Recent Case Notes & Commentary

Don’t Step on the Trade Mark Owner’s Blue Suede Shoes

GRACELAND WEBSITE NOT ENTIRELY NON-COMMERCIAL


When a Complainant in a domain name case contends that a Respondent has a Burning Love for creating and profiting from a likelihood of confusion with its trade marks, the Respondent must convincingly allay Suspicious Minds or be forced to Surrender the domain name. If the seamlessly integrated song titles in the previous sentence didn’t give the game away, this case note is in fact Elvis-themed and discusses the recently decided Elvis Presley Enterprises, Inc. v. Simon Higgs, Claim Number: FA1401001540234, which concerned the domain name <graceland.com> and GRACELAND trade marks. [1]


The main point to take away from this decision is that if you are going to argue that you did not intend to create or profit from a likelihood of confusion between the domain name and a Complainant’s trade marks, you need to make sure the evidence backs this up.


Facts:

The domain name was registered in 1994. Since then it has been connected to the Respondent’s website that displays bible quotes relating to ‘grace’, text such as ‘Elvis Graceland’, as well as advertisements for travel, tours and merchandise relating to tours of Graceland in Memphis where Elvis Presley used to live that are offered by third-party enterprises in competition with the Complainant.


The Complainant is the owner of registered trade marks in the USA for GRACELAND for a range of goods and services, operates a worldwide licensing program, and owns over 30 domain names containing GRACELAND.


Contentions:

The Complainant contended that the Domain Name is identical to its trade mark, that the Respondent is the owner of over 40 domain names which bolsters the argument that he has never used the domain name for a legitimate purpose, that the Respondent is not commonly known by the domain name and has not acquired any trade mark rights in it, that the domain name was registered for the purpose of selling it to the Complainant or alternatively to prevent the Complainant from reflecting its trademarks in a corresponding domain name, and lastly, that the Respondent created and is benefiting from the likelihood of confusion between the Complainant’s trade marks and the domain name in a manner that constitutes bad faith.


The Respondent contended that the domain name is identical to the Complainant’s mark as well as the registration owned by other third parties, that the name was used generically in the context of a non-commercial Christian biblical site signifying ‘a state of God’s grace’, that the name is associated with many other businesses and entities that are not owned by the Complainant, that he does in fact have rights to the domain name, that he doesn’t profit from the site and has made an effort to block any Google Ad keywords associated with the Complainant’s goods and services, that he has never offered the domain name for sale for any price to anyone, that he didn’t register the domain name to prevent the Complainant registering it or to create a likelihood of confusion with the Complainant’s trade mark. Lastly, the Responded asserted the defences of laches and/or estoppel, in light of the fact that the Complainant waited nearly twenty years to bring an action.


Identical or substantially similar:

The domain name was unsurprisingly found to be identical to the Complainant’s trade mark.


Rights or legitimate use:

The Panel found that the Respondent did not have rights or a legitimate interest in the domain name because the website’s references to “Elvis Graceland” and advertisements of services related to Elvis Presley and the property Graceland suggested that the Respondent has used the site to promote goods and services in competition with those of the Complainant. The advertisements were found to be ‘very prominent’ and a ‘much more dynamic and vital part of the site than the biblical quotes which also appear on the site,’ contradicting the Respondent’s claim that ‘his site is purely non-commercial and that the name was innocently adopted’. The fact that the website did not make clear that it has no commercial connection with the Complainant was found by the Panel to be confusing and therefore not a bona fide offering of goods and services. (See Am. Int’l Group Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007)).


Bad faith:

Firstly, the Panel found that there is no actual evidence to suggest that the Respondent has engaged in registering domain names containing the registered trade marks of others to sell for profit, or that he was trying to sell the domain name to the Complainant.


Next, the Panel found that despite the Respondent’s claims that he had tried to block them, the Elvis and Graceland-related advertisements are in fact a significant purpose of the site and are confusing because visitors to the site might reasonably believe they were connected to or approved by the Complainant. As such, the Panel found that that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website. (See See Asbury Auto Group Inc. v. Tex. Int’l Prop Assocs, FA 958542 (Nat. Arb Forum May 29, 2007)).


Finally, the Panel found on the balance of probabilities that the Respondent registered the Domain Name to prevent the Complainant from reflecting its trademarks in a corresponding domain name, thereby disrupting Complainant’s business.


For these reasons, the Panel concluded that the Complainant had made out its case that the Domain Name was registered and used in bad faith.


Laches:

While the Panel was split on whether the doctrine of laches may apply to give a defence in domain name dispute resolution cases, it wouldn’t have applied in any case on these facts.


Decision:

Having established all three elements required under the ICANN Policy, the Panel ordered that the <graceland.com> domain name be transferred from Respondent to Complainant.




[1] The editor was a member of the Panel.