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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Ian Anderson Group of Companies Ltd v Denny Hammerton & I Schembs
Case No. D2000-0475
1. The Parties
The Complainant is The Ian Anderson Group of Companies Ltd, a company incorporated in England and Wales and having its registered office at Narrow Quay House, Narrow Quay, Bristol BS1 4AH, United Kingdom.
The Respondents are Denny Hammerton and I Schembs both of POB 1304, Lutz, FL 33548, USA.
2. The Domain Name and Registrar
The Domain Names at issue are:
The Registrar with which the Domain Names are registered is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia, 20170, USA.
3. Procedural History
A Complaint signed by solicitors representing the Complainant was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 24, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant on May 29, 2000.
On May 24, 2000, a Request for Registrar Verification was transmitted to the Registrar, Network Solutions, Inc. ("NSI") requesting it to:
(1) confirm that the Domain Names at in issue were registered with NSI;
(2) confirm that the person identified as the Respondent is the current registrant of the Domain Names;
(3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrar’s Whois database for the Registrant of the disputed Domain Names, the technical contact, the administrative contact and the billing contact;
(4) confirm that the Uniform Domain Names Dispute Resolution Policy (the "Policy") applies to the Domain Names;
(5) indicate the current status of the Domain Names; and
(6) confirm that a copy of the Complaint was sent to the Registrar by the Complainant.
On May 30, 2000, NSI confirmed by reply e-mail that the Domain Name <jethrotull.com> is registered with NSI, is currently in active status and the current registrant of the name is:
Jethro Tull (JETHROTULL 6-DOM)
POB 1304, Lutz, FL 33548, USA
confirmed that the administrative and billing contact is:
POB 1103, Minneola, FL 34755, USA
and that Patrick Giudicelli of an address in Chicago is the technical and zone contact. The Registrar also forwarded the requested Whois details, confirmed that the Policy is in effect, and confirmed the Registrar had received a copy of the Complaint.
NSI further confirmed by e-mail that the Domain Name <jethro-tull.com> is registered with NSI, is currently in active status and that the current registrant of the name is:
I Schembs (JETHRO-TULL 8-DOM)
POB 1304, Lutz, FL 33548, USA
and that the particulars for the administrative billing contacts and the technical and zone contacts were the same as given above with reference to the Domain Name <jethrotull.com>. The Registrar also forwarded the requested Whois details, confirmed that the Policy is in effect, and confirmed the Registrar has received a copy of the Complaint.
The Domain Name <jethrotull.com> was registered on 12 January 1999 and the Domain Name <jethro-tull.com> was registered on March 9, 1999.
The WIPO Center determined that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Complainant elected to have this dispute decided by a single-member Administrative Panel and paid the prescribed fees.
No formal deficiencies having been recorded, on May 31, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of June 19, 2000, by which the Respondents could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondents by e-mail to the e-mail addresses indicated in the Complaint and specified in the Registrar’s confirmation. In addition, the Complaint was sent by courier to the postal addresses given.
On May 21, 2000, a Response was received from Mr. Denny Hammerton, the signed document being dated June 13, 2000 and in the caption referring to the Domain Names of both <jethrotull.com> and <jethro-tull.com>. The Response elected a single-member Administrative Panel.
The Respondent filed an informal and unstructured written Response which does not include any factual materials in rebuttal of the Complaint and is aimed at making certain submissions as to how the facts should be applied and contains irrelevant criticism of the present administrative procedure.
On June 28, 2000, the WIPO Center appointed Mr. John Terry as sole Panelist in this matter and set the projected decision date as July 12, 2000.
4. Factual Background
The Complainant has asserted in its signed Complaint that Mr. Denny Hammerton is the relevant person responsible for both of the present Domain Names in this matter. This is not denied by Mr. Hammerton and his response relates to both Domain Names. The Panel accepts that due notice has been given.
The Complainant states and the Respondent does not contest that the Complainant owns rights to exploit goods and services under the name "Jethro Tull", the name of a musical band which is said to have enjoyed considerable musical success throughout the last 30 years. Furthermore, the Complainant made a European Community trademark Application on October 16, 1998, and that application has been unopposed and the Complainant expects a registration to be issued shortly. The Complainant operates a promotional website <jtull.com> and the Complainant considers that full promotion of the band is impeded by not having the most obvious domain names, namely the Domain Names to which this proceeding relates. The Response does not deny this statement.
The Complaint certifies:
"The current homepages that each of the disputed Domains focus on a hyperlink which takes the user to a site featuring pornographic material."
The Panelist has attempted to visit the websites of the present Domain Names that finds no links whatsoever and the curious message displayed at each site as follows:
"Website operator sues Julia Roberts in domain dispute
The Complaint certifies that neither Respondent had any sanctioned involvement with the Complainant or the band Jethro Tull at any time or been licensed to use the name Jethro Tull or to represent the Complainant. This is not denied in the Response.
