ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. The Parties and Contested Domain Name.
Complainant: The Estate of Tupac Shakur by the Law Offices of Eric Farber, 160 Sansome Street, Fifth Floor, San Francisco, California 94104. Email Address:firstname.lastname@example.org. Telephone: 415-434-5320, Fax: 415-434-5380, URL: http://ericfarber.com.
Respondent: R.J. Barranco, at Net Earning Network 640 Bailey Road, Pittsburg, California 94565. Email Address: email@example.com. Telephone: 510-425-4999, Fax 508-526-5571.
Contested Domain Names: "tupac.com" and "tupac.net". The Clerk of eResolution verified the Registrar of both names as TierraNet, Inc.
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 was received on August 28, 2000. Payment was received on August 29, 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 any active Web page(s);
- Verify if the Complaint was administratively compliant.
The inquiry led the Clerk's Office of eResolution to the following conclusions: the Registrar is TierraNet, 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 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.
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 the administrative proceeding.
On September 21, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on October 3, 2000.
On October 6, 2000, the Clerk's Office contacted Mr. Richard Faulkner, and requested that he acts as panelist in this case.
On October 6, 2000, Mr. Richard Faulkner, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 9, 2000, 2000, the Clerk's Office forwarded a user name and a password to Mr. Richard Faulkner, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On October 9, 2000, the parties were notified that Mr. Richard Faulkner had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 22, 2000.
On October 20, 2000 the Panel advised the Clerk's Office and the Clerk's Office agreed that as October 22, 2000 was a Sunday the decision would be handed down on Monday October 23, 2000.
3. Factual Background.
Complainant and Respondent are both domiciled in the United States of America.
Complainant, the Estate of Tupac Shakur states that it is the owner of certain marks protected under U. S. federal law and the common law. The Estate specifically asserts that:
1. Two marks are called into question ie. a.) 2pac and b.) Tupac.
2. The first mark is a duly registered trademark with the United States Patent and Trademark Office, Registration Number 2183418. A copy of the Registration was attached to the Complaint as Exhibit 1.
3. The mark was registered in the category of 009 for specific use for phonograph records, compact and mini discs, pre-recorded audio, digital and videotapes featuring music.
4. The mark has also been used in connection with concerts, clothing, t-shirts and memorabilia.
5. The second mark is a common law trademark under Title 15 of the United States Code. See, Julia Fiona Roberts v. Russell Boyd WIPO Case Number D2000-0210.
6. The Estate acknowledged that 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 within 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.
7. Tupac Shakur was an internationally known musician, actor and poet. 2Pac or Tupac as he was known the world over was asserted by the Estate as "one of the greatest and most popular Hip-Hop Musicians of all time."
8. In 1996, 2pac was murdered in Las Vegas. His death was publicized worldwide.
9. The Estate established that Tupac Shakur recordings have sold millions of records worldwide and that a partial discography of Mr. Shakur is available at Amazon.com.
10. The Estate further established that Mr. Shakur was both an internationally known musician and an actor and that he also released a book of poetry. The Estate also advised that a filmography for Mr. Shakur is available at Imdb.com.
11. It was established that Tupac Shakur was also internationally known as Tupac or 2pac prior to his death in 1996.
12. The Estate asserted that there are approximately one-thousand websites dedicated to Tupac Shakur on the Internet.
13. The Estate asserted that Mr. Shakur's popularity established the secondary meaning of 2pac and Tupac becoming associated directly with Tupac Shakur and that this allowed him to receive the mark of 2pac by the United States Patent and Trademark Office.
14. The Estate established that many of Mr. Shakur's recordings were even released simply under the name "2pac".
15. Consequently, the Estate contends that it is analogous to Julia Roberts and The Dave Matthews Band and that "Tupac" and "Tupac Shakur" are sufficiently famous to have garnered common law trademark status which grants the Estate of Tupac Shakur the rights to control those names, including the Domain Names at issue. The Estate cited as support the reported WIPO case of Julia Fiona Roberts v. Russell Boyd.
16. The Estate also noted that it has filed applications for the use of its' marks for various clothing, posters, stickers, books, calendars and books and that those applications are now pending in the United States Patent and Trademark Office.
17. Those pending registrations numbers were represented as: a.) Serial Number: 75931741: International category 16, for posters, stickers, and books in the field of entertainment. Attached to Complaint as Exhibit 2. b.) Serial Number: 75226422: International category 25, for men's, women's and children's clothing, namely jackets and pants, socks, shoes, hosiery and swimsuits. Attached to Complaint as Exhibit 3. and c.) Serial Number: 75979625: International category 25, for use clothing use as well. Attached to Complaint as Exhibit 4.
