v
Michael Urvan
[Indexed as: Gordon Sumner, p/k/a Sting v Michael Urvan]
[Indexed as: Sting.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0596
Commenced: 20 June 2000
Judgment: 24 July 2000
Presiding Panelist: Andrew F. Christie
Domain name Domain name dispute resolution policy Identical - United States Owned - Registered Trademark Service mark Famous Unregistered mark - Common law mark Personal Name Common word English language Multiple meanings Rights Legitimate interest - Nickname Undistinctive Bad faith registration Bad faith use Burden of proof Domain pointer.
Complainant, a world famous musician known by the mark Sting alleges that this mark is entitled to protection against dilution by Respondents registration and usage of the domain name Sting.com.
HELD, Name Not Transferred to Complainant.
The Uniform Policy is not limited to registered marks or marks owned by Complainant but can apply to unregistered or common law marks as well as marks in which Complainant has rights. The Panel through the equivalent of taking judicial notice finds Complainant to be a world famous entertainer known by the name Sting. Although there are several cases under the Uniform Policy where the Panel treats the personal name of a famous person as constituting an unregistered mark sufficient for the purposes of the Policy, this case can be distinguished as the word sting is also a common word in the English language with a variety of different meanings. While the Panel is inclined to the view that the Complainants name STING is not a trademark or service mark within the scope of paragraph 4(a)(i) of the Uniform Policy, it was not necessary for the Panel to reach a formal decision on this issue because the Complainant can be decided on the bad faith provisions.
Respondent provided a wide spectrum of evidence whereby he had used the nickname sting or =sting= publicly on the Internet for the last 8 years. However, as sting is an undistinctive word, likely used by many in cyberspace and for the purposes of anonymity, it does provide weak evidence for establishing a right or legitimate interest in the domain name but does not establish the fact that Respondent has been commonly known by this name under the Policy. On balance, the Panel finds Respondent does not have a right or legitimate interest in the domain name as a more substantive usage of the word sting is needed.
Complainant has not met the burden of proof on establishing that the domain name at issue was registered or used in bad faith. The fact that Respondent offered selling the domain name upon Complainants solicitation does not prove that it was acquired mainly for this purpose. As well, Complainant failed to show that the pointing of the domain Sting.com to the site GunBroker.com was an intentional attempt on behalf of Respondent to attract Internet users for commercial gain. Complainant provided no evidence as to the contents of the "GunBroker.com" site. In addition, the short period of time the domain name was linked was due to an error on the part of the Respondents web service provider. Finally, because the word sting can be ascribed a variety of meanings, it is not inconceivable that Respondent had a plausible legitimate use for the domain name.
Policies referred to:
5.0 Service Agreement
Rules for Uniform Domain Name Dispute Resolution Policy
Uniform Domain Name Dispute Resolution Policy
Cases referred to:
Julia Fiona Roberts v Russell Boyd WIPO Case No. D2000-0210
Jeannette Winterson v Mark Hogarth WIPO Case No. D2000-0235
Steven Rattner v BuyThisDomainName (John Pepin) WIPO Case No. D2000-0402
Telstra Corporation Limited v Nuclear Marshmallows WIPO Case No. D2000-0003
1 The Parties
1.1 The Complainant is Gordon Sumner, professionally known as "Sting",
a citizen of the United Kingdom who maintains a residence in the United
States. The Respondent is Michael Urvan, of Marietta, Georgia, United States
of America.
2 The Domain Names and Registrar
2.1 The domain name the subject of this Complaint is "Sting.com".
2.2 The Registrar of this domain name is Network Solutions, Inc of
Herndon, Virginia, USA ("Registrar").
3 Procedural History
Issuance of Complaint
3.1 The Complainant by email and by courier submitted to the World
Intellectual Property Organization Arbitration and Mediation Center ("WIPO
Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution
Policy implemented by the Internet Corporation for Assigned Names and Numbers
(ICANN) on October 24, 1999, ("Uniform Policy"), and under the Rules for
Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the
same date ("Uniform Rules"). The email copy of the Complaint was received
by the WIPO Center on June 13, 2000, and the hard copy of the Complaint
was received by the WIPO Center on June 15, 2000. An Acknowledgment of
Receipt was sent by the WIPO Center to the Complainant, by email dated
June 15, 2000.
Confirmation of Registration Details
3.2 A Request for Registrar Verification was dispatched by the WIPO
Center to the Registrar by email on June 15, 2000. By email to the WIPO
Center on June 20, 2000, the Registrar confirmed that it had received a
copy of the Complaint from the Complainant; confirmed that it was the Registrar
of the domain name the subject of the Complaint; confirmed that the current
registrant of the domain name is the Respondent; informed that the administrative,
and billing Contact for the domain names is the Respondent, and provided
postal, telephone, facsimile and email contact details for the administrative,
technical, zone and billing Contact; and informed that the status of each
of the domain names in issue is "active". The Registrar also confirmed
that its 5.0 Service Agreement is in effect. Amongst other things, that
agreement provides that the Respondent as registrant of the domain name
agrees to be bound by the domain name dispute policy incorporated therein.
The policy incorporated into the agreement is the Uniform Policy.
Notification to Respondent
3.3 Having verified that the Complaint satisfied the formal requirements
of the Uniform Policy and the Uniform Rules, and that payment of the filing
fee had been properly made, the WIPO Center issued to the Respondent, and
to the technical and zone contact for the domain name, a Notification of
Complaint and Commencement of Administrative Proceeding, by email on June
20, and by courier and fax on June 21, to the addresses provided by the
Registrar. Copies of this Notification of Complaint were sent to the Complainant,
the Registrar and ICANN by email on June 20.
3.4 This Administrative Panel finds that the WIPO Center has discharged
its responsibility under Paragraph 2(a) of the Uniform Rules "to employ
reasonably available means calculated to achieve actual notice to Respondent".
Filing of Response
3.5 A Response was filed by the Respondent, and received by the WIPO
Center by email on July 8, within the time specified in the Notification
of Complaint. A hardcopy of the Response, with Exhibits, was subsequently
received by the WIPO Center by courier.
Constitution of Administrative Panel
3.6 Subsequent to receipt of the Response, and in accordance with the
request in the Complaint, the WIPO Center proceeded to appoint a single
Panelist, and invited Dr Andrew F. Christie to so act. On July 11, 2000,
Dr Christie indicated his ability to act as the sole Panelist in this case,
and submitted to the WIPO Center a Statement of Acceptance and Declaration
of Impartiality and Independence the following day. On July 11, 2000, the
WIPO Center issued to both parties a Notification of Appointment of Administrative
Panel and Projected Decision Date, informing of Dr Christies appointment
and that absent exceptional circumstances a decision would be provided
by this Administrative Panel by July 24, 2000. The case
before this Administrative Panel was conducted in the English language.
Compliance with the formalities of the Uniform Policy and the Uniform
Rules
3.7 Having reviewed the Case File in this matter, this Administrative
Panel concurs with the assessment by the WIPO Center that the Complaint
complies with the formal requirements of the Uniform Policy and Uniform
Rules.
Interim Orders
3.8 In response to certain procedural requests from the Complainant,
this Administrative Panel issued an Interim Order on July 19, 2000, and
a second Interim Order on July 20, 2000. The effect of the first Interim
Orders was to deny the Complainants request for a Stay, to rule invalid
and disregard the Complainants unsolicited submission of a Reply, and
to extend to July 26, 2000, the date by which this Administrative Panel
was required to forward a Decision in this case. The effect of the second
Interim Order was to deny the Complainants request to be allowed to submit
a Reply. Copies of these interim orders are attached to this decision.
4 Factual Background
Complainants Activities and Trademarks
4.1 In his Complaint, the Complainant asserted the following in relation
to his activities and trademarks. The Complainant is a world famous musician,
recording and performing artist who has, for over twenty years, rendered
high-quality musical services under his name, trademark and service mark
STING. Since at least as early as 1978, the Complainant has exclusively
and continuously used the STING mark in connection with approximately twenty
record albums, almost all of which have gone multi-platinum in the United
States and enjoyed great commercial success worldwide. The Complainant
has also used the STING mark in connection with innumerable world-wide
concert tours involving venues with significant capacities, the majority
of which sell out. The STING mark is internationally known and famous as
a result of the Complainants extensive, high-profile, and overwhelmingly
commercially successful activities in the music industry. The Complainant
is the owner of the STING mark as a trademark and service mark. The name
STING has become synonymous in the minds of the public with the Complainant
and his activities in the music industry, and serves as a symbol of the
goodwill and excellent reputation associated with Sting. The STING mark
is famous and entitled to the widest scope of protection afforded by law,
including protection against dilution.
4.2 In his Response, the Respondent asserted that there are 20 trademark
registrations of the word STING in the US, but none of them are registered
by the Complainant. The word STING is a common word in the English language,
and so registration of it as a domain name is not a violation of the Uniform
Policy. The Respondent is not a competitor of the Complainant and the Respondent
does not attempt to cause any confusion with him.