The Complaint certifies that Denny Hammeton offered to Ian Anderson of the Complainant sale of the disputed Domain Names at $5,000 for <jethro-tull.com> and $8,000 for <jethrotull.com>. The offer was rejected by the Complainant.
5. Parties’ Contentions
Firstly, the Complainant contends that the Domain Names <jethrotull.com> and <jethro-tull.com> are identical with or confusingly similar to the Complainant’s trade mark JETHRO TULL which is about to be registered in the European Community by the Complainant and which has been extensively used for approximately 30 years.
Secondly, the Complainant contends that its trademark JETHRO TULL has not been the subject of any authorization for use in favor of the Respondent and the Respondent has no rights or legitimate interests in respect of the present Domain Names.
Thirdly, the Complainant contends that the Respondent satisfies the requirement of paragraph 4(a)(iii) of the Policy namely that the Domain Names have been registered and are being used in "bad faith".
Fourthly, the Complainant contends that the Domain Names should be transferred to the Complainant.
The Respondent does not deny the first of the Complainant’s contentions stated above.
The Respondent does not expressly assert that it has rights or legitimate interests in respect of the Domain Names.
The Respondent essentially asserts that he "bought the Domain Names from NSI" and is entitled to trade in the Domain Names and appears to submit that this activity does not constitute bad faith. The Panel takes this contention as a denial of the Complainant’s assertion of bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Names registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and,
(iii) that the Domain Names have been registered and used in bad faith.
In this discussion, the term "Respondent" will be used to refer to either or both of "I. Schembs" and Denny Hammerton.
The Panel holds that the Complainant has established trade mark ownership such that element (a) of paragraph 4 of the Policy. In any event the Respondent does not contest this point.
It is common ground that the Complaint or its predecessor in business adopted the name "Jethro Tull" in approximately 1968 for a musical band and took the name from the famous English agronomist, agriculturist, and inventor who perfected a horse-drawn sead drill in about 1701 in England. The Panel holds this derivation of the name in no way disentitles the Complainant to have adopted the name "Jethro Tull" as a band. The documentation filed by the Respondent includes extract from a published interview and trading style with Ian Anderson of the Complainant which includes the uncontested statement that:
"Jethro Tull has sold some 60 million albums worldwide and performed over 2,500 concerts in 40 countries. Their new album, j-tull.com, is named after their website."
Regarding element (ii) of paragraph 4(a), since the Respondent does not clearly contest this element of the Complaint, it might be unnecessary for the Panel to make any finding as the onus on this issue lies with the Respondent in view of paragraph 4(c) of the Policy once a prima facie case is made out as found to be the case here. The Respondent has not been legally represented and the Panel prefers not to decide this matter on any technicality of pleading and will now set out its reasons for finding that the Complainant has made out its case on element (ii) of paragraph 4(a).
It is first convenient to consider that under paragraph 4(c) of the Policy a Respondent can establish rights or legitimate interest if it can point to the application of any one of the following circumstances set out in paragraph 4(c):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There are no circumstances pleaded by the Respondent which comes within any one of the three circumstances.
However, the above-mentioned circumstances in paragraph 4(c) are not a limitation of the general element (ii) of paragraph 4(a). Nevertheless, the panel finds that there is no contention by the Respondent of any facts which could give rise to a conclusion that the Respondent has some rights or legitimate interest in the present Domain Names.
The third element to be established by the Complainant is that Domain Names have been registered and are being used in bad faith. The only distinct element of bad faith activity pleaded by the Complainant is that:
(a) the Respondent with knowledge of the Complainant’s reputation registered the Domain Names; and
(b) the Respondent made an offer to sell the Domain Names for substantial amounts.
Paragraph 4(b) sets out four circumstances (which are exemplary only) but if found are deemed to provide evidence of relevant bad faith registration and use. The circumstances specified in paragraph 4(b) are in the following terms:
(i) circumstances indicating that you have registered or you have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Respondent does not set out any plausible explanation dealing in any way towards rebutting the assertion of bad faith. The Panel holds that the Complaint establishes a clear prima facie case of bad faith and there is no rebuttal and holds that in circumstances of:
(a) the undisputed fame of the name "Jethro Tull" associated with the Complainant;
(b) the lack of any use by the Respondent; and
(c) the Respondent’s offer for sale at a high price (clearly several times be a likely cost of the Respondent).
The conclusion must be to draw the inference that the Respondent comes within the bad faith definition of clause (i) above and the Panel draws the inference that the circumstances of clause (iii) are also met.
Accordingly, it is unnecessary to consider whether the requirements of circumstance (ii) are met. It is enough for one of the circumstances in paragraph 4(b) to be established for the Panel to hold that the third element of paragraph 4(a), namely bad faith usage and registration, is made out by the Complainant.
For the reasons stated above, the Panel decides that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Names and the Respondent’s Domain Names have been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Domain Names shall be transferred to the Complainant.
Dated: July 12, 2000