Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA73687
`ESTTA Tracking number:
`03/30/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91159617
`Defendant
`Medica Health Plans
`Medica Health Plans
`5601 Smetana Drive
`Minnetonka, MN 55343
`
`Correspondence
`Address
`
`Eric D. Paulsrud
`Leonard, Street and Deinard
`150 South 5th Street Suite 2300
`Minneapolis, MN 55402
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Other Motions/Papers
`Eric D. Paulsrud
`eric.paulsrud@leonard.com
`/Eric D. Paulsrud/
`03/30/2006
`Appendix of Authorities - Part 1 - 30-MAR-2006.pdf ( 100 pages )
`
`

`
`IN THE UNITED STATES DEPARTMENT OF COMMERCE
`
`PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IMEDICA CORPORATION,
`
`Opposer/Registrant,
`
`VS.
`
`MEDICA HEALTH PLANS,
`Applicant/Petitioner.
`
`Opposition No. 91159617
`
`and
`
`Cancellation No. 92043288
`
`APPENDIX OF AUTHORITIES
`
`OF
`
`MEDICA HEALTH PLANS
`
`Eric D. Paulsrud
`
`LEONARD, STREET AND DEINARD
`150 South Fifth Street, Suite 2300
`Minneapolis, Minnesota 55402
`
`Phone: (612) 335-1448
`
`Facsimile: (612)335-1657
`
`Attorneys for Applicant/Petitioner,
`Medica Health Plans
`
`

`
`UDRP Decisions:
`
`Index
`
`America Online, Inc. v. Informatics, Inc.,FA0202000104570
`(Nat. Arb. Forum Mar. 25, 2002) ....................................................................................... ..2
`
`Apple Corps Ltd. v. Gods—Domains. com Nat. Arb. Forum FA0108000098464
`(Sept. 25, 2001) .................................................................................................................. ..9
`Apple Corps Ltd. v. LOVEARTH.net, FA0108000098812
`(Nat. Arb. Forum Sept. 25, 2001) .................................................................................... ..14
`Bloomberg L.P. v. Stanford Asset Management c/o Michael Onken,
`FA0105000097257 (Nat. Arb. Forum June 19, 2001) ..................................................... ..21
`
`Calvin Klein, Inc. v. Sufir Scelomo, FA0012000096314 (Nat. Arb. Forum Feb. 16, 2001) ........ ..26
`Canadian Tire Corp. v. 849075 Alberta Ltd., D2000—0985 (WIPO Oct. 19, 2000) .................... ..31
`Cellular One Group v. Wingspan, Inc., D2000—1290 (WIPO Dec. 9, 2000) ............................... ..36
`EBAY, Inc. v. MEOdesigns & Matt Oettinger, D2000—1368 (WIPO Dec. 15, 2000) .................. ..42
`G.D. Searle & Co. v. James Mahony,FA0204000112559
`(Nat. Arb. Forum June 12, 2002) .................................................................................... ..46
`
`Nike, Inc. v. Crystal Int’l, D2001—0102 (WIPO Mar. 19, 2001) ................................................. ..51
`Nintendo ofAm., Inc. v. Daniel Lopez d/I9/a Creative Strategies,
`D2000—1166 (WIPO Dec. 8, 2000) .................................................................................. ..55
`
`The Procter & Gambel Co. v. Wingspan, Inc., FA0202000104944
`(Nat. Arb. Forum Mar. 28, 2002) ..................................................................................... ..61
`
`Scholastic Inc. v. Applied Software Solutions, Inc., D2000—1629 (WIPO Mar. 15 , 2001) .......... ..67
`Toyota Jidosha Kabushiki Kaisha d/I9/a Toyota Motor Corp. v. S &S Enter.s Ltd.,
`D2000—0802 (WIPO Sept. 9, 2000) ................................................................................. ..73
`
`Citable TTAB Decisions (not yet published in USPQ):
`
`Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947,
`
`(TTAB, Jan. 23, 2006)(citable) ......................................................................................... ..81
`
`Starbucks U. S. Brands, LLC v. Ruben, Opposition No. 91 156879,
`(TTAB, Feb. 9, 2006)(citable) ........................................................................................... ..99
`
`Other Authorities:
`
`Shari Seidman Diamond, Reference Manual on Scientific Evidence, “Reference Guide
`on Survey Research” (Federal Judicial Center, Second Edition, 2000) ............................ .. 140
`
`R. 1/eighton, “Using Dabert—Kumho Gatekeeping to Admit and Exclude Surveys
`in Lanham Act Advertising and Trademark Cases,” 92 TMR 743 (2002) .................... ..191
`
`1 of 243
`
`

`
`America Online, Ir1c. V Informatics, Ir1c. — Case No. 104570
`
`http://www.arbforum.com/domains/decisions/104570.htm
`
`
`
`DECISION
`
`America Online, Inc. v. Informatics, Inc.
