v.
Progressive Industries
[Indexed as: Yanni v. Progressive]
[Indexed as: YANNI.COM]
National Arbitration Forum
Administrative Panel Decision
File No.: FA0006000095063
Commenced 28 June, 2000
Judgement: 2 August, 2000
Panelist: Charles Paul A. Dorf (Ret.)
Domain name-Domain name resolution policy-Cybersquatting-Bad faith-Diversion of business-Identical-Confusingly similar-Rights and legitimate interests-Definition of right and legitimate interest.
Complainant is an international musical performer professionally known as Yanni. Complainant has used the Yanni mark commercially since 1979 and has registered the mark with the US Patent and Trademark office. Complainant learned of registration of disputed domain name YANNI.COM by Respondent when Respondent offered to sell disputed domain name to Complainant or intermediary Virgin Records.
Held: Domain Name Transferred to Complainant.
The disputed domain name is virtually identical to Complainants mark. Respondent offers no evidence that he had any rights or legitimate interests to the disputed domain name. Respondent did not utilize disputed domain name for commercial purposes or even a non-commercial fair use. Respondent registered disputed domain name in bad faith as one purpose of Respondents registration appears to be to sell disputed domain name to Complainant for a sum greater than the out of pocket expenses of registering the domain name. Bad faith registration is also evident from Respondents practice of using the site's attraction of Complainants fans for Respondents own commercial purposes, namely advertisements.
Policies referred to:
Uniform Domain Name Resolution Policy Adopted August 6, 1999
Statutes referred to:
Rules for Uniform Domain Name Dispute Resolution Policy
Anti-Cybersquatting Consumer Protection Act
Procedures referred to:
Trademark Manual Examining Procedure
PARTIES
The Complainant is Yanni Management, Inc., West Palm Beach, FL, USA
("Complainant"). The Respondent is Progressive Industries, Reading, PA,
USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "YANNI.COM", registered with Network Solutions
Inc ("NSI").
PANELIST(s)
The Honourable Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
("The Forum") electronically on 06/23/2000; The Forum received a hard copy
of the Complaint on 06/23/2000.
On 06/27/2000, NSI confirmed by e-mail to The Forum that the domain
name "YANNI.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 ICANNs UDRP.
On 06/28/2000, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of 07/18/2000
by which Respondent could file a Response to the Complaint, was transmitted
to Respondent via email, post and fax, and to all entities and persons
listed on Respondents registration as technical, administrative and billing
contacts by email.
On July 21, 2000, pursuant to Complainants request to have the dispute
decided by a Single Member panel, The Forum appointed The Honourable Paul
A. Dorf (Ret.) as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the
Respondent to the Complainant.
PARTIES CONTENTIONS
A. Complainant
The Complainant contends that by registering the domain name that is
the subject of this Complaint, Respondent has created confusion among Complainants
fans by diverting the fans to this website as well as the website of the
Respondents business.
Respondent
The Respondent has not presented any evidence to dispute the Complainants
claims.
FINDINGS
The Complainant is the owner of the trademark YANNI for various entertainment
services and promotional items, and has registered his mark in numerous
International Classes with the United States Patent and Trademark Office,
as reflected in the Complaint.
The Complainant is professionally known as Yanni, and is an international
musical superstar. The Complainant first used the name Yanni in commerce
in 1979 and has used the YANNI mark continuously since that time. The Complainant
has built up substantial good will and a vast fan base under this mark.
Also, the mark is extensively used in the marketing and sale of consumer
products related to the music and image of the Complainant through several
websites approved by him. The Complainant also promotes his merchandise
under the vanity telephone number 1-800-Yanni-17.
The Complainant learned of the registration of the domain when contacted
by Respondent through an intermediary at Virgin Records in an attempt to
sell the domain name to the Complainant and/or Virgin Records.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy")
directs that the complainant must prove each of the following three elements
to support a claim that a domain name should be cancelled 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 YANNI.COM is almost identical to the Complainants trademark
YANNI, but for the .com. The Complainant holds several registered trademarks
for this name, and is known as an international superstar by this name.
However, in reviewing the Complaint, it is noted that the arguments
regarding "similarity" as used in the Trademark Manual of Examining Procedure
(TMEP), I need not find that there is a likelihood of confusion using this
standard. The TMEP similarity standard would not be dispositive even in
trademark infringement litigation in Federal District Court, but instead
is used solely for purposes of evaluating registerability of trademark
applications in the USPTO.
Rights or Legitimate Interests
The Respondent offers no proof that he had any rights or legitimate
interests in the domain name. It was not used to offer goods or services,
and the Respondent has never been commonly known as "YANNI.COM" nor is
the Respondent making a legitimate non-commercial or fair use of the domain
name.
Registration and Use in Bad Faith
The Respondent offered to sell the domain name to the Complainant and/or
Virgin Records, Complainants recording label, for the sum of $14,000.00,
and warned the Complainant that any legal action may hold up the domain
name for 6 to 16 months. It would appear that the Respondents intent was
to sell the domain name to the Complainant for a sum over and above the
out-of-pocket costs for registering same.
Secondly, The use of the domain name attracts a vast number of Yanni
fans, thereby making the site a prime location for the generation of free
advertising for Respondent and for attracting unknowing Yanni fans to Respondents
own company. The Respondent has three ads on the web site, two of these
being banner advertisements for the Respondents own company. The third
advertisement is one which Respondent derives free advertising from a third
party when unknowing Yanni fans click on the advertisement.
On the issue of bad faith, I find the Respondent has acted in bad faith
in registering and effectively "squatting on" the domain name "YANNI.COM."
The facts are persuasive on this count. However, I do not reach, nor are
I required to reach, any decision on issues relating to dilution or any
violation of the Anti-Cybersquatting Consumer Protection Act. Instead,
I merely need to decide whether Respondents behaviour supports the conclusion
the Respondent registered the domain name and otherwise acted in bad faith,
thus supporting this element in Complainants claim.
DECISION
As all three elements required by the ICANN Policy Rule 4(a) have been
satisfied, it is the decision of this panelist that the requested relief
be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the
domain name "YANNI.COM" be transferred from the Respondent to the Complainant.
The Honourable Paul A. Dorf, (Ret).
Dated: August 2, 2000