ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Sean Michaels Inc. of Sherman Oaks, California (U.S.A.). In its Complaint, filed online with eResolution on May 5, 2000, Sean Michaels Inc. seeks the transfer of the domain name seanmichaels.com registered in the name of Mark Allan Online Entertainment of Margate, Florida (U.S.A.).
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on May 5, 2000. The hardcopy of the Complaint Form was received on May 18, 2000. Payment was received on May 24, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- confirm the identity of the Registrar for the contested Domain Name;
- verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- verify if the contested Domain Name resolved to an active Web page;
- verify if the Complaint was administratively compliant.
The inquiry leads the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions, the Whois database contains all the required contact information but the billing contact, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on May 6, 2000. The requested information was received May 12, 2000.
The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on May 25, 2000. That date is the commencement date of the administrative proceeding.
On May 25, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On June 8, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on June 14, 2000.
On June 16, 2000, the Clerk's Office contacted Mr. Riccardo Roversi, and requested that he acts as lead panelist in this case.
On June 16, 2000, Mr. Roversi, accepted to act as lead panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On June 19, 2000, the Clerk's Office forwarded a user name and a password to Mr. Roversi, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On June 19, 2000, the parties were notified that Mr. Riccardo Roversi had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 2, 2000.
3. Factual Background
The Complainant is a U.S. company operating since 1989 in the field of adult entertainment. The company filed an application to register the service mark "Sean Michaels" on November 2, 1999 (Exhibit 1 attached to the Complainant Form). The above mentioned application states that the service mark in question was used for the first time in September 1989 and has been used in commerce since October 1989.
Complainant states that Mr Sean Michaels is an actor who has performed in more than a thousand adult movies. Mr Michaels' products (in particular videos and DVDs) are distributed, as Complainant states, in many countries including Brazil, England and Canada.
Respondent is professionally involved in the field of adult entertainment, as it is confirmed by the circumstance that the technical contact for the disputed domain name (Mr Tim Woodrum) appears to be working for Nothing But Net Inc. which operates an adult web site at the URL www.executivediversions.com. Respondent registered the domain name seanmichaels.com on October 7, 1998.
Both parties refer that they discussed a possible transfer of the domain name being the subject of this dispute, but they were not able to reach an agreement. According to Complainant, Respondent refused to negotiate a transfer agreement being aware of the value of the domain name. Respondent states that, on November 1998, it declared it was available to transfer the domain name against payment of a price which was considered as too high by Complainant.
4. Parties' Contentions
(i) Copy or Similarity
Complainant based its claim on the circumstance that the domain name seanmichaels.com is exactly the same as the service mark registered by the same Complainant.
The Copy or Similarity issue is not clearly developed in the Complaint Form, although it appears from evidence submitted (Exhibit 1 attached to the Complaint Form) that the domain name in question is similar to the service mark registered by Sean Michaels Inc.
Respondent expressly recognises that the domain name is "identical/similar" (see page 4 of the Response Form) to the Complainant's service mark, although - in Respondent's view - "the domain is not being used in a manner that confuses or misleads surfers to believe that our site is in any way associated with the adult film actor Sean Michael".
As far as illegitimacy is concerned, Complainant stated in its Complaint Form (page 6):
"Sean Michaels International, Inc. has an official trademark for the use of the name "Sean Michaels" in any context. He has been using this name for 11 years and is known around the world for his name and likeness. He has performed in over 1,200 movies with his name. He has also made, shot, produced, and distributed his own live of movies with his name. He has an enormous fan base. He has done work for Playboy, Vivid, Anabolic, Elegant Angel (all leaders in the adult industry) using the name Sean Michaels. Sean Michaels has toys that have been made in his likeness. The current registrant is using Sean Michaels' celebrity status and his popular name for driving traffic to a interracial adult website which willfully creates income at the expense of Sean Michaels International, Inc."
Respondent claims that, after having negotiated the possible transfer of the domain name, Complainant's representative Mrs Gilmore said, during a telephone conversation, that Sean Michaels Inc. was not interested to acquire the domain name. In Respondent's opinion this should be construed as an implied waiver to all Complainant's rights in the domain name seanmichaels.com.
