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, San Francisco, CA, USA. The respondent is Andronian, apparently a physical person, resident in Rousse, Bulgaria. The contested domain name is "2pac.org", registered with Network Solutions, 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 30, 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, 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.
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. This 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.
The email sent to email@example.com and to firstname.lastname@example.org are the only ones that were returned undeliverable.
The Complaint form, the Official notification and all the annexes sent by Canada Post to the technical and zone contacts were delivered, according to the "Advice of receipt" received by the Clerk's Office.
On September 26, 2000, the Clerk's Office notified both of the respondent's failure to respond to the complaint. The parties were also informed 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 27, 2000, the Clerk's Office contacted Mr. Richard Hill, and requested that he/she acts as panelist in this case.
On September 28, 2000, Mr. Richard Hill, accepted to act as panelist in this case 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. Richard Hill, allowing him to access the Complaint Form and the evidence through eResolution's Automated Docket Management System.
On September 28, 2000, the parties were notified that Mr. Richard Hill had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 11, 2000.
3. Factual Background
The respondent has registered the US trademark "2pac" on 6 November 1996. This mark is owned by the estate of Tupac Shakur, who was an internationally known musician, actor, and poet. He was commonly known as "Tupac" or "2pac" and his works are known as "2pac" and can be found at various web sites by the search string "2pac".
The trademark "2pac" was granted by the US Patent and Trademark Office in recognition of its secondary meaning associated with the works of Mr. Shakur.
The respondent registered the domain name 2pac.org on 17 September 1999. There is no web site corresponding to the domain name.
On 8 August 2000, the complainant's representatives send notice by registered mail to the respondent to inquire about their intended use of the domain name. No reply was received.
4. Parties' Contentions
The complainant contends that the domain name 2pac.org is confusingly similar to its trademark "2pac", and that the respondent has no legitimate interest in the contested domain name, and that the respondent registered the domain name in bad faith.
The respondent has defaulted and hence makes no contentions.
5. Discussion and Findings
The panel will first address the procedural issues related to the fact that the respondent has defaulted and then analyse the evidence to determine whether the complainant has proven, in accordance with article 4.a of the ICANN Policy that:
I. The procedural issue related to the default of the respondent
Since the respondent has defaulted, this panel must first determine what the procedural implications are of a default. Should the complainant automatically prevail, or should the panel anyway examine the evidence and base its decision on its determination of the relevant facts and laws?
While the ICANN Policy, Rules and the Supplemental Rules that govern these proceedings do not explicitly address this question, they do give some guidance. Notably, article 4(a) of the ICANN Policy states:
"In the administrative proceeding, the complainant must prove that each of these three elements are present." [emphasis added]
This panel therefore holds that it cannot grant the claimant's request automatically, but that it must instead examine the evidence presented to determine whether or not the complainant has proven its case as required by the ICANN Policy.
II. Analysis of the evidence in this case
Similarity between the trademark and the domain name
The complainant has presented evidence that it owns the rights to the trademark "2pac" and it is obvious that the contested domain name 2pac.org is identical or confusingly similar to the trademark.
Lack of rights or legitimate interests in the contested domain name
The complainant has presented evidence and argued convincingly that, given the international reputation of Tupac Shakur, and his works being widely known under the sobriquet "2pac", it is hard to understand how the respondent could have any rights or legitimate interests in the contested domain name.
This panel holds that the complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the respondent has rights or legitimate interests in the contested domain name.
Bad faith registration and use of the contested domain name
The respondent is not actually using the contested domain name to point to a web site. Thus the question arises of whether mere registration of the domain name constitutes use. The answer to this question is of course "yes": mere registration of a domain name constitutes use of that domain name.
But the panel must still determine whether the respondent has registered and is using the domain name in bad faith. Since there is no direct evidence of what the respondent intends to do with the domain name, the panel will have to make inferences from the available facts.
The complainant cites the decision D2000-0003, regarding telstra.org. Although there are significant differences in the facts of the present case and the facts of the Telstra case, nevertheless the inferences made by the panel in the Telstra case do appear relevant for the present case. (The reasoning and wording below are directly derived from those of the Telstra case.)
In particular, this panel, as did the Telstra panel, must determine whether, in the circumstances of this particular case, the passive holding of the domain name by the respondent amounts to the respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) the complainant's trademark has a strong reputation and is widely known,
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, an infringement of the complainant's rights under trademark law, or a violation of Article 4(b)(iv) of the ICANN Policy.
In light of these particular circumstances, this panel concludes that the respondent's passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name "is being used in bad faith" by the respondent.
This panel concludes that the complainant has proven that the contested domain name is confusingly similar to its trademark "2pac", that the respondent has no rights or legitimate interests in the contested domain name, and that the respondent has registered and used the contested domain name in bad faith.
The panel therefore orders the contested domain name 2pac.org to be transferred to the complainant, the Estate of Tupac Shakur.
Geneva, Switzerland, 3 October 2000
(s) Richard Hill