In a recent domain dispute decision of Pearl Jam, LLC. f/k/a Pearl Jam, A General Partnership v. J.S.E. Janssen a/k/a Stijn Enzo Holding BV (Nat. Arb. Forum 1262659, July 1, 2009) a single member Panel was faced with a dispute over the domain www.tenclub.org. Pearl Jam is the popular and well known rock band who has been cranking out hits since the early 90’s. Pearl Jam established an authorized fan club known by the mark TEN CLUB. The band maintains a web site at www.pearljam.com and www.tenclub.net. Pearl Jam’s debut album was entitled TEN and had amazing success. Respondent replied to the Complaint stating that the domain was going to be used as follows:
Tenclub is a specific project. Respondent is in the process of setting up a church/club in which all sorts of activities will take place. The essence of the project is that its members will dedicate ten per cent of their time and money to each other. Thus, learning that sharing will bring a better human society. That is where the name Ten club comes from. There is absolutely no financial perspective, except being able to pay for the costs of the project. Currently, Respondent is looking at buildings, the structure and the communication, hence the website.
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.
The Panel addressed some procedural issues first, noting that requests were made to Respondent to provide certain documents and translations of certain documents, which the Respondent did not provide. Additionally, Complainant points out, although the Panel does not address, the fact that this domain was once the subject of a prior domain dispute. Specifically, Pearl Jam had already won a dispute over this domain in the decision of Pearl Jam, A General Partnership v. Jongcheol Lee (Nat. Arb. Forum 406483, March 17, 2005). Pearl Jam explained that the registrar did not cooperate or agree to transfer the domain. It is unclear why the transfer was not enforced.
In addressing the first element, the Panel quickly found the domain was identical or confusingly similar to Pearl Jam’s multiple U.S. and foreign trademark registrations for TEN CLUB. Most of the Panel’s decision centered around the second element. The Panel found Pearl Jam established a prima facie case, shifting the burden to Respondent. In response to Respondent’s assertions about the proposed use of the domain the Panel explained:
The Panel believes that none of these unsupported contentions of Respondent is evidence that before any notice to Respondent of the dispute, he used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services according to Policy ¶ 4(c)(i). For instance, Respondent fails to show that he has posted any contents related to the purported uses of the domain name (“church/club”) on the website at the disputed domain name. Nor does he submit any affidavit or documents evidencing any preparations to use the domain name.
The Panel went further to break down Respondent’s evidence by stating:
The Panel cannot overlook the fact that in Respondent’s attachment to the email with the Response, he added the “®” symbol to the TenClub term, thus attempting to create the false impression that he owned a registered trademark. Only after this Panel requested Respondent to submit a full translation of the attachment in Dutch, it appeared that no such trademark registration had ever been granted. As a result from Respondent’s failure to comply with the request from the Panel, there is no evidence that Respondent has even applied for a trademark registration before the Benelux trademark office. Respondent’s failure to comply with the Panel’s requests of full translations of the attachments in Dutch allows the Panel to infer that such translations would not have been favorable to Respondent, pursuant to Rules ¶ 14(b).
As a result, the Panel found that Respondent failed to establish any rights or legitimate interests. The Panel also discussed the third element, bad faith. The Panel found that Respondent was extracting a financial benefit from click-through fees generated as a result of the parked web site. Additionally, the Panel noted that although Respondent claimed to never have heard about the TEN CLUB associated with Pearl Jam, the postings on the disputed domain led the Panel to infer otherwise.
Ultimately, the Panel found Pearl Jam had established all three elements and ordered to TRANSFER the domain.
DefendMyDomain Commentary:
It is unclear why or how Pearl Jam was unable to get a successful transfer after the 2005 domain decision. Regardless, it is more puzzling that the Panel made no affirmative discussion about the prior decision and the effect it may have had on the current decision.