Respondents Activities
4.3 The Complainant asserted the following in relation to the Respondents
activities and use of the domain name. Until the Respondent was contacted
by a representative of the Complainant, the Respondent made no use of the
domain name. After being contacted by a representative of the Complainant,
Respondent linked the domain name to another site called "GunBroker.Com",
which is a site that facilitates "person to person" selling of guns. During
or about February of 2000, and again during or about May of 2000, the Respondent
offered to sell the domain name to the Complainant for $25,000.00. Since
offering to sell the domain name to the Complainant for $25,000.00, the
Respondent has frequently changed the web site identified by the domain
name, usually with an "under construction" message, and in some cases providing
a link to a third-party operated unauthorized web site relating to the
Complainant.
4.4 In his Response, the Respondent asserted that he has been using
the nickname "Sting" and more recently "=Sting=" publicly on the Internet
for at least 8 years. The Respondent registered the domain name in July
1995, approximately 5 years before this dispute was commenced. The Respondent
did not register the domain name to sell it, nor did he register the domain
to hold it hostage for any reason. The Respondent engaged in work on web
site to which he intended the domain name "Sting.com" to resolve, prior
to any notification of this dispute. The Respondent did not point the domain
name "Sting.com" to the "GunBroker.com" website this occurred for a short
time as a result of an error on the part of the Respondents web service
provider. The Complainants assertion that the Respondent initiated contact
with the Complainant is false - the first contact was initiated by the
Complainant on May 16, 2000.
5 Parties Contentions
The Complaint
5.1 The Complainant contends that each of the three elements specified
in paragraph 4(a) of the Uniform Policy are applicable to the domain name
the subject of this dispute.
5.2 In relation to element (i) of paragraph 4(a) of the Uniform Policy,
the Complainant contends that the domain name is identical in its substantive
part to the Complainants unregistered trademark and service mark STING.
5.3 In relation to element (ii) of paragraph 4(a) of the Uniform Policy,
the Complaint contends that the Respondent has no rights or legitimate
interests in respect of the domain name in issue.
5.4 In relation to element (iii) of paragraph 4(a) of the Uniform Policy,
the Complainant contends that evidence of bad faith registration and use
is established by the following circumstances. First, the Respondent offered
to sell the domain name to the Complainant for $25,000, an activity which
corresponds to that listed in paragraph 4(b)(i) of the Policy as evidence
of bad faith registration and use of a domain name. Secondly, the Respondent
has used the domain name mark to link to the "GunBrokers.com" web site,
and as such is intentionally attempting to attract, for commercial gain,
Internet users to an on-line location by creating a likelihood of confusion
with the STING mark as to source, sponsorship, affiliation, or endorsement,
being an activity which corresponds to that listed in paragraph 4(b)(iv)
of the Policy as evidence of bad faith registration and use of a domain
name. In addition, that site is personally offensive to the Complainant
and contrary to his established reputation, and tarnishes the STING mark
in violation of 15 U.S.C. § 1125(c). Thirdly, because the Complainants
STING mark has a strong reputation and is world famous, the Respondent
can make no good faith use of the domain name, and "it is not possible
to conceive of any plausible actual or contemplated active use of the [D]omain
[N]ame by the Respondent that would not be illegitimate, such as by being
a passing off, an infringement of consumer protection legislation, or an
infringement of the Complainants rights under trademark law".
The Response
5.5 The Respondent denies that each of the three elements specified
in paragraph 4(a) of the Uniform Policy are applicable to the domain name
the subject of this dispute.
5.6 In relation to element (i) of paragraph 4(a) of the Uniform Policy,
the Respondent admits that he registered that domain name "Sting.com",
and that the domain name is identical to the STING mark. However, the Respondent
challenges the Complainants claim to owning the STING mark, and the Complainants
claim that the STING mark is world famous and exclusively associated with
the Complainant and so entitled to protection against dilution. In particular,
the Respondent contends that the trademark STING has been the subject of
20 registrations in the United States, none of which have been granted
to the Complainant. A list purporting to be a printout from an internet
search of the United States Patent and Trademark Office database of trademark
registrations for the word STING is Exhibit J to the Response.
5.7 In relation to element (ii) of paragraph 4(a) of the Uniform Policy,
the Respondent contends that his use of the nickname "Sting" and more recently
"=Sting=" publicly on the Internet for at least 8 years has given him a
legitimate interest in the domain name. The Respondent provided documentary
evidence in Exhibits A, C, D, E and H to the Response, showing that
for some years prior to this dispute he has used the domain name to point
to a web site for email purposes, he has used the nickname "sting" or "=sting="
with global internet gaming services, and he has had in development a web
site intended to be located at the URL http://www.Sting.com.
5.8 In relation to element (iii) of paragraph 4(a) of the Uniform Policy,
the Respondent contends that his activities since registration of the domain
name demonstrate that he did not register and has not been using the domain
name in bad faith. In particular, the Respondent denies the Complainants
contention that the Respondent offered to sell the domain name to the Complainant
for a sum greater than out of pocket expenses. Rather, the Respondent contends
that it was the Complainant, through his attorney, who contacted him in
relation to the domain name. The Respondent provides in Exhibit B to the
Response a copy of an email from the Complainants attorney to him of May
17, 2000, initiating contact. The Respondent admits that upon solicitation
from the Complainants attorney he did make an offer to sell the domain
name, but contends that this does not demonstrate his primary purpose in
registering the domain name was to sell it to the Complainant.
5.9 In relation to the use of the domain name to point to the "GunBrokers.com"
web site, the Respondent contends that because this occurred due to a mistake
by his web service provider, it is not evidence of bad faith use by him.
Exhibit I of the Response contains a copy of a letter purporting to be
from the Respondents web service provider explaining how this mistake
occurred. In addition, the Respondent contends that he had no knowledge
of the Complainants distaste for a web site selling guns.
5.10 The Respondent makes the further contention that it cannot be
said he has engaged in a pattern of conduct of preventing trademark owners
from reflecting their trademark in a corresponding domain name, because
the other two domain names the Respondent owns have not been offered for
sale to anyone.
6 Discussion and Findings
Domain Name Identical or Confusingly Similar to Complainants Mark
6.1 The relevant part of the domain name "Sting.com" is "sting". The
Complainant asserts, the Respondent admits, and this Administrative Panel
finds, that the domain name is identical to the word STING.
6.2 The Complainant is not the owner of a trademark or service mark
registration for the word STING. It is, however, clear that the Uniform
Policy is not limited to a "registered" mark; an unregistered, or common
law, mark is sufficient for the purposes of paragraph 4(a)(i). The Complainant
did not provide any documentary evidence in support of his assertion that
he is the owner of the unregistered trademark and/or service mark STING.
However, the Uniform Policy is not limited to trademarks or service marks
"owned" by the Complainant; it is sufficient for the purposes of paragraph
4(a)(i) that there be a trademark or service mark "in which the Complainant
has rights". The Complainant asserted, and this Administrative Panel through
the equivalent of taking judicial notice finds, that the Complainant is
a world famous entertainer who is known by the name STING.
6.3 The question that arises is whether being known under a particular
name is the same as having rights in that name as a "trademark or service
mark". The answer to this question is not straightforward. On the one hand,
there are a number of cases under the Uniform Policy in which the Panel
has treated the name of a famous or at least widely known person as constituting
an unregistered trademark or service mark sufficient for the purposes of
paragraph 4(a)(i) (eg. Julia Fiona Roberts v Russell Boyd WIPO
Case No. D2000-0210; Jeannette Winterson v Mark Hogarth WIPO Case No. D2000-0235;
Steven Rattner v BuyThisDomainName (John Pepin) WIPO Case No. D2000-0402).
6.4 On the other hand, the Report of the WIPO Internet Domain Name
Process of April 30, 1999, on which ICANN based the Uniform Policy, at
paragraphs 165-168, states as follows (footnote citations deleted, emphasis
added):
The preponderance of views, however, was in favor of restricting the
scope of the procedure, at least initially, in order to deal first with
the most offensive forms of predatory practices and to establish the procedure
on a sound footing. Two limitations on the scope of the procedure were,
as indicated above, favored by these commentators. The first limitation
would confine the availability of the procedure to cases of deliberate,
bad faith abusive registrations. The definition of such abusive registrations
is discussed in the next section. The second limitation would define abusive
registration by reference only to trademarks and service marks. Thus, registrations
that violate trade names, geographical indications or personality rights
would not be considered to fall within the definition of abusive registration
for the purposes of the administrative procedure. Those in favor of this
form of limitation pointed out that the violation of trademarks (and service
marks) was the most common form of abuse and that the law with respect
to trade names, geographical indications and personality rights is less
evenly harmonized throughout the world, although international norms do
exist requiring the protection of trade names and geographical indications.
We are persuaded by the wisdom of proceeding firmly but cautiously and
of tackling, at the first stage, problems which all agree require a solution.
[W]e consider that it is premature to extend the notion of abusive registration
beyond the violation of trademarks and service marks at this stage. After
experience has been gained with the operation of the administrative procedure
and time has allowed for an assessment of its efficacy and of the problems,
if any, which remain outstanding, the question of extending the notion
of abusive registration to other intellectual property rights can always
be re-visited.