`Claim Number: FAOZOZOOO 1045 70
`
`PARTIES
`
`The Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James
`
`R. Davis, II, of Arent, Fox, Plotkin & Kahn. The Respondent is Informatics, Inc., Potomac,
`
`MD (“Respondent”) James E. Morgan, of Startec Global Operating Company.
`
`REGISTRAR AND DISPUTED DOMAIN—NAME
`
`The domain—name at issue is <iaol.com>, registered with Go Daddy Software, Inc.
`
`PANEL
`
`The undersigned certifies that he has acted independently and impartially and to the best of his
`
`knowledge has no known conflict in serving as Panelist in this proceeding.
`
`Charles A. Kuechenmeister is the Panelist.
`
`PROCEDURAL HISTORY
`
`Complainant submitted a Complaint
`
`to the National Arbitration Forum (“the Forum”)
`
`electronically on February 8, 2002;
`
`the Forum received a hard copy of the Complaint on
`
`February 8, 2002.
`
`On February 8, 2002, Go Daddy Software, Inc. confirmed by e—mail to the Forum that the
`
`domain—name <iaol.com> is registered with Go Daddy Software, Inc. and that Informatics, Inc.,
`
`the Respondent,
`
`is the current registrant of the name. Go Daddy Software, Inc. has verified
`
`that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has
`
`thereby agreed to resolve domain—name disputes brought by third parties in accordance with
`
`ICANN’s Uniform Domain—name Dispute Resolution Policy (the “Policy”).
`
`On February 11, 2002, a Notification of Complaint and Commencement of Administrative
`
`Proceeding (the “Commencement Notification”), setting a deadline of March 4, 2002 by which
`
`Respondent could file a Response to the Complaint, was transmitted to Respondent via e—mail,
`
`post and fax,
`
`to all entities and persons listed on Respondent’s registration as technical,
`
`administrative and billing contacts, and to postmaster@iaol.com by email.
`
`A document entitled SUGGESTION OF BANKRUPTCY filed by Startec Global Operating
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`
`Company ("Startec"), alleging inter alia that Startec is the successor in interest of Respondent to
`
`<iaol.com> was received on March 1, 2002. The Respondent has not filed a Response or any
`
`other pleading in this proceeding.
`
`On March 6, 2002, Complainant timely filed an additional submittal.
`
`On March 11, 2002, pursuant to Complainant’s request to have the dispute decided by a
`
`single—member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
`
`RELIEF SOUGHT
`
`The Complainant requests that the domain—name be transferred from the Respondent to the
`
`Complainant.
`
`PARTIES’ CONTENTIONS
`
`A. Complainant
`
`Complainant (AOL) is the owner of numerous trademark registrations for the mark AOL,
`
`including U.S. Trademark Registration Nos. 1,977,731 and 1,984,337, which were registered in
`
`June and July of 1996, respectively.
`
`AOL uses its mark AOL.COM as a domainname for its website and owns U.S. Trademark
`
`Registration Nos. 2,325,291 and 2,325,292 for that mark.
`
`AOL adopted and began using its AOL mark as early as 1989 and its AOL.COM mark as early
`
`as 1992 in connection with computer online services and other internet-related services,
`
`including e-mail services and providing access to the internet.
