The Complainant is Nin Francheschina Pitarresi of Kingsbury, Victoria, Australia, represented by Phillips & Wilkins Solicitors, Australia.
The Respondent is Brendon Ruddick of Murrayville, Victoria, Australia.
The disputed domain names <ianedwardwinter.com>, <ianedwardwintersmusic.com>, <ninpitarresi.com>, <ninwinter.com>, <williewinter.com>, and <williewinters.com> are registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2009. On December 11, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On December 11, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on January 11, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the proceedings commenced on January 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2010. The Response was filed with the Center on February 2, 2010.
The Center appointed Andrew Frederick Christie as the sole panelist in this matter on February 16, 2010. 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.
A Supplemental Filing from the Complainant was received by the Center on February 24, 2010. A Supplemental Filing from the Respondent was received by the Center on March 3, 2010. Both Supplemental Filings were forwarded to this Panel.
The Complainant claims to be the life partner of 13 years of Ian Edward Winters (hereafter “the deceased”), also known as Ian Willie Winters, who died on July 14, 2004. The Complainant and the deceased are musicians. The Complainant began releasing music in 1992. The deceased, who was a guitarist for various bands including Daddy Cool, Mondo Rock, Carson and Willie Winter Band, began releasing music in the 1970s. The Complainant claims that she is known by the names Nin(a) Winter and Nin Pitarresi, and further claims that the deceased was known by the names Ian Winter(s) and Willie Winter(s).
The Respondent is the Administrative Contact for each of the disputed domain names, the registrant of which is Meleotrope. Both Meleotrope and the Respondent have the same contact details. It is clear from the contents of the Response that the Respondent asserts control over, and regards as his own, the disputed domain names. It appears, therefore, that the Respondent and Meleotrope are one and the same entity. For the purposes of this Complaint, this Panel will assume that the Respondent and Meleotrope are one and the same entity. Each of the disputed domain names was registered on either January 13, 2009 or January 14, 2009.
The Complainant, the deceased and the Respondent were known to each other. The deceased and the Respondent got together on a number of occasions to “jam” and produce music. After the death of the deceased the Respondent claimed rights to certain music produced by the deceased. Since that time the Complainant and the Respondent appear to have been engaged in a number of bitter and unresolved disputes concerning the promotion of the deceased's music.
The Complainant currently promotes the music of the Complainant and the deceased through the Internet, and has registered the domain names <ianwilliewinter.com> on February 9, 2009 and <ninwinter.net> on July 27, 2009.
On May 26, 2009, lawyers acting for the Complainant sent a “Cease and Desist” letter to the Respondent asking that the disputed domain name <ninwinter.com> be immediately assigned to the Complainant because it causes confusion in the marketplace and damages the Complainant's professional reputation.
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant contends that the Complainant and the deceased achieved international recognition and acclaim in the music industry under their names and under the names Nin Winter, Nin Pitarresi, Ian Winter(s) and Willie Winter(s), and that these names are trade names recognized by the general public as indicating an association with their songs and music. The Complainant continues to write and produce songs under and by reference to her trade name of Nin Winter. Although that trade name is not registered, the Complainant has common law rights to it due to the Complainant's extensive reputation and use of the name. The Complainant therefore has common law trademark rights in the name Nin(a) Winter(s), and the estate of the deceased has common law rights in the names Ian Winter(s) and Willie Winter(s).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names because the Respondent has never had permission from the Complainant or the deceased or the deceased's estate to use their names. The Complainant contends that the copyright to the music produced during the jam sessions with the Respondent was owned by the deceased and that the Respondent has admitted this in writing. The Complainant contends that the Respondent has not used the disputed domain names for any offering of goods or services, and that there is no noncommercial or fair use of the disputed domain names by the Respondent. The Complainant contends that the disputed domain names were registered and are being used in bad faith because they have been linked to highly pornographic domain names and sites. This has caused injury to the goodwill and reputation of the Complainant and the estate of the deceased. The Complainant contends that fans and others interested in the Complainant's music are confused and misled about the character of the Complainant and the deceased. This has led to the Complainant being unable to effectively promote the music of the Complainant and the deceased over the Internet, and having to postpone the release of two CDs for fear of activity by the Respondent. The Complainant contends that the Respondent offered to transfer the disputed domain names to the Complainant in return for all copyright and publishing rights in all works performed and composed by the deceased, and that this indicates they were bought in bad faith.
The Respondent contends that the Complainant has no rights to the trade or service marks for the names Ian/Willie Winter/s or Nin Winter, because no proof has been provided to support such a claim. The use of these names in conjunction is confusing to the public, as is the Complainant's claim of a defacto relationship between the Complainant and the deceased because it did not exist.