It is clear from this statement that personality rights were not intended
to be made subject to the proposed dispute resolution procedure. In adopting
the procedure proposed in the WIPO Report, ICANN did not vary this limitation
on its application. It must be concluded, therefore, that ICANN did not
intend the procedure to apply to personality rights.
6.5 In the opinion of this Administrative Panel, it is doubtful whether
the Uniform Policy is applicable to this dispute. Although it is accepted
that the Complainant is world famous under the name STING, it does not
follow that he has rights in STING as a trademark or service mark. Unlike
the personal names in issue in the cases Julia Fiona Roberts v Russell
Boyd, Jeannette Winterson v Mark Hogarth, and Steven Rattner v BuyThisDomainName
(John Pepin), the personal name in this case is also a common word in the
English language, with a number of different meanings. The following are
the entries for "sting" from Merriam- Websters Collegiate
Dictionary:
sting vb stung ; sting.ing [ME, fr. OE stingan; akin to ON stinga to
sting and prob. to Gk stachys spike of grain, stochos target, aim] vt (bef.
12c) 1: to prick painfully: as a: to pierce or wound with a poisonous or
irritating process b: to affect with sharp quick pain or smart "hail stung
their faces" 2: to cause to suffer acutely "stung with remorse" 3: overcharge,
cheat ~ vi 1: to wound one with or as if with a sting 2: to feel a keen
burning pain or smart; also: to cause such pain -- sting.ing.ly adv
sting n (bef. 12c) 1 a: the act of stinging; specif: the thrust of
a stinger into the flesh b: a wound or pain caused by or as if by stinging
2: stinger 2 3: a sharp or stinging element, force, or quality 4: an elaborate
confidence game; specif: such a game worked by undercover police in order
to trap criminals
6.6 In light of the fact that the word "sting" is in common usage in
the English language, with a number of meanings, this case can be distinguished
from the other cases cited above in which the Complainants personal name
was found also to be an unregistered trademark or service mark to which
the Uniform Policy applies. This Administrative Panel is inclined to the
view, therefore, that the Complainants name STING is not a trademark or
service mark within the scope of paragraph 4(a)(i) of the Uniform Policy.
However, it is not necessary to reach a formal decision on this issue,
because this Administrative Panel finds against the Complainant on other
grounds, namely that the requirement of paragraph 4(a)(iii) is not met,
as discussed below.
Respondents Rights or Legitimate Interests in the Domain Name
6.7 The Respondent provided evidence of circumstances of the type specified
in paragraph 4(c) of the Uniform Policy as giving rise to a right to or
legitimate interest in the domain name. In particular, the Respondent provided
in Exhibit C of the Response copies of various email communications to
him prior to the commencement of this dispute, showing that the "UserName",
the "nickname", the "Screen Name", or the "Account PIC" under which the
Respondent had registered for global internet gaming services consisted
of or included the word "sting". In Exhibit D to the Response, the Respondent
provided copies of web page printouts from The Champions League of Quake,
a service which monitors Quake servers and keeps track of the scores of
registered players of this game. Those printouts show that the Respondent
played this game using the player names "sting" or "=sting=". In addition,
the Respondent provided evidence in Exhibit E to the Response of preparations
by him to establish a web site at the URL http://www.Sting.com.
6.8 Although this evidence is not irrelevant to the issue of whether
or not the Respondent has a right to or a legitimate interest in the domain
name, it is certainly at the weaker end of the spectrum of such evidence.
The Respondents use of the name "sting" or "=sting=" for gaming does not
establish that he has been "commonly known" by the domain name as contemplated
by paragraph 4(c)(ii). The word is undistinctive, and most likely is used
by numerous people in cyberspace. In practice, this word provides the Respondent
with anonymity rather than with a name by which he is commonly known. The
Respondents evidence of his preparations to establish a web site at the
URL http://www.Sting.com does not establish the circumstances contemplated
by paragraph 4(c)(i), because there is no evidence that this proposed use
of the domain name is in connection with a bona fide offering of goods
or services.
6.9 In short, a more substantive use of the word "sting" than that
proven by the Respondent is required to show a right or legitimate interest
in the domain name "Sting.com" (although this proven use is relevant to
the issue of bad faith). On balance, therefore, this Administrative Panel
finds that the Respondent does not have a right to or a legitimate interest
in the domain name, in the sense in which that concept is used in paragraph
4(a)(ii) of the Uniform Policy.
Domain Name Registered and Used in Bad Faith
6.10 The Complainant has not satisfied this Administrative Panel that
the Respondent registered and is using the domain name in bad faith. The
Complainant asserted that the Respondent offered to sell the domain name
to the Complainant for $25,000, but the Complainant provided no evidence
in support of this assertion. In particular, the Complainant provided no
evidence of the Respondents alleged communications with the Complainant
on this issue. The Respondent admitted that he offered to sell the domain
name to the Complainant, but only after the Complainant solicited that
offer. (The Respondent did not specify the price at which he offered to
sell the domain name, but he did not dispute the Complainants assertion
of $25,000, so this Administrative Panel assumes the offered price was
for that amount, or at least for an amount in excess of the Respondents
out-of-pocket expenses.) Although this evidence is consistent with the
Complainants contention that the Respondent acquired the domain name primarily
for the purpose of selling it to the Complainant, as required by paragraph
4(b)(i), this evidence does not prove that. This evidence is equally consistent
with the Respondents contention that he acquired the domain name five
years ago in good faith. In the absence of any evidence whatsoever from
the Complainant going to the assertion of the Respondents offer to sell
the domain name, this Administrative Panel finds that the Complainant has
not met the burden of proof on this issue.
6.11 This Administrative Panel does not accept the Complainants contention
that the linking of the domain name to the "GunBroker.com" web site constituted
intentionally attempting to attract, for commercial gain, Internet users
to an on-line location by creating a likelihood of confusion with the STING
mark as to source, sponsorship, affiliation, or endorsement, and so constitutes
an activity which corresponds to that listed in paragraph 4(b)(iv) of the
Uniform Policy as evidence of bad faith registration and use of the domain
name. Again, the Complainant provided no evidence in support of this contention.
In particular, the Complainant provided no evidence as to the contents
of the "GunBroker.com" site, and thus no evidence establishing that a likelihood
of confusion with the STING mark was created as to source, sponsorship,
affiliation or endorsement of the site. The Respondent admitted that the
domain name did point to the "GunBroker.com" site for a period of time,
but provided evidence to the effect that this was due to an error on the
part of the Respondents web service provider. The evidence is therefore
consistent with the Respondents contention that there was no intentional
attempt to attract internet users for commercial gain. Once again, the
Complainant has failed to satisfy its burden of proof on this point.
6.12 Finally, this Administrative Panel does not accept the Complainants
contention that "it is not possible to conceive of any plausible actual
or contemplated active use of the [D]omain [N]ame by the Respondent that
would not be illegitimate, such as by being a passing off, an infringement
of consumer protection legislation, or an infringement of the Complainants
rights under trademark law". The words in quotation marks come from Telstra
Corporation Limited v Nuclear Marshmallows WIPO Case No. D2000-0003. In
the Telstra case, the trademark in question was an invented word. In this
case the mark in question is a common word in the English language, with
a number of meanings. Unlike the situation in the Telstra case, therefore,
it is far from inconceivable that there is a plausible legitimate use to
which the Respondent could put the domain name. The Respondent has asserted
a legitimate use to which he has put, and intends to put, the domain name.
Whilst the evidence provided in support of this assertion is not particularly
strong, it is at least consistent with that assertion, and with his overall
contention that he did not register and has not been using the domain name
in bad faith. The Complainant has thus failed to satisfy the burden of
proof on this point.
7. Decision
7.1 This Administrative Panel decides that the Complainant has not
proven each of the three elements in paragraph 4(a) of the Uniform Policy
in relation to the domain name the subject of the Complaint.
7.2 Pursuant to paragraph 4(i) of the Uniform Policy and paragraph
15 of the Uniform Rules, this Administrative Panel denies the request that
the Registrar, Network Solutions, Inc, be required either to
transfer to the Complainant, Gordon Sumner, p/k/a Sting, or to cancel,
the domain name "Sting.com".
Andrew F. Christie
Sole Panelist
Dated: July 24, 2000
Attachment 1
ADMINISTRATIVE PANEL INTERIM ORDER
Gordon Sumner, p/k/a Sting v Michael Urvan
Case No. D2000-0596
Background to this Interim Order
1 The Complainant, by email to the WIPO Arbitration and Mediation Center
(WIPO Center) on June 13, 2000, filed a Complaint against the Respondent
in relation to the domain name "Sting.com", pursuant to the Uniform Domain
Name Dispute Resolution Policy implemented by the Internet Corporation
for Assigned Names and Numbers (ICANN) on October 24, 1999, ("Uniform Policy"),
and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented
by ICANN on the same date ("Uniform Rules"). A Notification of Complaint
and Commencement of Administrative Proceeding was sent to the Respondent
on June 20, 2000. The Respondent filed a Response within the required time,
which was received at the WIPO Center by email on July 8, 2000. On July
11, 2000, the WIPO Center appointed Dr Andrew F. Christie as
Sole Panelist in this case.