`
`AOL has more than 30 million subscribers, operates the most widely—used interactive online
`
`service in the world. Each year millions of AOL customers worldwide obtain services offered
`
`under the AOL and AOL.COM marks. Millions of additional people are exposed to those
`
`marks from advertising and promotion.
`
`The general public has come to associate the AOL name and mark with services of a high and
`
`uniform quality. The distinctive AOL and AOL.COM marks have become well known and
`
`famous among members of the purchasing public.
`
`Many years after AOL's adoption and first use of the AOL and AOL.COM marks, Respondent
`
`registered the domain—name <iaol.com> with a bad faith intent to profit from the domain.
`
`The domain <iaol.com> is nearly identical and confusingly similar to the AOL and AOL.COM
`
`marks. Customer confusion is particularly likely because Respondent is using the mark AOL
`
`with the descriptive prefix letter "i" which has become widely recognized as a symbol for Internet
`€'COH1H1€1‘C€.
`
`Respondent is using the <iaol.com> domain—name to promote e-mail and Internet connectivity
`
`services, which are specifically identified in the Federal Registrations for AOL and AOL.COM.
`
`As further evidence of bad faith use, Respondent makes no reference whatsoever to "IAOL" at
`
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`America Online, Ir1c. V Informatics, Ir1c. — Case No. 104570
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`http://www.arbforum.com/domains/decisions/104570.htm
`
`the <iaol.com> site, but is merely using <iaol.com> to play off the famous AOL mark and
`
`attract consumers who falsely believe that AOL endorses or is affiliated with Respondent's
`services.
`
`Respondent has no rights or legitimate interest with respect to <iaol.com>. Respondent is not
`
`licensed or authorized by AOL to use the AOL or AOL.COM mark, and Respondent is not
`
`known by the name AOL or IAOL.
`
`Respondent uses <iaol.com> to route to an e-mail and Internet service provider's site called
`
`"StarTec." At that site, Respondent provides services that compete directly with those offered by
`
`AOL, near the AOL name and mark. Respondent's website makes no reference to AOL or
`IAOL itself.
`
`B. Respondent
`
`Respondent has not filed a Response or any other pleading in this matter. Startec filed a
`
`Suggestion of Bankruptcy in which it alleges that the Respondent effected a sale, transfer and
`
`assignment of <iaol.com> to it on December 21, 1999. The Suggestion of Bankruptcy further
`
`alleges (1) that Startec and affiliated entities (not including the Respondent) filed voluntary
`
`petitions for relief under Chapter 11 of the U.S. Bankruptcy Code, (2) that an order for relief
`
`under Chapter 11 was entered by the Bankruptcy Court on December 20, 2001,
`
`(3)
`
`that
`
`Startec's Chapter 11 cases have not been dismissed, (4) that the Complainant's challenge to
`
`Respondent's interest in <iaol.com> is a pre—petition claim against the bankruptcy estates of
`
`Startec, and (5) that this Administrative Proceeding is subject to the automatic stay under the
`
`U.S. Bankruptcy Code, 11 U.S.C. §36Z.
`
`Startec filed copies of its bankruptcy petitions (without including any schedules of its assets), and
`
`the order of the Bankruptcy Court dated December 20, 2001 confirming Startec's authority to
`
`operate its businesses and implementing the automatic stay.
`
`Startec did not offer any documentary evidence of the alleged sale or assignment of <iaol.com>
`
`to it by the Respondent, of any corporate or other restructuring of Respondent that would effect
`
`a transfer of Respondent's interest in <iaol.com> to Startec, or of any re—registration or attempt
`
`to re—register the said domain in its own name.
`
`It did not respond to the merits of AOL's
`
`Complaint herein.
`
`C.
`
`Additional Submissions
`
`On March 6, 2002, AOL filed an additional submittal addressing the issues raised by Startec's
`
`Suggestion of Bankruptcy, asserting that the Suggestion of Bankruptcy cannot be considered as a
`
`Response because only the registrant of a domainname has standing to file a Response in this
`
`type of proceeding, and that Startec is not the registrant. This submittal complies with the
`
`requirements of Rule 7, Forum Supplement Rules for the Policy. Because it addresses the
`
`special issues raised by the Suggestion of Bankrupcty, the Panel considered it.
