Fear Factory v. 1 2
3 Speed]
[Indexed as: FEARFACTORY.NET]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0626
Commenced: 26 June, 2000
Judgment: 28 July, 2000
Presiding Panelist: Peter L. Michaelson
Domain name - Domain name dispute resolution policy - U.S. trademark - Confusingly similar - Legitimate Interest - Bad faith registration - Diversion of Internet users - Well known marks - Default by Respondent.
Complainant, a popular rock group, owned three U.S. trademarks in the name FEAR FACTORY, under which it promoted its music and merchandise. Complainant was also the registrant of the domain name fearfactory.com, which was dedicated to promoting and marketing the Complainant's musical group. Respondent registered the domain name fearfactory.net.
Held, Name Transferred to Complainant.
The domain name in question, while not absolutely identical to the Complainants mark, is clearly sufficiently similar to it as to cause a likelihood of confusion to arise between the relevant consumers of the Complainant and those who were to view the disputed domain name. The deletion of a space between the words FEAR and FACTORY along with appending of a top-level domain (.net) is so de minimis as to be utterly inadequate to preclude any such confusion from occurring. Further, since Complainants mark incorporates the well known name of its musical rock group, and Complainant has absolutely no relationship whatsoever with Respondent, it must be found that Respondent does not have any rights in a domain name using that mark, whether on a commercial or non-commercial basis.
Respondents repetitive conduct in registering various domain names, that included the names of well-known contemporary musicians, appears to evidence, at least inferentially, an intent by the Respondent to eventually sell the contested domain name to Complainant for an amount in excess of registration costs, prevent Complainant, from reflecting its trademark in a corresponding domain name, and/or use the domain name to intentionally attract, for commercial gain, Internet users on the basis of confusion with the Complainants mark. Hence Complainant has shown a sufficient basis to establish bad faith under the Policy.
Policies referred to
ICANN Rules for Uniform Domain Name
Dispute Resolution Policy
Supplemental Rules for Uniform Domain
Name Dispute Resolution Policy
Lanham Act (15 USC)
Panel Decision referred to
--
Michaelson, Panelist: -
1. The Parties
Complainant:
Fear Factory, Inc.
9169 Sunset Boulevard
Los Angeles, California 90069
United States of America
Respondent:
1 2 3 Speed
4403 Reach Road East
Tacoma, Washington 98467
United States of America
2. The Domain Name(s) and Registrar(s)
Contested Domain Name: fearfactory.net
Registrar:
Network Solutions, Inc. (NSI)
505 Huntmar Drive
Herndon, Virginia 20170
United States of America
3. Procedural History
The Complaint was brought pursuant
to the Uniform Domain Name Dispute Resolution Policy ("Policy"), available
at <http://www.icann.org/services/udrp/udrp-policy-24oct99.htm>, which
was adopted by the Internet Corporation for Assigned Names and Numbers
(ICANN) on August 26, 1999, and approved on October 24, 1999, and in accordance
with the ICANN Rules for Uniform Domain Name Dispute Resolution Policy
("Rules") as approved on October 24, 1999, as supplemented by the World
Intellectual Property Organization Supplemental Rules for Uniform Domain
Name Dispute Resolution Policy in effect as of December 1, 1999 ( the "Supplemental
Rules").
The Complaint was filed both by
e-mail form on June 22, 2000 and, with Exhibits A-F and the appropriate
payment, in hard-copy form on June 19, 2000 with the Arbitration and Mediation
Center of the World Intellectual Property Organization (the "Center").
The Complainant states that on June 12, 2000, its attorneys served a copy
of the Complaint, by courier (specifically Express Mail) and e-mail, on
the Respondent and provided a copy of the Complaint, by e-mail, to the
Registrar, NSI. The Center acknowledged receipt of the Complaint by e-mail
dated June 21, 2000 to both the Complainant and the Respondent.
Pursuant to paragraph 4(d) of the
Policy, the Complainant selected the Center as the ICANN-approved administrative
dispute
resolution service provider to administer this proceeding. Through the
Complaint, the Complainant requested a single member panel.
