Thelonious S. Monk v. The Holding Company

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Thelonious S. Monk v. The Holding Company

Case No. D2003-0828

1. The Parties

The Complainant is Thelonious S. Monk, New York, New York, United States of America, represented by Jay Flemma, United States of America.

The Respondent is The Holding Company, Virgin Islands, United States of America.

2. The Domain Name and Registrar

The disputed domain name <theloniousmonk.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 17, 2003. Also on October 17, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. Still on October 17, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and this proceeding began on October 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2003. The Response was filed with the Center on December 1, 2003.

The Center appointed Dennis A. Foster as the Sole Panelist in this matter on December 8, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Even though the Respondent’s Response was two (2) days late, per paragraph 10 of the Rules, the Panel has decided to accept it as valid. The Panel can see from the length of the Response and the amount of work that went into it that the Respondent, apparently not a lawyer and not represented by counsel, may well have had trouble meeting the 20 day deadline for the Response.

On December 1, 2003, the Complainant wrote to the Center requesting the right to file a reply to the Respondent’s Response. However, based on paragraph 12 of the Rules, the Panel has decided there are no special circumstances warranting an additional filing from either party.

4. Factual Background

The Complainant Thelonious Monk, who died in 1982, was one of the world’s most famous jazz musicians.

The Respondent registered the disputed domain name on December 17, 1998.

5. Parties’ Contentions

A. Complainant

- The Respondent is a phantom company which cybersquatted the site with a splash page in an attempt to prevent registration of the disputed domain name by Mr. Monk, who also is the same name, Thelonious Monk, as the site in question.

- Respondent has never and never will be known as Thelonious Monk, nor do they use the name or trademark under a license. Respondent is not making any legitimate non-commercial fair use of the name and is instead deliberately misleading customers and tarnishing the mark through its use.

- The domain name was registered to (1) prevent the rightful owner Mr. Monk from reflecting the mark in its domain name; (2) to disrupt Mr. Monk’s business; (3) to unfairly trick consumers and otherwise attract them for Respondent’s financial and commercial gain; (4) to create a likelihood of confusion as to the source of Mr. Monk’s goods and services; and (5) to disrupt the competitive business of the real Thelonious Monk.

- The disputed domain name should be transferred to the Complainant.

B. Respondent

- Glaringly absent is any evidence to support the Complainant’s contention

that it holds enforceable rights in a trademark that is identical or confusingly

similar to the disputed domain name.

- Thelonious Monk, the prominent musician and performing and recording artist,

died in 1982, and he did not bequeath the rights to his name or alleged trademark

to any party; therefore, Respondent requests that the Complaint must be dismissed

because Complainant cannot be a deceased person, because Complainant is not

the owner of a registered trademark that is identical or confusingly similar

to the disputed domain name <theloniousmonk.com>, and because it has produced

no evidence of common law trademark rights. Presumably, the true owner of such

rights would be able to produce documentary evidence of its acquisition of such

rights, such as contracts, assignments, copyright records, etc.

- According to Trademark Electronic Search System (TESS), the trademarks "Thelonious

Monk," "Thelonious Monk Institute of Jazz" and "Thelonious

Records" clearly state that "The name Thelonious Monk" in the

mark does not identify a living individual." Thelonious Sphere Monk was

born on October 10, 1917, in Rocky Mount, North Carolina and died

in Englewood Hospital in New Jersey at the age of 64, on February 5, 1982.

- Additionally, Respondent does not contest that the Owner (registrant) of

the "Thelonious Monk Institute of Jazz" mark is the Thelonious Monk

Institute of Jazz Corporation D.C.; the Owner (registrant) of "Thelonious

Monk" is Thelonious Monk Music Corporation New York, September 16, 2003.

These marks were registered barely one month before the Complaint, 5 years after

the domain name registration by Respondent and most importantly, none of these

entities are a party to the Complaint.

- The only option open to the Panel in this type of case is to dismiss the

Complaint without prejudice.

