Billmonroe.com

The timeline behind billmonroe.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION James William Monroe v. Tony Sung Claim Number: FA0507000525910 PARTIES Complainant is James William Monroe (“Complainant”), represented by J. Gerard Stranch of Branstetter, Kilgore, Stranch & Jennings, 227 Second Avenue North, Fourth Floor, Nashville, TN 37201-1631. Respondent is Tony Sung (“Respondent”), 61 Town Centre Court Suite 2109, null, Toronto, ONTARIO M1P5C5, CA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <billmonroe.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. The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2005; the National Arbitration Forum received a hard copy of the Complaint on July 29, 2005. On July 29, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <billmonroe.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 9, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 2005 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@billmonroe.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On September 6, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <billmonroe.com> domain name is identical to Complainant’s BILL MONROE mark. 2. Respondent does not have any rights or legitimate interests in the <billmonroe.com> domain name. 3. Respondent registered and used the <billmonroe.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, James William Monroe, is the son of the late bluegrass musician William S. Monroe, who performed and recorded for over sixty years under the BILL MONROE mark. Bill Monroe popularized the bluegrass music style along with Lester Flatt and Earl Scruggs and became known as “The Father of Bluegrass.” Bill Monroe left his entire estate to Complainant in Articles II and IV of his Last Will and Testament. Respondent registered the <billmonroe.com> domain name on September 17, 1999. The domain name resolves to a website that contains links to numerous music-related items, including music downloads and the albums of various musicians. Many of the links are related to bluegrass music. DISCUSSION Paragraph 15(a) of 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." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) 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. Identical and/or Confusingly Similar Complainant asserts that the BILL MONROE mark has acquired sufficient secondary meaning to establish common law rights based on Bill Monroe’s fame and reputation associated with bluegrass music. The Panel concludes that Complainant has proved that the BILL MONROE mark has become sufficiently connected to Bill Monroe’s music and persona that the public associates that music with Bill Monroe and the BILL MONROE mark. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the complainant that common law trademark rights exist); see also Estate of Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law …”); see also CMG Worldwide, Inc. v. Naughtya Page, FA 95641 (Nat. Arb. Forum Nov. 8, 2000) (finding that Princess Diana had common law rights in her name at her death and that those common law rights have since been transferred to the complainant, the representative of Princess Diana’s estate). The <billmonroe.com> domain name differs from Complainant’s BILL MONROE mark only with the omission of spaces between words and the addition of the generic top-level domain (“gTLD”) “.com.” These changes, separately and together, are irrelevant in determining similarity under the Policy and, therefore, do not function as distinguishing features. Thus, the domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants."); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Consequently, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests It has been established under the Policy that the complainant has the initial burden of proving that the respondent lacks rights and legitimate interests in the disputed domain name. In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel held: Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question. Id.; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Having found that Complainant has met its initial burden by establishing a prima facie case, the Panel will now analyze whether Respondent has met its burden to establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). Complainant argues that Respondent is not commonly known by the <billmonroe.com> domain name and that Complainant has not authorized Respondent to use any version of Complainant’s BILL MONROE mark for any purpose. The WHOIS information for the disputed domain name lists Respondent as “Tony Sung” and identifies no other connection between Respondent and the disputed domain name. Because Respondent has failed to respond to any of Complainant’s contentions, the Panel is left with no evidence to rebut Complainant’s assertions that Respondent is not commonly known by the disputed domain name. Thus, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Respondent is using the <billmonroe.com> domain name to divert Internet users to a commercial website that displays links to third-party websites, including many related to country or bluegrass music. Furthermore, the Panel presumes that Respondent derives commercial benefit from these diversions due to click-through fees from the links on the website. The Panel finds that such use of a domain name identical to Complainant’s BILL MONROE mark to attract Internet users to Respondent’s commercial website for Respondent’s benefit does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Additionally, in failing to submit a response to Complainant’s contentions, Respondent has neglected to provide any evidence that would challenge Complainant’s prima facie case. The Panel, therefore, finds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or (iii). See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”). Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith The <billmonroe.com> domain name resolves to a website that features a generic search engine with numerous links to various music-related products and services. The Panel presumes that Respondent receives commissions for diverting Internet users to third-party websites via the search engine and links located at Respondent’s website. Additionally, Respondent’s use of Complainant’s distinctive BILL MONROE mark in the domain name creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s website for Respondent’s commercial gain. The Panel finds that this is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Respondent’s registration of the <billmonroe.com> domain name, which contains Complainant’s BILL MONROE mark in its entirety, suggests that Respondent knew of Complainant’s rights in the mark. The similarity between Complainant’s business and the content displayed on Respondent’s website is further evidence that Respondent had knowledge of Complainant’s rights in the BILL MONROE mark. Respondent’s registration of a domain name that contains Complainant’s mark, with knowledge of Complainant’s rights in the mark, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <billmonroe.com> domain name be TRANSFERRED from Respondent to Complainant. The Honorable Charles K. McCotter, Jr. (Ret.), Panelist Dated: September 20, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.