2 On the same day as the appointment of this Administrative Panel,
the Respondent by email to the WIPO Center (a copy of which was forwarded
to this Administrative Panel) requested the opportunity to file a Reply
to Respondents Response. On the same day the WIPO Center by email replied
as follows (a copy of which was forwarded to this Administrative Panel):
Uniform Policy and Rules do not foresee submission of pleadings following
the Complaint and Response. As the Administrative Panel has now been appointed
in this case, and the Case File has been transmitted, the sole discretion
whether to call for further particulars or pleadings now rests with the
Panel, who will be copied your request.
3 By email to the WIPO Center on July 14, 2000, (a copy of which was
forwarded to this Administrative Panel), the Complainant requested a Stay
of this dispute, for the following reasons:
Complainant has still not received the hard copy (including Exhibits)
of Respondent's Reply, although Respondent claims he mailed them on
July 7th. Complainant received Respondent's Response via e-mail. The Response
raises several issues that Complainant strongly feels need to be addressed,
and Complainant has already submitted a request to the Panel that Complainant
be allowed to file a Reply. However, Complainant cannot complete the Reply
without the benefit of Respondent's Exhibits, which Complainant has still
not received. Complainant therefore respectfully requests a Stay of this
Dispute, pending Complainant's receipt of Respondent's Exhibits.
4 On July 19, 2000, by email to the WIPO Center (a copy of which was
forwarded to this Administrative Panel), the Complainant purported to file
a Reply to Respondents Response.
5 On the same day as the Complainant purported to file the Reply, by
email to the WIPO Center (a copy of which was forwarded to this Administrative
Panel), the Respondent communicated as follows:
As shown from the copy of the correspondence below, Complainant was
specifically warned NOT to make anymore submissions until such time as
the Panel acknowledges the Complainants request and agrees to allow further
submissions. Therefore, respondent respectfully requests that Complainant's
submission be disregarded. Should the Panel decide to allow the reply,
Respondent wishes to rebut. Should the Panel decide to allow more submissions,
then Respondent asks that Respondent be granted the final submission/closing
argument as is customary. For the sake of order, Respondent asks Complainants
counsel to please maintain discipline and follow the arbiter's instructions.
Observations on the filing of Supplementary Submissions
6 The WIPO Center, in its communication with the Complainant, correctly
observed that the Uniform Policy and Uniform Rules do not provide for the
parties to the dispute filing supplementary submissions subsequent to the
Complaint and the Response. However, rule 12 of the Uniform Rules does
provide that:
In addition to the complaint and the response, the Panel may request,
in its sole discretion, further statements or documents from either of
the Parties.
7 This Administrative Panel agrees with the views of the three-member
Administrative Panel in Document Technologies, Inc. v. International Electronic
Communications, Inc (WIPO Case D2000-0270) in relation to the filing of
supplementary submissions, which were as follows:
Although litigants and parties in arbitrations may have a right of
reply under the rules of other forums, ICANN chose a different procedure
for these proceedings that calls for only a Complaint and a Response. Among
other things, this more truncated procedure allows for more rapid and cost
effective resolution of domain name challenges. See CRS Technology Corp.
v. CondeNet, Inc., File No. FA#0002000093547 (NAF Mar. 28, 2000). At the
same time, ICANN provided the Panel with the flexibility to seek additional
submissions if the Panel feels that it cannot rule on the record submitted.
If a Party wishes to submit a further statement, the better practice under
the Rules would be to first seek consent from the Panel, with an explanation
of why a further statement is warranted. Appropriate reasons may include
the existence of new, pertinent facts that did not arise until after the
submission of the complaint, or the desire to bring new, relevant legal
authority to the attention of the Panel. E.g., Pet Warehouse v. Pets.Com,
Inc., Case No. D2000-0105 (WIPO Apr. 13, 2000). The Panel would then be
in a position quickly to rule on the request and, if it determines that
a further statement is warranted, set a schedule that is fair to both parties
and provides each party with an opportunity to supplement the record. This
procedure also would save the Parties the expense of preparing further
statements that the Panel decides not to accept. See generally Plaza Operating
Partners, Ltd. v. Pop Data Technologies and Joseph Pillus, Case No. D2000-0166
(WIPO June 1, 2000).
8 There can be no doubt that neither the Complainant nor the Respondent
has a right to file supplementary submissions subsequent to the Complaint
and the Response. Supplementary submissions can only be filed in response
to a request for such from the Panel. Accordingly, this Administrative
Panel is strongly of the opinion that parties must refrain from purporting
to submit unsolicited supplementary submissions. It is, of course, for
each Administrative Panel to determine whether or not to request supplementary
submissions, taking into account all the circumstances of the particular
case (including but not limited to any plea from a party for leave to file
further material). Nevertheless, this Administrative Panel considers that
it would, and should, be in exceptional cases only that supplementary submissions
are requested by a Panel. If requesting supplementary submissions were
to become unexceptional, the dispute resolution procedure under the Uniform
Policy and Rules would most likely become significantly more resource-consuming
to all the actors (ie. the parties, the dispute resolution service provider,
and the Administrative Panel) than is currently the case, as the unfolding
scenario in this case demonstrates. Such an outcome seems contrary to the
clear intention of ICANN in adopting the Uniform Policy and the Uniform
Rules in their present form.
Deliberations of this Administrative Panel
9 This Administrative Panel has not requested any supplementary submissions
and, in the absence of such a request, will not read them. Accordingly,
this Administrative Panel has not read the Complainants Reply. It follows
that, unless a request for a supplementary submission is made by this Administrative
Panel, there is no need for the Respondent to file any rebuttal. It also
follows that the Complainants request for a Stay is denied.
10 Nevertheless, this Administrative Panel considers that an abundance
of caution for procedural fairness requires that the Complainant be given
time to consider its position in light of the above observations and this
Interim Order. Accordingly, this Administrative Panel finds that there
are exceptional circumstances of the type contemplated by rule 15(b) of
the Uniform Rules, such as to mean that the time for forwarding a Decision
in this case will be extended by two days, to July 26, 2000.
Interim Order
11 This Administrative Panel orders that:
(a) the Complainants request for a Stay is denied
(b) the Complainants purported submission of a Reply is invalid, and
shall be disregarded by this Administrative Panel
(c) the time for this Administrative Panel to forward a Decision in
this case to the WIPO Center is extended to July 26, 2000.
Andrew F. Christie
Sole Panelist
Dated: July 19, 2000
Attachment 2
ADMINISTRATIVE PANEL 2nd INTERIM ORDER
Gordon Sumner, p/k/a Sting v Michael Urvan
Case No. D2000-0596
Background to this 2nd Interim Order
1 This Administrative Panel issued an Interim Order on July 19, 2000,
denying the Complainants request for a Stay, ruling invalid and disregarding
the Complainants purported submission of a Reply to the Respondents Response,
and extending to July 26, 2000, the time for this Administrative Panel
to forward a Decision in this case to the WIPO Center.
2 By email to the WIPO Center on July 19, 2000, (a copy of which was
forwarded to this Administrative Panel), the Complainant requested that
it be permitted to submit a Reply. It pleaded that a further statement
by the Complainant was warranted for the following reasons:
Respondent has submitted factual issues pertaining to a) his alleged
"good faith" use of the domain name; b) his dealings with representatives
of Complainant; c) his pointing the domain name to a gun broker site; and
d) his alleged use of the domain name as a "nick name," that are pertinent
to this dispute and that are strongly disputed by Complainant and Complainant's
counsel (who has first hand knowledge of many of these factual issues).
Further, Respondent has submitted legal arguments concerning Complainant's
rights in his mark and Respondent's alleged "legitimate or fair use" of
the Domain Name, that Complainant feels should be addressed by both Parties
in order for the Panel to reach a decision, rather than require the Panel
to rely solely on the unilateral statements and arguments of Respondent.
Deliberations of this Administrative Panel
3 In its Interim Order of July 19, 2000, this Administrative Panel
expressed the view that it should be in exceptional cases only that supplementary
submissions are requested by a Panel. This Administrative Panel does not
consider that the circumstances of this case are exceptional, such as to
require the Panel to request the Complainant to file a Reply. The reasons
for this view are set out below.
4 The Complainant has pleaded two grounds as justifying the Panel to
request a supplementary submission. The first ground is that the Respondent
has "submitted factual issues pertaining to" his alleged good faith, his
dealings with representatives of the Complainant, and his use of the domain
name "that are pertinent to this dispute and that are strongly disputed
by Complainant". Such circumstances are hardly exceptional. Indeed, the
circumstance of a Respondent filing material that pertains to relevant
issues and consists of facts disputed by the Complainant is, in this Administrative
Panels experience of adjudicating domain name disputes under the ICANN
Uniform Policy and Rules, unexceptional in the extreme.