After receiving the complaint, the
Center, in accordance with paragraph 5 of the Supplemental Rules, determined
that the Complaint fully complied with the formal requirements of the Rules
and the Supplemental Rules. In that regard, on June 21, 2000, the Center
requested confirmation from NSI of information set forth in the Complaint
relative to the domain name; specifically, contact and registrant information
for the contested domain name, as well as whether NSI received a copy of
the Complaint from the Complainant. The Center also requested NSI to specify:
(a) whether the ICANN Policy applies to the contested domain name, and
(b) the current status of the domain name. On June 25, 2000, NSI provided
its response to the Center through which NSI provided contact information
pertinent to the contested domain name from its WHOIS database, confirmed
that NSI is the registrar of the contested domain name, stated that the
Policy is in effect (through Network Solutions 5.0 Service Agreement),
and that the domain name, as of June 25, 2000, was "active".
On June 26, 2000, the Center notified
the Respondent of the filing of the Complaint, including providing a complete
copy of the Complaint, with an explanatory cover sheet, to the Respondent,
by e-mail, facsimile and in hardcopy form by courier (the latter including
a copy of the Exhibits supplied by the Complainant). The Complaint, and
its accompanying documents, and all subsequent communications associated
therewith were provided in the preferred manners and to the addresses as
mandated by paragraphs 2(a) and 4(a) of the Rules.
Hence, with the notification to
the Respondent having occurred on June 26, 2000, under paragraph 4(c) of
the ICANN Policy, this administrative proceeding is deemed to have commenced
on June 26, 2000.
Having reviewed the complaint and
succeeding correspondence between the Center and NSI, in detail, the Panel
agrees with the determination of the Center that the Complaint and its
handling met the requirements of the Rules and the Supplemental Rules.
The Respondent was then provided
with a 20 calendar day period, expiring on July 15, 2000, to file its response
with the Center and serve a copy of the response on the Respondent.
As of July 17, 2000, the Center
has received no such response from the Respondent. Hence, on that date,
the Center so notified the Complainant by e-mail, and the Respondent, by
e-mail and facsimile, that the administrative proceeding would proceed
by way of default.
Accordingly, pursuant to the Rules
and Supplemental Rules, on July 20, 2000, the Center contacted the undersigned
requesting his service as a sole panelist to consider and decide this dispute.
On the same date, the undersigned accepted and returned, by facsimile to
the Center, a fully executed Statement of Acceptance and Declaration of
Impartiality and Independence. On July 24, 2000, the Center appointed the
undersigned as the sole panelist to consider this dispute, and so notified
both parties by e-mail. Based on deadline set forth in paragraph 15 of
the Rules, a decision is to be issued by the undersigned to the Center
on or before August 6, 2000.
This dispute concerns one domain
name alone, specifically "fearfactory.net". The language of this proceeding
is English.
4. Factual Background
Inasmuch as the Respondent, 1 2
3 Speed, has failed to respond to the Complaint, all the facts alleged
by the Complainant, Fear Factory, Inc., will be accepted as true. For convenience
of the reader, factual allegations, to the extent needed, from the Complaint
are reproduced below.
The dispute is based on the following
trademarks and their usage by the Complainant:
A) FEAR FACTORY (block letters)
This word mark is the subject of
three separate US trademark registrations, each for different goods or
services, as follows:
i) US registration 2,303,251 issued
December 28, 1999
This trademark was registered by
the Complainant for use in connection with: a series of musical sound recordings.
This mark claims first use and first use in inter-state commerce on March
31, 1991.
ii) US registration 2,212,521 issued
December 22, 1998
This trademark was registered by
the Complainant for use in connection with: T-shirts, sweat shirts, long
sleeve shirts, ski hats, baseball caps, and hockey jerseys. This mark claims
first use and first use in inter-state commerce on February 28, 1992.
iii) US registration 1,849,630 issued
August 9, 1994
This trademark was registered by
the Complainant for use in connection with: entertainment services in the
nature of a musical group. This mark claims first use on October 1990 and
in inter-state commerce on January, 1991.
