NATIONAL
ARBITRATION FORUM
P. O. Box 50191
Minneapolis MN 66405
Percy Miller dba Boutit, Inc./Soldier
University, Inc.v. Divine Mafa dba The New No Limit Records, Inc.
Claim Number: FA0207000114771
PARTIES
Complainant
is Percy Miller dba Boutit, Inc./Soldier
University, Inc., Alhambra CA, USA (“Complainant”) represented by Patrick W. Fletcher. Respondent is Divine Mafa dba The New No Limit Records, Inc., Memphis, TN, USA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain names at issue are <thenewnolimitsrecords.com> and <pmillercollection.com> registered with Register.Com, Inc. Two more domain names are recited as in
issue in the Response and Counterclaim:
<pmiller-collection.com> and <nolimitrecords.com>.
At the end of its submission,
Respondent/counter-claimant’s (hereinafter “Respondent”) then formal request is
limited to
leave
<nolimitrecords.com> where it is, in Complainant’s hands,
leave
<thenewnolimitrecords.com> where it is, in Respondent’s hands,
transfer
<pmiller-collection.com> to Respondent/Counter-claimant.
leave
<pmillercollection.com> where it is, in Respondent’s hands.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Tom
Arnold, as sole Panelist.
A
hard copy of the original Complaint, dated June 25, 2002, is date stamped as
received by the National Arbitration Forum (the “Forum”) July l, 2002. An electronic copy was received July 3,
2002.
On
July 8, 2002, Register.com confirmed by e-mail to the Forum that the domain
names
<thenewnolimitrecords.com>
and <pmillercollection.com> are registered with Register.com and
that the Respondent is the current registrant of those names.Register.com has
verified that Respondent is bound by the Register.com registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
July 17,2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 6,
2002, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@thenewnolimitrecords.com, and
postmaster@pmillercollection.com by e-mail.
A
timely Response was received and determined to be complete on July 22, 2002.
On
July 31, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Tom Arnold as sole Panelist.
Complainant
requests that the domain names <thenewnolimitrecords.com>
and <pmillercollection.com> be transferred from Respondent to
Complainant.
Respondent-Counter-Complainant
requests that <pmiller-collection.com> be transferred to Respondent, and
that “domain name THENOLIMITRECORDS.COM remain with Respondents and domain name
NOLIMITRECORDS.COM remain with Claimant since they are not similar in any
slight way.”
ICANN RULE
3(b)(ix)
The intermix of
the parties’ recitations of contentions on the merits of the disputes is
adverse, contradictory, complex and confusing. Several places apparent error
appears without sufficient evidence by which to reconcile the positions. In such cases the easy way to assure
avoidance of feelings and/or arguments of error by the Panel in summarizing the
party contentions, whose thought process includes all of their rebuttals to
their adversary’s positions that didn’t get into their submissions, is to
reproduce them in full. I do that here,
excepting that I leave out the formalities.
Skipping as
aforesaid the initiating formalities I reproduce the Complaint’s substantive
allegations relative to the dispute, beginning at § V.
* * *
V.
Trademark
(ICANN Rule 3(b)(viii))
This Complaint
is based on the trademark NO LIMIT RECORDS for prerecorded audio tapes, compact
discs featuring music and entertainment and entertainment services, namely,
production of audio cassette tapes and compact discs featuring music and
entertainment as described in United States Trademark Registration number
2374405. In addition, this Complaint is
based on the common law trademark P. MILLER for clothing, namely, t-shirts,
caps, hats, jerseys, jackets, shorts, pants and footwear as described in
Trademark Application serial number 76/404287 that is currently pending before
the United States Patent and Trademark Office.
VI.
Grounds
for Complaint
(ICANN Rule 3(b)(ix))
This Complaint
is based on the following factual and legal grounds:
1. Complainant, Percy Miller, a.k.a. P. Miller and Master P,
is a famous entertainer. A copy of the MTV.COM Percy Miller web page is
attached hereto as “Annex 2”. He has
sold more than 50 million records and has acted in 16 movies. A copy of the AMAZON.COM
Percy Miller web page is attached hereto as “Annex 3”. In addition, he has appeared on the cover of
Fortune Magazine as number 28 of America’s “40 Richest under 40” and on Forbes’
“Top 10 List of Highest Paid Entertainers” for two years in a row. A copy of an E! Entertainment news article
about Percy Miller is attached hereto as “Annex 4”.
