WIPO-PANEL: peter-frampton.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Peter Frampton vs. Frampton
Enterprises, Inc.

Case No. D2002-0141

1. The Parties

The Complainant is Peter Frampton, a resident of the State
of Ohio, United States of America.

The Respondent is Frampton Enterprises at 13217 114th
Street, Largo, Florida 33778-1928, United States of America.

2. The Domain Name and Registrar

The Contested Domain Name is .

The Registrar is Network Solutions, Inc. (NSI), located at
505 Huntmar Drive, Herndon, Virginia 20170, United States of
America.

3. Procedural History

The Complaint was brought pursuant to the Uniform Domain
Name Dispute Resolution Policy (the “Policy”), which was
adopted by
the Internet Corporation for Assigned Names and Numbers
(ICANN) on August 26, 1999 and approved on October 24, 1999
and in
accordance with the ICANN Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) as approved on
October 24, 1999 and by the World Intellectual Property
Organization Supplemental Rules for Uniform Domain Name
Dispute
Resolution Policy in effect as of December 1, 1999 (the
“Supplemental Rules”).

The Complaint was filed with the WIPO Arbitration and
Mediation Center (the “Center”) in e-mail form on March 5,
2002, and in
hard-copy form on February 12, 2002 with Annexes A-I and the
appropriate payment.

The Complainant’s attorney stated that on February 7, 2002,
he served a copy of the Complaint itself together with a
copy of the
cover sheet, on the Respondent by certified, first class
mail.

Pursuant to paragraph 4(d) of the Policy, the Complainant
selected the Center as the ICANN approved administrative
dispute
resolution service provider to administer this proceeding.
Through the Complaint, the Complainant requested a single
person panel.

After receiving the original Complaint, the Center, in
accordance with paragraph 5 of the Supplemental Rules,
determined whether
the Complaint fully complied with the formal requirements of
the Rules and the Supplemental Rules. In that regard, on
February 15, 2002, the Center requested confirmation from
the Registrar of information set forth in the Complaint
relative to the
contested domain name; specifically, contact and registrant
information for that domain name, as well as whether the
Registrar
received a copy of the Complaint from the Complainant. The
Center also requested the Registrar to specify: (a) whether
the ICANN
Policy applies to the contested domain name, (b) the current
status of that domain name, and (c) whether the registrant
has
submitted, in its registration agreement, to the
jurisdiction at the location of the principal office of the
registrar for court adjudication
of disputes concerning or arising from the use of the domain
name.

On February 21, 2002, the Registrar provided its Response to
the Center through which the Registrar provided contact
information
pertinent to the contested domain name from its WHOIS
database, confirmed that NSI is the registrar of that name,
stated that the
language of the registration agreement is English, and
stated that the domain name was then in an “active” status.
The Registrar
also informed the Center that the Respondent, through its
registration agreement, submitted to the jurisdiction at the
location of the
principal office of the registrar for court adjudication of
disputes concerning or arising from the use of the domain
name.

On March 5, 2002, the Center notified the Respondent of the
filing of the Complaint, including an indication that the
Center was
forwarding a complete copy of the Complaint, both in e-mail
and hard-copy form, to the Respondent (with the latter
method
forwarding a copy of all the annexes as well). The
Complaint, and its accompanying documents, and all
subsequent
communications associated therewith were provided in the
preferred manners and to the addresses as mandated by
paragraphs 2(a), 2(b) and 4(a) of the Rules.

Hence, the notification to the Respondent having occurred on
March 5, 2002, under paragraph 4(c) of the ICANN Policy,
this
administrative proceeding is deemed to have commenced on
that date.

Having reviewed the Complaint and succeeding correspondence
between the Center and the Registrar, in detail, the Panel
agrees
with the determination of the Center that the Complaint and
its handling met the requirements of the Rules and the
Supplemental
Rules.

The Respondent was then provided with a 20 calendar day
period, expiring on March 25, 2002 to file its Response with
the Center
and serve a copy of the Response on the Complainant.

The Respondent submitted its Response to the Center, via
e-mail, on March 11, 2002, the receipt of which the Center
acknowledged
to the parties in an e-mail letter dated March 19, 2002.

Accordingly, pursuant to the Rules and Supplemental Rules,
by e-mail letter dated March 26, 2002, the Center contacted
the
undersigned, Mr. Peter L. Michaelson, Esq., requesting his
service as a sole panelist for this dispute. Subsequently,
on that date,
Mr. Michaelson accepted and returned, by facsimile to the
Center, a fully executed Statement of Acceptance and
Declaration of
Impartiality and Independence. The Center, through an e-mail
letter dated March 27, 2002, notified the parties of the
appointment of
Mr. Michaelson as sole panelist.

Based on the deadline set forth in paragraph 15 of the
Rules, a decision was to be issued by the Panel to the
Center on or before
April 10, 2002.

