1st Dec 2006

National Arbitration Forum

DECISION

Troyal Garth Brooks & Blue Rose, Inc. v. Bob Crull

Claim Number: FA0609000799367

PARTIES

Complainant is Troyal Garth Brooks & Blue Rose, Inc. (collectively, “Complainant”), represented by Barry Neil Shrum, of Harris, Martin, Jones, Shrum, Bradford & Wommack, P.A., 49 Music Square West, Suite 600, Nashville 37203.Respondent is Bob Crull (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <garth.com>, registered with Catalog.com, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

David E. Sorkin, M. Kelly Tillery, and Paul M. DeCicco as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 20, 2006.

On September 25, 2006, Catalog.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <garth.com> domain name is registered with Catalog.com, Inc. and that the Respondent is the current registrant of the name.Catalog.com, Inc. has verified that Respondent is bound by the Catalog.com, 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 September 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 19, 2006 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@garth.com by e-mail.

A timely Response was received and determined to be complete on October 19, 2006.

A timely Additional Submission from Complainant was received and determined to be complete on October 24, 2006.

A timely Additional Submission from Respondent was received and determined to be complete on October 30, 2006.

On November 7, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David E. Sorkin, M. Kelly Tillery, and Paul M. DeCicco as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends as follows:

Complainant Troyal Garth Brooks is an internationally known recording artist, singer, songwriter, guitarist and superstar.Blue Rose Incorporated is a Tennessee corporation wholly owned by Troyal Garth Brooks.

Complainant has been exclusively, extensively and continuously known by the name GARTH and/or GARTH BROOKS from 1981 to the present.

Since 1988 Complainant has consistently used his U.S. and EC trademarks and service marks in commerce.In addition, Complainant has numerous related trademarks and services marks, specifically including GARTH BROOKS (Reg. Nos. 2,226,176 and 2,443,657), the earliest of which has been used since 1981.The marks are used interchangeably with the GARTH marks referenced above.

By the time Respondent registered the <garth.com> domain name, Complainant had already expended substantial resources to develop the goodwill associated with his GARTH marks, specifically including the GARTH service mark.

The <garth.com> domain name is identical in all respects to the GARTH trademark and service mark and is therefore confusingly similar.

The evidence shows that Respondent selected <garth.com> because of its connection to Complainant.

<garth.com> was registered to Catalog.com as late as September 8, 2006, when Complainant retrieved the WHOIS information for the website in preparation for filing the Complaint.On or before September 25, 2006, the Registrant had been changed to “Bob Crull.”This change in the name of the registrant necessitated the filing of an amended Complaint and is strong evidence of an intent on part of both the Respondent and the Registrar to circumvent justice and change the facts of this case.

Respondent’s selection of the <garth.com> domain name gives rise to the impression of an association with the Complainant that is not based in fact and therefore creates a likelihood of confusion with the Complainant’s GARTH marks as to source, sponsorship, affiliation, and endorsement of its websites and/or of its products and services.

Respondent is using the disputed domain name to disrupt the business of Complainant in as much as it admits to using the disputed domain name for the illegitimate purpose of promoting and selling Complainant’s trademarked goods and services.

Respondent has not created a website for the domain name at issue, but instead intentionally uses Complainant’s GARTH trademark and service mark to attract and drive Internet traffic to various other commercial websites owned and hosted by Respondent or by Respondent’s executives.

Respondent is using the domain name for commercial gain in as much as it advertises other services, namely <infosecureconsulting.com>, on the web page established at <garth.com>.

Respondent is using the Complainant’s GARTH service mark to drive traffic to its website <catalog.com> where Respondent sells products related to Complainant.

The Respondent is not commonly known by the disputed domain name, nor does Respondent have any rights to the use of the service mark, GARTH.

Respondent’s use of the disputed domain name and marks falls squarely into Policy ¶ 4(b)(iv).

Respondent’s use of the disputed domain name and mark are in violation of the United States Trademark Act of 1946 (15 U.S.C. §1125) and the United States Anticybersquatting Consumer Protection Act, as well Complainant’s common law rights of privacy and publicity.

Respondent’s use of the disputed domain name is not a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain and is therefore unfair trade and competition.

Respondent provides domain name hosting services.Respondent is therefore in the business of buying and selling high profile Internet domain names, domain name appraisals and other domain name services.Respondent also sells various products through its website, <catalog.com>.

After Complainant’s attorney sent Respondent a cease and desist letter, Respondent offered to sell the disputed domain name to both Complainant’s attorney and his manager for $100,000.00.Respondent’s offer in this regard is in the nature of cybersquatting which infers that Respondent acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring it to Complainant for valuable consideration in excess of its documented out-of-pocket expenses directly related to the disputed domain name.

By its actions, Respondent is misleadingly diverting consumers to its domain name hosting services, <webhero.com>, by advertising their services in conjunction with the established service mark of Complainant.Respondent intentionally misuses Complainant’s goodwill and mark to lure Internet users to Respondent’s other commercial sites.

