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 having a postal address C/O Law Office of Eric Farber, 160 Sansome Street, 5th floor San Francisco California 94104 USA
The Respondent is Bobby Grewal & al., having a postal address at P.O. Box 93018, 19705 Faser Hwy, Langley, British Columbia, V2A 8H2, CANADA
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on August 25, 2000. The hardcopy of the Complaint Form and the choice of jurisdiction were 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 for the contested Domain Names;
- Verify the Registrar's Whois Database and confirm all the required contact information for the Respondent;
- Verify if the contested Domain Names resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry led the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions, Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An e-mail was sent to the Registrar by the Clerk's Office of eResolution to obtain a copy of the Registration Agreement on August 25, 2000. The requested information was received August 28, 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 September 4, 2000. That date is the commencement date of the administrative proceeding.
On September 4, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of these Administrative Proceedings.
The Complaint form, the Official notification and all the annexes were sent by Canada post to the Respondent's various addresses. According to the Canada post tracking system, it was received by the technical and zone contacts.
The e-mails sent to firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and to email@example.com were the only ones to be returned as undeliverable. The e-mails sent to the eight other e-mail addresses were not returned to the Clerk's Office.
Finally, the fax sent to the Respondent's technical and zone contact was received.
On September 4, 2000, the Clerk's Office received an automatic acknowledgement from firstname.lastname@example.org, which is an email address found on the Respondent's website.
On September 5, 2000, the Clerk's Office received copy of an e-mail from Damien at www.2paconline.com.
On September 25, 26 and 27, 2000, the Clerk's Office received several emails from "tewpac" at email@example.com, the administrative and billing contact.
As of September 25, 2000, the Respondent had still not submitted his response.
On September 25, 2000, the Clerk's Office notified the Respondent and the Complainant of the Respondent's failure to respond to the Complaint. 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 26, 2000, the Clerk's Office contacted Mr. James Jude Bridgeman, and requested that he act as Administrative Panel in this case.
On September 27, 2000, Mr. James Jude Bridgeman, accepted the nomination and filed the necessary Declaration of Independence and Impartiality.
On September 28, 2000, the Clerk's Office forwarded a user name and a password to Mr. James Jude Bridgeman, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On September 28, 2000, the parties were notified that Mr. James Jude Bridgeman had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 11, 2000.
Prior to the appointment of the Administrative Panel, the Respondent requested an extension of time within which to file a Response. In view of the fact that said request was filed prior to the appointment of this Administrative Panel and since there was no question of any prejudice to the Complainant or to the process, this Administrative Panel decided, in the interest of fair procedures, to extend the time for the Respondent to file a Response and advised the Clerk's Office of e-Resolution accordingly.
On October 16, 2000 the Clerk's Office of e-Resolution advised the Respondent by e-mail that the Panelist had decided to grant an extension of time until October 20, at 4 p.m. Montreal time to file a Response form. The said e-mail advised the Respondent that he may file the Response form online or send it to the Clerk's Office by email on the requested form. The said e-mail further stated that a signed copy of the Response should be filed by fax.
In the event, the Respondent was once again non-compliant. He submitted a Response form by e-mail but failed to file the signed copy by fax.
In the view of this Administrative Panel, having reviewed the Procedural History compliled by the Clerk's Office of e-Resolution, proper procedures were followed and this Administrative Panel has been properly constituted.
3. Factual Background
The Complainant in these proceedings is the estate of the late Tupac Shakur. Mr Shakur was a musician, actor and poet with an international reputation as an influential and popular hip-hop recording artist. He was known as 2PAC and TUPAC. In 1996, the late Tupac Shakur was murdered in Las Vegas. His premature death at the young age of 25 received much publicity throughout the world.
Millions of Tupac Shakur's recordings have been sold worldwide. His third album "Me Against the World", opened at number one on the record charts in the USA. His album "All Eyez on Me" also opened at number one and went on to receive quintuple platinum status. Since his death, the administrators of his estate, the Complainant in these Administrative Proceedings have released three albums viz. "Makaveli ", "One Million Strong " and "Still I Rise", each of which were in the top ten on the USA record charts in their first week of sales.
Aside from Mr. Shakur's work as an internationally known musician, he acted in a number of movies such as "Gang Related", "Gridlock'd", and "Poetic Justice" and Mr. Shakur also released a book of poetry.
Prior to his death Mr. Shakur performed in concert on a number of world tours. There are approximately one-thousand www sites dedicated to Tupac Shakur.