On April 1, 2002, the Respondent directly sent the Panel,
via e-mail, an additional submission, which upon its receipt
the Panel so
notified and submitted a copy thereof to the Center. In an
e-mail dated April 4, 2002, the Center reminded the parties
of Paragraph 8
of the Rules which prohibits any party from engaging in any
unilateral communication with the Panel.

Due to various serious time conflicts which constitute
extraordinary circumstances, the Panel extended the due date
of its decision
one week to April 17, 2002, and, by an e-mail message dated
April 9, 2002, the Center so notified the parties.

This dispute concerns one domain name, specifically:
.

The language of this proceeding is English.

4. Factual Background

A copy of the WHOIS registration record for the contested
domain name appears in Annex A to the Complaint. As
indicated on this
record, the Respondent registered this name with NSI on July
25, 1997.

The Complainant filed an application on August 9, 2001 with
the United States Patent and Trademark Office (PTO) on
August 9,
2001 to register the mark “PETER FRAMPTON”. The Panel takes
judicial notice, from the web-accessible Trademark
Electronic
Search System (TESS) provided by the PTO, that this
application, assigned serial number 76/299,170, was
subsequently
registered, as follows:

PETER FRAMPTON (block letters)

US registration 2,534,297; registered January 29, 2002

This mark was registered for use in connection with:
“Entertainment services, namely live performances by a
musical performer;
audio recordings and production; and recording studio
services” in international class 41. This mark claims first
use and first use in
inter-state commerce dates of December 31, 1971.

For more than thirty years, the Complainant has been
internationally known as one of the most successful and
critically acclaimed
artists in popular music. Since 1967, the Complainant has
made continuous use of the mark “PETER FRAMPTON” in commerce
in
connection with numerous musical recordings, including
eighteen solo albums and at least seven albums recorded
under the names
“The Herd” and “Humble Pie,” released by major record
labels. This is indicated in a copy of “Discography”, which
appears in Annex
B to the Complaint, and was provided from the Complainant’s
web site at . The Complainant’s 1976 album
“Frampton Comes Alive” has sold over sixteen million copies
since its release, making it the world’s best-selling live
album. This is
indicated in a copy of the Complainant’s biography which
appears, in the Complaint, as Annex C. In 1976, Rolling
Stone magazine
named the Complainant “Artist of the Year.” Id. During his
career, the Complainant has recorded and collaborated with
such noted
artists as Mick Jagger, Stevie Wonder, and David Bowie. Id.

In addition to his recordings, the Complainant has toured
extensively throughout virtually the entire world including
North America,
South America, Europe, Asia and Australia to perform live
concerts and promote his musical recordings. Id. The
Complainant just
completed a North American tour that included thirty-five
dates in amphitheaters throughout the United States. Annex D
to the
Complaint contains a copy of the Complainant’s “Live Dates”
for July-August, 2001 — provided from the Complainant’s web
site and
accessible at specifically .

The Complainant has also used the mark “PETER FRAMPTON” in
connection with the promotion and sale of videos, CD-ROMs,
DVDs, concert tickets for live performances, advertising and
promotion, clothing, including, but not limited to,
t-shirts, baseball caps,
as well as musical equipment, and other merchandise.
Examples of the Complainant’s use of the mark “PETER
FRAMPTON” in
connection with various goods offered by the Complainant
appear in Annex E to the Complaint.

The Complainant has continuously and without interruption
used the mark “PETER FRAMPTON” throughout the world for more
than
thirty years.

On March 15, 2001, the Complainant, through his counsel,
sent a letter to the Respondent demanding that the
Respondent cease
and desist from using the contested domain name and
requesting that the Respondent transfer that name to the
Complainant. The
Complainant has provided a copy of this letter in Annex H to
the Complaint.

In response to the Complainant’s letter, the Respondent sent
a letter dated March 23, 2001 to the Complainant’s counsel
in which
the Respondent indicated that he would only transfer the
contested domain name to the Complainant on the condition
that the
Complainant agree to participate in a joint business
proposition with the Respondent. The Complaint contains a
copy of the
Respondent’s letter in Annex I.

Specifically, in its March 23, 2001 letter, the Respondent
suggested: “My solution is that we work together since we
are both
Framptons with Equal Rights?” (sic). The Respondent further
proposed that the Complainant transfer the Complainant’s
web site along with “reasonable”
consideration, in addition to “creating a mutual agreement
for marketing
rights/web site content approval between both of us marketed
on my new: Frampton.com/ web site.” Id. The Respondent
continued,
in its letter, by asking “why can’t we produce a Frampton
alliance by working together and creating an unlimited
business
opportunity for both of us. We do look a lot like we could
be related.” Id. The Respondent’s president, Lyle Frampton,
concluded his
letter by stating “who is better to market Peter Frampton
merchandise than another Frampton[?]”.