5 The second ground pleaded by the Complainant is that the Respondent
"has submitted legal arguments" concerning the Complainants rights and
the Respondents alleged legitimate or fair use of the domain which the
Complainant feels "should be addressed by both Parties" rather than requiring
the Panel "to rely solely on the unilateral statements and arguments" of
the Respondent. This Administrative Panel has considered carefully the
Complaint and the Response filed in this case, and is satisfied that these
documents are sufficient for it to properly resolve this case without reference
to supplementary material. The Complaint contains assertions going to the
issue of the Complainants rights in his mark and the issue of the Respondents
alleged bad faith. The Response contains assertions going to both of those
issues, as well as assertions going to the closely-related issue of the
Respondents alleged legitimate interest or fair use of the domain name.
In this Administrative Panels view, there is sufficient information in
these documents to ensure that the Panels decision on these issues (and
the other relevant issues) is not based "solely on the unilateral statements
and arguments of the Respondent".
6 In short, there is nothing exceptional about the facts in dispute
between the parties, the disputed application of the principles of the
Uniform Policy to those facts, or the form and substance of the Complaint
and the Response filed by the parties, which warrants complicating the
resolution of this dispute by requesting supplementary submissions from
either or both of the parties. Accordingly, this Administrative Panel refuses
the Complainants request to be allowed to submit a Reply.
2nd Interim Order
7 This Administrative Panel orders that the Complainants request to
be allowed to submit a Reply is denied.
Andrew F. Christie
Sole Panelist
Dated: July 20, 2000
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gordon Sumner, p/k/a Sting v Michael Urvan
Case No. D2000-0596
1 The Parties
1.1 The Complainant is Gordon Sumner, professionally known as "Sting",
a citizen of the United Kingdom who maintains a residence in the United
States. The Respondent is Michael Urvan, of Marietta, Georgia, United States
of America.
2 The Domain Names and Registrar
2.1 The domain name the subject of this Complaint is "Sting.com".
2.2 The Registrar of this domain name is Network Solutions, Inc of
Herndon, Virginia, USA ("Registrar").
3 Procedural History
Issuance of Complaint
3.1 The Complainant by email and by courier submitted to the World
Intellectual Property Organization Arbitration and Mediation Center ("WIPO
Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution
Policy implemented by the Internet Corporation for Assigned Names and Numbers
(ICANN) on October 24, 1999, ("Uniform Policy"), and under the Rules for
Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the
same date ("Uniform Rules"). The email copy of the Complaint was received
by the WIPO Center on June 13, 2000, and the hard copy of the Complaint
was received by the WIPO Center on June 15, 2000. An Acknowledgment of
Receipt was sent by the WIPO Center to the Complainant, by email dated
June 15, 2000.
Confirmation of Registration Details
3.2 A Request for Registrar Verification was dispatched by the WIPO
Center to the Registrar by email on June 15, 2000. By email to the WIPO
Center on June 20, 2000, the Registrar confirmed that it had received a
copy of the Complaint from the Complainant; confirmed that it was the Registrar
of the domain name the subject of the Complaint; confirmed that the current
registrant of the domain name is the Respondent; informed that the administrative,
and billing Contact for the domain names is the Respondent, and provided
postal, telephone, facsimile and email contact details for the administrative,
technical, zone and billing Contact; and informed that the status of each
of the domain names in issue is "active". The Registrar also confirmed
that its 5.0 Service Agreement is in effect. Amongst other things, that
agreement provides that the Respondent as registrant of the domain name
agrees to be bound by the domain name dispute policy incorporated therein.
The policy incorporated into the agreement is the Uniform Policy.
Notification to Respondent
3.3 Having verified that the Complaint satisfied the formal requirements
of the Uniform Policy and the Uniform Rules, and that payment of the filing
fee had been properly made, the WIPO Center issued to the Respondent, and
to the technical and zone contact for the domain name, a Notification of
Complaint and Commencement of Administrative Proceeding, by email on June
20, and by courier and fax on June 21, to the addresses provided by the
Registrar. Copies of this Notification of Complaint were sent to the Complainant,
the Registrar and ICANN by email on June 20.
3.4 This Administrative Panel finds that the WIPO Center has discharged
its responsibility under Paragraph 2(a) of the Uniform Rules "to employ
reasonably available means calculated to achieve actual notice to Respondent".
Filing of Response
3.5 A Response was filed by the Respondent, and received by the WIPO
Center by email on July 8, within the time specified in the Notification
of Complaint. A hardcopy of the Response, with Exhibits, was subsequently
received by the WIPO Center by courier.
Constitution of Administrative Panel
3.6 Subsequent to receipt of the Response, and in accordance with the
request in the Complaint, the WIPO Center proceeded to appoint a single
Panelist, and invited Dr Andrew F. Christie to so act. On July 11, 2000,
Dr Christie indicated his ability to act as the sole Panelist in this case,
and submitted to the WIPO Center a Statement of Acceptance and Declaration
of Impartiality and Independence the following day. On July 11, 2000, the
WIPO Center issued to both parties a Notification of Appointment of Administrative
Panel and Projected Decision Date, informing of Dr Christies appointment
and that absent exceptional circumstances a decision would be provided
by this Administrative Panel by July 24, 2000. The case
before this Administrative Panel was conducted in the English language.
Compliance with the formalities of the Uniform Policy and the Uniform
Rules
3.7 Having reviewed the Case File in this matter, this Administrative
Panel concurs with the assessment by the WIPO Center that the Complaint
complies with the formal requirements of the Uniform Policy and Uniform
Rules.
Interim Orders
3.8 In response to certain procedural requests from the Complainant,
this Administrative Panel issued an Interim Order on July 19, 2000, and
a second Interim Order on July 20, 2000. The effect of the first Interim
Orders was to deny the Complainants request for a Stay, to rule invalid
and disregard the Complainants unsolicited submission of a Reply, and
to extend to July 26, 2000, the date by which this Administrative Panel
was required to forward a Decision in this case. The effect of the second
Interim Order was to deny the Complainants request to be allowed to submit
a Reply. Copies of these interim orders are attached to this decision.
4 Factual Background
Complainants Activities and Trademarks
4.1 In his Complaint, the Complainant asserted the following in relation
to his activities and trademarks. The Complainant is a world famous musician,
recording and performing artist who has, for over twenty years, rendered
high-quality musical services under his name, trademark and service mark
STING. Since at least as early as 1978, the Complainant has exclusively
and continuously used the STING mark in connection with approximately twenty
record albums, almost all of which have gone multi-platinum in the United
States and enjoyed great commercial success worldwide. The Complainant
has also used the STING mark in connection with innumerable world-wide
concert tours involving venues with significant capacities, the majority
of which sell out. The STING mark is internationally known and famous as
a result of the Complainants extensive, high-profile, and overwhelmingly
commercially successful activities in the music industry. The Complainant
is the owner of the STING mark as a trademark and service mark. The name
STING has become synonymous in the minds of the public with the Complainant
and his activities in the music industry, and serves as a symbol of the
goodwill and excellent reputation associated with Sting. The STING mark
is famous and entitled to the widest scope of protection afforded by law,
including protection against dilution.
4.2 In his Response, the Respondent asserted that there are 20 trademark
registrations of the word STING in the US, but none of them are registered
by the Complainant. The word STING is a common word in the English language,
and so registration of it as a domain name is not a violation of the Uniform
Policy. The Respondent is not a competitor of the Complainant and the Respondent
does not attempt to cause any confusion with him.
Respondents Activities
4.3 The Complainant asserted the following in relation to the Respondents
activities and use of the domain name. Until the Respondent was contacted
by a representative of the Complainant, the Respondent made no use of the
domain name. After being contacted by a representative of the Complainant,
Respondent linked the domain name to another site called "GunBroker.Com",
which is a site that facilitates "person to person" selling of guns. During
or about February of 2000, and again during or about May of 2000, the Respondent
offered to sell the domain name to the Complainant for $25,000.00. Since
offering to sell the domain name to the Complainant for $25,000.00, the
Respondent has frequently changed the web site identified by the domain
name, usually with an "under construction" message, and in some cases providing
a link to a third-party operated unauthorized web site relating to the
Complainant.
4.4 In his Response, the Respondent asserted that he has been using
the nickname "Sting" and more recently "=Sting=" publicly on the Internet
for at least 8 years. The Respondent registered the domain name in July
1995, approximately 5 years before this dispute was commenced. The Respondent
did not register the domain name to sell it, nor did he register the domain
to hold it hostage for any reason. The Respondent engaged in work on web
site to which he intended the domain name "Sting.com" to resolve, prior
to any notification of this dispute. The Respondent did not point the domain
name "Sting.com" to the "GunBroker.com" website this occurred for a short
time as a result of an error on the part of the Respondents web service
provider. The Complainants assertion that the Respondent initiated contact
with the Complainant is false - the first contact was initiated by the
Complainant on May 16, 2000.
5 Parties Contentions
The Complaint
5.1 The Complainant contends that each of the three elements specified
in paragraph 4(a) of the Uniform Policy are applicable to the domain name
the subject of this dispute.