18. Extensive supporting documentation of Complainant's rights and assertions was annexed to the Complaint as various Complainant Attachments.
The Domain Names registered by Respondent and at issue in this Complaint are www.tupac.com and www.tupac.net (the "Domain Names").
The Domain Names resolve to active web pages with a variety of information on Tupac Shakur, email address offerings, advertisements and Respondents activities.
The Respondent has answered the Complaint and provided documentary support for his contentions.
The statements of the Clerk, the Complainant and the Respondent establish that all parties have actual notice of these proceedings according to the ICANN Regulations.
4. The Parties' Contentions.
The Complainant asserts that:
1. The marks are identical to the domain names.
2. Neither Tupac Shakur nor The Estate of Tupac Shakur have ever given permission to the Respondent to use the marks 2Pac or Tupac.
Therefore, the Estate asserts that it is entitled to obtain the transfer of the Domain Names.
Claimant asserts that there is a confusing identity between its' marks and the Domain Names. The relevant sections of the Estate's claims, and without any suggestion by this decision of the purported accuracy of these statements, maintain that:
Identity or Similarity: The names "tupac.com" and "tupac.net" are either identical or confusingly similar ( or both ) to the [Complainant's] marks:
1. "tupac.com" and "tupac.net", the Respondent's registered Domain Names, when read or stated orally, are the same as the Complainant's existing marks.
Claimant contends that the Registrant illegitimately registered and is using the domain names "tupac.com" and "tupac.net" in bad faith. In the "Illegitimacy" Section of the claim, reproduced in toto and without any suggestion by this decision of the purported accuracy of these statements, it asserts that:
Illegitimacy: The current Domain Name holder has no rights or legitimate interest in the names "tupac.com" or "tupac.net" due to the fact that the Domain Names are identical to the Complainant's marks
In the "Bad Faith" portion of the claim, again reproduced in toto, and without any suggestion by this decision of the purported accuracy of these statements, the Estate asserts:
1. This case brings into question three separate domain names and two different websites. [ The Panel specifically notes that the documents filed by the Complainant only contest the Domain Names "tupac.com" and "tupac.net". This is apparently due to the Respondent's indicated willingness to voluntarily transfer to the Estate the Domain Name "2pac.net". See paragraphs 2 and 6 infra. ]
2. The Domain Names "Tupac.com" and "Tupac.net" both point to the same website entitled "Tupac.com", while the Domain Name"2pac.net" points to a different website.
3. On or about August 8, 2000, through counsel, the Estate of Tupac Shakur by registered mail contacted Respondent to attempt to amicably transfer the domain names. On or about August 13, 2000 the Respondent contacted counsel by e-mail stating that he would be willing to discuss turning over the domain names and asked counsel to contact him either by facsimile or e-mail to set up a time to do such. A True and Correct Copy of the August 10, 2000 E-mail is Attached to this Complaint as Exhibit 5.
4. On August 14, 2000, Counsel faxed a letter to Respondent stating for Respondent to contact counsel by telephone.
5. Counsel has never been contacted by telephone by Respondent.
6. On August 14, 2000, Counsel received a second e-mail from Respondent stating that he was willing to turn over "2pac.net" but not the other two domain names. Respondent was also willing to remove anything "inappropriate" on the site. A True and Correct Copy of the August 14, 2000 E-mail is Attached to this Complaint as Exhibit 6.
7. On August 14, 2000 Counsel once again sent a letter to Respondent stating that the offer to transfer only one domain name was unacceptable.
8. Currently, the domain name "2pac.net" points to a website that states that the domain is going to be transferred to the Estate of Tupac Shakur. Previous to the current status of the site, the site was a fan based site dedicated to Tupac Shakur that allowed downloads and links to other sites. The site also contained numerous advertisements and even the ability to sign up for e-mail through the site. The Front Pages of both websites are Attached to this Complaint as Exhibit 7 and 8.
9. It is clear that the Respondent was operating the site in contravention of the Estate's exclusive rights and in bad faith as outlined in Rule 4(b)(iv) of the UDRP requiring transfer of the domain name to the Complainant.