A hard-copy print-out of the home page of the Respondent’s
web site as of February 26, 2001 appears in Annex F to the
Complaint.
That home page contained the following text:

Frampton Enterprises, Inc.
Entertainment!/Income
Opportunities!/Shopping!
@ WWW.PETERFRAMPTON.COM
A Monster Business Development
Opportunity!
Unlimited Income Potential!
“A New Life” You Must See This!
FRAMPTON4U@AOL.COM”>
Please! Send: Your Full Name/Address/ Phone
#/ Your Resume in Text Only!
Then Call (ASAP)
Mr. Frampton
(727)584-0395
For Your Lifetime Career
Opportunity Interview!
Now Hiring for Key Corporate Regional /
Filed Manager Positions in USA.

The Respondent’s home page also contained two stylized
“PETER FRAMPTON” logos (the stylized “Peter Frampton” logo
and the
“Frampton On-Line Shopping” logo) from the Complainant’s web
site but without the Complainant’s permission.

A “Frampton On-Line Shopping” banner on the Respondent’s
home page directed users to a portion of the Complainant’s
web site on
which the Complainant offers merchandise for sale.

Shortly after Complainant’s Counsel first contacted the
Respondent, the Respondent modified its web site and removed
the logos
that resembled those on the Complainant’s web site. In that
regard, the Complainant has provided in, Annex G to the
Complaint, a
copy of the Respondent’s home page as it appeared on July
31, 2001.

The Respondent’s web site, as shown in Annex F, encouraged
Internet users to contact “Mr. Frampton” at a certain
telephone
number linked to the Respondent, or to contact the
Respondent via e-mail using the e-mail address
“Frampton4U@aol.com.”

The Respondent has placed links from the Respondent’s web
site to sites where the Complainant’s musical recordings and
videos
can be purchased, along with text that reads “Peter Frampton
Music / Videos!”. Further, the Respondent placed numerous
links on
its web site to music-related vendors, including
“Collector’s Choice Music,” and “www.Route101Guitars.com.”
Id.

The Respondent also included on its web site a figure
playing guitar, which is the instrument played by the
Complainant. In that
regard, see Annexes E and F to the Complaint.

5. Parties’ Contentions

A.Complainant

i.Similarity

The Complainant contends that the contested domain name is
identical to the Complainant’s mark “PETER FRAMPTON”.

Hence, the Complainant concludes that it has met the
confusing similarity/identicality requirement in paragraph
4(a)(i) of the Policy.

ii.Legitimacy

The Complainant contends that, for several reasons, that the
Respondent has no rights or legitimate interests in the
contested
domain name pursuant to paragraph 4(a)(ii) of the Policy.

First, the Complainant avers that the Respondent has not, at
any time, used or made any demonstrable preparations to use
the
contested domain name in connection with a bona fide
offering of goods or services. The Complainant contends that
the Respondent
has used the domain name, which includes the Complainant’s
name, to attract Internet users to the Respondent’s web site
for the
purpose of promoting goods and services unrelated to those
offered by the Complainant, hence not constituting a bona
fide offering of
goods or services (citing to Madonna Ciccone, p/k/a Madonna
v. Dan Parisi and Madonna.com WIPO Case No. D2000-0847,
October 12, 2000).

Second, the Complainant avers that the Respondent has never
been known, commonly or otherwise, by the contested domain
name
or any name corresponding to it. In that regard, the
Complainant states that the Respondent’s name is “Frampton
Enterprises, Inc”.
The Complainant also states that the Respondent’s president
claims that his full name is “Lyle Peter Frampton”, but the
Respondent has presented no evidence of the truth of that
claim. Lastly, the Complainant contends that the Respondent
or its
president has never been commonly known by the name “Peter
Frampton.”

Thus, the Complainant concludes that the Respondent has no
rights or legitimate interests in the contested domain name
pursuant
to paragraph 4(a)(ii) of the Policy.

iii.Bad Faith

The Complainant contends that, also for various reasons, the
Respondent has registered and is now using the contested
domain
name in bad faith.

First, the Complainant contends that by registering and
using , the Respondent has intentionally
attempted to
attract, for commercial gain, Internet users to the
Respondent’s web site, through which the Respondent sells
goods and services,
by creating a likelihood of confusion with the Complainant’s
mark.

Specifically, view of the information on the Respondent’s
home page indicating Respondent’s offerings in the musical
field, a field
with which the Complainant has long been associated for over
thirty years, the Complainant contends that the Respondent
registered the contested domain name for the purpose of
promoting its own business (i.e., a “Monster Business
Development
Opportunity”) and related employment opportunities at the
expense of the Complainant’s reputation.

In that regard, the Complainant contends that not only did
the Respondent register the contested domain name,
containing the
Complainant’s mark, for the purpose of promoting its own
“business development opportunities,” but also the
Respondent copied two
stylized “PETER FRAMPTON” logos from the Complainant’s web
site, and posted such logos onto Respondent’s own web site
without the Complainant’s permission, hence violating the
Complainant’s trademark and copyright interests.