The Complainant is the owner of the trademark 2PAC, registered with the United States Patent and Trademark Office, registration number 2183418 in international class 9 in respect of the following goods : "phonograph records, compact and mini discs, video discs, and pre-recorded audio, digital and video tapes featuring music". The application for said registration was filed on November 6, 1996 and the mark was registered on August 25, 1998.
The Complainant has also filed three applications to register the said trademark 2PAC with the USPTO in other classes viz.
Application Serial No. 75931741 filed on February 28, 2000, in international class 16, for the following goods : "posters, stickers, and books in the field of entertainment ";
Application Serial No. 75226422 filed on January 16, 1997in international class 25, for the following goods : "men's, women's and children's clothing, namely jackets and pants, socks, shoes, hosiery and swimsuits "; and
Application Serial No. 75979625 filed on January 16, 1997 in international class 25, for the following goods; "men's, women's and children's clothing namely T-shirts, shirts, pants, sweatshirts, shorts, hats, blouses, dresses, jeans , pajamas. "
The Respondent is the registrant of the domain names in dispute and maintains a www site dedicated to the late Mr. Shakur on which www site the Respondent offers information and merchandise.
The Complainant requests that this Administrative Panel direct that the said domain names be transferred to the Complainant.
The Complainant submits that the Complainant is the owner of two trademarks viz the mark 2PAC and TUPAC. In addition to the fact that the Complainant is the registered owner of the said trademark 2PAC, the Complainant states that the Complainant has also used the trademark 2PAC in connection with concerts, clothing, t-shirts and memorabilia.
The Complainant submits that the said trademark 2PAC is therefore also a common law trademark under Title 15 of the United States Code.
With regard to the trademark TUPAC, the Complainant submits that this is a common law trademark under Title 15 of the United States Code and refers to the Administrative Panel decision in Julia Fiona Roberts v. Russell Boyd WIPO Case Number D2000-0210.
The Complainant submits that while generally, surnames cannot be given recognition as a trademark. 74 Am.Jur.2d Trademarks and Tradenames § 114. However, surnames that have acquired a secondary meaning with a certain arena of commerce have often been given status as a trademark or common law mark. 74 Am.Jur.2d Trademarks and Tradenames § 114.
The Complainant submits that the trademarks 2PAC and TUPAC have acquired such secondary meaning due to Mr. Shakur's incredible popularity and Mr Shakur's association with these names. In this regard the Complainant submits that many of Mr. Shakur's recordings were released simply under the name 2PAC.
The Complainant submits that like Julia Roberts and The Dave Matthews Band, the names TUPAC and Tupac Shakur are sufficiently famous as to establish common law trademark status giving the Estate of Tupac Shakur the rights to control those names, including use of said names as domain names. In this regard the Complainant refers to the decision of the Administrative Panel in Julia Fiona Roberts v. Russell Boyd, WIPO Case Number D2000-0210.
The Complainant submits that the marks 2PAC and TUPAC are identical to the domain names "2paconline.com"; "2paconline.net"; "2paconline.org", "tupaconline.com", "tupaconline.net" and "tupaconline.org", except the descriptive word "online" has been added to each domain name.
Although the domain names are not identical to the said trademarks each said domain name includes one of the said trademarks "with a simple web-descriptive addition". Accordingly, the Complainant states that this satisfies the requirement under Rule 4(a)(i) of the UDRP. See Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc. WIPO Case Number D2000-0047.
The Complainant denies that the Respondent has any rights or legitimate interest in the said domain names. The Complainant states that neither the late Tupac Shakur nor the Complainant have ever given permission to the Respondent to use the said trademarks 2PAC or TUPAC.
The Complainant submits that regardless of whether or not the Respondent holds a competing trademark or service mark 2PAC or TUPAC the Respondent is using the mark solely for the purpose of exploiting the goodwill of the late Tupac Shakur.
The Complainant submits that Rule 4(b)(iv) of the Uniform Domain Name Dispute Resolution Policy (UDNRP) states, in part, that bad faith can be evidenced by using a domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site. The Complainant submits that the this is precisely what has occurred in this instance and that the Respondent is a Cybersquatter.
The Complainant further states that upon information and belief, since the Respondent registered the said domain names, he has been using them to direct Internet users to his website. The Complainant submits that each of the domain names in issue in these proceedings direct users to the same www site. The Complainant has submitted a print out of one of the pages of this www site.
