30th Jan 2012
NATIONAL ARBITRATION FORUM
Estate of James Brown v. Owned by LAC Music – Jack Bart c/o Gregory J. Chamberlain
Claim Number: FA1112001418188
Complainant is Estate of James Brown (“Complainant”), represented by William Y. Klett of Nexsen Pruet, LLC, South Carolina, USA. Respondent isOwned by LAC Music – Jack Bart c/o Gregory J. Chamberlain (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jamesbrown.com>, registered with Enom, Inc.
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.
Tyrus R. Atkinson, Jr. and Diane Cabell, Panelists and David S. Safran, Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2011; the National Arbitration Forum received payment on December 9, 2011.
On December 12, 2011, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <jamesbrown.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on December 13, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 10, 2012.
Complainant submitted an Additional Submission that was received and determined to be timely on January 17, 2012.
On January 20, 2012, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr. and Diane Cabell, as Panelists and David S. Safran, as Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant argues that the domain in dispute is identical to a trademark in which holds common law and federal rights. Complainant also asserts that Respondent has not rights or legitimate interests in the domain name <jamesbrown.com>, never having been known as James Brown and never having conducted business under that name. The Complainant also contends that the registration of the domain was in bad faith because it was in violation of the registration agreement which precludes registration in contravention of the rights of third parties.
Respondent contends that laches bars Complainant prevailing in this dispute. Furthermore, Respondent has indicated that the registration was obtained with the consent of James Brown and was used during his lifetime for legitimate business purposes.
C. Additional Submissions
Complainant argues various legal points pursuant to agency law as they may apply to Respondent’s status as the agent for Mr. James Brown and estate law as it applies to the evidence presented by Respondent. Complainant also contends that the laches doctrine has no applicability to domain name disputes.
Preliminary Issue: Non-UDRP Legal Arguments
Complainant has argued various legal points pursuant to agency law as they may apply to Respondent’s status as the agent for Mr. James Brown and estate law as it applies to the evidence presented by Respondent. The Panel holds that the instant dispute is governed by the UDRP and not any agency, estate or evidence laws, and as such, the Panel has disregarded these arguments. While Policy ¶ 4(k) allows the parties to litigate these points in court, the Panel finds that, even though these types of arguments may be suitable in a court litigation context, they are not applicable to this arbitration proceeding which is limited to the scope of the UDRP and its elements. See Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
The unrebutted evidence indicates that the domain was registered and used during the life of James Brown with at least his tacit consent.
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.”
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
That the domain is identical is not challenged by Respondent and has been taken as admitted.
Rights or Legitimate Interests
Given the Panel’s holding under Paragraph 4(a)(iii) of the Policy below, the Panel finds it unnecessary to rule on this factor.
Registration and Use in Bad Faith
Complainant has failed to provide any evidence which would rebut the evidence provided by Respondent to the effect that the domain <jamesbrown.com>was registered and used during the life of James Brown with at least his tacit consent. In fact, even the declaration evidence provided by Complainant indicates that Mr. Brown may have consented to Respondent’s actions in registering the domain in dispute. See Complainant’s Exhibit E ¶ 7 (“If there has been any license or permission . . . .”). Therefore, the Panel finds that Complainant has failed to meet the burden of proof necessary to establish bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <jamesbrown.com> domain name REMAIN WITH Respondent.
Tyrus R. Atkinson, Jr. and Diane Cabell, Panelists and David S. Safran, Chair
By David S. Safran, Chair
Dated: January 30, 2012