In the recent decision of The Estate of Jim Morrison a/k/a Lou and Pearl Courson v. Rick Sentieri, Communication Services Group (WIPO D2009-0334, May 29, 2009), a single member Panel was faced with a dispute over the domain www.jimmorrison.com . Jim Morrison was the hard partying, sultry and sexy front man for the 1960s band The Doors. Information about Jim Morrison and The Doors can be found at www.thedoors.com. Complainant represents Morrison’s estate and provided additional information about his success and credits, which included being a playwright and poet.
The Panel reviewed the three element ICANN UDRP Policy where Complainant must prove (i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.
In addressing the first element, whether the domain was identical or confusingly similar to Complainant’s mark, the Panel first dealt with whether Complainant had a protectable mark. The Panel noted that Complainant did not have a federal trademark registration or application. However, after reviewing the evidence presented by Complaint initially and through an Additional Submission, the Panel found Complainant had established common law rights in the mark Jim Morrison. The Panel then quickly found that the domain was identical or confusingly similar to Complainant’s mark, since it wholly incorporated all portions of the mark.
Moving to the second prong, whether Respondent had any rights or legitimate interests in the disputed domain, the Panel noted that once Complainant makes a prima facie case, the burden shifts to Respondent. The Panel referenced Respondent’s reply as follows:
Respondent refers to himself as “Rick Sentieri aka Jim Morrison.” He registered the Domain Name on March 1, 1997, twelve years ago. Respondent uses the Domain Name to operate a web site which sells posters of entertainers (including Jim Morrison and The Doors), and it advertises and sells other merchandise and services for third parties through links. Respondent’s (sole) reply of April 6, 2009 was an email having as the Subject Line: “please leave me alone you are making me sick and very unhappy.” The e-mail included a poem Respondent allegedly wrote and the following message:
“I have received your letter that has print outs of my web site, <jimmorrison.com>. Your organization has violated my webpage disclaimer. You must have written permission to produce copies of my web page. Please read disclaimer on the bottom of the <jimmorrison.com> (JIMMORRISON.COM 1996-2009 trademark of Rick Sentieri aka JIM MORRISON) Rick Sentieri aka Jim Morrison is a published author and singer who LIVES in Kenosha Wisconsin. His Jim Morrison.com videos have been downloaded THIS YEAR, over two hundred thousands times. Rick Sentieri aka Jim Morrison’s poetry is the best ever written. Potentially a Nobel Peace Prize winner. His poetry can be downloaded (some with his OWN voce reading his poems) here: http://jimmorrison.com/love.htm.”
Based upon Respondent’s failure to address Complainant’s allegations and evidence, the Panel took Complainant’s facts as proven and found that the second prong was satisfied. The Panel moved to the last element, whether the disputed domain was registered and used in bad faith. The Panel noted that Respondent was using the domain name to sell products and service of third parties with products bearing the JIM MORRISON mark that compete with Complainant’s products.
Ultimately, the Panel found Complainant had satisfied all three elements and granted the TRANSFER.