2. Complainants,
Percy Miller and his company Boutit, Inc., are the owners of United States
trademark NO LIMIT RECORDS, bearing registration number 2374405. A copy of the United States Patent and Trademark
Office electronic record is attached hereto as “Annex 5”. Complainants have used said mark in commerce
continuously since 1992 and have produced and released more than 40 records
selling more than 50 million copies bearing the mark NO LIMIT RECORDS.
3. Complainants,
Percy Miller and his company Soldier University, Inc., are the owners of common
law trademark P. MILLER and possess Trademark
Application serial number 76/404287, currently pending before the United States
Patent and Trademark Office. A copy of the United States Patent and
Trademark Office electronic record is attached hereto as “Annex 6”. Complainants have used said mark in commerce
since 1999 and have sold clothing and accessories bearing that name in both
retail outlets and online. Accordingly,
consumers have come to identify the famous entertainer, Percy Miller, and his
distribution company, Soldier University, Inc., as the source of goods and
services bearing the mark P. MILLER.
4. Complainant, Percy Miller, owns the domain name
NOLIMITRECORDS.COM and advertises his goods and services thereon through his
management company Universal Records / Motown.
A copy of Complainant’s NOLIMITRECORDS.COM main web page is attached
hereto as “Annex 7”.
5. Complainant, Percy Miller, owns the domain name
PMILLER-COLLECTION.COM and advertises his goods and services thereon through
his distribution company 100 U Clothing, LLC.
A copy of the PMILLER-COLLECTION.COM main web page is attached hereto as
“Annex 8”.
6. Respondent is the registered owner of the domain names THENEWNOLIMITRECORDS.COM and
PMILLERCOLLECTION.COM that were registered on March
9, 2002, and December 22, 2001, respectively.
A copy of the THENEWNOLIMITRECORDS.COM and PMILLERCOLLECTION.COM whois printouts are attached hereto as “Annex 9” and
“Annex 10”.
7. Respondent’s domain name, THENEWNOLIMITRECORDS.COM, is
confusingly similar to Complainants’ registered trademark NO LIMIT RECORDS and
corresponding domain name NOLIMITRECORDS.COM.
Respondent has attempted to legitimize its cybersquatting by filing an
“intent to use” trademark application for the term THE NEW NO LIMIT RECORDS. A
copy of the United States Patent and Trademark Office electronic record is
attached hereto as “Annex 11”. As
Respondent’s “intent to use” trademark application bears a filing date of
January 20, 2002, said application is prima facie evidence that Respondent did
not use the NEW NO LIMIT RECORDS mark prior to that date. Respondent’s “intent to use” trademark
application will likely be unsuccessful based upon its confusing similarity to
Complainants’ registered mark and will be strenuously opposed by Complainants
if published for opposition.
8. Respondent’s domain name, PMILLERCOLLECTION.COM, is
confusingly similar to Complainants’ trademark P. MILLER and corresponding
domain name PMILLER-COLLECTION.COM. In
addition, Respondent’s web site PMILLERCOLLECTION.COM contains a picture of
Complainant, Percy Miller, and a statement that the clothing offered on said
web site was designed by Complainant, Percy Miller. A copy of the infringing PMILLERCOLLECTION.COM pop-up web page is
attached hereto as “Annex 12”. In fact,
Respondent copied the aforementioned graphics from Complainants’ web site, thus
violating the copyright laws of the United States, in an attempt to create a
likelihood of confusion with the Complainants’ mark as to the source,
sponsorship, affiliation, or endorsement of the infringing web site and its
products. Respondent has attempted to legitimize his cybersquatting by filing an
“intent to use” trademark application for the term P. MILLER. A copy of the United States Patent and
Trademark Office electronic record is attached hereto as “Annex 13”. As Respondent’s “intent to use” trademark
application bears a filing date of January 26, 2002, said application is prima
facie evidence that Respondent did not use the P. MILLER mark prior to that
date. Respondent’s “intent to use”
trademark application will likely be unsuccessful based upon its confusing
similarity to Complainants’ common law mark and corresponding trademark
application and will be strenuously opposed by Complainants if published for
opposition.