Further, the Complainant contends that the Respondent, by
using the “Frampton On-Line Shopping” banner to divert users
to a
portion of the Complainant’s web site on which Complainant
offers merchandise for sale, strengthens an impression in
the mind of
Internet users that the Complainant was somehow affiliated
with or endorsed the Respondent’s activities when that is
not the case in
fact.

Additionally, the Complainant also contends that the
Respondent intentionally used ambiguous references to the
Complainant’s
“PETER FRAMPTON” mark for the purpose of confusing Internet
users into thinking that the Complainant was somehow
affiliated
with the Respondent’s web site. As examples, the Complainant
points to the Respondent’s web site encouraging Internet
users to
contact “Mr. Frampton” at a certain telephone number linked
to Respondent, or to contact Respondent via e-mail using the
e-mail
address “Frampton4U@aol.com.” The Complainant notes that
nowhere on the Respondent’s web site did the Respondent make
any
effort to advise Internet users that the Respondent’s site
was not affiliated with the Complainant. Given this, the
Complainant
contends, that to the contrary, the use of these ambiguous
references to the “PETER FRAMPTON” mark was specifically
intended
by the Respondent to create the impression that the
Complainant was somehow affiliated with the Respondent’s
site.

Further, the Complainant contends that the Respondent, in
placing links from its web site to sites where Complainant’s
musical
recordings and videos can be purchased, along with text that
reads “Peter Frampton Music / Videos!”, is thereby creating
an
appearance that the Complainant is somehow affiliated with,
or endorses, the Respondent’s activities. In that regard,
the
Complainant points to numerous links on the Respondent’s web
site to music-related vendors, including “Collector’s Choice
Music”
and , and to a figure playing
guitar appearing on the Respondent’s web site which is the
instrument
played by Complainant, and with respect to which Complainant
is most associated in the public.

Given this, the Complainant concludes that the numerous
references and links to music related sites by the
Respondent constitutes
evidence of Respondent’s bad faith. In doing so, the
Complainant cites to Helen Folasade Adu p/k/a Sade v.
Quantum Computer
Services, Inc. WIPO Case No. D2000-0794, September 26, 2000,
in which a panel found that it was “inconsistent” for a
respondent
to have associated a domain name with a music category on a
respondent’s web site and to simultaneously deny that
respondent
was representing a connection between that domain name and
the complainant, a famous singer.

Lastly, the Complainant contends that, in view of the
demands which the Respondent makes for the Complainant to
engage in a
“joint business proposition” in order to secure transfer of
the contested domain name, the Respondent intentionally
registered that
name to secure consideration beyond the Respondent’s
out-of-pocket costs directly related to that name. Thus, the
Complainant
concludes that the Respondent registered the contested
domain name in bad faith, and specifically in contravention
of paragraph
4(b)(i) of the Policy.

Therefore, the Complainant concludes that the Respondent’s
conduct in registering and using the contested domain name
constitutes bad faith registration and use under paragraph
4(a)(iii) of the Policy.

B.Respondent

i. Response

The Panel views the following, from the Response, as being
the Respondent’s salient contentions.

First, the Respondent states that its president is named
“Lyle Peter Frampton” and has used that name for all his
life (he is 61+
years of age) and that name appears on his legal documents.
Moreover, he states that mail is regularly delivered to his
residence
addressed to “Lyle Peter Frampton”. Further, he states that
he is commonly referred to as “Mr. Frampton”, “Peter
Frampton” or just
“Peter”. In addition, he states that since 1962, the
Respondent, Frampton Enterprises, Inc., has been and
continues to be a
licensed sales marketing development company.

Further, he states that: ” The web site name of
peterframpton.com/ has never been offered for sale to anyone
at anytime for any
reason & is a private domain name meant for the benefit of 3
children & grand children. It is intended to remain a
peterframpton
family domain name forever! ”

As to the merchandise offered through its web site, the
Respondent contends:

“Only the absolute finest & largest sales marketing
companies in the world & major brand name merchandise
companies have
chosen the peterframpton.com/ site & are listed in
alphabetic order as a registered affiliate business sales
associate mutual
agreement. They all have been marketing on this site for
over five years.”

The Respondent also states that, as to the Complainant: “The
Singer Peter Frampton, Personal products & sales merchandise
has
never appeared & does not appear for sale with any of the
other sales companies represented on this site during all
five years.”
Given this, the Complainant takes the position that the
contested domain name merely identifies the Respondent’s
president, as the
web site owner, and does not depend on or have anything to
do with the Complainant for any “support or gain and no
recognition
(other than similarity by birth) has no other interest in
him.”

ii. Respondent’s additional submission dated April 1, 2002

In its additional submission of April 1, 2002, the
Respondent reiterates its contention that “Lyle Peter
Frampton” is the name of its
president and has been his name since his birth now over 61
years ago.

The Respondent also questions why the Complainant is making
this claim for the contested domain name some five years
after the
Complainant registered a domain name, different from the
contested domain name, for his own web site. Further, the
Respondent
questions why the Complainant is now claiming “his name is
more important than others with a similar name & refuses to
recognize
anyone else with human legal rights on the internet even
though he was the last one on record to file?”