(iii) Bad Faith
In Complainant's view Respondent registered and is making use of the domain name seanmichaels.com in bad faith. In particular Complainant states that "the domain name was registered for the express purpose of acting as Sean Michaels to draw Internet traffic and Sean Michaels fan base for the registrant's profitable gain" (page 7 of the Complaint Form).
Respondent did not reply to Complainant's statement regarding bad faith. It simply stated that, in its opinion, Sean Michaels Inc. started this procedure under the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") in "an attempt to aquire the traffic we have spent over a year and half developing" (page 5 of the Response Form). Respondent further stated that it was available to find a settlement with Complainant and that it is still willing to agree upon the terms and conditions for the transfer of the domain name in question.
5. Discussion and Findings
Although the domain name at issue is identical to the name of Mr Sean Michaels, who appears to be a well-known adult movie actor, this case does not deal with the right of an individual who has reached a high level of notoriety to prevent third parties to make use of his name as a domain name. In this case the Complainant is a company which registered the service mark "Sean Michaels" and requested transfer of the domain name registered by Respondent.
In lead panelist's opinion Mr Michaels himself could have started a procedure according to the Rules and the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), relying on the principle stated by the learned panelist in Jeanette Winterson v. Mark Hogarth (WIPO Case No. D2000-0235) and confirmed in Cho Yong Pil v. ImageLand Inc.(WIPO Case No. D2000-0229, relating to the name of a famous Korean pop singer), Julia Fiona Roberts v. Russell Boyd (WIPO Case No. D2000-0210, relating to the name of the world famous actress Julia Roberts) and Harrods Limited v. Robert Boyd (WIPO Case No. D2000-0060, relating to the name of the late Mr Emad Mohamed al-Fayed, widely known as Dodi, son of Mr Mohamed al-Fayed, owner of Harrods Limited).
Reverting to this case and its merits, according to article 4(a) of the Policy Complainant must submit evidence confirming that all of the following three elements are present:
(i) that the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights (Copy or Similarity); and
(ii) that respondent has no rights or legitimate interests in respect of the domain name (Illegitimacy); and
(iii) that the domain name has been registered and is being used in bad faith (Bad Faith).
Parties submissions and evidence relating to each of the above three elements will be dealt with in the following paragraphs.
(i) Copy or Similarity
As far as the Copy or Similarity issue is concerned, Respondent expressly recognized that the domain name is "identical/similar" (see page 4 of the Response Form) to the Complainant's service mark As it has been already noted (see Parties' contentions above), Respondent argued that, notwithstanding the similarity, "the domain is not being used in a manner that confuses or misleads surfers to believe that our site is in any way associated with the adult film actor Sean Michael".
Lead Panelist holds that Respondent's argument is not relevant to the purpose of discussion on the element provided by article 4(a) of the Policy (Copy or Similarity). This is an objective element which should be assessed on the basis of objective evidence, without taking into whatsoever account the manner in which the domain name is being used.
Lead Panelist is of the opinion that Complainant submitted sufficient evidence of similarity between the domain name in question and the Complainant's service mark "Sean Michaels".
As far as the second element is concerned, lead panelist remarked in Spincycle Inc. v. Spin Cycle (eResolution Case No. AF - 00176) that - from a general point of view - the Policy is not completely clear as to the attribution of the burden of the proof in connection with this element. While article 4(a) states that Complainant shall prove the illegitimacy of the registration, article 4(c) of the Policy states that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based in its evaluation of all evidence presented, shall demonstrate your [Respondent's] rights or legitimate interests to the domain name". >From the wording of the above provision (which makes use of the words "proved", "demonstrate"), it seems to lead panelist that Respondent has to prove that it has rights or legitimate interests to the domain name in question.
In the present case, Complainant stated that Respondent has no right or legitimate interest to make use of the domain name seanmichaels.com.
