Triumph International Inc. v TeamMichaelJackson

NATIONAL ARBITRATION FORUM DECISION Triumph International Inc. v. TAAJ ------

PARTIES Complainant is Triumph International, Inc (“Complainant”), represented by !oel R #$A. %espondent is TAA! Fel"man o #reen$er% Trauri%, LLP, !eor"ia, #$A. TAA! &&&&&&&& &&&& &&&& (“%espondent”), Caliornia, #$A. RE#ISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is 'teammichael(ac)*oncom+ , re"istered &ith #oDa""com, Inc

PANEL The undersi"ned certiies that he or she has acted independently and impartially and to the best o his or her 'no&led"e has no 'no&n conlict in servin" as anelist in this proceedin". aul . *eCicco as anelist.

PROCEDURAL -ISTOR. Complainant submitted a Complaint to the +ational Arbitration orum electronically on April , /001 /001 the +ational +ational Arbitratio Arbitration n orum received received payment on April , /00. /00. 2n April 3, /00, !o*addy.com, Inc. conirmed by e-mail to the +ational Arbitration orum that the 'teammichael(ac)*oncom+ domain name is re"istered &ith !o*addy.com, Inc. and that %espondent is the current re"istrant o the name. !o*addy.com, Inc. has veriied that %espondent is bound by the !o*addy.com, Inc. re"istration a"reement and has thereby a"reed to resolve domain disputes brou"ht by third parties in accordance &ith ICA++4s #niorm *omain +ame *ispute %esolution olicy (the “olicy”). 2n April 5, /00, the orum served the Complaint and all Anne6es, includin" a 7ritten +otice o the Complaint, settin" a deadline o April 5, /00 by &hich %espondent could ile a %esponse to the Complaint, via e-mail to all entities and persons listed on %espondent4s re"istration as technical, administrative, and billin" contacts, and to postmaster8teammichael9ac'son.com. postmaster8teammi chael9ac'son.com. Also on April 5, /00, /00, the 7ritten 7ritten +otice o the Complaint, notiyin" %espondent o the email addresses served and the deadline or a %esponse &as transmitted to %espondent via post and a6, to all entities and persons listed on %espondent4s re"istration as technical, administrative and billin" contacts.

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A timely %esponse %esponse &as &as received received and determine determined d to be complete complete on April :, :, /00. /00. ;o&ever, the %esponse &as received &ith a ile si, /00. 2n ay >, /00 pursuant to Complainant?s re@uest to have the dispute decided by a sin"le-member anel, the +ational Arbitration orum appointed aul . *eCicco as anelist. 2n ay :, /00 the +ational Arbitration orum received %espondent4s timely Additional $ubmission &hich it transmitted it to the anel on ay 0/, /00.

RELIEF SOU#-T Complainant re@uests that the domain name be transerred rom %espondent to Complainant.

PARTIES/ CONTENTIONS A. Complainant Complainant Complainant contends as ollo&s Complainant Triumph o&ns the IC;AB JACD$2+ mar'. Triumph has used the IC;AB JACD$2+ mar' since at least 0:53 in connection &ith various "oods and services, includin", sound recordin"s and entertainment services. In addition, Triumph has used T;B 2ICIA 2+I+B TBA 2 2  T;B IC;AB JACD$2+ B$TA B$TATB as a service mar' or Internet an sites since /0/. 7hen ichael Jac'son died on June 3, //:, o&nership o Triumph transerred to ichael Jac'son4s Bstate. or the purpose o disseminatin" oicial inormation on behal o ichael Jac'son4s Bstate, Triumph uses the phrase “The 2icial 2nline Team o the ichael Jac'son Bstate,” throu"h an authori