6. Discussions and Findings

i.Similarity

The Panel finds that confusion would likely arise as a
result of the Respondents’ current use of the contested
domain name. Further,
the Panel can conceive of no situation where confusion would
not likely arise when and if any third-party not affiliated
with the
Complainant, to which the Respondent were to transfer the
contested domain name, were to use that name with a web site
offering
goods identical and/or similar to those provided by the
Complainant under his name and mark “PETER FRAMPTON”.

Such confusion would undoubtedly cause Internet users
intending to access the Complainant’s web site, but who
reach a web site
through the contested domain name, to think that an
affiliation of some sort exists between the Complainant and
the Respondent or
its third-party transferee, when, in fact, no such
relationship would exist at all. See, e.g., MPL
Communications, Limited and MPL
Communications, Inc. v. LOVEARTH.net FA 97086, Nat. Arb.
Forum, June 4, 2001; MPL Communications, Limited et al v.
1WebAddress.com, FA 97092, Nat. Arb. Forum, June 4, 2001;
American Home Products Corp. v. Malgioglio, WIPO Case No.
D2000-1602, February 19, 2001; Surface Protection Indus.,
Inc. v. The Webposters, WIPO Case No. D2000-1613, February
5,
2001; Dollar Financial Group, Inc. v. VQM NET FA 96101, Nat.
Arb. Forum, January 25, 2001; eBAY Inc. v. G L Liadis
Computing,
Ltd., WIPO Case No. D2000-1463, January 10, 2001; Treeforms,
Inc. v. Cayne Indus. Sales Corp. FA 95856, Nat. Arb. Forum,
December 18, 2000; and The Pep Boys Manny, Moe and Jack of
California v. E-Commerce Today, Ltd., AF-0145 , eResolution,
May 3, 2000.

In view of the Complainant’s substantial, long-running and
publicized activities in the field of music and performing
arts stretching
back since 1967, and continuing to the present, the name
“Peter Frampton” have become so distinctive, acquired such
secondary
meaning and hence fame to the point where a significant
proportion of the world’s population is likely to recognize
that name as
signifying a specific, unique, and widely recognized source
of, inter alia, music and entertainment services. See, the
MPL
Communications FA 97086 and FA 97092 decisions, cited supra.

Even apart from the rights inherent in his US trademark
registration, the Complainant owns common law rights in his
name and mark
that predate, by three decades, the Respondent’s
registration in 1997, of the contested domain name: common
law rights under
which the Complainant can base its claim under the Policy.

Regarding any distinction in coverage between registered and
unregistered marks, paragraph 4(a) of the Policy simply
recites: “You
are required to submit to a mandatory administrative
proceeding in the event that a third party (a “complainant”)
asserts to the
applicable Provider, in compliance with the Rules of
Procedure, that … (i) your domain name is identical or
confusingly similar to a
trademark or service mark in which the complainant has
rights” [emphasis added]. Nowhere does the Policy contain a
restriction
that specifically limits its reach to only registered marks.
Therefore, given the apparent inclusive nature of the
Policy, whether the
Complainant has rights to an unregistered mark and hence a
protectable interest under the Policy, lies with national
trademark law
that governs the Respondent’s actions that are the subject
of the Complaint. Under American law, rights accrue in
unregistered,
so-called “common law”, marks as a result of usage, though
limited by geographic and product markets in which the mark
is used.
As evidence of this, one need turn no further than to §43 of
the Lanham Act (15 U.S.C. §1125(a)) which states, in
pertinent part:
“Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any
word, term,
name, symbol, or device, or any combination thereof … (A) is
likely to cause confusion, or to cause mistake, or to
deceive as to the
affiliation, connection, or association of such person with
another person … shall be liable in a civil action by any
person who
believes that he or she is or is likely to be damaged by
such act.” [emphasis added].