Respondent did not submit any direct evidence that it holds any right to make use of the domain name seanmichaels.com. Respondent simply stated that it interprets the content of a telephone conversation with Mrs Gilmore as Complainant's waiver to all rights connected to its service mark being used as a domain name. In particular, according to Respondent, after discussion concerning the possible transfer of the domain name from Respondent to Complainant, Mrs Gilmore said "We've discussed your proposal and we are not interested....good luck in your development of the seanmichaels.com domain" (see page 4 of the Response Form).
Lead panelist holds that Respondent's argument may not be accepted for the following reasons: (a) from a general point of view, refusal to accept a proposal may not be interpreted as a waiver to the right being the subject of negotiation between the parties, (b) Respondent did not submit any proof of the real content of the telephone conversation with Complainant's representative and Complainant, while confirming that a negotiation with Respondent took place, did not make any reference to this conversation and (c) Respondent did not submit evidence that Mrs Gilmore has the power to represent Complainant and, in particular, that she has the power to dispose, in whole or in part, of Complainant's service mark-related rights.
According to article 4(c) of the Policy, the existence of Respondent's right or legitimate interest may be demonstrated by any of the following circumstances:
(i) use of, or demonstrable preparations to use, the domain name by Respondent before any notice of the dispute, in connection with a bona fide offering of goods or services;
(ii) respondent has been commonly known by the domain name, even if it has not acquired trade mark or service mark rights;
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Circumstance under (ii) above is completely irrelevant to the purpose of this decision, respondent having expressly recognized that it copied Complainant's service mark to create the domain name seanmichaels.com.
As far as circumstance under (iii) above is concerned, lead panelist holds (and already pointed out, see Factual Background above) that Respondent is professionally active in the adult entertainment market and, as a consequence, may not claim that it is making use of the domain name in question without "intent for commercial gain".
As far as circumstance under (i) above is concerned, in lead panelist's view the same should be evaluated together with the third element required by article 4(a) of the Policy (Bad Faith).
For the above reasons, subject to the evaluation of circumstance provided by article 4(c)(i) (which will be examined in the following subparagraph), lead panelist holds that Respondent has no rights or legitimate interests to the domain name being the subject of this dispute.
(iii) Bad Faith
Under article 4(b) of the Policy, evidence of registration and use in bad faith of the domain name at issue is given if any of the following circumstances is proved:
(i) respondent registered or 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 respondent's documented out-of-pocket costs;
(ii) respondent 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, that respondent has been engaged in a pattern of such conduct;
(iii) respondent registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent's web site or location or of a product or service on its web site or location.
Lead panelist holds that evidence of bad faith has been given and, in particular, that the circumstance provided by article 4(b)(iv) of the Policy occurred in this case.
Respondent is a direct competitor to Complainant, since it is operating in the same sector (adult entertainment), it registered the domain name seanmichaels.com (which is identical to both the name of a famous adult movie actor and to the name of its competitor Sean Michaels Inc.) and it activated a web site under this domain name which, as the same Respondent said, is "serving as a guide or yellowpages to adult entertainment sites including sites that are legally licensed to promote content and products associated with Mr. Michaels" (page 4 of the Response Form). This will obviously lead to confusion among potential customers of Complainant's products and the mere fact that Respondent has never received e-mail from customers stating that they were misled is absolutely irrelevant and does not modify lead panelist's evaluation of Respondent's overall behaviour. The likelihood of confusion among customers is even higher if the nature of goods and services offered by parties (and therefore the average cultural level of potential customers) is considered.
For the same reason lead panelist holds that Respondent may not claim that he had right or legitimate interest to the domain name in question on the basis that its activity was connected with "a bona fide offering of goods or services". It is lead panelist's opinion that if evidence is given of registration and use in bad faith, it is no longer possible to hold that Respondent registered the domain in connection with a bona fide offering of goods and services: the bad faith affecting registration and use of the domain name should be certainly extended to the activity carried out through the Respondent's web site.
For the above reasons, the lead panelist orders that the domain name seanmichaels.com be transferred to the Complainant.
Signed on this 2nd day of July 2000 in Milan by the lead panelist Riccardo Roversi
(s) Riccardo Roversi