"enuine. Thereore, the %espondent must not only be usin" the Inrin"in" *omain +ame, %espondent must be doin" so in "ood aith and &ithout raud or deceit1 other&ise %espondent4s use is not bona fide . %espondent is usin" the Inrin"in" *omain +ame to sell vie&in" access to court transcripts. Fecause %espondent is collectin" money in e6chan"e or providin" a service, this is a commercial transaction. And because because %esponde %espondent nt is usin" usin" Triumph4s Triumph4s re"istered re"istered trademar' trademar' or this this commercial commercial transaction, the commercial use is not a bona fide oerin" o "oods or services. $econd, %espondent is not commonly 'no&n by the name “ichael Jac'son.” The 7;2I$ inormation sho&s that %espondent4s name is Taa9 --------. As a result, %espondent does not have a ri"ht to use the name “ichael Jac'son” by virtue o his or her name. In addition, Triumph has not "ranted %espondent permission to use the domain name. %espondent is not part o the “ichael Jac'son team.” Third, %espondent is not usin" the at-issue domain name or a noncommercial use. %ather, as stated above, %espondent is currently usin" the domain name, inter alia , to re@uest that &ebsite visitors send money to %espondent throu"h aypal. This is a commercial use, and the re@uest or money is prominent and pervasive throu"hout the &ebsite. The act that %espondent has used the term “donations” does not chan"e the commercial nature o the transaction. %espondent is not a charity. Thus, %espondent has no ri"hts or le"itimate interests in the domain name and is thereore not entitled to retain o&nership o the at-issue domain name in li"ht o Triumph4s &ell-established trademar' ri"hts in the IC;AB JACD$2+ mar'. %espondent re"istered and is usin" the domain name in bad aith in violation o #*% E (a)(iii). #nder #*% E (b)(iii), i by usin" the at-issue domain name, %espondent intentionally attempts to attract, or commercial "ain, Internet users to his or her &ebsite by alsely su""estin" a connection to Triumph or ichael Jac'son, this intent is evidence o bad aith. The “ichael Jac'son” portion o the 'teammichael(ac)*oncom+ domain name reers to the iconic musician, &ho is the sub9ect o the ederal trademar' applications and re"istration o&ned by Triumph. Thereore, it is clear that &hen %espondent re"istered the domain name, %espondent &as a&are o Triumph4s trademar' ri"hts in the IC;AB JACD$2+ mar'. And %espondent continues to use the domain name, &hich contains the entire IC;AB JACD$2+ mar', to attract Internet users to his or her &eb site and to prominently promote his or her economic interest o collectin" “donations” in e6chan"e or postin" court transcripts. Triumph reco"ni




and videos o ichael Jac'son, this conduct is prohibited by #*% E (b)(iv) and is evidence o %espondent4s bad-aith use and re"istration o the domain name. %espondent4s use o the at-issue domain name su""ests to consumers that the at-issue domain name and &eb site are ailiated &ith Triumph. They are not. Triumph is in no &ay ailiated &ith %espondent and does not approve o his or her operation o the Inrin"in" *omain +ame. Triumph has established a prima facie case that %espondent re"istered and is usin" the Inrin"in" *omain +ame in bad aith. Fecause Triumph has established ri"hts in the IC;AB JACD$2+ mar' and %espondent does not, the #*% dictates that the atissue domain name be transerred rom %espondent to Triumph. F. %espondent %espondent contends as ollo&s ;eal The 7orld oundation (;T7) 9ointly o&ns the IC;AB JACD$2+ mar'. They have not iled a complaint a"ainst %espondent. ;T7 o&ns 05/ service mar's. ;T7 is o&ned by a separate entity other than the complainant. %espondent is not usin" 'teammichael(ac)*oncom+ in connection &ith ichael Jac'son4s products or services1 not sellin" or advertisin" usic C*?s Gideos etc. %espondent is only providin" local up to-date ne&s, reportin" on the three ichael Jac'son related trials. The domain name did not inrin"e on any service mar's. In a case cited by the Complainant, respondent redirected its site to the Complainant site and sold the same items, %espondent has not done this, and this case is completely dierent rom the case cited. This case is dierent than Miller Brewing Co. v. Miller Family , A 0/0HH (+at. Arb. orum Apr. 03,//). In that case the e6act name &as used1 %espondent has not used the e6act name. %espondent &anted to ac@uire Teamichael but it &as not available, the ne6t best option &as TeamichaelJac'son. Gardline Surveys Ltd. v. Domain Fin. Ltd , A 03>33 (+at. Arb. orum ay H, //>) is dissimilar since in that case the respondent had the e6act same name. %espondent4s &ebsite is used to inorm people about certain court cases relevant to ichael Jac'son. %espondent &as (0) usin" the domain name in connection &ith a bona fide activity1 () has been commonly 'no&n by the domain name1 and (>) ma'es a le"itimate noncommercial or air use o the domain name, &ithout intent or commercial "ain. Teamichael is %espondent4s user name on aceboo' and has had 3/// riends. %espondent4s name on T&itter is TeamichaelHHH. TeamichaelHHH. %espondent is not usin" this domain name or commercial use. 7hen this site &as ori"inally published, the domain re"istered there had no intentions o as'in" or contributions. Ater puttin" up a donations button, %espondent had a chan"e o heart re"ardin" donations and stopped acceptin" them. There &as and are no “$ellin"” services rom this site. %espondent is not commonly 'no&n as ichael Jac'son but is reco"ni




