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 Complainant’s 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 Respondent’s 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 Respondent’s practice of using the site's attraction of Complainant’s fans for Respondent’s 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 ICANN’s 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 Respondent’s registration as technical, administrative and billing contacts by email.
On July 21, 2000, pursuant to Complainant’s 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 Complainant’s fans by diverting the fans to this website as well as the website of the Respondent’s business.
Respondent
The Respondent has not presented any evidence to dispute the Complainant’s 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 Complainant’s 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, Complainant’s 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 Respondent’s 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 Respondent’s own company. The Respondent has three ads on the web site, two of these being banner advertisements for the Respondent’s 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 Respondent’s behaviour supports the conclusion the Respondent registered the domain name and otherwise acted in bad faith, thus supporting this element in Complainant’s 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