- Respondent has legitimate rights and interests in the disputed domain name,

<theloniousmonk.com>. Respondent is using the disputed domain name to

describe the website it hosts at that address—a digital tribute museum of Thelonious

Monk’s music and life. The website contains an online catalogue and virtual

store where visitors can consult the archives and contribute new information,

images, comments, tributes and general knowledge on this great musician. This

is a classic fair use of the phrase <theloniousmonk.com>.

- Before Respondent received any notice of the dispute, there is evidence of

the Respondent’s use of the domain name in connection with a bona fide

offering of goods or services. Respondent is a registered affiliate with Amazon.com,

art.com, allposters.com, artprintcollection.com and sheetmusicplus.com (distributors),

for the authorized sale and representation of Thelonious Monk recorded music,

sheet music, films, books, posters and any other item which these legitimate

distributors may sell through their websites.

- It is important to note that all the items presented on the disputed domain

name website respect copyright laws and eventually generate royalties and other

incomes for the estate of Thelonious Monk and other rightful holders of his

publishings and music catalogs.

- Respondent has always held such agreements with distributors during its tenure

as an affiliate. Respondent intends to continue using the disputed domain name

to host a tribute website that presents digital representations provided by

authorized distributors, a biography, a discography, a filmography and a catalog

of sheet music. The website also features useful links on the subject of Thelonious

Monk.

- The Respondent’s aim was to make customer searches and purchases simpler.

The website was never intended to take away business or deliberately mislead

customers and tarnish the mark through its use. The aim was to sell products

of wholesale companies to the end user. All of the companies concerned were

aware of the use.

- The Respondent also features a disclaimer on its website. The Respondent

does not wish to mislead customers into thinking they are dealing with the Complainant,

which is why it uses a disclaimer on its site.

- Being a great fan of Thelonious Monk, Respondent registered the disputed

domain name on December 17, 1998, five years before any kind of trademark

rights in the term Thelonious Monk were established.

- Complainant accuses Respondent of disrupting Mr. Monk’s business; however,

the Complainant does not provide a description of Complainant’s business; most

probably since he is deceased and cannot make use of the domain name.

- There has been no Respondent pattern of conduct as a cybersquatter.

6. Discussion and Findings

A. Identical or Confusingly Similar

For its proof under this section, the Complainant wrote the following: "Thelonious

Monk Thelonious Records and Thelonious Monk Institute of Jazz." The Complainant

has also exhibited two United States trademarks: (1) THELONIOUS MONK, no. 2,764,355

dated September 16, 2003, in international class 9 for video and audio

devices for music; and (2) THELONIOUS RECORDS, no. 2,764,356 dated September 16, 2003,

also in international class 9 for video and audio devices for music. The owner

of both of these trademarks is the Thelonious Music Corp.

Since the Complainant in this proceeding is Thelonious Monk, as the Respondent

argues, this is not the same party as the owner of the exhibited trademarks.

Therefore, the Panel finds the Complainant has failed to carry its burden of

proof under paragraph 4(a)(i) of the Policy.

The Panel notes that it was established early on under the Policy that this

is the appropriate action to take when the wrong party initiates a proceeding

under the Policy. In NBA Properties Inc. v. Adirondack Software Corp.,WIPO

Case No. D2000-1211 (December 8, 2000), the Panel stated "The

owner of the KNICKS trademark and service marks relied upon has been shown to

be Madison Square Garden, L.P., not the sole Complainant NBA Properties, Inc."

Also see Backstreet Boys Productions, Inc. v. John Zuccarini, Cupcakeparty,

Cupcake Real Video, Cupcake-Show, and Cupcakes-First Patrol, WIPO

Case No. D2000-1619 (March 27, 2001).

Since the Policy requires that the Complainant prevail under each of the three

(3) steps of paragraphs 4(a)(i-iii), the Panel finds it does not need to

reach the issues of Rights and Legitimate Interests or of Bad Faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dennis A. Foster

Sole Panelist

Dated: December 23, 2003