Numerous panels including this one, when faced with
unregistered marks, have upheld their protectable status in
the United States
under the Policy. In that regard, when faced with this
issue, the panel in Brooklyn Institute of Arts and Sciences
v. Fantastic Sites,
Inc. FA 95560 , Nat. Arb. Forum, November 2, 2000 held:
“ICANN dispute resolution policy is broad in scope in that
the reference to
a trademark or service mark in which the complainant has
rights means that ownership of a registered mark is not
required
unregistered or common law trademark or service mark rights
will suffice to support a domain name complaint under the
policy”.
See, e.g., America Online, Inc. v. John Deep d/b/a Buddy USA
Inc. FA 96795, Nat. Arb. Forum, May 14, 2001; Missing
Children
Minnesota v. Run Yell Tell, Ltd. FA 95825, Nat. Arb. Forum,
November 20, 2000; Mike Warner 2001 v. Mike Larson FA 95746,
Nat.
Arb. Forum November 15, 2000; CMG Worldwide Inc. v. Naughtya
Page FA 95641 Nat. Arb. Forum, November 8, 2000; Home
Properties v. SMSOnline FA 95639, Nat. Arb. Forum November
2, 2000; and Bridal Rings Company v. Yemenian FA 95608 Nat.
Arb.
Forum October 26, 2000. Furthermore, the Panel in United
States Postal Service v. Consumer Info. Org. FA 95757, Nat.
Arb.
Forum, November 27, 2000 held: “The UDRP does not
discriminate between registered and unregistered marks.” In
Exario Network
Inc. v. THE DOMAIN NAME YOU HAVE ENTERED IS FOR SALE
AF-0536, eResolution, December 11, 2000, the Panel
recognized: “It is well established that a complainant need
not own a registered trademark to invoke the policy. It is
sufficient that a
complainant have rights in an unregistered trademark.” In
that regard, also see Sand Hill Wholesale of Ohio v. Hatton
FA 95970,
Nat. Arb. Forum, December 18, 2000, and David Taylor
Cadillac/Buick Co. v. Spider Works, Ltd., FA 95832 Nat. Arb.
Forum,
November 30, 2000. Similarly, see American Home Products
Corp. v. Healthy Futures WIPO Case No. D2000-0454, August 3,
2000; Cho Yong Pil v. ImageLand, Inc. WIPO Case No.
D2000-0229, May 10, 2000; SeekAmerica Networks, Inc. v.
Tariq Masood
WIPO Case No. D2000-0131, April 13, 2000; and Bennett
Coleman & Co. Ltd. v. Steven S Lalwani and Bennett Coleman &
Co. Ltd.
v. Long Distance Telephone Company, WIPO Case Nos.
D2000-0014 and 2000-0015, March 11, 2000.

Also, of particular importance here, various panels have
recognized that celebrities have common law trademark rights
in their
names. See, e.g., Jagger v. Hammerton FA 95261, Nat. Arb.
Forum, September 11, 2000; Marino, Jr. v. Video Images
Productions,
Inc. WIPO Case No. D2000-0598, August 2, 2000 and Roberts v.
Boyd WIPO Case No. D2000-0210, May 29, 2000.

Given this, the Panel believes that if a complainant (here
certainly being a celebrity, but, in general, by no means
limited thereto)
puts forth an appropriate showing of prior, continuous use
in a given product and territorial market of an unregistered
mark or a
tradename over a sufficiently long period to evidence the
acquisition of common law trademark rights, then those
rights are
susceptible of protection under paragraph 4(a) of the Policy
to the same extent as are those emanating from registered
marks. See
the MPL Communications FA 97086 and FA 97092 decisions,
cited supra.

The Complainant here has clearly and unquestionably made
such a showing, with the territorial market being the entire
United
States as well as all other countries that recognize
trademark rights based on prior use of unregistered marks.
Compare Bruce
Springsteen v. Jeff Burgar, WIPO Case No. D2000-1532,
January 25, 2001 where a majority of the panel there very
surprisingly, and
this Panel believes rather erroneously, apparently concluded
that Bruce Springsteen did not have such rights (though
curiously and
diametrically, it then presumed that the name was protected
under the Policy hence at least implicitly recognizing its
status as a
common law trademark) on the basis that no showing was made
of “a recognition that the name ‘Bruce Springsteen’ has
acquired
any secondary meaning”, i.e., that it be “associated with
activities beyond the primary activities of Mr. Springsteen
as a composer,
performer and recorder of popular music.” This Panel
believes that that conclusion is not only completely
mistaken but also and,
more importantly, its underlying test wholly lacks merit for
the simple reason that Bruce Springsteen’s well-known
activities and
fame over many years, again decades, in his field of
endeavor, i.e., music, are the very activities that give
rise to his common law
trademark rights in the first place — as they
unquestionably do here for the Complainant. No showing in
any other field need be made
or is required. See the MPL Communications FA 97086 and FA
97092 decisions, cited supra.

Therefore, the Panel finds that the contested domain name
sufficiently resembles the Complainant’s
mark
“PETER FRAMPTON” as to cause confusion; hence, the
Complainant has shown sufficient similarity between its mark
and the
contested domain name under paragraph 4(a)(i) of the Policy.

ii.Illegitimacy

Based on its federal trademark registration as well as its
common law rights, the Complainant has acquired exclusive
rights to use
its “PETER FRAMPTON” mark in conjunction with the goods and
services which the Complainant has been providing under that
mark since 1967 for more than three decades. Furthermore, by
virtue of having registered this mark, the US PTO has
implicitly
recognized that the “PETER FRAMPTON” mark has acquired
appropriate secondary meaning in the marketplace.

The Panel believes that the Respondent has yet to provide
any basis that would legitimize any claim it has to the
contested domain
name. In fact, it is extremely unlikely that the Respondent
can even make such a claim.

