WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION 7th Kid Entertainment, Inc. v. Self Case No. D2008-1259 1. The Parties
The Complainant is 7th Kid Entertainment, Inc., Scottsdale, Arizona, United States of America, represented by Collins Crowley Solicitors, United States of America.
The Respondent is Self, Tulsa, Oklahoma, United States of America, represented by Buchalter Nemer, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2008. On August 18, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On August 18, 2008, GoD Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the Respondent named in the Complaint. The Center sent an email communication to the Complainant on August 20, 2008 providing the registrant information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 22, 2008. The Center verified that the Complaint the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2008. The Response was filed with the Center on September 12, 2008.
The Center appointed William R. Towns as the sole panelist in this matter on September 25, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
This case involves a dispute between a current and former member of the hard rock alternative band known as “Caroline's Spine”. According to the Complaint, Jimmy Newquist, the sole shareholder of the Complainant, is the founder and only remaining original member of the band. The Respondent is the named registrant of the disputed domain name in the WhoIs database, and according to the Response is owned by former band member Mark Haugh.1
Between 1995 and 2007, “Caroline's Spine” consisted of the line up of Jimmy Newquist, Mark Haugh, Jason Gilardi, and Scott Jones. The band toured for the better part of this period, and recorded and released a number of albums. Beginning in 2002, Newquist also pursued a solo career, recording and releasing several albums. Haugh, Gilardi and Jones left the band in June 2007.
The disputed domain name was registered on October 31, 1995, and resolves to the “www.” website. Prior to the departure of Haugh, Gilardi, and Jones, “www.” served as the band's official website. The “www.” website currently displays an announcement by Haugh, Gilardi and Jones that they will no longer be performing, recording, or touring as Caroline's Spine. The website also offers for sale Caroline Spine's 2007 release “Captured”, on which Newquist, Haugh, Gilardi and Jones collaborated. 5. Parties' Contentions
A. Complainant
The Complainant contends that it owns all common law service rights to CAROLINE'S SPINE. According to the Complaint, Newquist, the lead singer and primary songwriter who formed the band in the early 1990's, is the only remaining band member, and continues to record, produce and perform under the name Caroline's Spine.
The Complaint alleges that the “www.” website was created in 1995 at the direction of Newquist, who only recently discovered that Haugh had listed “Self” as the registrant instead of listing the Complainant. The Complaint states that a demand letter was sent to Haugh on July 3, 2008, to which no response was received.
According to the Complainant, Caroline's Spine has recently recorded an album and is preparing to go on tour, but the Complainant has been unable to adequately advertise and promote the tour due to the Complainant's inability to use the domain name.
The Complainant contends that the Respondent has never had any rights or legitimate interests in the band, the name of the band, or the disputed domain name. According to the Complainant, Haugh acted solely as an agent for the Complainant in obtaining the disputed domain name for the sole use of the band Caroline's Spine. The Complainant further contends that Haugh has no rights or interests in the disputed domain name because he voluntarily withdrew from the band, while Newquist, who founded the band and is the only remaining original member, continues to produce, record and perform for Caroline's Spine.
The Complainant alleges that the disputed domain name was registered and is being used in bad faith because Haugh registered the domain name to a corporation called Self, which he owns, instead of in the name of the Complainant, and because the “www.” website is being used to promote the interests of former band members Haugh, Gilardi and Scott.
B. Respondent
The Respondent denies that the Complainant owns any common law service mark rights to the name Caroline's Spine. According to the Respondent, all rights to the name are owned in partnership by the band's original members, consisting of Haugh, Gilardi, Scott and Newquist, and the disputed domain name is wholly owned by the Respondent.
The Respondent denies that he2 registered the disputed domain name at the Complainant's instruction, or for anyone's benefit other than his own. The Respondent acknowledges that Newquist, Haugh, Gilardi and Scott performed together as “Caroline's Spine” for nearly thirteen years, and asserts that if the Complainant has had any problem with the registration, he should have done something before now. The Respondent contends that the goodwill associated with Caroline's Spine was created by the four personalities recording and touring together for some thirteen years, and that the statement that Haugh, Gilardi and Scott no longer intend to tour, perform or record as Caroline's Spine is not an abandonment of their rights in the name and mark. 6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) of the Policy, shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Complainant asserts common law rights in “Caroline's Spine” as a service mark. Accordingly, the Panel initially considers the question of whether the Complainant has established common law service mark rights in the band name. Under United States trademark law, a band name is capable of functioning as a service mark to identify entertainment services. To successfully establish common law or unregistered trademark or service mark rights, evidence must be adduced sufficient to show that the name has come to be recognized by the public as a symbol which identifies the goods or services with a single source.
In this instance, the Complainant evidently relies on live performances by Caroline's Spine over a period of roughly thirteen years. Assuming this to be a sufficient showing to demonstrate common law rights, the circumstances here would indicate that it is the members of the band who would have jointly owned the service mark rights. Bell v. Streetwise Records, Ltd., 761 F.2d 67 (1st Cir. 1985); Marshak v. Green, 746 F.2d 927 (2nd Cir. 1984 (“Entertainment services are unique to the performers”). Given that Newquist created and is the sole owner of the Complainant, the Panel infers that Newquist transferred his ownership interest in the service mark to the Complainant, and on that basis the Panel is prepared to find that the Complainant has demonstrated service mark rights in Caroline's Spine. The Panel notes, however, that there is no indication in the record that the recently departed band members ever transferred or assigned their ownership interests in the service mark to the Complainant.
The Panel has little difficulty in concluding that the disputed domain name is confusingly similar to the CAROLINE'S SPINE mark. Under paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based on a comparison of the complainant's mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525. The Panel further notes that the Respondent has not disputed the similarity of the domain name to the mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is not persuaded from the record of this case, however, that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made.
As noted above, the Panel is of the view that the each of the four band members – at least until the time Haugh, Gilardi and Jones left the band in June 2007 – were the joint owners of the service mark rights in Caroline's Spine, in the absence of any evidence in the record of an assignment or transfer of such rights by Haugh, Gilardi and Jones to the Complainant. Haugh, as a co-owner of the service mark, had a legitimate interest in registering a domain name for use with a website advertising and promoting Caroline's Spine.
Further, the Panel is not convinced that the former band members' departure, even taking into account the statement on the current website that they will no longer be performing as Caroline's Spine, constitutes an abandonment of their interests in the service mark under relevant United States trademark law. See Kingsmen v. K-Tel Int'l Ltd., 557 F. Supp. 158 (S.D.N.Y. 1983) (performing group that disbands but continues to promote sales of past recordings did not abandon trademark rights in group name). Indeed, as noted above, a Caroline's Spine album currently is being offered for sale on the Respondent's website, and the Respondent has asserted that all band members are entitled to a portion of the revenues from such sales.
In view of the foregoing, the Panel finds that the Complainant has not met its burden under paragraph 4(a)(ii) of the Policy of demonstrating that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
D. Registered and Used in Bad Faith
In view of the Panel's finding that the Complainant has not satisfied the requirements of paragraph 4(a)(ii) of the Policy, it is not necessary for the Panel to address issues under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Dated: October 10, 2008
1 The WhoIs records identify Haugh as the administrative contact for the disputed domain name.
2 The Panel notes that the Response appears to use the term “Respondent” in reference to both Haugh and Self, stating at one point in the Response that the domain name is owned by Self, and at another point that the domain name is owned by Haugh.
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