Complainant is complainin" about use o team ichael Jac'son. Complainant?s representatives are in direct contact &ith many doin" the same. They have +2T iled complaint a"ainst them. Complainant Triumph abandoned many o ichael Trademar's in 0::H ri"ht up until Au"ust //:. $ome o them them are still still dead. dead. C. Additional $ubmissions Complainant contends in its Additional $ubmission as ollo&s %espondent has not reuted Triumph4s evidence o (0) Triumph4s ri"hts in the IC;AB JACD$2+ mar'1 () the similarity o IC;AB JACD$2+ and the 'teammichael(ac)*oncom+ domain name1 (>) %espondent4s lac' o ri"hts in the IC;AB JACD$2+ mar'1 and () %espondent4s bad-aith intent. %espondent4s alle"ation that “;eal the 7orld oundation 9ointly o&ns the IC;AB JACD$2+ mar'” is not only irrelevant, it is completely alse. The alle"ation is not relevant because even i IC;AB JACD$2+ &as a trademar' o other entities, this act &ould not prevent Triumph rom invo'in" its ri"hts in the mar'. The alle"ation is alse because ;eal the 7orld oundation does not o&n any ri"hts in the IC;AB JACD$2+ mar'. It is the combination o “ichael” and “Jac'son” that Triumph ob9ects to in this proceedin", not the isolated use o “ichael” or “J.” T&itter user names are not sub9ect to the olicy. inally, evidence o third-party uses o a mar' does not deeat Complainant4s ri"hts in its re"istered mar'. #nder the olicy, the addition o “team” to a ederally-re"istered trademar' does not ne"ate conusin" similarity. This is because the &ord “team” is either "eneric or descriptive, not source identiyin". Thereore, usin" “Team ichael Jac'son” is tantamount to usin" “ichael Jac'son” in the eyes o consumers. %espondent has ailed to meet her burden o sho&in" that she has le"itimate ri"hts or interests in the 'teammichael(ac)*oncom+ domain name. Althou"h %espondent has presented evidence that she is 'no&n as “TeamichaelHHH” on the social net&or'in" site T&itter.com and “Teamichael” on the social net&or'in" site aceboo'.com, “Team ichael” and “TeamichaelHHH” are substantially dierent than “Team ichael Jac'son.” %espondent admits that she is not commonly 'no&n as “ichael Jac'son.” %espondent ar"ues that her site is not commercial because (0) she did not ori"inally intend to as' or money1 () she reunded one o t&o donations she received1 and (>) ater receivin" the Complaint, she removed re@uests or donations rom her &ebsite. Complainant too' airmative steps to solicit payments rom &ebsite users. urthermore, althou"h %espondent alle"es that she “or"otK to remove the donations button &hich she hasK no& removed,” pleas or “donations” remain on her &ebsite. Fecause the site is commercial in nature and because %espondent4s commercial use o the IC;AB JACD$2+ mar' is inrin"in" rather than bona fide, %espondent cannot avail hersel o olicy E (c)(i) or (c)(iii).





site (o ichael Jac'son). The presence o non-commercial speech does not "ive %espondent carte blanche to use a domain name containin" Triumph4s IC;AB JACD$2+ mar'. Triumph does not dispute %espondent4s ri"ht to operate a &ebsite that provides the type o inormation that %espondent is providin" on 'teammichael(ac)*oncom+, provided that %espondent does not other&ise inrin"e Triumph4s copyri"ht or trademar' ri"hts or en"a"e in libel or deamation. %ather, Triumph disputes %espondent4s ri"ht to use 'teammichael(ac)*oncom+, a domain name that is conusin"ly similar to the IC;AB JACD$2+ mar', to operate such a &ebsite. The ri"ht to e6press one4s vie&s is not the same as the ri"ht to use another4s name to identiy one4s sel as the source o the vie&s. 2ne may be perectly ree to e6press his or her vie&s about the @uality or characteristics o the reportin" o the +e& Lor' Times or Time a"a