`
`FINDINGS AND DISCUSSION
`
`Before addressing the claims of Complainant and Respondent in respect of <iaol.com> ("the
`
`disputed domain—name"), the Panel first addresses the issues whether Startec may appear herein
`
`to assert, without credible evidence, an interest in <iaol.com> and based thereon to stay these
`
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`
`proceedings pursuant to 11 U.S.C. §362. The Panel answers both questions in the negative. As
`
`shown by the Go Daddy registration records, current as of February 4, 2002 and last updated
`
`November 1, 2001 (Complaint Annex E), the registrant is Informatics, Inc. For the purposes of
`[1]
`these proceedings, which are concerned solely with the registration,— registration is conclusive
`evidence of interest in the domain—name as between Startec and Respondentfl Having failed
`to demonstrate that it holds the registration for <iaol.com> or offer evidence that it is entitled to
`
`do so, Startec has no right
`
`to claim benefit
`
`in these proceedings of any interest
`
`in that
`
`domain—name. If some right or interest in respect of <iaol.com> exists for Startec apart from the
`
`registration and is an asset of one or more of its bankruptcy estates, Startec (or its bankruptcy
`
`trustee) has ample opportunity within the ten days following the filing of this Decision to
`
`demonstrate and protect that interest in another forum. Policy Paragraph 6(k)
`
`Paragraph l5(a) of the Rules for Uniform Domain—name Dispute Resolution Policy (the
`
`“Rules”)
`
`instructs this Panel
`
`to “decide a complaint on the basis of the statements and
`
`documents submitted in accordance with the Policy, these Rules and any rules and principles of
`
`law that it deems applicable.”
`
`Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following
`three elements to obtain an order that a domainname should be cancelled or transferred:
`
`(1)
`
`the domain—name registered by the Respondent is identical or confusingly similar to a
`
`trademark or service mark in which the Complainant has rights;
`
`(2)
`
`(3)
`
`the Respondent has no rights or legitimate interests in respect of the domain—name; and
`
`the domain—name has been registered and is being used in bad faith.
`
`Identical and/or Confusingly Similar
`
`Complainant owns
`
`trademark registrations for
`
`the AOL mark,
`
`including United States
`
`Registration Numbers 1,977,731 and 1,984,337.
`
`Complainant
`
`also owns
`
`trademark
`
`registrations for the AOL.COM mark, including United States Registration Numbers 2,325,291
`
`and 2,325,292.
`
`Its rights to the marks AOL and AOL.COM are clear.
`
`The disputed domain—name is confusingly similar to Complainant's AOL and AOL.COM marks
`
`because it incorporates the entirety of Complainant's mark and merely adds the letter "i" at the
`
`beginning. The addition of a single letter does not create a distinct mark capable of overcoming
`
`a claim of confusing similarity.
`
`See Canadian Tire Corp.
`
`42. 849075 Alberta Ltd., D2000—0985
`
`(WIPO Oct.
`
`19,
`
`2000)
`
`(finding
`
`that
`
`the
`
`domain—names <ecanadiantire.com> and
`
`<e—canadiantire.com> are confusingly similar to Canadian Tire’s trademarks); see also America
`
`Online Inc.
`
`42. Chinese ICQ Network, D2000—0808 (WIPO Aug. 31, 2000) (finding that the
`
`addition of the numeral 4 in the domain—name “4icq.com” does nothing to deflect the impact
`
`on the viewer of the mark "ICQ" and is therefore confusingly similar). As Complainant points
`
`out,
`
`the use of <iaol.com> clearly implies at a minimum that the domain and its user are
`
`affiliated with AOL or that AOL endorses this use of its mark. Complaint §10. This is
`
`sufficient to demonstrate confusing similarity.