10. The two other domain names were also registered and are being used in bad faith under the UDRP. "Tupac.com" and "Tupac.net" both point to the commercial fan site of "Tupac.com", a site dedicated almost exclusively to Tupac Shakur with numerous advertisements, downloads and even a full shop to be able to buy Tupac Shakur merchandise. This commercial use of the site is a clear and intentional showing of bad faith under Rule 4(b)(iv) of the UDRP requiring transfer of both domain names back to the rightful owner. True and Correct Copies of Various Pages of the "Tupac.com" Website are Attached to this Complaint as Exhibit 9.
The Claimant does not assert or seek to prove, that the Registrant is in the business of selling domain names or that he has offered to sell these Domain Names to it or to any other person or entity for any purpose, legitimate or nefarious. It does assert that there is a significant likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the web site.
Respondent generally denies Claimant's assertions on the issues of "illegitimacy" and "bad faith" and that it has the right to any remedy transferring these two Domain Names. More particularly, Respondent asserts that he operates a "fan club" type set of sites dedicated to Tupac Shakur which provide information to the general public about Tupac Shakur's music, art, poetry and movies to the Internet community. The Respondent specifically asserts in his response, which is reproduced in toto, and without any suggestion by this decision of the purported accuracy of these statements, that:
1. Tupac Amaru Shakur released his musical product under the stage names of 2pac® and Makaveli. When acting in movies, his full given name of Tupac Shakur was used to his credit.
2. The late artist did not perform under his first name alone of "Tupac". His music, movies, or books have not been credited to "Tupac." In this sense, the first name of "Tupac" has not acquired a secondary meaning in any arena of commerce, independent of his full name of "Tupac Shakur" and his stage name of "2pac."
3. Consequently, the complainant has failed to prove claims of common law trademark, under Title 15 of the United States Code.
4. The first name "Tupac" is not a registered trademark of the complainant.
5. The name Tupac is not qualified for trademark registration, as it is a first name and is used worldwide as a first or last name for many persons unrelated to Tupac Amaru Shakur. Furthermore, the word itself, "tupac," is a common, descriptive word in Incan Indian language. [ Alas, this Panel labors under the limitation of knowledge of only the English and German languages, but notes that in neither of those languages is the name or word "tupac" common or descriptive, except, perhaps, in relation to the decedent and the property of his estate. ]
6. Exhibits #1 (USPTO Registration Number 2183418), #2 (USPTO #75931741), #3 (USPTO #75226422), and #4 (USPTO #75979625) in authority all date after the registration of the domain names Tupac.Net and Tupac.Com (first registered in January of 1998).
7. Exhibits #1 (USPTO Registration Number 2183418) , #2 (USPTO #75931741), #3 (USPTO #75226422), and #4 (USPTO #75979625) all pertain to the registration of the word "2pac", and not the word "Tupac"
8. On two occasions in the complaint, the complainant refers to WIPO Case Number D2000-0210 (Julia Fiona Roberts v. Russell Boyd). I believe the outcome of this particular case would have been quite the opposite had the domain name in dispute been "julia.com" rather than "juliaroberts.com." In addition, the Julia Roberts dispute was a clear case of cybersquatting, in which the respondent had registered the domain in bad faith with no intent for development. The Julia Roberts WIPO case could not serve as a precedent in our current case.
1. I have operated a Tupac Shakur fan and news website that been in constant operation since January of 1998. The Tupac.Com domain name has been associate with this website since April of 1998.
2. Tupac.com is a fan-based website for fans of the late musical artist and actor Tupac Amaru Shakur (who performed and released rap music under the names 2pac® and Makaveli). The website is used to provide news and information regarding the music of Tupac Shakur and similar topics. The domain name is also used in conjunction with a free e-mail service.
3. The name Tupac has been used in a fair, nominative sense to associate the website Tupac.Com with the man Tupac Amaru Shakur for reasons provided here.
4. The website has used the name of Tupac and Tupac Shakur in a fair use setting to provide news and information, relating to Tupac Amaru Shakur, to its web site visitors. Examples of this information include published media articles, interviews, and analyses of his music.
5. The life and work of Tupac Amaru Shakur is often studied in a classroom setting. The University of California has in the past offered a course examining Tupac Amaru Shakur's works. My website at Tupac.Com has been a resource for students and other interested persons to acquire information about Tupac Amaru Shakur, the man and his works. The complainant and their websites make little attempt to provide such detailed information to its visitors.
6. The website is making a legitimate fair use of the domain name by providing news and educational resources relating to Tupac Shakur. A monthly newsletter is published online and by e-mail to provide news stories and updates.
