Mick Jagger v Denny Hammerton

[Indexed as: Mick Jagger v Denny Hammerton]
[Indexed as MICKJAGGER.COM]

WIPO Arbitration and Mediation Center
Administrative Panel Decisions

Claim No. FA0007000095261
Commenced: 20 July 2000
Judgment: 11 September 2000

Presiding Panelists: R. Glen Ayers, Hon. Daniel Banks, Hon. James A. Crary

Domain name - Domain name dispute resolution policy - Identical - Bad faith - Offer to Sell - Common law trademark - Famous name - No response from respondent - Valuable consideration in excess of out-of-pocket-costs.

Complainant is Mick Jagger, Los Angeles, CA, USA.  Complainant holds or owns a common law trademark in his famous personal name, "Mick Jagger." He represents and has presented evidence of the continuous commercial use of that mark for more than thirty-five (35) years.  Respondent registered MICKJAGGER.com.

Held, Name transferred to Complainant.

Complainant has presented clear and convincing evidence that Complainant holds a common law trademark in his famous name.  The domain name and the mark are identical. UDRP does not require that Complainant have rights in a registered trademark or service mark. Complainant held a common law trademark in his famous name, "Mick Jagger," even without registration at the USPTO.  The ".com" suffix in Respondent’s domain name does not affect the fact that the name is identical to Complainant’s mark.

Respondent has no legitimate interests in the name. Respondent is using Complainant’s mark to draw Internet users to his web site for commercial gain. Complainant has not licensed or otherwise permitted  Respondent to use the Mick Jagger mark or to apply for or use any domain name incorporating that Mark. 

Respondent registered and is using the name in bad faith as that term is defined at Policy Paragraph 4(b). The evidence shows that Respondent acquired the domain name, "mickjagger.com" for the purpose of selling the name.  Additionally, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant’s mark.  By typing in Complainant’s mark with the ".com" suffix, Internet users are taken to a pornographic site, which is in no way associated with Complainant.

Policies referred to

Uniform Domain Name Resolution Policy, adopted August 26, 1999.
Forum Supplemental Rules.

Registration Agreements referred to

Network Solutions Service Agreement Version 4.0

Cases referred to

Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018 (11th Cir. 1989).
Association of Co-Op Members v. Farmland Indus., Inc., 684 F.2d 1134 (5th Cir. 1982). 

Panel decision referred to

Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000).

Jeanette Winterson v. Mark Hogarth, D2000-0235 (WIPO May 22, 2000).

Cree, Inc. v. The Domain Name You Have Entered is For Sale, FA 94790 (Nat. Arb. Forum May 24, 2000).

Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000).
 

Banks, Panelist --

PARTIES

The Complainant is Mick Jagger, Los Angeles, CA, USA ("Complainant"). The Respondent is Denny Hammerton, Lutz, FL, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is "MICKJAGGER.COM", registered with Network Solutions Inc. ("NSI").

PANELIST(s) 

The Panelists certify that each has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

The Panelists include Hon. R. Glen Ayres, Chair; Hon. Daniel Banks; and Hon. James A. Crary.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/20/2000; The Forum received a hard copy of the Complaint on 07/20/2000. 

On 07/21/2000, NSI confirmed by e-mail to The Forum that the domain name "MICKJAGGER.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 07/25/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/14/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@mickjagger.com by e-mail. 

On 08/16/2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default. 

On September 5, 2000, pursuant to Complainant’s request to have the dispute decided by a Three Member panel, The Forum appointed Hon. R. Glen Ayers, Chair, Hon. Daniel Banks, and Hon. James A. Crary as Panelists.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In fact, actual notice was received by Respondent, as indicated by and e-mail received on August 15, 2000, sent from Respondent to Jessica Werner at the Forum, stating: "I am disputing this case." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any further Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant. 

PARTIES’ CONTENTIONS

A. Complainant

The Complainant assets that he holds or owns a common law trademark in his famous personal name, "Mick Jagger." He represents and has presented evidence of the continuous commercial use of that mark for more than thirty-five (35) years.

