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Elvis Presley Foundation - Graceland.com Cybersquatting Decision

Elvis Presley Foundation - Graceland.com Cybersquatting Decision

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Published by Mark H. Jaffe
Elvis Presley Enterprises brought an action under the Natural Arbitration Forum to transfer the domain name from its owner, which apparently uses the website for biblical commentary. The panel found that respondent's registration and use of the domain name was in bad faith, and that it created confusion. It held in favor of Elvis Presley Foundation.

For informational purposes only. Not legal advice. I am not representing parties in this action. For more information about my practice, see:
http://torekeland.com/about/mark-h-jaffe
and legal tidbits on my twitter feed:
@MarkJKings
Elvis Presley Enterprises brought an action under the Natural Arbitration Forum to transfer the domain name from its owner, which apparently uses the website for biblical commentary. The panel found that respondent's registration and use of the domain name was in bad faith, and that it created confusion. It held in favor of Elvis Presley Foundation.

For informational purposes only. Not legal advice. I am not representing parties in this action. For more information about my practice, see:
http://torekeland.com/about/mark-h-jaffe
and legal tidbits on my twitter feed:
@MarkJKings

More info:

Published by: Mark H. Jaffe on Mar 09, 2014
Copyright:Attribution Non-commercial

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03/13/2014

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N TION L RBITR TION FORUMDECISION
Elvis Presley Enterprises, Inc. v. Simon HiggsClaim Number: FA1401001540234
P RTIES
Complainant is Elvis Presley Enterprises, Inc. ("Complainant"), represented by Gregori D. Mavronicolas of Mavronicolas Mueller & Dee LLP, New York, USA. Respondent is Simon Higgs ("Respondent"),represented by Michaela M. Barry, California, USA.
REGISTR R ND DISPUTED DOM IN N ME
The domain name at issue is <graceland.com> ("the Domain Name"), registered with Gandi SAS.
P NEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.Dawn Osborne of Palmer Biggs Legal as Chair, The Honourable Neil Anthony Brown QC and SebastianMatthew White Hughes as Panelists.
PROCEDUR L HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2014;the National Arbitration Forum received payment on January 22, 2014.On January 24, 2014, Gandi SAS confirmed by e-mail to the National Arbitration Forum that the DomainName is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAShas verified that Respondent is bound by the Gandi SAS registration agreement and has thereby agreed toresolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain NameDispute Resolution Policy (the "Policy").On January 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of theComplaint, setting a deadline of February 13, 2014 by which Respondent could file a Response to theComplaint, via e-mail to all entities and persons listed on Respondent's registration as technical,administrative, and billing contacts, and to postmaster@graceland.com. Also on January 24, 2014, theWritten Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed onRespondent's registration as technical, administrative and billing contacts. A timely Response was received and determined to be complete on February 12, 2014.On February 18, 2014 an Additional Submission compliant with Supplemental Rule 7 was submitted by theComplainant.On February 22, 2014 an Additional Submission compliant with Supplemental Rule 7 was submitted by theRespondent.On February 20, 2014 pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed <<Dawn Osborne of Palmer Biggs Legal as Chair, TheHonourable Neil Anthony Brown QC and Sebastian Matthew White Hughes>> as Panelists.
National Arbitration Forum, NAF Domain Name Decision, Elvis Presley Enterprises, Inc. v. Simon Higgs, Case No. 1540234
 © 2014 The Bureau of National Affairs, Inc. All Rights Reserved. Terms of Servicehttp://www.bloomberglaw.com/ms/document/X9HGI17
 // PAGE 1
 