7. For years, the domain Tupac.Com has been used to offer e-mail services to its visitors. Over 145,000 persons currently utilize its e-mail service. This is a bone fide service that allows fans of Tupac Shakur to acquire a personalized tupac.com e-mail account to receive and transmit private mail. Confiscation of the domain tupac.com would thwart the providing of these services to thousands of people. (annex included, electronic)
8. Since 1998, as a resource for information and e-mail services, I have been commonly known by the domain name Tupac.Com. The website has been constantly promoted and advertised as "Tupac.Com". The website title and logo of "Tupac.Com" has been branded across the entire website and e-mail service. Over the course of the past 2½ years the name Tupac.Com has become synonymous with this website. There are currently hundreds of other websites on the Internet that link to our domains Tupac.Com or Tupac.Net. My website is indexed and featured prominently by hundreds of search engines as Tupac.Com
9. The website in no way attempts to misleadingly divert visitors to its site. The website at Tupac.Com provides a notice on the main page informing visitors that it is a fan site of Tupac Shakur and provides a link to the official site. This notice is prominently displayed on the site above any other links. (annex included, electronic)
10. In addition, the website provides links to online retailers selling Tupac Shakur merchandise, creating legitimate product sales for the complainant through authorized sellers. The website is not a commercial entity and does not attempt to capitalize on the trademark or copyrights of anyone.
11. I have avoided using the registered trademark 2pac® wherever reasonably possible in order to prevent confusion with the complainant. I have at no time violated the complainant's copyrights through selling unauthorized merchandise or allowing online downloads of copyrighted music.
12. The complainant's authorized site, 2paclegacy.com, fails to provide a similar news update service and continues to provide false information to visitors. For example on September 13, 2000 the complainant's site update announced it was Tupac Shakur's birthday. (annex included) Woefully, this notice was posted on the 4th anniversary of Mr. Shakur's death. In similar fashion, sites operated by the Estate have failed to report pertinent news relating to Tupac Shakur such as release dates of music albums, news articles and so on. Confiscating the domain names Tupac.Com and Tupac.Net from the current owner would effectively be hindering the propagation of important news and information. This would be a violation of civil rights in regards to freedom of speech and freedom of the press. Tupac Shakur is a public figure and no entity could have exclusive rights to provide news and information pertaining to such a figure.
Bad Faith: The Respondent's statements on this point raise several important commercial issues that militate in favor of their being fully reproduced here. Respondent asserts that:
1. The website in no way attempts to misleadingly divert visitors to its site by representing the complainant in any form. I have never claimed to represent the complainant or the late Tupac Amaru Shakur.
2. The domains Tupac.Com and Tupac.Net were not acquired for the purpose of sale to Complainant or a competitor of Complainant. The domains are not for sale, have never been for sale, nor do I intend to sell these domains in the future.
3. I have taken reasonable steps to avoid potential confusion by providing a notice on the main page informing visitors that this is a fan site of Tupac Shakur and provides a noticeable link to the complainant's website. (annex included, electronic)
4. The domain names Tupac.Com and Tupac.Net have been used since their registration, in connection to my website, which I have dedicated countless hours and income to developing. The site contains over 400 pages of information that is updated frequently to provide a legitimate online service to visitors. This clearly demonstrates the absence of bad faith on my part. Furthermore it is clear the domains have not been used for cybersquatting purposes.
5. I have not registered the domain names at issue to disrupt the business of the complainant. On the contrary, the sites Tupac.Com and Tupac.Net have increased sales for the complainant by linking to online vendors such as Amazon.com, creating legitimate product sales for the complainant.
6. In regard to exhibit #9, the complainant has provided seven pages of Tupac Shakur product for sale on Tupac.Com. These are all links to authorized vendors of product. The complainant's own site 2paclegacy.com links to Amazon.com in the very same fashion.
7. I am not in competition with the complainant. The product sales of Tupac Shakur related merchandise, as noted by the complainant in the complaint, are links to legitimate vendors of authorized product. Sales through these vendors, such as Amazon.com, would directly benefit the complainant and does not demonstrate bad faith as defined in the UDRP.
8. The domains Tupac.Com and Tupac.Net were not registered in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name. The complainant does not posses a trademark on the word "tupac." The complainant has successfully marketed product under the name 2pac® and on its website at 2paclegacy.com
9. The complainant's description of why the contested domain names should be considered as having been registered and being used in bad faith contains irrelevant data that does not demonstrate either point.
10. In point #10 of the complaint the complainant mentions a "full shop to be able to buy Tupac Shakur merchandise" to demonstrate bad faith. As explained previously, these are external links to online vendors. This does not demonstrate bad faith. Tupac.Com is a news and e-mail service provider and does not sell tangible goods or attempt to compete in any way with the complainant.