B) FF (stylized)
US registration 2,276,040 issued
September 7, 1999
This trademark is used by the Complainant
in connection with: t-shirts, sweat shirts, long sleeve shirts, ski hats,
baseball caps and hockey jerseys. This mark claims first use and first
use in inter-state commerce on February 28, 1992.
The Complainant has supplied, in
Exhibit C to the Complaint, hard-copy print-outs of registration records
(which contain depictions of the marks), as provided in the Trademark Text
and Image Database publicly accessible through the US PTO web server, for
these four registered trademarks. According to these records, all four
federal trademarks are currently owned by the Complainant.
As indicated on the PTO record for
the 1,849,630 registration, an affidavit/declaration of continued use has
been filed in and accepted by the US PTO in conjunction with this mark.
As such, this registration is currently active. Given the relatively recent
dates on which the 2,303,251; 2,212,521 and 2,276,040 registrations issued,
such a declaration/affidavit of continued use, as required under §
8 of the Lanham Act (15 USC § 1058) for each of these three trademark
registrations to continue in force, is not yet due. As such, these three
registrations are also currently active.
As discussed below, the Panel finds
that, for all intents and purposes, the three word mark registrations are
identical to the contested domain name and as such provide an adequate
basis for the findings herein. Inasmuch as the "FF" mark clearly differs
from the contested domain name, the Panel finds that mark to be of far
lessened importance and hence immaterial to the issues raised by the Complainant.
Hence, for the sake of simplicity, the Panel will simply ignore the stylized
"FF" mark. Consequently, all references hereinafter to the Complainant's
"mark" will simply and collectively refer to its three word mark registrations.
The Complainant states that it is
a popular rock group, with the mark being the name of the group. The Complainant
states that it has provided goods and services under its mark since as
early as 1990. The Complainant also states that since that time it has
performed in major venues throughout the world, including the United States,
and has released recordings which has been distributed worldwide.
The Complainant further states that
it has expended substantial time, money and resources in advertising, marketing
and promoting its music and merchandise under the its mark, such that its
name and mark have become widely known and recognized as its source identifier
of its goods and services. In that regard, the Complainant states that
its concerts and sales of musical sound recordings and band-related merchandise
have generated many millions of dollars in revenue.
Furthermore, the Complainant states
that it currently maintains a web site under the domain name "FEARFACTORY.COM"
which is dedicated to promoting and marketing the Complainant's musical
group; this domain name having been registered by the Complainant on July
23, 1997. In Exhibit D to the Complaint, the Complainant has provided a
copy of a domain name registration from the WHOIS database for the domain
name FEARFACTORY.COM (accessed through www.networksolutions.com/cgi-bin/whois/
whois?STRING=fearfactory.com) .
The Complainant alleges that on
or about March 21, 2000, the Respondent registered the contested domain
name with the Registrar.
The Complainant provides, in Exhibit
E, a WHOIS print-out of various domain names which the Respondent has registered,
some of which the Complainant allege are the names of well-known musicians.
Lastly, the Complaint includes,
in Exhibit F, a copy of a cease and desist letter which Complainant's Counsel
sent on May 16, 2000 to the Respondent (at its contact address and to the
administrative contact listed in its contact information in the Registrar's
WHOIS database -- as shown in Exhibit A to the Complaint), but which was
subsequently returned to Counsel by the US postal service marked "not deliverable
as addressed". Counsel states that it then attempted on May 31, 2000 to
telephonically contact the administrative contact of the Respondent but
was unsuccessful in doing so.
5. Parties Contentions
A. Complainant
The Complainant contends that:
(a) the domain name in question
is similar, specifically identical, to its registered trademarks;
(b) any rights the Respondent has
in the domain name in contention are illegitimate; and
(c) the Respondent has registered
this domain name in bad faith.
i) similarity
As to similarity of the contested
domain name to its registered trademark, the Complainant has provided print-outs,
as noted above, of US PTO registration records for its marks.