Respondent’s conduct prevents Complainant from reflecting the above-referenced mark in his corresponding domain name, and Respondent engages in a pattern of such conduct as described in Policy ¶ 4(b)(ii) and demonstrates bad faith on the part of Respondent.

Respondent’s conduct demonstrates intent to disrupt the business of Complainant, as described in Policy ¶ 4(b)(iii) and demonstrates bad faith on the part of Respondent.

Respondent’s conduct, as described above, demonstrates an intent to attract, for commercial gain, Internet users to the websites <catalog.com>, <webHero.com>, <crull.com>, <infosecureconsulting.com> and others, as described in Policy ¶ 4(b)(ii) and demonstrates bad faith on the part of Respondent.

By it actions, Respondent is tarnishing the service mark of Complainant and preventing him from utilizing his mark.See Policy ¶ 4(b)(ii).

These facts indicate that Respondent has registered and acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration, or utilizing it for commercial gain, and there is no reason to believe that Respondent will not do so much in the same manner as it has done in the past.

These facts also indicate that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the

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Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

Respondent’s blatant attempt to circumvent the facts of this case by changing the name of the Registrant after the Complaint had been filed is clearly evidence of bad faith and intent.

B. Respondent

Respondent contends as follows:

Respondent is not a cybersquatter but an entrepreneur.

The disputed domain name was registered over ten years ago on December 26, 1995.

The fact that Complainant waited so long raises the inference that Complainant did not believe that Respondent had acted in bad faith for all those years, and it follows that Complainant did not believe the Disputed Domain was registered in bad faith – a fact that is fatal to Complainant’s case since Complainant must prove that the Disputed Domain was “registered” with a bad faith intent.

Respondent takes no position on the validity of Complainant’s trademark.

It is undisputed that “Garth” is a common first name and that <garth.com> incorporates this common name.Complainant does not have exclusive rights to a trademark identical to a common personal name.

Respondent’s intent in registering the at-issue domain name as a possible name for a son he and his wife were expecting also establishes his legitimate interest.

In addition, Respondent’s legitimate interest is established because “Garth” is a word in the English language.This, in and of itself, establishes Respondent’s legitimate interest.Complainant does not have exclusive right to use a common word. There simply is no evidence, whatsoever, that Respondent registered the disputed domain name for the purpose of selling, renting or transferring it to Complainant; to prevent Complainant from reflecting its trademark in a domain name, together with a pattern of such conduct; or to disrupt Complainant’s business or attract customer’s seeking to purchase its products.The fact that “Garth” is a common man’s name, as well as a common word, weighs heavily against a finding of bad faith.There are over 13 million third party uses of the name “Garth” on the Internet alone.Complainant obviously does not have exclusive rights to this word.Absent direct proof that a common word domain name was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use.

Complainant points to Respondent’s search engine optimization experiment where his chief technology officer placed ads on the web site for merchandise related to Complainant.Such content generated less than $80 and appeared 10 years after Respondent registered the disputed domain name.There is no evidence that the Respondent attempted to mislead users that Complainant endorsed or sponsored the web site. Users typing in <garth.com> should not expect that it is a site affiliated with Garth Brooks.

Facts relating to a few months use of the at-issue domain name following 10 years of use in good faith – which is further implicitly acknowledged by Complainant who failed to complain during this extended period of time – cannot convert a good faith registration into a bad faith registration.

A further argument that Complainant makes is that Respondent’s offer to sell the disputed domain name is an indication of bad faith.However, Respondent was only replying to Complainant’s inquiry to purchase it. Such a reply to an unsolicited offer to purchase a common word domain name does not constitute bad faith under the Policy.

Complainant alleges that Respondent’s modification of the registrant name from Catalog.com to Bob Crull after the proceedings were initiated constitutes bad faith. Respondent simply wanted to correct the registration to indicate that he owned the domain name personally, a fact corroborated by the fact that the domain name had previously been registered in this matter.It is the provision of “false or misleading WHOIS contact information” that constitutes bad faith.

Respondent did not change the address or any other contact information, so it cannot be credibly argued that Respondent was trying to hide his identity or avoid being contacted for these proceedings.Such a change does not constitute bad faith under the Policy because Respondent had no intent to mislead, which follows from the fact that the registration contact information is accurate.

C. Additional Submissions

Complainant additionally contends as follows:

The record clearly proves that respondent does not have a legitimate interest in the <garth.com> domain name and has used the domain name in bad faith. Respondent has never conducted business using the name GARTH. His only connection with the name GARTH appears to be his past intention of naming a son “Garth.” The Respondent has documented no rights or legitimate interests in the name GARTH.

Respondent is clearly in the business of buying and selling domain names. The fact that he may not be successful is not relevant.