The simple reason is that the contested domain name includes
the Complainant’s “PETER FRAMPTON” mark under which the
Complainant provides his services and has been doing so for
over 30 years. The Complainant has never authorized the
Respondent
to utilize the “PETER FRAMPTON” mark in conjunction with the
specific goods and services which the Complainant provides
under
that mark, nor does the Complainant have any relationship or
association whatsoever with the Respondent.

Hence, any use to which the Respondent were to put the
“PETER FRAMPTON” mark, in connection with the goods or
services
presently provided by the Complainant as well as those set
forth in the Complainant’s registration would directly
violate the exclusive
trademark rights now residing in the Complainant, both in
terms of its common law and federal. See, e.g., the MPL
Communications
FA 97086 and FA 97092 decisions, cited supra; America
Online, Inc. v. Xianfeng Fu WIPO Case No. D2000-1374,
December 11, 2000, and Treeforms, Inc. v. Cayne Ind. Sales
Corp., cited supra. For similar holdings specifically in
connection with
registration of celebrity-based domain names, see Roberts v.
Boyd, cited supra.

It is eminently clear to this Panel that the Respondent, by
currently using the contested domain name which identically
incorporates
the Complainant’s “PETER FRAMPTON” mark, to sell items in
the exact same field of endeavor as the Complainant, i.e.,
music-related, is intentionally seeking to exploit user
confusion by diverting Internet users away from the
Complainant’s site to the
Respondents’ web site for the latter’s own benefit, i.e., by
capitalizing on the celebrity reputation and fame of the
Complainant’s
name, a name which the Respondent coincidentally shares with
the Complainant, to cause user confusion. Such use, which at
its
heart relies on exploiting user confusion, can not and does
not constitute bona fide commercial use, sufficient to
legitimize any
rights and interests the Respondent might have in the
contested domain name. In that regard, see Madonna Ciccone
p/k/a Madonna
v. Dan Parisi and Madonna.com, cited supra (“use which
intentionally trades on the fame of another can not
constitute a ‘bona fide’
offering of goods or services.”).

While the Panel recognizes that any individual has a right
to use his(her) name in connection with a business, that
right is not
unfettered; instead, it is circumscribed by the prior
trademark rights of others who use that name in connection
with specific goods
and services, as is certainly the case here.

A party alleging, under paragraph 4(c)(ii), as the
Respondent purports to do here, that it is commonly known by
a particular name,
sufficient to show legitimate rights and interest in a
domain name that contains that particular personal name
(e.g. a surname), must
provide adequate extrinsic proof that a corresponding group
of consumers, e.g., Internet users, who are likely to access
that party’s
web site, associates that domain name with that party rather
than with the trademark owner, i.e., that domain name
possesses
requisite secondary meaning, or at least that party has used
or is using that name sufficiently broadly such a panel can
infer that
such meaning exists. See Dell Computer Corporation v. Logo
Excellence WIPO Case No. D2001-0361, May 7, 2001.

In balancing the tension between an individual’s right to
use his(her) personal name in connection with a business
vis-à-vis the
interest of a trademark owner having a mark in the same
name, the Panel finds that analysis set forth by the US
Court of Appeals for
the Ninth Circuit in Avery Dennison Corp. v. Sumpton 51
U.S.P.Q.2d 1801, 1809, (9th Cir. 1999), (thought there in
the context of
assessing distinctiveness for purposes of trademark
dilution) not only pertinent to the present facts before
this Panel but also highly
instructive:

“No dispute exists that ‘Avery’ and ‘Dennison’ are common
surnames according to evidence presented by Appellants,
respectively
the 775th and 1768th most common in the United States. A
long-standing principle of trademark law is the right of a
person to use
his or her own name in connection with a business. See Howe
Scale Co. v. Wyckoff, Seamans & Benedict, 198 U.S. 118, 140
(1905). This principle was incorporated into the Lanham Act,
which states that a mark that is ‘primarily merely a
surname’ is not
protectable unless it acquires secondary meaning. 15 U.S.C.
Section 1052(e)(4), (f) (1994); Abraham Zion Corp. v. Lebow,
761 F.2d
93, 104 [226 USPQ 104] (2d Cir. 1985); see L.E. Waterman Co.
v. Modern Pen Co., 235 U.S. 88, 94 (1914) (pre-Lanham Act
case
stating that protection from confusion is available to the
holder of a surname trademark that has acquired public
recognition);
Horlick’s Malted Milk Corp. v. Horluck’s, Inc., 59 F2d 13,
15 [13 USPQ 296] (9th Cir. 1932) (pre-Lanham Act case
limiting the
defendant’s right to use his surname as a trademark where
the name has acquired public recognition from the efforts of
a
competitor). Avery Dennison cannot claim that ‘Avery’ and
‘Dennison’ are inherently distinctive, but must demonstrate
acquired
distinctiveness through secondary meaning.”.