%espondent has re"istered 'teammichael(ac)*oncom+ in bad aith i she re"istered the domain name primarily or the purpose o disruptin" the business o a competitor. Triumph and %espondent are both in the business o providin" inormation about the &orld-amous entertainer ichael Jac'son. Triumph is the oicial source o this inormation because Triumph is the o&ner o the ederally-re"istered IC;AB JACD$2+ mar'. Fut %espondent re"istered and uses the 'teammichael(ac)*oncom+ domain name in the hopes that Internet users &ill use 'teammichael(ac)*oncom+ as their source o inormation about ichael Jac'son. As a result, %espondent4s actions are in bad aith under the olicy. 7hile %espondent states it is not see'in" commercial "ain, %espondent4s actions must lo"ically be assumed to beneit %espondent. Althou"h persons loo'in" or Complainant4s commercial &ebsite &ho reach %espondent4s &ebsite &ill li'ely reali




There ha* $een no con3incin% *ho1in% that Re*pon"ent ha" or ha* an intent to "irect internet tra00ic a1a 0rom Complainant, "i*rupt complainant4* $u*ine**, or other1i*e cau*e harm to Complainant4* tra"emar)

DISCUSSION ara"raph 03(a) o the %ules instructs this anel to decide a complaint on the basis o the statements and documents submitted in accordance &ith the olicy, these %ules and any rules and principles o la& that it deems applicable. ara"raph (a) o the olicy re@uires that Complainant must prove each o the ollo&in" three elements to obtain an order that a domain name should be cancelled or transerred (0) the domain name re"istered by %espondent is identical or conusin"ly similar to a trademar' or service mar' in &hich Complainant has ri"hts1 and () %espondent has no ri"hts or le"itimate interests in respect o the domain name1 and (>) the domain name has been re"istered and is bein" used in bad aith.

I"entical an"5or Con0u*in%l Similar The at-issue domain name is conusin"ly similar to a trademar' in &hich Complainant has ri"hts. Complainant provides proo o numerous trademar' re"istrations &ith the #nited $tates atent and Trademar' 2ice (“#$T2”) or its IC;AB JACD$2+ mar' ( e.g., %e". +o. 0,:/5,/: issued Au"ust 0, 0::3). Thereby, Complainant demonstrates that it has ri"hts in a mar' pursuant to olicy E(a)(i). See Miller Brewing Co. v. Miller Family , A 0/0HH (+at. Arb. orum Apr. 03, //) (indin" that the complainant had established ri"hts to the IB% TIB mar' throu"h its ederal trademar' re"istrations)1 see also Trip etwor! "nc. v. #lviera , A :0:> (+at. Arb. orum ar. H, //H) (indin" that the complainant4s ederal trademar' re"istrations or the C;BATICDBT$ and C;BATICDBT$.C2 mar's &ere ade@uate to establish its ri"hts in the mar' pursuant to olicy E (a)(i)). The at-issue domain name is conusin"ly similar to Complainant4s mar' because the





Complainant must irst ma'e a prima facie case that %espondent lac's ri"hts and le"itimate interests in the disputed domain name under olicy E (a)(ii) and then the burden, in eect, shits to %espondent to sho& that she does have ri"hts or le"itimate interests. See anna1Barbera 2rods.( 2ro ds.( "nc. v. 3ntm4t 3ntm4t Commentaries , A H055 (+at. Arb. orum orum Au". 05, 05, //P). //P). Complainant Complainant contends contends that that %espondent %espondent is not commonly commonly 'no&n by the 'teammichael(ac)*on+ domain name. 7;2I$ inormation identiies %espondent as an an entity other than TBA IC;AB JACD$2+. urthermore, %espondent is not authori:H/ (+at. Arb. orum eb. 0/, //>) (statin" “nothin" in %espondent4s 7;2I$ inormation implies that %espondent is Qcommonly 'no&n by4 the disputed domain name” as one actor in determinin" that olicy E (c)(ii) does not apply)1 see also Braun Corp. v. Loney , A P::P3 (+at. Arb. orum July H, //P) (concludin" that the respondent &as not commonly 'no&n by the disputed domain names &here the 7;2I$ inormation, as &ell as all other inormation in the record, "ave no indication that the respondent &as commonly 'no&n by the disputed domain names, and the complainant had not authori