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that theNational Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for UniformDomain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculatedto achieve actual notice to Respondent" through submission of Electronic and Written Notices, as definedin Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.PARTIES' CONTENTIONS A. ComplainantThe Complainant's submissions can be summarised as follows:The Complainant is the owner, inter alia, of registered trade marks in the USA for GRACELAND for a widevariety of goods and services. It operates a licensing program granting the right to manufacture and sellElvis Presley related merchandise worldwide. It owns over 30 domain names containing GRACELANDincluding <graceland.org> and <gracelandtours.info>.The Domain Name is identical to the Complainant's trade mark.The Respondent has been involved with domain name registrations since the mid 1990s and is the owner of over 40 domain names. He has owned <graceland.com> since 1994 and to date has never used theregistration for a legitimate purpose. Almost since its inception the website has shown bible quotes andadvertisements for travel, tours and merchandise relating to Elvis Presley, specifically Graceland andrelated to goods and services covered by the Complainant's trade mark registrations.Respondent is not commonly known by the Domain Name and has not acquired any trade mark rights inthe name. It has no connection with the name Graceland and has no business attached to the DomainName. It is not commonly known by the name Graceland and as such has no rights in the Domain Name.The Respondent is utilizing the Domain Name to unfairly capitalize on the intellectual property rights of theComplainant.The Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant. Ithas not been used for a proper website having been parked for over 20 years. Passive holding is use of adomain name in bad faith. Further, the page is parked with a banner of Elvis Presley relatedadvertisements on the top and the bottom. This is purposely designed to generate income and benefit fromthe intellectual property rights of the Complainant. Additionally, when contacted by the Complainant, theRespondent offered to sell the Domain Name to the Complainant for over $200,000 USD which is clearlywell above the Respondent's documented out of pocket costs related to the Domain Name.Respondent has registered the Domain Name to prevent the Complainant from reflecting its trademarks ina corresponding domain name.Respondent is benefiting from the likelihood of confusion between the Complainant's trade marks and theDomain Name. Respondent has intentionally attempted to attract for commercial gain Internet users to itswebsite by creating likelihood of confusion with the Complainant's trade marks as to the source,sponsorship, affiliation or endorsement of the website. Customers who go to the site at the Domain Namethinking they are going to an authorised or official site are provided with a series of unauthorised links toservices provided by third parties including links to the Complainant's competitors. The nature of the
National Arbitration Forum, NAF Domain Name Decision, Elvis Presley Enterprises, Inc. v. Simon Higgs, Case No. 1540234
 © 2014 The Bureau of National Affairs, Inc. All Rights Reserved. Terms of Servicehttp://www.bloomberglaw.com/ms/document/X9HGI17
 // PAGE 2
 
advertisements shows that the value of the site is perceived to be for its association with Graceland andElvis Presley. GRACELAND is a famous mark and the Respondent must have known this at the time of registration and registered the Domain Name in bad faith and in breach of its registration agreement.B. RespondentThe Respondent's submissions can be summarised as follows:The Complainant is not the only entity to own GRACELAND as a registered trade mark. The DomainName is identical to the Complainant's mark, but it is also identical to the other registrations for GRACELAND owned by other third parties.There are also generic uses of the name such as the Respondent's use as a noncommercial Christianbiblical site signifying a state of God's grace. Grace is derived from the Latin 'gratia' meaning God's favour.The Graceland Christian Church existed on the Graceland property prior to its purchase by theRespondent.Graceland is associated with several churches, a university, an inn and conference centre, a chiropractor,a poem, an album, a TV show, a movie, a long term health provider, a funeral service, a cemetery, afinancial newsletter, a vineyard, an equestrian centre, a portable building supplier, a collagen peel, a play,and jewellery, none of which are owned by the Complainant. Some uses predate the Complainant's use,e.g. the university used the name for over 90 years before the Complainant registered its trade marks.Respondent has used the Domain Name as a Christian biblical site since his registration of the DomainName in 1994 almost 20 years prior to this action. Respondent put considerable investment into the site tospread God's word. Graceland is made up of "Grace" as in the Lord's Grace and "land" as in the desire for the Lord's Grace to encompass the land. The website provides complete texts of the bible in English(protestant and catholic), Spanish, French, German, Italian, Dutch, Romanian, Hungarian, Korean,Chinese, Indonesian and Afrikaans as well as commentary, significant quotes and analysis.Respondent denies that he has no rights to the Domain Name, having provided significant added value tothe name he has cultivated for the past 19 years. Respondent questions the motivations of Complainant inattempting to reverse domain name hijack a name in continuous non-commercial use for almost 20 years.Respondent's use is of a religious nature and entirely non-commercial. Respondent noted that its site wasnot associated with the Complainant and in the past sought to provide links to the Complainant's sites.Respondent does allow Google Ads on his site hoping to defray some of the costs of hosting, however theRespondent attempted to block any keyword he reasonably thought to be associated with theComplainant's goods and services prior to filing of this action and painstakingly added to the list any newads that were discovered that were related. The Respondent does not profit from the site nor does he wishto. If the ads were to change the demeanour of the website attached to the Domain Name to commercialrather than non-commercial, the remedy would be removal of the ads not transfer of the Domain Name.The Complainant has not proven that the Respondent has no legitimate rights.Respondent administers various domains and has pursued various top-level domains as a reseller of theICANN-approved registrar Gandi. As the holder of a Gandi reseller account Respondent obtains domainnames for clients; the domains are not owned by Respondent, but managed on behalf of clients. Thereport provided by the Complainant does not allow the Respondent to comment with more specificity onthe allegation that he is the owner of more than forty domain names. The Complainant has attempted todisparage the Respondent by painting him as a cybersquatter in order to negatively influence this panel.The Complainant has failed to prove circumstances proving a pattern of conduct.Respondent has never offered the Domain Name for sale for any price to anyone. When Complainant
National Arbitration Forum, NAF Domain Name Decision, Elvis Presley Enterprises, Inc. v. Simon Higgs, Case No. 1540234
 © 2014 The Bureau of National Affairs, Inc. All Rights Reserved. Terms of Servicehttp://www.bloomberglaw.com/ms/document/X9HGI17
 // PAGE 3

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