While the “PETER FRAMPTON” mark clearly is a personal name,
and one shared with the Respondent, nevertheless as a result
of
the Complainant’s extensive use of his name since 1967, in
connection with advertising and promoting his
musically-related goods
and services, that mark has acquired considerable secondary
meaning, and consequently distinctiveness, in the Internet
community, and certainly in a much larger community of the
contemporary music industry and its followers, in
conjunction with and
as a source indicator of the goods and services which the
Complainant offers.

Therefore, under the analysis set forth in Avery Dennison,
the Complainant’s mark “PETER FRAMPTON”, having acquired
requisite
secondary meaning, is certainly protectable from confusion
— even though the term “PETER FRAMPTON” is also a personal
name.
The US PTO recognized that as such by registering this mark,
evidently concluding that it has acquired sufficient
secondary
meaning and is thus distinctive such that, when used by the
Complainant in conjunction with its goods and services, it
is not
“primarily merely a surname”.

Moreover, in view of the secondary meaning residing in the
“PETER FRAMPTON” mark in favor of the Complainant, the
Respondent,
at the very least, would need to put forth sufficient
evidence of its actual use of the contested domain name and
the extent of its use,
including, e.g., advertising and promotional activities, in
order for this Panel to infer that those Internet users who
would most likely
come into contact with that domain name would probably
associate that particular name, through its having attained
sufficient
secondary meaning, with the Respondent rather than
Complainant trademark owner. Clearly, as the notoriety of a
mark increases in
its given product/service market, then so will the quanta of
proof which an opposing party must put forth to counter the
likely
consumer perception of associating a domain name that
incorporates that mark with the trademark owner.

This Panel believes that, in view of the widespread,
worldwide notoriety enjoyed by the “PETER FRAMPTON” mark in
connection
with the Complainant’s goods and services particularly in
view of the Complainant’s continuing and substantial efforts
occurring over
at least the past three decades, the Respondent here faces
an exceedingly difficult, if not impossible, task of showing
satisfactory
proof of its use of the term “PETER FRAMPTON”, for use in
connection with goods and services similar to those offered
by the
Complainant to establish that it has legitimate rights and
interest in the contested domain name sufficient to justify
its retention of
that name. The Respondent’s showing falls way short of doing
so here.

While the Respondent’s president himself, by his own
admission, may be commonly known, among his own associates,
by the
name “PETER FRAMPTON” or the like, this in and of itself is
clearly insufficient to establish the Respondent is
“commonly known”
by that name consistent with paragraph 4(c)(ii) of the
Policy in order to successfully counter the rights of the
Complainant trademark
owner.

In light of the above findings, the Panel is not persuaded
that the Respondent has any or, based on current facts
provided to the
Panel, is likely to acquire any rights or legitimate
interests in the contested domain name under any provision
of paragraph 4(c) of
the Policy.

Thus, the Panel finds that the Respondents has no rights or
legitimate interests in the contested domain name within
paragraph
4(a)(ii) of the Policy.

iii.Bad Faith

The Panel firmly believes that the Respondent’s actions
constitute bad faith registration and use of the contested
domain name.

It is inconceivable to this Panel that, when the Respondent
chose and registered the contested domain name in 1997, it
had not
been fully aware of the Complainant’s “PETER FRAMPTON” mark
and particularly the widespread reputation that mark had
attained
as a result of the Complainant’s long-term and on-going
efforts, in the contemporary music field, that he had
started some 30 years
before, particularly given the Respondent’s subsequent
actions in posting a web site that offered goods directly
competitive with the
Complainant through the contested domain name that
identically matched the Complainant’s mark.

While this Panel might be more solicitous of the
Respondent’s position had it offered goods and services
through its web site that
were sufficiently disparate from those offered by the
Complainant such that user confusion was not likely to
occur, this is clearly not
the case here.

There can be no question that the Respondent having
absolutely no association, relationship or affiliation
whatsoever with the
Complainant, clearly chose to include the Complainant’s mark
in the contested domain name with a goal of creating
opportunities, to
commercially benefit itself, arising out of the inevitable
user confusion that would flow from concurrent use by the
Complainant of its
“PETER FRAMPTON” mark and by the Respondent of its contested
domain name. The Panel views such opportunistic registration
of the contested domain name as indicative of bad faith
registration and the subsequent use of that domain name by
the
Respondents in an effort to attain such benefit as bad faith
use, both collectively actionable under paragraph 4(b)(iv)
of the Policy.
See, e.g., Novus Credit Services Inc. v. Personal, WIPO Case
No. D2000-1158, November 29, 2000 and Guinness UDV North
America v. Lewis, cited supra.

Thus, the Panel concludes that the Complainant has provided
sufficient proof of its allegations to establish a prima
facie case under
paragraph 4(a) of the Policy upon which the relief it now
seeks can be granted.

7.Decision

Accordingly, under paragraphs 4(i) of the Policy and 15 of
the Rules, the Panel now grants the relief sought by the
Complainant.

The contested domain name, specifically ,
is ordered transferred to the Complainant.

Peter L. Michaelson, Esq. Sole Panelist

Dated: April 17, 2002