5.2 In relation to element (i) of paragraph 4(a) of the Uniform Policy,
the Complainant contends that the domain name is identical in its substantive
part to the Complainants unregistered trademark and service mark STING.
5.3 In relation to element (ii) of paragraph 4(a) of the Uniform Policy,
the Complaint contends that the Respondent has no rights or legitimate
interests in respect of the domain name in issue.
5.4 In relation to element (iii) of paragraph 4(a) of the Uniform Policy,
the Complainant contends that evidence of bad faith registration and use
is established by the following circumstances. First, the Respondent offered
to sell the domain name to the Complainant for $25,000, an activity which
corresponds to that listed in paragraph 4(b)(i) of the Policy as evidence
of bad faith registration and use of a domain name. Secondly, the Respondent
has used the domain name mark to link to the "GunBrokers.com" web site,
and as such is intentionally attempting to attract, for commercial gain,
Internet users to an on-line location by creating a likelihood of confusion
with the STING mark as to source, sponsorship, affiliation, or endorsement,
being an activity which corresponds to that listed in paragraph 4(b)(iv)
of the Policy as evidence of bad faith registration and use of a domain
name. In addition, that site is personally offensive to the Complainant
and contrary to his established reputation, and tarnishes the STING mark
in violation of 15 U.S.C. § 1125(c). Thirdly, because the Complainants
STING mark has a strong reputation and is world famous, the Respondent
can make no good faith use of the domain name, and "it is not possible
to conceive of any plausible actual or contemplated active use of the [D]omain
[N]ame by the Respondent that would not be illegitimate, such as by being
a passing off, an infringement of consumer protection legislation, or an
infringement of the Complainants rights under trademark law".
The Response
5.5 The Respondent denies that each of the three elements specified
in paragraph 4(a) of the Uniform Policy are applicable to the domain name
the subject of this dispute.
5.6 In relation to element (i) of paragraph 4(a) of the Uniform Policy,
the Respondent admits that he registered that domain name "Sting.com",
and that the domain name is identical to the STING mark. However, the Respondent
challenges the Complainants claim to owning the STING mark, and the Complainants
claim that the STING mark is world famous and exclusively associated with
the Complainant and so entitled to protection against dilution. In particular,
the Respondent contends that the trademark STING has been the subject of
20 registrations in the United States, none of which have been granted
to the Complainant. A list purporting to be a printout from an internet
search of the United States Patent and Trademark Office database of trademark
registrations for the word STING is Exhibit J to the Response.
5.7 In relation to element (ii) of paragraph 4(a) of the Uniform Policy,
the Respondent contends that his use of the nickname "Sting" and more recently
"=Sting=" publicly on the Internet for at least 8 years has given him a
legitimate interest in the domain name. The Respondent provided documentary
evidence in Exhibits A, C, D, E and H to the Response, showing that
for some years prior to this dispute he has used the domain name to point
to a web site for email purposes, he has used the nickname "sting" or "=sting="
with global internet gaming services, and he has had in development a web
site intended to be located at the URL http://www.Sting.com.
5.8 In relation to element (iii) of paragraph 4(a) of the Uniform Policy,
the Respondent contends that his activities since registration of the domain
name demonstrate that he did not register and has not been using the domain
name in bad faith. In particular, the Respondent denies the Complainants
contention that the Respondent offered to sell the domain name to the Complainant
for a sum greater than out of pocket expenses. Rather, the Respondent contends
that it was the Complainant, through his attorney, who contacted him in
relation to the domain name. The Respondent provides in Exhibit B to the
Response a copy of an email from the Complainants attorney to him of May
17, 2000, initiating contact. The Respondent admits that upon solicitation
from the Complainants attorney he did make an offer to sell the domain
name, but contends that this does not demonstrate his primary purpose in
registering the domain name was to sell it to the Complainant.
5.9 In relation to the use of the domain name to point to the "GunBrokers.com"
web site, the Respondent contends that because this occurred due to a mistake
by his web service provider, it is not evidence of bad faith use by him.
Exhibit I of the Response contains a copy of a letter purporting to be
from the Respondents web service provider explaining how this mistake
occurred. In addition, the Respondent contends that he had no knowledge
of the Complainants distaste for a web site selling guns.
5.10 The Respondent makes the further contention that it cannot be
said he has engaged in a pattern of conduct of preventing trademark owners
from reflecting their trademark in a corresponding domain name, because
the other two domain names the Respondent owns have not been offered for
sale to anyone.
6 Discussion and Findings
Domain Name Identical or Confusingly Similar to Complainants Mark
6.1 The relevant part of the domain name "Sting.com" is "sting". The
Complainant asserts, the Respondent admits, and this Administrative Panel
finds, that the domain name is identical to the word STING.
6.2 The Complainant is not the owner of a trademark or service mark
registration for the word STING. It is, however, clear that the Uniform
Policy is not limited to a "registered" mark; an unregistered, or common
law, mark is sufficient for the purposes of paragraph 4(a)(i). The Complainant
did not provide any documentary evidence in support of his assertion that
he is the owner of the unregistered trademark and/or service mark STING.
However, the Uniform Policy is not limited to trademarks or service marks
"owned" by the Complainant; it is sufficient for the purposes of paragraph
4(a)(i) that there be a trademark or service mark "in which the Complainant
has rights". The Complainant asserted, and this Administrative Panel through
the equivalent of taking judicial notice finds, that the Complainant is
a world famous entertainer who is known by the name STING.
6.3 The question that arises is whether being known under a particular
name is the same as having rights in that name as a "trademark or service
mark". The answer to this question is not straightforward. On the one hand,
there are a number of cases under the Uniform Policy in which the Panel
has treated the name of a famous or at least widely known person as constituting
an unregistered trademark or service mark sufficient for the purposes of
paragraph 4(a)(i) (eg. Julia Fiona Roberts v Russell Boyd WIPO
Case No. D2000-0210; Jeannette Winterson v Mark Hogarth WIPO Case No. D2000-0235;
Steven Rattner v BuyThisDomainName (John Pepin) WIPO Case No. D2000-0402).
6.4 On the other hand, the Report of the WIPO Internet Domain Name
Process of April 30, 1999, on which ICANN based the Uniform Policy, at
paragraphs 165-168, states as follows (footnote citations deleted, emphasis
added):
The preponderance of views, however, was in favor of restricting the
scope of the procedure, at least initially, in order to deal first with
the most offensive forms of predatory practices and to establish the procedure
on a sound footing. Two limitations on the scope of the procedure were,
as indicated above, favored by these commentators. The first limitation
would confine the availability of the procedure to cases of deliberate,
bad faith abusive registrations. The definition of such abusive registrations
is discussed in the next section. The second limitation would define abusive
registration by reference only to trademarks and service marks. Thus, registrations
that violate trade names, geographical indications or personality rights
would not be considered to fall within the definition of abusive registration
for the purposes of the administrative procedure. Those in favor of this
form of limitation pointed out that the violation of trademarks (and service
marks) was the most common form of abuse and that the law with respect
to trade names, geographical indications and personality rights is less
evenly harmonized throughout the world, although international norms do
exist requiring the protection of trade names and geographical indications.
We are persuaded by the wisdom of proceeding firmly but cautiously and
of tackling, at the first stage, problems which all agree require a solution.
[W]e consider that it is premature to extend the notion of abusive registration
beyond the violation of trademarks and service marks at this stage. After
experience has been gained with the operation of the administrative procedure
and time has allowed for an assessment of its efficacy and of the problems,
if any, which remain outstanding, the question of extending the notion
of abusive registration to other intellectual property rights can always
be re-visited.
It is clear from this statement that personality rights were not intended
to be made subject to the proposed dispute resolution procedure. In adopting
the procedure proposed in the WIPO Report, ICANN did not vary this limitation
on its application. It must be concluded, therefore, that ICANN did not
intend the procedure to apply to personality rights.
6.5 In the opinion of this Administrative Panel, it is doubtful whether
the Uniform Policy is applicable to this dispute. Although it is accepted
that the Complainant is world famous under the name STING, it does not
follow that he has rights in STING as a trademark or service mark. Unlike
the personal names in issue in the cases Julia Fiona Roberts v Russell
Boyd, Jeannette Winterson v Mark Hogarth, and Steven Rattner v BuyThisDomainName
(John Pepin), the personal name in this case is also a common word in the
English language, with a number of different meanings. The following are
the entries for "sting" from Merriam- Websters Collegiate
Dictionary:
sting vb stung ; sting.ing [ME, fr. OE stingan; akin to ON stinga to
sting and prob. to Gk stachys spike of grain, stochos target, aim] vt (bef.