donations. %espondent states that she is not ma'in" commercial use o the 'teammichael(ac)*oncom+ domain name. %eceivin" donations is not commonly understood to be a touchstone or commercial activity. Indeed, i such &ere the case then every human endeavor &here one voluntary contributes (or donates) to the direct beneit o another &ould be considered commercial. #nder Complainant4s broadly encompassin" deinition o commercial the implication arises that i any beneit is received, the beneited activity related to the beneiciary is commercial. #nder this vie&, vie&, to ma'e an e6treme e6ample or illustration, an accident victim4s re@uest or help rom a passerby renders the accident a commercial activity. $uch a deinition o “commercial” &ould, as a practical matter, render the term meanin"less. The anel thus applies the more common deinition o “commercial” meanin" as havin" to do &ith commerce, &here commerce is the e6chan"e o "oods, production or property o any 'ind1 the buyin" sellin" or e6chan"e o articles, to the instant proceedin". See Blac!6s Law Dictionary (3th), pp. , 3. %eceivin" or solicitin" donations, &ithout more, is not consistent &ith this deinition. The record sho&s that the chie emphasis o %espondent4s &ebsite is not to ma'e a proit or other&ise to en"a"e in commerce but rather to ma'e available ree o char"e &hat %espondent believes to be interestin" documents re"ardin" ichael Jac'son, in particularly documents concernin" several ichael Jac'son related liti"ations. %espondent4s havin" once solicited donations does not ma'e %espondent4s use o the domain name commercial. %espondent4s motivation appears to be out o her love or the pop icon rather than or any pecuniary "ain. There i* nothin% el*e in the recor" that mi%ht lea" the Panel to conclu"e that the at&i**ue 1e$*ite i* a commercial en"ea3or rather than *impl the mani0e*tation o0 a 0an reportin% 1hat *he 0eel* i* rele3ant an" ne1*1orth re%ar"in% her i"ol Complainant asserts in its Additional $ubmission that even i the at-issue &ebsite is non-commercial %espondent, in re"isterin" and usin" the domain name, intended to misleadin"ly divert consumers and to tarnish Complainant4s trademar'. The anel disa"rees. %espondent believably e6plains her motivation or re"isterin" the domain name and creatin" her &ebsite. And &hile some 'teammichael(ac)*oncom+ &ebsite visitors mi"ht be initially conused as to the &ebsite4s source or sponsorship, there has





the act o the domain name4s re"istration and similarity o the mar' &ithout more, in li"ht o the underlyin" descriptive nature o the mar' and the domain name &e &ould be speculatin" in doin" so. The anel thus inds or the purposes o olicy E(c)(iii) that there is le"itimate noncommercial use o the 'teammichael(ac)*oncom+ domain name and that there &as and is no intent by %espondent to divert Complainant4s customers or &eb traic, or to tarnish its mar'. $ince the speciic conditions set out under olicy E(c)(iii) are sho&n to be present, %espondent demonstrates that she has le"itimate ri"hts and interest in the domain name pursuant to olicy E(c)(iii). Ba7a Marine Corp. v. &*eeler Tec*s.( Tec*s.( "nc ., A :P:3 (+at. Arb. orum ay 0H, //0) (indin" that the respondent has ri"hts and le"itimate interests in the domain name &here the respondent made a non-commercial use o the Nba9aboats.comO domain name.).

Re%i*tration an" U*e in Ba" Faith ;avin" determined that %espondent has ri"hts in the 'teammichael(ac)*oncom+ domain name the issue o &hether or not the domain name &as re"istered and used in bad aith is moot. Complainant correctly points out that the olicy4s “bad-aith element is ine6tricably lin'ed &ith %espondent4s lac' o ri"hts to use 'teammichael(ac)*oncom+ as a domain name or a an site or criticism site.” Thereore havin" ound that %espondent has ri"hts and interest to use the domain name in the manner that she has used it to-date, the anel need not independently discuss the issue o bad aith re"istration and use. See Loc!*eed Martin Corp. v. S!un!wor8 Custom Cycle , *///5 (7I2 Jan. 05, //3) (indin" that the issue o bad aith re"istration and use &as moot once the panel ound the respondent had ri"hts or le"itimate interests in the disputed domain name)1 see also 9anguard Group "nc. v. "nvestors Fast Trac!( A 5P>3H (+at. Arb. orum Jan. 05, //H) (“Fecause %espondent has ri"hts and le"itimate interests in the disputed domain name, his re"istration is not in bad aith.”).

DECISION ;avin" ailed to establish all three elements re@uired under the ICA++ olicy, the anel concludes that relie shall be DENIED.

Triumph International Inc. v TeamMichaelJackson

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