CMG Worldwide, Inc. v. Alessandro Bottai
[Indexed as: CMG Worldwide v. Bottai]
[Indexed as: chuckberry.com]
National Arbitration Forum
Administrative Panel Decision
Forum File No.: FA0004000094661
Commenced: 24 April 1998
Judgment: 31 May 2000
Presiding Arbitrator: Herman D. Michels
Domain Name - Domain name dispute resolution - U.S. Service mark
- U.S. Trademark - Supplemental user - Public Website - Identical - Confusingly
Similar - Bad faith registration - Bad faith use.
Complainant was registrant of United States service mark and United
States trademark. Respondent registered the domain name ‘chuckberry.com'.
Complainant alleged that its registered marks were identical and Respondent
registered and used the domain name at issue in bad faith. Complainant
requests the domain name be transferred to itself.
Held, Domain Name Transferred to Complainant
Complainant has the exclusive right to use and license the Chuck
Berry mark as an agent for the musician Chuck Berry, and the responsibility
of enforcing their rights against unauthorized use. Respondent's domain
name CHUCKBERRY.COM is identical to the Chuck Berry mark of which Complainant
has exclusive rights. Respondent has caused substantial harm by intentional
attempts to attract for commercial gain from Internet users by creating
a likelihood of confusion with the Chuck Berry mark in suggesting there
is an affiliation, connection, sponsorship or approved association between
Respondent and Complainant.
Respondent is not a licensee of Complainant, nor is it otherwise
authorized by Chuck Berry to use the registered marks. Respondent has no
rights or legitimate interests in the domain name. Respondent registered
the domain name in bad faith in order to prevent the owner of the mark
from reflecting the mark in a corresponding domain name and such activities
constitute infringement of Complainant's rights in its mark.
Policies referred to
Rules for Uniform Domain Name Dispute Resolution Policy. October 24,
1999.
National Arbitration Forum Supplemental Rules of ICANN's Uniform Domain
Name Dispute Resolution Policy.
Panel Decision referred to
Michels, Herman D:
The above entitled matter came on for an administrative hearing on May
30, 2000 before the undersigned Arbitrator on the complaint of CMG Worldwide,
Inc. (Complainant), represented by Erik Carter, Esq. (Corporate Counsel)
(Telephone: 317-570-5035; E-mail: erik@cmgww.com) against Alessandro Bottai
(Respondent). Upon the written submitted record consisting of the Complaint,
I hereby render the following decision:
PROCEDURAL FINDINGS
Domain Name: CHUCKBERRY.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: ALESSANDRO BOTTAI
Date of Domain Name Registration: August 19, 1998
Date Complaint Filed: April 24, 2000
Date Response Filed: No Answer Filed by Respondent
After reviewing the Complaint and determining it to be in administrative
compliance, the
National Arbitration Forum (Forum) forwarded the Complaint to Respondent
in compliance with Rule 2(a) and the administrative proceeding was commenced
pursuant to Rule 4(c) in compliance with Rule 4(d). The Forum immediately
notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED
NAMES AND NUMBERS (ICANN) and Respondent that the administrative proceeding
had commenced. Respondent has not submitted a Response to the Forum within
twenty (20) days pursuant to Rule 5(a) which time has now expired. The
Complaint was docketed and forwarded to the undersigned Arbitrator for
decision.
On August 19, 1998, Respondent registered the domain name CHUCKBERRY.COM
with the domain name registrar Network Solutions, Inc., the entity that
is the registrar of the domain name. Network Solutions, Inc. verified that
Respondent is the registrant for the domain name CHUCKBERRY.COM and by
registering its domain name with Network Solutions, Inc., Respondent agreed
to resolve any disputes regarding its domain name through ICANN's Rules
for Uniform Domain Name Dispute Resolution policy. Neither Complainant
nor Respondent has contested the jurisdiction of the Forum or the assigned
Arbitrator to resolve this controversy.
FINDINGS OF FACT
1. Complainant is engaged in the business of representing living and
deceased celebrities and their heirs, families and estates of deceased
celebrities for the purposes of licensing to third-parties permission to
commercially utilize the names, likenesses, voices, rights of publicity
and endorsement and other visual and aural depictions of such celebrities,
together with the trademarks and related rights associated with same. Complainant
advertises and promotes the availability of its client's properties both
in the United States and foreign commerce.