12c) 1: to prick painfully: as a: to pierce or wound with a poisonous or
irritating process b: to affect with sharp quick pain or smart "hail stung
their faces" 2: to cause to suffer acutely "stung with remorse" 3: overcharge,
cheat ~ vi 1: to wound one with or as if with a sting 2: to feel a keen
burning pain or smart; also: to cause such pain -- sting.ing.ly adv
sting n (bef. 12c) 1 a: the act of stinging; specif: the thrust of
a stinger into the flesh b: a wound or pain caused by or as if by stinging
2: stinger 2 3: a sharp or stinging element, force, or quality 4: an elaborate
confidence game; specif: such a game worked by undercover police in order
to trap criminals
6.6 In light of the fact that the word "sting" is in common usage in
the English language, with a number of meanings, this case can be distinguished
from the other cases cited above in which the Complainants personal name
was found also to be an unregistered trademark or service mark to which
the Uniform Policy applies. This Administrative Panel is inclined to the
view, therefore, that the Complainants name STING is not a trademark or
service mark within the scope of paragraph 4(a)(i) of the Uniform Policy.
However, it is not necessary to reach a formal decision on this issue,
because this Administrative Panel finds against the Complainant on other
grounds, namely that the requirement of paragraph 4(a)(iii) is not met,
as discussed below.
Respondents Rights or Legitimate Interests in the Domain Name
6.7 The Respondent provided evidence of circumstances of the type specified
in paragraph 4(c) of the Uniform Policy as giving rise to a right to or
legitimate interest in the domain name. In particular, the Respondent provided
in Exhibit C of the Response copies of various email communications to
him prior to the commencement of this dispute, showing that the "UserName",
the "nickname", the "Screen Name", or the "Account PIC" under which the
Respondent had registered for global internet gaming services consisted
of or included the word "sting". In Exhibit D to the Response, the Respondent
provided copies of web page printouts from The Champions League of Quake,
a service which monitors Quake servers and keeps track of the scores of
registered players of this game. Those printouts show that the Respondent
played this game using the player names "sting" or "=sting=". In addition,
the Respondent provided evidence in Exhibit E to the Response of preparations
by him to establish a web site at the URL http://www.Sting.com.
6.8 Although this evidence is not irrelevant to the issue of whether
or not the Respondent has a right to or a legitimate interest in the domain
name, it is certainly at the weaker end of the spectrum of such evidence.
The Respondents use of the name "sting" or "=sting=" for gaming does not
establish that he has been "commonly known" by the domain name as contemplated
by paragraph 4(c)(ii). The word is undistinctive, and most likely is used
by numerous people in cyberspace. In practice, this word provides the Respondent
with anonymity rather than with a name by which he is commonly known. The
Respondents evidence of his preparations to establish a web site at the
URL http://www.Sting.com does not establish the circumstances contemplated
by paragraph 4(c)(i), because there is no evidence that this proposed use
of the domain name is in connection with a bona fide offering of goods
or services.
6.9 In short, a more substantive use of the word "sting" than that
proven by the Respondent is required to show a right or legitimate interest
in the domain name "Sting.com" (although this proven use is relevant to
the issue of bad faith). On balance, therefore, this Administrative Panel
finds that the Respondent does not have a right to or a legitimate interest
in the domain name, in the sense in which that concept is used in paragraph
4(a)(ii) of the Uniform Policy.
Domain Name Registered and Used in Bad Faith
6.10 The Complainant has not satisfied this Administrative Panel that
the Respondent registered and is using the domain name in bad faith. The
Complainant asserted that the Respondent offered to sell the domain name
to the Complainant for $25,000, but the Complainant provided no evidence
in support of this assertion. In particular, the Complainant provided no
evidence of the Respondents alleged communications with the Complainant
on this issue. The Respondent admitted that he offered to sell the domain
name to the Complainant, but only after the Complainant solicited that
offer. (The Respondent did not specify the price at which he offered to
sell the domain name, but he did not dispute the Complainants assertion
of $25,000, so this Administrative Panel assumes the offered price was
for that amount, or at least for an amount in excess of the Respondents
out-of-pocket expenses.) Although this evidence is consistent with the
Complainants contention that the Respondent acquired the domain name primarily
for the purpose of selling it to the Complainant, as required by paragraph
4(b)(i), this evidence does not prove that. This evidence is equally consistent
with the Respondents contention that he acquired the domain name five
years ago in good faith. In the absence of any evidence whatsoever from
the Complainant going to the assertion of the Respondents offer to sell
the domain name, this Administrative Panel finds that the Complainant has
not met the burden of proof on this issue.
6.11 This Administrative Panel does not accept the Complainants contention
that the linking of the domain name to the "GunBroker.com" web site constituted
intentionally attempting to attract, for commercial gain, Internet users
to an on-line location by creating a likelihood of confusion with the STING
mark as to source, sponsorship, affiliation, or endorsement, and so constitutes
an activity which corresponds to that listed in paragraph 4(b)(iv) of the
Uniform Policy as evidence of bad faith registration and use of the domain
name. Again, the Complainant provided no evidence in support of this contention.
In particular, the Complainant provided no evidence as to the contents
of the "GunBroker.com" site, and thus no evidence establishing that a likelihood
of confusion with the STING mark was created as to source, sponsorship,
affiliation or endorsement of the site. The Respondent admitted that the
domain name did point to the "GunBroker.com" site for a period of time,
but provided evidence to the effect that this was due to an error on the
part of the Respondents web service provider. The evidence is therefore
consistent with the Respondents contention that there was no intentional
attempt to attract internet users for commercial gain. Once again, the
Complainant has failed to satisfy its burden of proof on this point.
6.12 Finally, this Administrative Panel does not accept the Complainants
contention that "it is not possible to conceive of any plausible actual
or contemplated active use of the [D]omain [N]ame by the Respondent that
would not be illegitimate, such as by being a passing off, an infringement
of consumer protection legislation, or an infringement of the Complainants
rights under trademark law". The words in quotation marks come from Telstra
Corporation Limited v Nuclear Marshmallows WIPO Case No. D2000-0003. In
the Telstra case, the trademark in question was an invented word. In this
case the mark in question is a common word in the English language, with
a number of meanings. Unlike the situation in the Telstra case, therefore,
it is far from inconceivable that there is a plausible legitimate use to
which the Respondent could put the domain name. The Respondent has asserted
a legitimate use to which he has put, and intends to put, the domain name.
Whilst the evidence provided in support of this assertion is not particularly
strong, it is at least consistent with that assertion, and with his overall
contention that he did not register and has not been using the domain name
in bad faith. The Complainant has thus failed to satisfy the burden of
proof on this point.
7. Decision
7.1 This Administrative Panel decides that the Complainant has not
proven each of the three elements in paragraph 4(a) of the Uniform Policy
in relation to the domain name the subject of the Complaint.
7.2 Pursuant to paragraph 4(i) of the Uniform Policy and paragraph
15 of the Uniform Rules, this Administrative Panel denies the request that
the Registrar, Network Solutions, Inc, be required either to
transfer to the Complainant, Gordon Sumner, p/k/a Sting, or to cancel,
the domain name "Sting.com".
Andrew F. Christie
Sole Panelist
Dated: July 24, 2000
Attachment 1
ADMINISTRATIVE PANEL INTERIM ORDER
Gordon Sumner, p/k/a Sting v Michael Urvan
Case No. D2000-0596
Background to this Interim Order
1 The Complainant, by email to the WIPO Arbitration and Mediation Center
(WIPO Center) on June 13, 2000, filed a Complaint against the Respondent
in relation to the domain name "Sting.com", pursuant to the Uniform Domain
Name Dispute Resolution Policy implemented by the Internet Corporation
for Assigned Names and Numbers (ICANN) on October 24, 1999, ("Uniform Policy"),
and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented
by ICANN on the same date ("Uniform Rules"). A Notification of Complaint
and Commencement of Administrative Proceeding was sent to the Respondent
on June 20, 2000. The Respondent filed a Response within the required time,
which was received at the WIPO Center by email on July 8, 2000. On July
11, 2000, the WIPO Center appointed Dr Andrew F. Christie as
Sole Panelist in this case.
2 On the same day as the appointment of this Administrative Panel,
the Respondent by email to the WIPO Center (a copy of which was forwarded
to this Administrative Panel) requested the opportunity to file a Reply
to Respondents Response. On the same day the WIPO Center by email replied
as follows (a copy of which was forwarded to this Administrative Panel):
Uniform Policy and Rules do not foresee submission of pleadings following
the Complaint and Response. As the Administrative Panel has now been appointed
in this case, and the Case File has been transmitted, the sole discretion
whether to call for further particulars or pleadings now rests with the
Panel, who will be copied your request.
3 By email to the WIPO Center on July 14, 2000, (a copy of which was
forwarded to this Administrative Panel), the Complainant requested a Stay
of this dispute, for the following reasons:
Complainant has still not received the hard copy (including Exhibits)
of Respondent's Reply, although Respondent claims he mailed them on
July 7th. Complainant received Respondent's Response via e-mail. The Response
raises several issues that Complainant strongly feels need to be addressed,
and Complainant has already submitted a request to the Panel that Complainant
be allowed to file a Reply. However, Complainant cannot complete the Reply
without the benefit of Respondent's Exhibits, which Complainant has still
not received. Complainant therefore respectfully requests a Stay of this
Dispute, pending Complainant's receipt of Respondent's Exhibits.