`
`Rights or Legitimate Interests
`
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`America Online, Ir1c. V Informatics, Ir1c. — Case No. 104570
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`http://www.arbforum.com/domains/decisions/104570.htm
`
`Apart from the mere registration of <iaol.com> by Respondent, the record before the Panel is
`
`devoid of evidence of any right or legitimate interest Respondent may have in respect of IAOL
`
`or the disputed domain—name. While use of a name or a mark may give rise to a common law
`
`trademark right, the disputed domain—name in this case is used solely to attract the attention of
`
`Internet users. Any person visiting the <iaol.com> website is immediately redirected to another
`
`website using the names "eStart Internet" and "Startec," at which goods and services are offered
`
`under those names. No goods or services are ever offered under the name or mark IAOL.
`
`Complaint Annex G. This type of use, as a mere attention grabber, is not a bona fide offering
`
`of goods or services within the meaning of Policy §4(c)(i). See Vapor Blast Mfg. Co. 42. R 6'9’ S Teclt.,
`
`lnc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (commercial use of the domain—name to
`
`confuse and divert Internet traffic is not a legitimate use of the domain—name). Kosmea Pty Ltd.
`
`42. Krpan, DZOOOO948 (WIPO Oct. 3, 2000) (finding no rights in the domain—name where
`
`Respondent has an intention to divert consumers of Complainant’s products to Respondent’s
`
`site by using Complainant’s mark).
`
`Because Complainant is and, prior to Respondent's registration of <iaol.com> in 1996, already
`
`was clearly and unmistakably associated in the mind of the public with the marks AOL and
`
`AOL.COM, it is highly unlikely if not impossible for Respondent to be commonly known as
`
`AOL or IAOL. Respondent cannot have become commonly known by those names and thus
`
`cannot have acquired any right or legitimate interest in them or in <iaol.com>. See Victoria’s
`
`Secret et al v. Asclak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that
`
`Respondent was not commonly known by a domain—name confusingly similar to Complainant’s
`
`VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).
`
`Finally, Complainant, which clearly does have rights in the mark AOL, has not granted
`
`Respondent any right
`
`to use it as part of <iaol.com>, and indeed has commenced these
`
`proceedings to prevent that use.
`
`Complainant has met its burden to prove that Respondent has no right or legitimate interest in
`
`respect of the disputed domain—name.
`
`Registration and Use in Bad Faith
`
`Because of
`
`the fame of Complainant's mark,
`
`even in 1996 when Respondent
`
`first
`
`registered<iaol.com>, Respondent was reasonably on notice of Complainant's rights in the AOL
`
`mark. Respondent's registration of a domain—name so confusingly similar to Complainant's
`
`mark is evidence of bad faith. Policy Paragraph 4(b)(iv).
`
`See also, Samsonite Corp. v. Colony
`
`Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes
`
`actual or constructive knowledge of a commonly known mark at the time of registration); see also
`
`Exxon Mobil Corp.
`
`42. Fisher, DZOOO—l4lZ (WIPO Dec. 18. 2000) (finding that Respondent had
`
`actual and constructive knowledge of Complainant’s EXXON mark given the world—wide
`
`prominence of the mark and thus Respondent registered the domain—name in bad faith).
`
`Much of the evidence supporting the confusingly similar and no right or legitimate interest
`
`elements, as set forth above, also supports the bad faith use element. The <iaol.com>
`
`domain—name is so confusingly similar to Complainant's marks that the Internet user will likely
`
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`America Online, Ir1c. V Informatics, Ir1c. — Case No. 104570
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`
`believe that there is an affiliation between Respondent and Complainant or that Complainant
`
`has at least endorsed this use of it. Moreover, the fact that the disputed domain—name is used
`
`solely to attract attention and then divert traffic to another site, at which there is absolutely no
`
`use of or even reference to the disputed domain—name, is convincing evidence of bad faith use.
`
`Kosmea Pty Ltd.
`
`42. Krpan, DZOOOO948 (WIPO Oct. 3, 2000)
`
`(finding no rights in the
`
`domain—name where Respondent has an intention to divert consumers of Complainant’s
`
`products to Respondent’s site by using Complainant’s mark).