11. Our download area, mentioned in the complaint, includes links to a screensaver and a clock that were created by fans. This does not demonstrate bad faith.
12. Exhibits #5 & #6, submitted by the complainant, show e-mails from me to the complainant. I feel they demonstrate my willingness to be reasonable and negotiable in this matter and do not demonstrate bad faith.
13. The domain names Tupac.Com and Tupac.Net had little value or associated traffic upon registration and have only grown in significance and worth over the past two and a half years because of my hard work and promotion.
14. The domain names were not registered in bad faith and are have never been used in bad faith.
Respondent further asserted that:
1. I feel this complaint may have been filed with an element of bad faith on the part of the complainant. Upon my review of the complaint, I noticed the submission of an exhibit (Exhibit #9) might have been altered to ostensibly exclude the disclaimer at the top of the webpage. This disclaimer states "This is a fan site created by and for the fans of Tupac Shakur. The official 2pac™ / Tupac Shakur is located at this link." Despite the fact that this notice is displayed on the website in the same color and size as other verbiage on the page, the notice has been rendered illegible on the submitted exhibit in question. I am submitting an electronic annex showing the main page of the web site.
2. The first communication between the complainant and respondent was nearly three years after the first registration of tupac.net. It was in form of a letter, dated 8/8/2000, threatening legal action if the domains were not given to them immediately. (Annex included)
Finally, the Respondent specifically requested the Panel to note that:
1. The complainant currently has six domain dispute cases pending with eResolution. Case number AF-0347 is in regards to a respondent that has used his domain names in an illegal fashion. Case numbers AF-0345, AF-0346, and AF-0349 deal with cybersquatting domain name registrants. It is my expectation that this case will not be grouped with decisions that may be rendered in those cases, and that all evidence of legitimate use and good faith is considered here independent of other seemingly related cases.
Complainant, The Estate of Tupac Shakur, requests that the ownership of the domain name at issue be transferred to it.
5. Discussion and Findings.
The ICANN Policy in Paragraph 4.a. requires Complainant to prove, with respect to the Domain Names at issue, each of the following:
(i) The Domain Names at issue are identical or confusingly similar to a trademark or service mark in which Estate has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The ICANN Policy in Paragraph 4.b delineates four exemplar circumstances, that for the purposes of Paragraph 4(a)(iii), supra, are clear evidence of the registration and use of a domain name in bad faith.
The ICANN Policy at Paragraph 4.c. sets out three exemplar defenses which, if proved by Respondent, shall demonstrate respondent's rights or legitimate interests to the domain name(s) for purposes of Paragraph 4(a)(ii), supra.
Complainant urges the virtual identity of the mark and the Domain Names. Thus, it must prove that the Domain Names at issue are "identical" to its' corresponding mark.
The Domain Names at issue are patently identical to the corresponding mark, especially in the context of the Internet. As the United States Court of Appeal for the Second Circuit recently noted in Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., 2000 U.S. App. LEXIS 1246, 53 U.S.P.Q. 2D (BNA) 1570, "For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com. n3" Any consumer attempting to do so presently would not be directed to Complainant. However, the evidence presented to this Panel shows that they would be directed only to sites selling items authorized and licensed by the Claimant.
b. Rights or Legitimate Interests
Respondent's basic defense consists of an assertion that he has "as a fan of Tupac Shakur" registered the Domain Names and created over the course of several years a very extensive site dedicated to the life and work of a public person he and others admire. Thus, he asserts that he has thereby acquired legitimate rights to these Domain Names. The Panel recognizes that the registration of an available Domain Name is clearly legal. It also accepts for the purpose of this decision the asserted validity of Claimant's U.S. mark and common law rights, its' rights in that mark with respect to various goods and services, that it has some reputation or goodwill inherently associated mark and common law rights, as well as its' representations as to its' various business activities and intended use of the Domain Names and mark. However, that is not the end of the inquiry.