Complainant asserts that the domain name, "mickjagger.com," registered by Respondent, is identical to or at the very least confusingly similar to the mark.

Complainant asserts that Respondent has no legitimate right or interest in the domain name, and has not been licensed or permitted to use the name by Complainant. The Complainant also asserts that the Respondent has not used the domain name in connection with any bona fide offering of goods or services nor has Respondent been commonly known by the name Mick Jagger. Respondent is making any legitimate non-commercial or fair use of the name.

Complainant asserts, and offers clear evidence of registration in bad faith including but not limited to the following: "[A]nyone attempting to access the web site www.mickjagger.com ... is directed instead to Respondent’s site entitled "‘wetpussy.’"

Respondent has also offered to transfer the domain name "for valuable consideration clearly in excess of his out-of-pocket costs...." Complainant has also presented evidence of similar conduct by Respondent as to other domain names.

B. Respondent

Respondent has filed no formal response; as noted above, he contacted the Forum and stated: "I am disputing this case."

FINDINGS

Complainant has presented clear and convincing evidence that the Complainant holds a common law trademark in his famous name.

Obviously, the mark and the domain name are identical, except for the capitalization and spacing practices for domain names and the addition of ".com."

Respondent clearly has no legitimate interest in the name and has clearly registered in bad faith. The evidence clearly shows that Respondent acquired the domain name for purposes of selling the name and has engaged in a pattern of similar conduct with other names. Respondent also appears to be using the domain name to attract Internet users to his own web site for purposes of commercial gain by creating a likelihood of confusion with the owner of the trademark. See Policy 4(b) (i), (ii), & (iv).

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

The domain name and the mark are identical. The UDRP does not require that the Complainant have rights in a registered trademark or service mark. Certainly, Complainant held a common law trademark in his famous name, "Mick Jagger," even without registration at the United States Patent and Trademark Office. See, e.g., Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018 (11th Cir. 1989) and Association of Co-Op Members v. Farmland Indus., Inc., 684 F.2d 1134 (5th Cir. 1982). . See also Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000) (stating that Julia Roberts had sufficiently proven that she owned common law trademark rights in her name).

 
The ".com" suffix denoting second-level domain status in Respondent’s domain name does not affect the fact that the name is identical to the Complainant’s mark. See Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000) (holding that juliaroberts.com is identical to "Julia Roberts").

Rights or Legitimate Interests

Respondent has no legitimate interests in the name. The Respondent is using the Complainant’s mark to draw Internet users to his web site for commercial gain. The Complainant has not licensed or otherwise permitted the Respondent to use the Mick Jagger mark or to apply for or use any domain name incorporating that Mark. See Jeanette Winterson v. Mark Hogarth, D2000-0235 (WIPO May 22, 2000) (holding that the Respondent did not demonstrate any rights or legitimate interests in a famous author’s name he used for an Internet domain name. The author owned common law trademark rights in her name and did not license her rights or otherwise provide permission for the Respondent to use her mark). 

Registration and Use in Bad Faith

Respondent certainly registered and is using the name in bad faith as that term is defined at Policy Paragraph 4(b). The evidence shows that Respondent acquired the domain name, "mickjagger.com" for the purpose of selling the name. See Policy 4(b)(i). Respondent has engaged in a pattern of similar conduct with other names. See Cree, Inc. v. The Domain Name You Have Entered is For Sale, FA 94790 (Nat. Arb. Forum May 24, 2000) (finding bad faith where Respondent purchased the domain names and offered them for sale). 

Additionally, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark. See Policy 4(b)(iv). By typing in Complainant’s mark with the ".com" suffix, Internet users are taken to a pornographic site, which is in no way associated with Complainant. See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).

DECISION
The domain name shall be transferred to Complainant. Hon. R. Glen Ayers, Chair
Hon. Daniel Banks
Hon. James A. Crary
Dated: September 11, 2000

Domain Name Transferred