4 On July 19, 2000, by email to the WIPO Center (a copy of which was
forwarded to this Administrative Panel), the Complainant purported to file
a Reply to Respondents Response.
5 On the same day as the Complainant purported to file the Reply, by
email to the WIPO Center (a copy of which was forwarded to this Administrative
Panel), the Respondent communicated as follows:
As shown from the copy of the correspondence below, Complainant was
specifically warned NOT to make anymore submissions until such time as
the Panel acknowledges the Complainants request and agrees to allow further
submissions. Therefore, respondent respectfully requests that Complainant's
submission be disregarded. Should the Panel decide to allow the reply,
Respondent wishes to rebut. Should the Panel decide to allow more submissions,
then Respondent asks that Respondent be granted the final submission/closing
argument as is customary. For the sake of order, Respondent asks Complainants
counsel to please maintain discipline and follow the arbiter's instructions.
Observations on the filing of Supplementary Submissions
6 The WIPO Center, in its communication with the Complainant, correctly
observed that the Uniform Policy and Uniform Rules do not provide for the
parties to the dispute filing supplementary submissions subsequent to the
Complaint and the Response. However, rule 12 of the Uniform Rules does
provide that:
In addition to the complaint and the response, the Panel may request,
in its sole discretion, further statements or documents from either of
the Parties.
7 This Administrative Panel agrees with the views of the three-member
Administrative Panel in Document Technologies, Inc. v. International Electronic
Communications, Inc (WIPO Case D2000-0270) in relation to the filing of
supplementary submissions, which were as follows:
Although litigants and parties in arbitrations may have a right of
reply under the rules of other forums, ICANN chose a different procedure
for these proceedings that calls for only a Complaint and a Response. Among
other things, this more truncated procedure allows for more rapid and cost
effective resolution of domain name challenges. See CRS Technology Corp.
v. CondeNet, Inc., File No. FA#0002000093547 (NAF Mar. 28, 2000). At the
same time, ICANN provided the Panel with the flexibility to seek additional
submissions if the Panel feels that it cannot rule on the record submitted.
If a Party wishes to submit a further statement, the better practice under
the Rules would be to first seek consent from the Panel, with an explanation
of why a further statement is warranted. Appropriate reasons may include
the existence of new, pertinent facts that did not arise until after the
submission of the complaint, or the desire to bring new, relevant legal
authority to the attention of the Panel. E.g., Pet Warehouse v. Pets.Com,
Inc., Case No. D2000-0105 (WIPO Apr. 13, 2000). The Panel would then be
in a position quickly to rule on the request and, if it determines that
a further statement is warranted, set a schedule that is fair to both parties
and provides each party with an opportunity to supplement the record. This
procedure also would save the Parties the expense of preparing further
statements that the Panel decides not to accept. See generally Plaza Operating
Partners, Ltd. v. Pop Data Technologies and Joseph Pillus, Case No. D2000-0166
(WIPO June 1, 2000).
8 There can be no doubt that neither the Complainant nor the Respondent
has a right to file supplementary submissions subsequent to the Complaint
and the Response. Supplementary submissions can only be filed in response
to a request for such from the Panel. Accordingly, this Administrative
Panel is strongly of the opinion that parties must refrain from purporting
to submit unsolicited supplementary submissions. It is, of course, for
each Administrative Panel to determine whether or not to request supplementary
submissions, taking into account all the circumstances of the particular
case (including but not limited to any plea from a party for leave to file
further material). Nevertheless, this Administrative Panel considers that
it would, and should, be in exceptional cases only that supplementary submissions
are requested by a Panel. If requesting supplementary submissions were
to become unexceptional, the dispute resolution procedure under the Uniform
Policy and Rules would most likely become significantly more resource-consuming
to all the actors (ie. the parties, the dispute resolution service provider,
and the Administrative Panel) than is currently the case, as the unfolding
scenario in this case demonstrates. Such an outcome seems contrary to the
clear intention of ICANN in adopting the Uniform Policy and the Uniform
Rules in their present form.
Deliberations of this Administrative Panel
9 This Administrative Panel has not requested any supplementary submissions
and, in the absence of such a request, will not read them. Accordingly,
this Administrative Panel has not read the Complainants Reply. It follows
that, unless a request for a supplementary submission is made by this Administrative
Panel, there is no need for the Respondent to file any rebuttal. It also
follows that the Complainants request for a Stay is denied.
10 Nevertheless, this Administrative Panel considers that an abundance
of caution for procedural fairness requires that the Complainant be given
time to consider its position in light of the above observations and this
Interim Order. Accordingly, this Administrative Panel finds that there
are exceptional circumstances of the type contemplated by rule 15(b) of
the Uniform Rules, such as to mean that the time for forwarding a Decision
in this case will be extended by two days, to July 26, 2000.
Interim Order
11 This Administrative Panel orders that:
(a) the Complainants request for a Stay is denied
(b) the Complainants purported submission of a Reply is invalid, and
shall be disregarded by this Administrative Panel
(c) the time for this Administrative Panel to forward a Decision in
this case to the WIPO Center is extended to July 26, 2000.
Andrew F. Christie
Sole Panelist
Dated: July 19, 2000
Attachment 2
ADMINISTRATIVE PANEL 2nd INTERIM ORDER
Gordon Sumner, p/k/a Sting v Michael Urvan
Case No. D2000-0596
Background to this 2nd Interim Order
1 This Administrative Panel issued an Interim Order on July 19, 2000,
denying the Complainants request for a Stay, ruling invalid and disregarding
the Complainants purported submission of a Reply to the Respondents Response,
and extending to July 26, 2000, the time for this Administrative Panel
to forward a Decision in this case to the WIPO Center.
2 By email to the WIPO Center on July 19, 2000, (a copy of which was
forwarded to this Administrative Panel), the Complainant requested that
it be permitted to submit a Reply. It pleaded that a further statement
by the Complainant was warranted for the following reasons:
Respondent has submitted factual issues pertaining to a) his alleged
"good faith" use of the domain name; b) his dealings with representatives
of Complainant; c) his pointing the domain name to a gun broker site; and
d) his alleged use of the domain name as a "nick name," that are pertinent
to this dispute and that are strongly disputed by Complainant and Complainant's
counsel (who has first hand knowledge of many of these factual issues).
Further, Respondent has submitted legal arguments concerning Complainant's
rights in his mark and Respondent's alleged "legitimate or fair use" of
the Domain Name, that Complainant feels should be addressed by both Parties
in order for the Panel to reach a decision, rather than require the Panel
to rely solely on the unilateral statements and arguments of Respondent.
Deliberations of this Administrative Panel
3 In its Interim Order of July 19, 2000, this Administrative Panel
expressed the view that it should be in exceptional cases only that supplementary
submissions are requested by a Panel. This Administrative Panel does not
consider that the circumstances of this case are exceptional, such as to
require the Panel to request the Complainant to file a Reply. The reasons
for this view are set out below.
4 The Complainant has pleaded two grounds as justifying the Panel to
request a supplementary submission. The first ground is that the Respondent
has "submitted factual issues pertaining to" his alleged good faith, his
dealings with representatives of the Complainant, and his use of the domain
name "that are pertinent to this dispute and that are strongly disputed
by Complainant". Such circumstances are hardly exceptional. Indeed, the
circumstance of a Respondent filing material that pertains to relevant
issues and consists of facts disputed by the Complainant is, in this Administrative
Panels experience of adjudicating domain name disputes under the ICANN
Uniform Policy and Rules, unexceptional in the extreme.
5 The second ground pleaded by the Complainant is that the Respondent
"has submitted legal arguments" concerning the Complainants rights and
the Respondents alleged legitimate or fair use of the domain which the
Complainant feels "should be addressed by both Parties" rather than requiring
the Panel "to rely solely on the unilateral statements and arguments" of
the Respondent. This Administrative Panel has considered carefully the
Complaint and the Response filed in this case, and is satisfied that these
documents are sufficient for it to properly resolve this case without reference
to supplementary material. The Complaint contains assertions going to the
issue of the Complainants rights in his mark and the issue of the Respondents
alleged bad faith. The Response contains assertions going to both of those
issues, as well as assertions going to the closely-related issue of the
Respondents alleged legitimate interest or fair use of the domain name.
In this Administrative Panels view, there is sufficient information in
these documents to ensure that the Panels decision on these issues (and
the other relevant issues) is not based "solely on the unilateral statements
and arguments of the Respondent".
6 In short, there is nothing exceptional about the facts in dispute
between the parties, the disputed application of the principles of the
Uniform Policy to those facts, or the form and substance of the Complaint
and the Response filed by the parties, which warrants complicating the
resolution of this dispute by requesting supplementary submissions from
either or both of the parties. Accordingly, this Administrative Panel refuses
the Complainants request to be allowed to submit a Reply.
2nd Interim Order
7 This Administrative Panel orders that the Complainants request to
be allowed to submit a Reply is denied.
Andrew F. Christie
Sole Panelist
Dated: July 20, 2000
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