`
`It may be argued that it is Startec
`
`and not Respondent who is making the actual use in this case, but for the purposes of these
`
`proceedings, which are directed toward and affect only the registration, as
`
`the registrant,
`
`Respondent is responsible for this use.
`
`Complainant has met its burden to prove that Respondent registered and is using the disputed
`domain—name in bad faith.
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`America Online, Ir1c. V Informatics, Ir1c. — Case No. 104570
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`http://www.arbforum.com/domains/decisions/lO4570.htm
`
`DECISION
`
`Based upon the foregoing Findings and Discussion,
`
`the relief sought
`
`in the Complaint is
`
`granted. The disputed domain—name <iaol.com>is ordered transferred to Complainant.
`
`Charles A. Kuechenmeister
`
`Dated: March 25, 2002
`
`("holder of a
`("concerning a domain—name registration") and Respondent
`[ll See, definitions of Complainant
`domain—name registration") in Paragraph 1, Rules for Uniform Domain—name Dispute Resolution Policy. See also, Policy
`Paragraph 1:
`".
`.
`. [the Policy governs] disputes over the registration and use of an Internet domain—name registered by
`you,.
`.
`.
`.
`and Policy Paragraph 4(i) Remedies:
`"The remedies available to a complainant pursuant to any proceeding
`before an Administrative Panel shall be limited to requiring cancellation of your domain—name or the transfer of your
`domain—name registration."
`[2]
`— Even apart from the registration, Startec offered no evidence from Informatics, Inc. and no documentary evidence of
`any other kind to support its claimed interest in <ia0l.com>.
`
`Click Here to return to the main Domain Decisions Page.
`
`Click Here to return to our Home Page
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`Apple Corps Limited V Gods—Domains.com — Case No. 98464
`
`http://www.arbforum.com/domains/decisions/98464.htm
`
`
`
`DECISION
`
`Apple Corps Limited v. Gods—Domains.com
`Claim Number: FA0108000098464
`
`PARTIES
`
`The Complainant is Apple Corps Limited, London (“Complainant”) represented by Howard
`
`H. Weller, of RubinBaum LLP. The Respondent is Mark Elsis Gods—Domains.com, Siesta
`Key , FL (“Respondent”).
`
`REGISTRAR AND DISPUTED DOMAIN NAMES
`
`The domain names at issue are <ethebeatles.net>, <ebeatles.net>, <ithebeatles.net>, and
`
`<i-beatles.com>, registered with Network Solutions, Inc..
`
`PANEL
`
`The undersigned certifies that he has acted independently and impartially and to the best of his
`
`knowledge, has no known conflict in serving as Panelist in this proceeding.
`
`Hon Roger P. Kerans as Panelist.
`
`PROCEDURAL HISTORY
`
`Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”)
`electronically on August 3, 2001; the Forum received a hard copy of the Complaint on August
`6, 2001.
`
`On August 8, 2001, Network Solutions, Inc. confirmed by e—mail to the Forum that the domain
`names <ethebeatles.net>, <ebeatles.net>, <ithebeatles.net>, and <i-beatles.com> are
`
`registered with Network Solutions, Inc. and that the Respondent is the current registrant of the
`
`name. Network Solutions, Inc. has verified that Respondent is bound by the Network
`
`Solutions, Inc. 4.0 registration agreement and has thereby agreed to resolve domain—name
`
`disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
`
`Resolution Policy (the “Policy”).
`
`On August 13, 2001, a Notification of Complaint and Commencement of Administrative
`
`Proceeding (the “Commencement Notification”), setting a deadline of September 4, 2001 by
`
`which Respondent could file a Response to the Complaint, was transmitted to Respondent via
`
`e—mail, post and fax, to all entities and persons listed on Respondent’s registration as technical,
`
`administrative and billing contacts, and to postmaster@ethebeatles.net,
`
`postmaster@ebeatles.net, postmaster@ithebeatles.net, postmaster@i—beatles.com by e—mail.