The Complainant alleges that, essentially
for all practical purposes, the domain name in question is identical to
the Complainant's FEAR FACTORY trademark. The exceptions are omission of
a space between the two words as shown in the registered trademark with
respect to those words being appended together in the domain name and the
inclusion of a top level domain (.net) in the domain name not included
in the trademarks, both of which are de minimis and immaterial.
ii) illegitimate use
The Complainant has been known by,
and has been continuously using, the term FEAR FACTORY as its trademark
and name of its musical group since 1990.
As a result of this use and repeated
and significant advertising, marketing and promotional activities undertaken
by the Complainant since that date, the Complainant, specifically its musical
group, has become widely and globally known with the mark being a source
identifier for the services and branded products provided by the Complainant.
The Complainant states that, given
the fact that the domain name incorporates the name of the Complainant,
the Respondent has no reason for registering the complaint's trade name,
Fear Factory, as a domain name. In that regard, the Complainant alleges
that since the Respondent is not known by the name Fear Factory, the contested
domain name has no meaning or significance to the Respondent .
Hence, the Complainant concludes
that the Respondent could not claim any legitimate interests in the contested
domain name, comprised of the FEAR FACTORY trademark (plus the top level
domain .net but without a space between the words).
iii) bad faith
The Complainant alleges that the
Respondent registered the trademark as a domain name primarily for precluding
the Complainant from reflecting its registered trademark in a corresponding
domain name or for the purpose of renting, selling or otherwise transferring
the domain name registration to the Complainant or a competitor thereof
for payment above and beyond the costs incurred by the Respondent in securing
its domain name registration.
According to the WHOIS database
of NSI -- copies of the salient records have been provided in Exhibit E
of the Complaint, the Complainant points to various domain names that identify
widely-known musicians, other than the Complainant, which the Respondent
has registered. For example, these include the following domain names and
their associated musical groups "olddirtybastard.com" (Old Dirty Bastard),
and "droctagon.net" (Droctagon).
B. Respondent
To date, the Respondent has not
filed any response to the Complaint.
6. Discussion and Findings
In view of the lack of any response
filed by the Respondent, 1 2 3 Speed, this proceeding has proceeded by
way of default. Hence, in the absence of any refuting evidence, all the
facts and allegations submitted by the Complainant, Fear Factory, Inc.,
are accepted as true.
Apart from judging this proceeding
through mere default of the Respondent, the Panel makes the following specific
findings:
A. Similarity
No doubt exists whatsoever that
the domain name in question, while not absolutely identical to the Complainants
mark (FEAR FACTORY), is clearly sufficiently similar to it as to cause
a likelihood of confusion to arise between the relevant consumers of the
Complainant and those who were to view the disputed domain name -- when
and if the Respondent, or any third-party not affiliated with the Complainant
to which the Respondent were to transfer the contested domain name, were
to start using the domain name in conjunction with goods or services similar
to those of the Complainant. Such confusion, should it occur, would undoubtedly
cause consumers to think that a relationship of some sort exists between
the Complainant and the Respondent or its third-party transferree, when,
in fact, no such relationship would exist at all.
The differences between the contested
domain name and the Complainant's mark, being the deletion of a space between
the words "FEAR" and "FACTORY" (as they appear in the block letter registrations),
along with appending of a top-level domain (.net) are so de minimis as
to be utterly inadequate to preclude any such confusion from occurring.
As such, the Panel finds that sufficient
similarity exists under paragraph 4(a)(i) of the Policy.
In fact, for the reasons set forth
below with respect to Illegitimacy and Bad Faith, given the conduct of
1 2 3 Speed, as evidenced by its registrations of various domain names
bearing very high degrees of similarity to the names of other contemporary
well-known rock musicians -- the Complainant also being such a musical
rock group, the Panel concludes that:
(i) 1 2 3 Speed intentionally chose
the contested domain name for its high and nearly identical degree of similarity
with the mark under which the Complainant undertakes its business, and
(ii) with the principal reason of
causing consumer confusion to eventually occur in order to injure the Complainants
business and reputation should the domain name become active in an attempt
to induce the Complainant to purchase the domain name from the Respondent
(or from a third party to which the Respondent would transfer the domain
name).
B. Illegitimacy
Based on the evidence submitted
by the Complainant, the Panel makes the following findings regarding illegitimacy.
