ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The complainant is the Estate of Tupac Shakur, represented by the Law Offices of Eric Farber, 160 Sansome Street, San Francisco, California, United States of America. The respondent is Shakur Info Page, of Post Office Box 24073, Westown R.P.O., London, Ontario, Canada and having the Internet address (…).
The contested domain name is tupacshakur.org and the registrar is Network Solutions, Inc. of Herndon, Virginia, U.S.A.
2. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of eResolution.
The electronic version of the complaint form was filed on-line through eResolution's website on August 25, 2000 and in hardcopy on August 28, 2000. The choice of jurisdiction was received on August 28, 2000. Payment was received on August 30, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to confirm the identity of the registrar; verify the registrar's Whois database and confirm all the required contact information for the respondent; ascertain whether the contested domain name resolved to an active web page and determine whether the complaint was administratively compliant. The inquiry led the Clerk's Office of eResolution to conclude that the registrar is Network Solutions, Inc.; the Whois database contains all the required contact information, the contested domain name resolves to an inactive web page and the complaint is administratively compliant.
An email was sent to the registrar by eResolution Clerk's Office to obtain a copy of the registration agreement on August 25, 2000. The requested information was received August 28, 2000.
On August 25, 2000, the Clerk's Office received an email from the respondent's administrative contact, requesting more information about the process.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the complaint to the respondent on August 31, 2000. That date is the commencement date of the administrative proceeding. That day the Clerk's Office notified the complainant, the respondent, the registrar, and ICANN of the date of commencement of the administrative proceeding. The complaint form, the official notification and all the annexes were sent by the Canadian post certified mail to the respondent's various addresses. According to the Canadian post tracking system, all were delivered. The emails sent to firstname.lastname@example.org were returned "undeliverable".
On September 21, 2000, the respondent still had not submitted a response and the Clerk's Office notified the parties of this. It also informed the parties that according to ICANN Rules Art.5 (ix)(e)"If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint".
On September 22, 2000, the Clerk's Office invited Mr. Alan Lawrence Limbury to act as panelist in this case. On September 23, 2000, Mr. Limbury agreed and filed the necessary Declaration of Independence and Impartiality. On September 25, 2000, the Clerk's Office forwarded a user name and a password to Mr. Limbury, allowing him to access the complaint form and the evidence through eResolution's Automated Docket Management System and notified the parties that Mr. Limbury had been appointed and that, save exceptional circumstances, a decision was to be handed down on October 14, 2000.
3. Factual Background
Mr. Tupac Shakur, often known as 2Pac or Tupac, was an internationally known "Hip-Hop" musician, actor and poet, murdered in 1996 at the age of 25. His recordings have sold millions worldwide. Two of his albums, "Me Against the World" and "All Eyez on Me" opened at number one on the record charts. "All Eyez on Me" received quintuple platinum status. Since his death, his estate has released three albums, all of which opened in the top ten.
As an actor, Mr. Shakur appeared in numerous large budget Hollywood features, including "Gang Related", "Gridlock'd" and "Poetic Justice". Mr. Shakur also released a book of poetry. He toured numerous times throughout the world prior to his death. There are approximately 1000 web sites on the Internet dedicated to Mr. Shakur.
On January 9, 2000 the contested domain name was registered in the name of the respondent. The name does not resolve to an active web site. However, the respondent's registered email address, email@example.com provides an association between the respondent and the web site www.hiphopspot.com, which exploits Mr. Shakur's recordings by offering for sale "bootleg" and "unreleased" 2Pac CDs.
4. Parties' Contentions
The complainant has rights in the name Tupac Shakur as an unregistered trade mark; the contested domain name is identical; the respondent has no rights or legitimate interest in the contested domain name, which was registered and is being used in bad faith.
The respondent filed no response.
5. Discussion and Findings
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
In this case what is sought to be demonstrated are common law trade mark rights. Some of the highest courts of the common law world have held that, provided a plaintiff can establish goodwill or reputation in its name, the plaintiff may prevent passing off at common law - see Erven Warnink BV v. J Townend (Hull) Ltd,  AC 731 (House of Lords); Hornsby Building Information Centre Pty Ltd v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 (High Court of Australia); Cadbury Schweppes Pty Ltd v. Pub Squash Co Pty Ltd  2 NSWLR 851(Privy Council).
The Policy protects common law trade mark owners as well as owners of registered trade marks: Cedar Trade Associates, Inc., v. Gregg Ricks(AF 93633); Bennett Coleman & Co. Ltd. v. Steven S. Lafwani(D2000-0014); SeekAmerica Networks Inc. v. Tariq Masood (D2000-0131) and Passion Group Inc. v. Usearch, Inc. (AF-0250). A person may acquire such a reputation in his or her own name as to give rise to trade mark rights in that name at common law: Julia Roberts v. Russell Boyd (D2000-0210); Jeanette Winterson v. Mark Hogarth (D2000-0235) and the cases there cited.
The panel finds that Mr. Tupac Shakur had, by the time of his death in 1996, established such a reputation in his name as an Hip-Hop musician as to have acquired common law trade mark rights in that name, such rights being an asset passing on his death to his estate.