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`Apple Corps Limited V Gods—Domains.com — Case No. 98464
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`http://www.arbforum.com/domains/decisions/98464.htm
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`The Forum received an incomplete response on September 4, 2001. Specifically, it failed to
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`comply with ICANN Rule 5(b), and as such the Panel has discretion whether or not to consider
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`this Response. Having regard to all the circumstances I will consider this Response.
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`On September 18, 2001, pursuant to Complainant’s request to have the dispute decided by a
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`single—member Panel, the Forum appointed Hon Roger P. Kerans as Panelist.
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`RELIEF SOUGHT
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`The Complainant requests that the domain names be transferred from Respondent to
`Complainant.
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`PARTIES’ CONTENTIONS
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`A. Complainant
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`The Complainant corporation is wholly owned by Sir Paul McCartney, George Harrison,
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`Richard Starkey (p/k/a Ringo Starr) and Mrs. Yoko Ono Lennon. It is the successor in interest
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`to The Beatles, the most famous group of popular musicians of all time, and is the sole and
`exclusive owner of the rights in and to the name, likeness and performances of The Beatles.
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`The Beatles enjoy an exceedingly valuable reputation and tremendous goodwill as a result of
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`(a) the extensive sales and advertising of hundreds of musical compositions and recordings
`bearing The Beatles name; (b) the fame and acclaim surrounding the musical services of The
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`Beatles and the popularity of the motion pictures in which The Beatles have appeared; (c) the
`widespread public recognition of the name The Beatles and the association of that name with
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`the individual owners of Apple; and (d) the high quality and nature of The Beatles‘ musical
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`compositions, musical recordings and musical services.
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`Through The Beatles‘ efforts and professional activities, the substantial use of The Beatles
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`name, the hugely successful sales of goods and services bearing The Beatles name, and the
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`world—wide publicity that The Beatles have received and continue to receive, THE BEATLES
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`trademark has undoubtedly acquired secondary meaning and is a strong trademark worthy of
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`the broadest scope of protection. The Beatles‘ name is distinctive and famous and is widely
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`recognized throughout the world.
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`Gods—Domains.com is a web site devoted to the sale of domain names. Gods—Domains.com is
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`owned and operated by an individual named Mark Elsis (“Elsis”). Elsis also operates a web
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`site called LOVEARTH.net which purports to be an environmental organization that has, as its
`objective, the prevention of the destruction of the rainforests and of mankind. Elsis also
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`operates a variety of other websites, including celebrity—websites.com, that specifically target
`celebrities. Through his web sites, Elsis owns hundreds of celebrity domain names (among the
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`thousands of other names owned by him) including six other iterations of The Beatles‘ name in
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`addition to the domain names at issue here. The purported purpose behind the Respondent's
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`registrations of THE BEATLES domain names as well as the registration of hundreds of other
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`celebrity names is to obtain an endorsement of Elsis’ causes. Elsis explains that
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`365 top level domain names have been developed into websites for most
`Earth Conscious Celebrities .
`.
`.
`. [W]e ask that the celebrities .
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`. read
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`and understand the most important study there is on Earth: Rainforests
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`Biodiversity.
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`Apple Corps Limited V Gods—Domains.com — Case No. 98464
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`http://www.arbforum.com/domains/decisions/98464.htm
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`Elsis also writes a letter addressed to "Dear Celebrity" which states, in relevant part, that,
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`through his LOVEARTH.net, he has registered the many celebrity names "in order to raise the
`consciousness about .
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`. Rainforests Destruction" with the intent that "when these Eco
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`Celebrities understand the true ramifications they will help bring this critical study to the
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`forefront of human consciousness .
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`.
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`.
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`. something nearly impossible do to [sic] in today's
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`corporate—owned media." Thus, rather than using legitimate media channels, Elsis is "trying to
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`get to the top people throughout the world through improper means in order to urge them to
`read Elsis‘ essay on the destruction of the rainforests in exchange for the transfer of their
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`domain names. In this regard, Elsis has attempted to obtain meetings and other forms of
`assurance from the individual Beatles regarding support for his environmental causes in
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`exchange for the transfer of the domain names that are the subject of this Complaint.