The Complainant submits that the Respondent has posted numerous advertisements, biographies of Tupac Shakur, filmographies on the said www site and the said www site includes facilities such as chat abilities and even the facility to acquire an e-mail address with the 2paconline mail extension. The site is a sophisticated and well-designed site that even includes a TUPAC Merchandise Store in which the Respondent is offering for sale various goods including books about Mr Shakur and bootleg and unreleased recordings of Tupac Shakur.
The Respondent's said www site offers the ability to download computer software such as screensavers and a "2Pac Tribute Desktop" for use on individual's computers. The Complainant alleges that said screensavers and said "2Pac Tribute Desktop" are unlawful, but does not satisfactorily explain the basis of this contention.
The Complainant submits that it is clear that this Respondent is using the said www site for commercial purpose in contravention of the Complainant's trademark rights.
The Complainant asserts that Respondents activities clearly amount to registration and use of the said domain names in bad faith by the Respondent.
The Respondent initially failed to file a Response within the timeframe provided by the Rules. This Administrative Panel granted the Respondent an extension of time to file a Response. On this second occasion, the Respondent was once again non-compliant and although a Response Form was filed in digital form, the Respondent failed to file a signed copy of the Response by fax. In the circumstances, this Administrative Panel has decided that the Response submitted by the Respondent should not be admitted.
4. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy Adopted on August 26, 1999 (Implementation Documents Approved: October 24, 1999) (hereinafter the "Policy"), places on the Complainant the onus of proving that
(i) the domain name in dispute 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 in respect of the said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
Having considered the Complaint and the documents annexed thereto, this Administrative Panel is satisfied that the Complainant is the owner of the registered trademark 2PAC and has rights at common law in said trademark. Furthermore this Administrative Panel is satisfied that the Complainant has made out a prima facie case that the late Mr Shakur, and subsequently his estate, have acquired and maintained common law rights in the word mark TUPAC in connection with sound recordings and possibly other goods and services and have further made out a prima facie case that the said word TUPAC has acquired a secondary meaning in connection with inter alia the sale of sound recordings through the fame of the late Mr Shakur.
The said domain names 2paconline.com; 2paconline.net; 2paconline.org, tupaconline.com, tupaconline.net and tupaconline.org are similar to the Complainants said trademarks 2PAC and TUPAC, in that in each case, they comprise one of the said trademarks in combination with the descriptive word "online". In the view of this Administrative Panel, the most significant element of each of these domain names is the word 2PAC or TUPAC and the addition of the descriptive element "online" to the Complainant's trademark in each of the said domain names is not sufficient to distinguish any of the said domain names from either of the Respondent's trademarks. Therefore this Administrative Panel finds that the said domain names are confusingly similar to the said trademarks in which the Complainant has rights.
As regards the issue of whether the Respondent has any rights or legitimate interest in the said domain names, this Administrative Panel accepts the Complainant's submission that neither Mr Shakur nor the Complainant has ever granted the Respondent any rights whatsoever in these trademarks. The Complainant has further made out a prima facie case that the Respondent is using said domain names as the www addresses for a commercial www site offering goods and services to the public. In the circumstances, given the similarity which exists between the Complainant's said trademarks and the said domain names, this Administrative Panel concludes that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the said domain names.
As to the third element of the test in paragraph 4(a) of the Policy, this Administrative Panel is satisfied that the Complainant has established a prima facie case that the Respondent has madebootleg and unreleased recordings of Tupac Shakur available to the public on his said www site accessible via the said domain names. In the view of this Administrative Panel, the registration and use of a domain name to attract consumers to a www site on which bootleg and unreleased recordings are offered, allows this Administrative Panel to infer that the Respondent has registered and is using said domain names in bad faith.
In TPI Holdings Inc. v. JB Designs (WIPO No. D 2000 - 0216), May 22, 2000, this panelist decided that posting of material on a www site which constitutes intentional infringement of the complainant's copyright is sufficient to establish bad faith.
Consequently this Administrative Panel is satisfied that the Respondent has made out a prima facie case that the said domain names have been registered and are being used in bad faith.
This Administrative Panel decides that the Respondent has registered the said domain names 2paconline.com, 2paconline.net, 2paconline.org, tupaconline.com, tupaconline.net, tupaconline.org which are confusingly similar to trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interest in respect of said domain names, or any of them, and that the Respondent has registered and is using said domain names, and each of them, in bad faith. Accordingly, this Administrative Panel decides that said domain names 2paconline.com, 2paconline.net, 2paconline.org, tupaconline.com, tupaconline.net, tupaconline.org should be transferred to the Complainant.
Date: __October 24, 2000____
Place: Dublin, Ireland
(s) James Jude Bridgeman