The fact is, while the word “Garth” is defined in an English dictionary and may be used in combination with other words, when the average consumer hears the word “Garth,” he or she thinks of the Complainant, GARTH, much like they think of the entertainers Madonna, Charo or Cher when those words are used.

The only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain. That purpose is a violation of the Policy, as well as U.S. Trademark Law.

Respondent admits that he attended college with the Complainant Garth Brooks in 1985 and admits that he is a “big fan.” This fact alone obliterates the notion that Respondent was merely picking a “common” word for his new son’s name.

Respondent also admits to being familiar with the GARTH marks, as that phrase is defined in the Complaint, prior to registering the at-issue domain name in 1995.

Selling the very merchandise to which the GARTH mark relates is, in fact, an appearance of an association with the Complainant and is not only bad faith under the Policy, but a violation of U.S. Trademark law. Contrary to Respondent’s concluding remarks, Complainant does, in fact, have the right to exclude all others from using the common word “Garth,” particularly when it relates to the goods and services for which he has obtained registration of the mark.

Respondent has offered no evidence that Complainant was even aware of the at-issue domain name until recently, when and whereupon Complainant’s attorney immediately served Respondent with a cease and desist notice.

The corporate entity Catalog.com, Inc. as the respondent could not propose a legitimate use defense, as Mr. Crull does, that the domain was named for a future child.

Respondent additionally contends as follows:

Complainant’s statement that Respondent offered “several” domains for sale on <crull.com> is disingenuous. There were just two domain names listed on that site: <garth.com>, and <datesafe.com>.

Respondent deals with domain names every day because he operates Catalog.com, an ICANN accredited domain name registrar. The only domain name ever sold by Respondent was <oklahoma.com>.

Respondent’s e-mail stated that he had “other buyers and uses.” The fact that Respondent had received other inquiries for the disputed domain name does not mean he is in business of buying and selling domain names. Respondent’s February 9, 2006 e-mail was not an offer to sell the domain name and, moreover, included the statement that he would trade it for <bob.com> or <bill.com>, which he said in jest.

The fact that Respondent knew who Mr. Brooks was in college is irrelevant, even if that were his inspiration for selecting “Garth” as a possible name for a son, or for registering the domain. The UDRP is violated where a domain name is registered in bad faith.


Complainant argues that people instantly think of Garth Brooks when they hear the name “Garth,” like Elvis, Madonna, Cher or Charo. However, there is no evidence of this.

Bob Crull originally registered <garth.com>. The defense in this matter is based on that earliest registration and Respondent was justified in changing the registration so that it reflected this.

FINDINGS

The disputed domain name <garth.com> is identical to the word mark GARTH, in which the Complainant has rights.

Complainant has trademark rights in the word mark “Garth.”

Complainant does not have exclusive rights to the name “Garth.”

DISCUSSION

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 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 domain name 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) 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.

Identical and/or Confusingly Similar

Complainant demonstrates trademark rights in the disputed domain name by virtue of the trademark registration in “GARTH” and otherwise.Disregarding the generic top-level domain suffix, “.com”, the <garth.com> domain name is identical to Complainant’s mark.

Rights or Legitimate Interests

Because the Panel’s finding as to “bad faith” is dispositive of the present matter, the Panel declines to reach the issue of rights or legitimate interests.

Registration and Use in Bad Faith

Under the Policy, Complainant bears the burden of proving both that the disputed domain name was registered in bad faith and that Respondent has used the disputed domain name in bad faith.The Panel finds that Complainant has failed to meet its burden of proving bad faith registration, and therefore does not reach the question of bad faith use.

Respondent contends that when he registered the disputed domain name in 1995, his wife was pregnant and he was thinking of naming his son Garth.Respondent has submitted a signed affidavit to this effect.This claim is plausible but self-serving, and the Panel accordingly views it with some skepticism, considering it in light of all of the circumstantial evidence before the Panel.However, it is the Complainant’s burden to show that the Respondent has registered the disputed domain name in bad faith and this Complainant has not done.

In Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000), the respondent used the domain name <madonna.com> to reference a pornographic website.“Madonna,” like “Garth,” is a common word as well a first name; both names serve as commonly recognized references to well-known celebrities.In Ciccone, the panel inferred bad faith registration from circumstantial evidence, including (1) the high purchase price that the respondent had paid to acquire the domain name; (2) the fact that soon after acquiring the name, the respondent used it in a manner that traded on the complainant’s trademark rights; and (3) the respondent’s failure to offer a plausible explanation for selecting the domain name.

None of those circumstances are present here.In particular, the only evidence of improper use of the disputed domain name is so brief and so distant in time from the date on which the domain name was registered that it is of little or no probative value in assessing Respondent’s reasons for registering the domain name ten years earlier.The Panel therefore finds that Complainant has failed to meet its burden of proving that Respondent registered the domain name in bad faith.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

David E. Sorkin, M. Kelly Tillery, and Paul M. DeCicco, Panelists
Dated: December 1, 2006

National Arbitration Forum