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`At one time, Respondent also owned numerous domain names comprising various iterations of
`the names of Sir Paul McCartney, George Harrison and Ringo Starr. On April 19, 2001,
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`Complainant filed ICANN complaints against Elsis, d/b/a LOVEARTH.net (as well as against
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`another d/b/a used by Elsis) seeking the transfer of these domain names and on June 4, 2001,
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`panels appointed by the National Arbitration Forum rendered decisions ordering the transfer of
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`the domain names to the Complainants. Significantly, these decisions fully detail the
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`illegitimate interests of Elsis in the domain names as well as his bad faith
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`Another factor evidencing bad faith is Respondent's calculated attempt to foreclose
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`Complainant from using its own trademark as a web address on the Internet. ICANN Policy
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`4(b)(ii). In this regard, as discussed above, Elsis has registered 10 iterations of The Beatles‘
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`name as domain names. Significantly, previous ICANN panels have determined that efforts by
`a Respondent to capture more than one variation of a Complainant's trademark is evidence of
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`bad faith. See, e. g., Sanrio Co. Ltd. v. Neric Lau, D2000—0172(WIPO Apr. 20, 2000); The
`Stanley Works, Inc. v. Camp Creek Co., Inc., D2000—0113 (WIPO Apr. 13, 2000) (noting that
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`such a pattern is evidence of "classic cybersquatting").
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`It has been specifically held that registration, followed by non—use, can constitute bad faith on th<
`part of a registrant. See Withers v. Dominico et al., D2000—1621 (WIPO Jan. 28, 2001), and cas~
`cited therein.
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`RESPONDENT
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`99
`ca
`The Respondent filed a joint Response to this claim and to a claim of even date against
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`ca
`Lovearth.net respecting its use of these names: “thebeatles.org ,
`the—beatles.org”,
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`“the—beatles.net
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`, ethebeatles.com”, “ibeatles.com”, and “ithebeatles.com.” This is reported
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`as Apple Corps Limited v. LOVEARTH.net, FA98812 (Nat. Arb. Forum Sept. 25, 2001).
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`With respect to this Complaint, he says only that, because of a clerical error, these names were
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`registered under Gods—domain.com instead of Lovearth.net.
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`I accept however that the responses made in the sister claim were intended by him to apply
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`also to this claim. They are summarized in the Decision in the other claim.
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`FINDINGS
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`Two Complaints
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`Apple Corps Limited V Gods—Domains.com — Case No. 98464
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`http://www.arbforum.com/domains/decisions/98464.htm
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`The Complainant filed another Complaint involving Mr. Elsis. Irefer to Apple Corps Limited
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`V. LOVEARTH.net FA98812 (Nat. Arb. Forum Sept. 25, 2001). The complaints were filed the
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`same day, and the Respondent made, as I have noted, one response to both claims. Neither
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`party sought consolidation, so it was necessary to open separate proceedings. No doubt
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`because the Complaints are similar and the defenses are identical, both were assigned to the
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`same Panelist, and I considered the cases together. All the reasons given in the Findings in
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`Apple Corps Limited v. LOVEARTH.net FA98812 (Nat. Arb. Forum Sept. 25, 2001) apply
`equally here.
`I see no reason to repeat them.
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`Is this claim only about a clerical error?
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`I do not accept that installation of the names on a website devoted to the sale of domain names
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`was a clerical error. If that were so, the respondent could and would readily have made a
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`change long before the complaint was filed. These names were registered in 1999, and no
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`change was ever made. I draw the obvious inference that the names were put on the
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`Gods—domain.com website for the purpose of sale.
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`DISCUSSION
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`Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the
`“Rules”) instructs this Panel to “decide a complaint on the basis of the statements and
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`documents submitted in accordance with the Policy, these Rules and any rules and principles
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`of law that it deems applicable.”
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`Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following
`three elements to obtain an order that a domain name should be cancelled or transferred:
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`(1) the domain name registered by the Respondent is identical or confusingly similar to a
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`trademark or service mark in which the Complainant has rights;
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`(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
`(3) the domain name has been registered and is being used in bad faith.
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