2. Complainant is the exclusive worldwide agent for Chuck Berry, the
legendary musician, songwriter, performer, and proprietor of certain rights
protecting any unauthorized use of his name, image, or likeness, including
his rights of publicity, association, sponsorship and endorsement. Complainant
is charged with the responsiblility of enforcing said rights and protecting
said rights against unauthorized uses.
3. Chuck Berry possesses trademark registration Serial No. 74-702936,
for the "Chuck Berry" service mark in International Class 41 (entertainment,
namely live vocal and guitar musical performances).
4. Complainant is authorized to use and to license use of the name,
image or likeness of Chuck Berry on musical instruments and accessories,
sheet music, audio recordings, video recordings, clothing, T-shirts, footwear,
calendars, posters, advertising, cologne, electronic devices, and publicity
services registered on the Principal Register of the United States Patent
and Trademark Office.
5. Complainant has the exclusive right to use and to license the Chuck
Berry mark.
6. Respondent is not a licensee of Complainant nor is it otherwise authorized
by Chuck Berry to use Chuck Berry marks.
7. Respondents domain name CHUCKBERRY.COM is identical to the famous
mark in which Chuck Berry has exclusive rights.
8. Respondent's use of the Chuck Berry mark creates a likelihood of
confusion and Complainant's users and consumers are likely to be confused
into believing that there is some affiliation, connection, sponsorship,
approval or association between Respondent and Complainant when, in fact
no such affiliation or association exists. See Rule 4(a)(i).
9. Respondent has no rights or legitimate interests in the domain name
CHUCKBERRY.COM which consists primarily of the Chuck Berry mark in which
Respondent has no legitimate rights or interests.
10. The domain name CHUCKBERRY.COM should be considered as having been
registered by Respondent in bad faith due as evidenced by the fact that
Respondent has registered the domain name CHUCKBERRY.COM in order to prevent
the owner of the mark, Chuck Berry from reflecting the mark in a corresponding
domain name. See Rule 4(b)(i). Additionally, by using the domain name CHUCKBERRY.COM,
Respondent has intentionally attempted to attract, for commercial gain,
Internet users to his website or other on-line locations, by creating a
likelihood of confusion with the Chuck Berry mark as to the source, sponsorship,
affiliation, or endorsement of his website or location or of a product
or service of his website or location. See Rule 4(b)(iv).
11. Respondent's activities constitute infringement of Chuck Berry's
rights in its mark and Complainant's rights thereto and have caused and
will continue to cause substantial and irreparable harm to Complainant
and Chuck Berry in its and his business reputation and good will. Complainant
therefore has demanded that Respondent transfer the domain name CHUCKBERRY.COM
to Complainant on behalf of Chuck Berry.
CONCLUSION
The undersigned Arbitrator certifies that he has acted independently
and has no known conflict of interest to serve as the Arbitrator in this
proceeding. Having been duly selected and being impartial and neutral,
the undersigned Arbitrator makes the following findings and conclusions:
1. The domain name CHUCKBERRY.COM registered by Respondent on August
19, 1998, is identical or confusingly similar to Chuck Berry's mark, registered
trademark and service mark registered on the principal register of the
United States Patent and Trademark Office by Chuck Berry. Chuck Berry has
all rights and interests in his marks and Complainant has all rights and
interests in said Chuck Berry marks.
2. Respondent does not have any substantial rights or legitimate interests
in respect to the
domain name CHUCKBERRY.COM.
3. Respondent has registered and used the domain name CHUCKBERRY.COM
in bad faith.
DECISION
Based upon the above findings and conclusions and pursuant to Rule
4 (1) of the Rules of the Uniform Domain Name Dispute Resolution Policy
and the National Arbitration Forum Supplemental Rules of ICANN's Uniform
Domain Resolution Policy, I hereby Order that:
1. The domain name CHUCKBERRY.COM registered by Respondent Alessandro
Bottai be transferred forthwith to Complainant CMG Worldwide, Inc. on behalf
of Chuck Berry, and
2. Respondent Alessandro Bottai shall forthwith cease and desist from
any and all use of the domain name CHUCKBERRY.COM.
Dated: May 31, 2000 Herman D. Michels, Arbitrator
Domain
Name Transferred