In order to obtain the transfer of the Domain Names the Claimant must establish that the Respondent has no rights or legitimate interests in respect of the Domain Names. The evidence clearly establishes that the Respondent does have some such rights. He now and has for multiple years expended his time, money and effort providing at no charge a web site where he, other fans and the general public may obtain a variety of possibly interesting information on Tupac Shakur his music, poetry and movies. His site also provides a free place for fans and the public to discuss a their views, speculations and ideas concerning Tupac Shakur. The Panel finds it significant that his sites have clearly indicated an obvious link to the "official site", expressly disclaim any affiliation or representation of that site and have apparently taken steps to ensure that any links for the sale of any items relating to Tupac Shakur are only to businesses selling items licensed by the Complainant. Indeed, much of his information is similar to that expected to be on a well designed web page of any fan club for any artist. Thus, though obviously to the displeasure of this Claimant, the Respondent's site is not operated for commercial gain or to misleadingly divert consumers or to tarnish the Claimant's mark. These sites apparently benefit the Claimant and it did not establish that the Respondent profit at its' expense.
The position asserted by the Claimant, if accepted, would effectively prohibit any fan club from being established on the Internet if it mentioned in the site name an artist's name, where part or all of that name related to a registered mark or even perhaps transgressed claims of common law rights in a name. It would also permit persons in the position of this Claimant to unjustly enrich themselves by confiscating the work of fans and admirers in establishing a web site supporting their favorite artists without any opportunity for compensation.
The situation presented in this dispute is a problem squarely created by the neglect and/or inattention of the Claimant. The evidence clearly establishes that it could have acquired the Domain Names at issue at any time over a period of multiple years after the decedent's death or that he could have done so whilst he lived. He, or it, chose or elected not to do so. This situation is not analogous to and is clearly distinguishable from that of the prompt action and very different facts established in the Julia Roberts case. This dispute does not exemplify the activities envisioned by the United States Congress when it articulated the public policy of the United States in the Anticybersquatting Consumer Protection Act of 1999. Whilst this situation may be one prohibited by U.S. intellectual property law or common law or statute, the Claimant will have to establish those claims in an appropriate court after full discovery and with the attendant risk that it may be taxed with the Respondent's attorney's fees and costs if it fails. To prevail in this forum the Claimant must properly plead its' case and meet the burden of proof required by ICANN Regulation and Policy. It has not done so.
c. Bad Faith.
The registration and use of the Domain Name at issue in bad faith according to the exemplars contained in the ICANN Regulations is readily determined.
The UDRP in Section 4(b) provides:
Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 trademark 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 trademark 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.
Claimant has failed to establish, the mandatory bad faith. There is no evidence of any intent by the Respondent to violate paragraphs (i), (ii) or (iii). The evidence also establishes that these are free sites that do not generate a reasonable likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the web sites with or by the Complainant. All of the evidence submitted establishes that Respondent has not acquired these Domain Names in bad faith. The mere refusal of a person to comply with a questionable demand does not constitute "bad faith". Otherwise, that term and the ICANN provisions would lose all meaning and significance.
d. Due Process.
The parties knew, or reasonably should have known, that when they registered the Domain Names at issue, they agreed to and accepted the procedures, rules and regulations established by the Registrar and its' successors. The Claimant has not established the prerequisites articulated in the ICANN Regulations. Whilst some individual Panels have expansively interpreted their powers to draw certain inferences and logical conclusions when deciding these disputes, they have only done so when provided with properly plead claims and facts. The specific issue of the juridical weight and authority to be accorded to the owners of a mark and/or the common law rights in a "famous" name to control discussions and expressions of opinions by fans and persons articulating their views and ideas about a public figure is present here. However, the parties did not brief that issue nor did they provide any guidance to the Panel. As that is at the heart of the Complainant's case, the provision of at least some authority specifically directed to that issue would have been helpful.
The Panel recognizes it has a duty to treat the parties equally and to afford each of them a fair opportunity to present their case. Likewise the Panel is expressly acknowledged to possess the power to determine the admissibility, relevance, materiality and weight of the evidence. The Parties' submissions, statements and representations have been very carefully considered for their relevance, materiality and admissibility. All have been given due and appropriate weight.
6. Conclusions and Decision.
The evidence, submissions of the parties, ICANN Regulations and guidance provided by the laws of the United States and the jurisprudence interpreting them lead this Panel to conclude and decide that (a) the Domain Names registered by Respondent, R. J. Barranco, and at issue herein are effectively identical to the Claimant's mark and the decedent's name. However, Claimant has not met any other portion of its' mandatory burden of proof under the ICANN Regulations or Policy.
Accordingly, the Panel hereby Awards, directs, requires and orders that the registration of the Domain Names at issue, "tupac.com" and "tupac.net" remain with Respondent, R. J. Barranco.
Thus done and signed in Dallas, Texas, United States of America on October 23, 2000.
(s) Hon. Richard D. Faulkner, J.D., LL.M., F.C.I.Arb.