Based on its federal trademark registration,
the Complainant has acquired exclusive rights to use its trademarks in
conjunction with the goods and services listed in its various registrations.
Furthermore, each of the Complainant's
trademarks is highly distinctive and not descriptive of any goods or services
with which that trademark is registered.
The Respondent has yet to provide
any basis that would legitimize any claim it has to the contested domain
name in connection with any goods or services which it might be providing.
In fact, it is extremely unlikely that Respondent can even make such a
claim. The simple reason is that the mark, which forms the basis of the
contested domain name, incorporates the well known name of the Complainant,
i.e. the name of its musical rock group, and, as the Panel infers from
the Complaint, the Complainant has absolutely no relationship whatsoever
with the Respondent.
This finding is particularly compelling
inasmuch as the Complainant has registered and is using the domain name
FEARFACTORY.COM (which incorporates the Complainant's name) in conjunction
with its own web site. The only difference between the Complainant's registered
domain name and the contested domain name is its top level domain; specifically
.com in one, .net in the other. In the absence of any evidence to the contrary,
the Panel can only assume, as noted in the section 6(C) below, that the
Respondent intentionally exploited this minor and insignificant difference
in what could become a concerted effort to divert Internet users to its
web site who would otherwise be seeking the Complainant's site, therefore
creating a likelihood of consumer confusion.
Hence, any use to which the Respondent
were to put any of the Complainant's trademark in connection with the goods
or services listed in any of the registrations would directly violate the
exclusive trademark rights now residing in the Complainant, and would clearly
cause confusion as to origin of the relevant purchasers of Complainant's
goods and services and dilute the goodwill which the Complainant has acquired
by virtue of the extensive and continuous use, since at least 1992, of
its mark.
In light of the above findings,
the Panel is unpersuaded that the Respondent has any rights in the contested
domain name, whether on a commercial or non-commercial basis.
Thus, the Panel finds that any use
of the contested domain name by the Respondent is illegitimate within paragraph
4(a)(ii) of the Policy.
C. Bad Faith
The Respondents repetitive conduct
in registering various domain names, that included the names of well-known
contemporary musicians, the Complainant being just one of them, appears
to the Panel to evidence, at least inferentially, an intent by the Respondent,
rather than to legitimize the use of the contested domain name, to:
(a) eventually sell the contested
domain name to the Complainant for an amount in excess of the costs of
its registration, or to a third-party unrelated to the Complainant,
(b) prevent the Complainant, as
lawful owner of the registered trademarks "FEAR FACTORY", from reflecting
its trademark in a corresponding domain name (here being FEARFACTORY.NET),
and/or
(c) use a domain name to intentionally
attract, for commercial gain, Inetnet users to the Respondent's site or
other on-line location by creating a likelihood of confusion with the Complainant's
mark as to source, sponsorship, affiliattion or endorsement of the goods
and services provided by the Complainant.
The Panel infers, based on a lack
of any response from the Respondent, that the Respondent has no reasonable
grounds to believe that any use which it has or will make of contested
domain name constitutes fair or otherwise lawful use.
Hence, the Panel finds that the
Complainant has shown a sufficient basis to establish bad faith under paragraphs
4(a)(iii) of the Policy.
In this connection, the Panel additionally
notes that, in the Panels view, the Respondents actions in registering
the present domain name clearly evince bad faith in violation of the Anti-Cybersquatting
provisions of the Lanham Act (15 USC § 1125(d)(1) with various factors
indicative of bad faith given in 15 USC § 1125(d)(1)(B)(i) though
limited by 15 USC § 1125(d)(1)(B)(ii).
Thus, the Panel concludes that the
Complainant, apart from default of the Respondent, has provided sufficient
proof of its allegations to establish a case under paragraph 4(a) of the
Policy upon which the relief it now seeks can be granted.
7. Decision
In accordance with paragraph 4(i)
of the Policy and paragraph 15 of the Rules, the relief sought by the Complainant
is hereby granted. The domain name is ordered transferred to the Complainant.
The Center is authorized to publish this entire decision in its discretion
on a publicly accessible web site.
Domain Name Transferred