The Respondent contends that in 1996 the deceased afforded him rights to include the Respondent's name on recordings in his possession of the deceased. The Respondent contends that the Complainant, the Respondent and a third party co-wrote a song together and that the Respondent has rights and legal requirements to use the Complainant's name in relation to that material and to warn the public about the Complainant's deceitful activities – thereby forming a legitimate interest in the disputed domain names. The Respondent registered the disputed domain names so as to relate the Respondent's personal experiences with the deceased and the Complainant, and to warn the public of the deceitful nature of the Complainant – in line with the Respondent's right to free speech.
The Respondent contends the disputed domain names were not registered in bad faith. The Respondent was prepared to transfer the disputed domain names to the Complainant, and he was “not concerned about recognition or payment”. However, he has not transferred the disputed domain names because the Complainant “refused to make an appropriate corresponding offer”. The Respondent contends that there are other domain names such as <ninwinter.net> available to reflect the Complainant's mark, and that the disputed domain name sites do not contain anything relating to music or performers and receive virtually no traffic. The Respondent is prepared to provide a re-direction link to the Complainant's official website.
The following two matters are well established under the Policy: (i) a person's name may constitute an unregistered mark; and (ii) an unregistered mark may constitute a trademark in respect of which an action may be brought under the Policy. Numerous decisions under the Policy have established that an unregistered mark will be a trademark for the purposes of the Policy where the mark has become a distinctive identifier that, in the minds of consumers, associates the complainant with goods or services provided by the complainant in trade or commerce. It follows that a person's name, even though not registered as a trademark, will constitute a trademark on which an action may be brought under the Policy where the name has been used by the person in connection with the supply of goods or services in trade or commerce and, by virtue of that use, consumers associate those goods or services with that person.
The significance of the last part of the above statement regarding the applicability of the Policy to a person's name must not be overlooked. An unregistered mark that is a person's name is treated in the same way as any other unregistered mark. In both cases, the Policy is applicable to the unregistered mark only if it operates as a trademark – that is, only if, by virtue of its use in trade or commerce, the mark has become a distinctive identifier of an association between goods or services and the supplier of those goods or services. Proof is required for a finding that an unregistered mark is a trademark to which the Policy applies. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”), paragraph 1.7: “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning' includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”
This Panel finds that the Complainant in this case has not provided sufficient evidence to establish that any of the names on which the Complainant relies for the purposes of the Complaint are trademarks to which the Policy applies. The Complainant has asserted that the names “nin pitarresi”, “nin winter”, “nina winter”, “ian winter”, “ian winters”, “willie winter” and “willie winters” (hereafter “the personal names”) are unregistered trademarks. However, the Complainant has provided no evidence proving these assertions. The Complaint contains no evidence of the type specified in the Overview (“length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition”). Moreover, the Complaint contains no evidence of any other type that establishes that these names operate as unregistered trademarks.
The Respondent in the Response expressly contested the Complainant's assertion of trademark rights in the personal names. In its unsolicited Supplemental Filing in reply to the Response, the Complainant sought to address this matter by stating: “Nin Pitaressi (sic) and her late partner featured on a nationally released and popular CD with other top Australian performers titled ‘Sounds of Sunday' released by Souldvault (sic) records. Nin Pitaressi (sic) is mentioned in the following websites: “www.soundvault.com.au/Ninian.htm” and “www.jbhifionline.com.au/music/country.../ninian/260218 ... ninwinter.com” had 133 visits per day from March to April 2009.” However, these statements are merely assertions – they do not constitute evidence of the facts that are being asserted.
Furthermore, even if these assertions are assumed to be correct statements of fact, these facts on their own are simply insufficient to establish the necessary basis on which to found a successful complaint under the Policy. Put simply, in this Panel's view, the fact that a performer features on a CD and is listed in an online music catalogue does not prove that the performer's name has become so associated in the mind of consumers with goods or services provided in trade or commerce under that name that it amounts to a trademark. To prove this fact would, generally, require detailed information showing the specific goods or services provided in trade or commerce under the relevant name, the time periods over which the goods or services have been so provided, the geographic regions in which the goods or services have been so provided, and the volume and the value of the sales of the goods or services so provided. No such information has been provided by the Complainant in this case.
There is, therefore, no evidence on which this Panel can reach a finding on the present record that any of the personal names are trademarks to which the Policy applies. The Complainant has thus failed to satisfy the first requirement of the Policy.
In reaching this conclusion, it should be made clear that this Panel makes no finding on the issue of whether or not the Complainant would have any entitlement to any trademark rights in the personal names of the deceased in the event (not established in this case) that such names were found to be trademarks for the purposes of the Policy.
Given the conclusion above regarding the lack of trademark rights held by the Complainant, it is not necessary for resolving the outcome of the Complaint to determine if the Respondent has rights or legitimate interests in the disputed domain names.
Given the conclusion above regarding the lack of trademark rights held by the Complainant, it is not necessary for resolving the outcome of the Complaint to determine if the Respondent has registered and used the disputed domain names in bad faith.
For all the foregoing reasons, the Complaint is denied.
Andrew F. Christie
Dated: March 9, 2010