Strictly speaking, the trademark "Tupac Shakur" is not identical to the domain name tupacshakur.org. However, as has been decided in many cases under the Policy and under US trademark law, the two are "essentially" or "virtually" identical. See Brookfield Communications, Inc. v. West Coast Ent. Corp., 174 F.3d 1036, 1054 n. 7 (9th Cir. 1999), citing Public Serv. Co. v. Nexus Energy Software, Inc., 36 F. Supp. 2d 436 (D. Mass 1999), 1999 U.S. Dist. LEXIS 1994, No. 98-12589 (D. Mass. Feb. 24, 1999)(finding "energy-place.com" and "Energy Place" to be virtually identical); Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005 (D. Minn. 1998) (finding "post-it.com" and "Post-It" to be the same); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997) ("In the context of Internet use, ['epix.com'] is the same mark as ['EPIX']"); Planned Parenthood Federation of America, Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997) (concluding that "planned-parenthood.com" and "Planned Parenthood" were essentially identical), aff'd, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998).
The panel finds that the domain name tupacshakur.org is essentially identical to the trademark "Tupac Shakur." Accordingly, the complainant has proved element 4(a)(i) of the Policy.
In State Farm Mutual Automobile Insurance Company v. Rocky E. Faw (FA94971) the respondent was found to have no legitimate interests in respect of the domain name where he had not used nor developed the domain name for a legitimate noncommercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See also Leland Stanford Junior University v. Zedlar Transcription & Translation (FA94970).
Having regard to the unusual name Tupac Shakur, the undisputed reputation of that name in relation to Hip-Hop music and the respondent's active involvement in the supply of Hip-Hop music, notably the recordings of Mr Tupac Shakur, through the respondent's web site www.hiphopspot.com, the panel finds that the respondent had knowledge of the complainant's mark when choosing to register the contested domain name.
The respondent has not been licensed or otherwise authorised by the complainant to use the complainant's trade mark nor to register the contested domain name.
The name Tupac Shakur is not one traders in the field of Hip-Hop music would legitimately choose unless seeking to create the impression of an association with the complainant.
The respondent, despite actual notice of the complaint, has not proffered any response which could clothe with legitimacy its registration of the contested domain name.
For these reasons the panel finds the complainant has discharged its burden of proving that the respondent has no rights or legitimate interests in the contested domain name.
Bad faith registration and use
The panel has found that the respondent knew of the complainant's trade mark when choosing the contested domain name.
In SportSoft Golf, Inc. v. Hale Irwin's Golfers' Passport(FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (FA94737); Canada Inc. v. Sandro Ursino (AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com(FA95037).
The panel finds that the contested domain name was registered in bad faith.
Although the respondent has not used the contested domain name in the usual sense, the "use" of a domain name in bad faith does not necessarily mean use on the Internet: Bayshore Vinyl Compounds Inc. v. Michael Ross (AF-0187). The 'use' requirement has been found not to require positive action, inaction being within the concept: Telstra Corporation Limited v. Nuclear Marshmallows, (D2000-0003); Barney's, Inc. v. BNY Bulletin Board (D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (D2000-0400); Video Networks Limited v. Larry Joe King(D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company(D2000-0194) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman(D2000-0468).
Where, as here, there is no evidence of circumstances of passive inaction falling within paragraphs 4(b)(i),(ii) or (iii) of the Policy, the question whether passive inaction satisfies the requirements of paragraph 4(a)(iii) can be answered only in respect of the particular facts of a specific case : Telstra Corporation Limited v. Nuclear Marshmallows(D2000-0003 at para 7.11).
In this case the panel has regard to the following circumstances on this issue:-
(i) the widespread reputation in the field of Hip-Hop music of Mr. Tupac Shakur and of the trade mark constituted by his name;
(ii) the respondent's knowledge of that mark and reputation at the time of registration of the contested domain name;
(iii) the false representation inherent in the contested domain name that its owner is officially associated with the complainant;
(iv) the breach of the warranty contained in paragraph 2(b) of the Policy which flows from the false representation just mentioned;
(v) the failure of the respondent to reply to the complainant's counsel before the complaint was filed;
(vi) the failure of the respondent, having made enquiry before the commencement date of this administrative proceeding as to the procedures involved, to file a response and thus to give an innocent explanation for its choice of domain name;
(vii) the respondent's use of another web site for the supply of « bootleg » Tupac Shakur music;
(viii) the registration of the contested domain name in a name not identifiable as that of a legal person, giving only a Post Office Box as an address, with no telephone or fax numbers;
(ix) the unlikelihood that any legitimate use could be made by the respondent of the contested domain name in the field of Hip-Hop music (the only field of activity in which the respondent has been shown to be engaged) without infringement of the complainant's rights.
In light of these circumstances, the panel finds the respondent is using the contested domain name in bad faith.
Accordingly the complainant has proved bad faith registration and use.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs that the domain name tupacshakur.org be transferred to the complainant.
September 28, 2000
(s) Alan L Limbury