9. On June 12, 2002, the following entity was the registered
owner of the domain names THENEWNOLIMITRECORDS.COM
and PMILLERCOLLECTION.COM:
Itochun
Corporation
Domain
Name Sales Division
ITOCHU
CORPORATION (ITALL SECTION) 5-1 KITA-AOYAMA
Tokyo
107-77, Mainato-Ku 107-77
JP
813533894455
itochu@japan.com
Complainants,
by and through their attorneys, sent a Cease and Desist letter to the
aforementioned entity via email and U.S. Mail informing them that their actions
constituted a violation of
the Anticybersquatting Protection Act provisions of the Lanham Act and demanded
that they immediately cease using the domain names THENEWNOLIMITRECORDS.COM and
PMILLERCOLLECTION.COM. However, Itochun
Corporation responded by denying any knowledge of the domain names at issue and
claim that they have never heard of Respondent, Devine Mafa. Devine Mafa was merely using the Itochun
Corporation’s name as a front to hide his identity while maintaining control of
the domain name and its corresponding access codes through Register.Com,
Inc. In addition, Respondent registered
the email address Itochu@japan.com in an attempt to appear affiliated with the
Itochu Corporation while maintaining his ability to receive email directed to
the registered owner of the domain names at issue.
10. On June 18, 2002, Respondent, Devine
Mafa, sent an email to Complainants’ attorney in response to the aforementioned
Cease and Desist Letter stating that Respondent owned the domain names at
issue, that Respondent’s business is to sell domain names that they have listed
as trademarks, and demanding $100,000.00 for transfer of the domain names at
issue. A copy
of Respondent’s email to Complainants attorney is attached hereto as “Annex
14”.
11. On June 19,
2002, the registration information for the web sites at issue was changed from
the aforementioned Itochu Corporation to its current state. Said change was made by Respondent after
Complainants’ attorney informed Mr. Mafa that providing false information in a
domain name registration was evidence of “bad faith” under the UDRP.
12. Respondent
should be considered as having no rights or legitimate interests in respect of
the domain names because before any notice to the Respondent of this
dispute, Respondent did not make use of, or demonstrable preparations to use,
the domain names or a name corresponding to the domain names in connection with
a bona fide offering of goods or services. See ICANN Policy,
paragraph 4(c)(i). In addition, the
domain names are not names by which Respondent is commonly known or in which it
has any trademark or service mark rights in spite of its fraudulent trademark
applications. See ICANN Policy,
paragraph 4(c)(ii). Finally, as
discussed above, Respondent is making an illegitimate commercial use of the
domain names with intent to misleadingly divert consumers as evidenced by its
use of Complainant’s graphics and likeness on its infringing web sites. See ICANN Policy, paragraph 4(c)(iii).
13. The domain names THENEWNOLIMITRECORDS.COM and
PMILLERCOLLECTION.COM should be considered as having
been registered and used in bad faith for the following reasons:
(a)
Respondent has registered or has acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name
registration to the Complainants for valuable consideration in excess of
Respondent’s documented out-of-pocket costs directly related to the domain
name. Specifically, Respondent has
offered to sell the domain names at issue for no less than $100,000.00. See Annex 14.
(b)
Respondent has registered the domain names primarily for the purpose of
disrupting the Complainant’s business by redirecting Internet users seeking the
products and services of Percy Miller and his associated companies to
Respondents web sites THENEWNOLIMITRECORDS.COM and PMILLERCOLLECTION.COM.
(c)
By using the domain name THENEWNOLIMITRECORDS.COM and PMILLERCOLLECTION.COM,
Respondent is intentionally attracting, for commercial gain, Internet users to
Respondent’s on-line locations by creating a likelihood of confusion with the
Complainants’ marks as to the source, sponsorship, affiliation, and endorsement
of Respondent’s web site and the products and services offered thereon, as evidenced by its use of Complainant’s copyright
protected graphics and likeness on its infringing web sites. See Annex 12.
For all the
foregoing reasons, the domain names THENEWNOLIMITRECORDS.COM and
PMILLERCOLLECTION.COM should be considered as having been registered and used
in bad faith, in violation of ICANN Policy.
Respondent’s transparent attempts to legitimize its cybersquatting by
submitting fraudulent trademark applications and transferring ownership of the
domain names from an unrelated Japanese company to himself once he became aware
that this action would be filed should only serve to strengthen Complainants’
case in this matter.
B. Respondent/Counter Complainant
Again skipping over
formalities, Respondent/Counter Complainant alleges:
IV.
DOMAIN NAMES IN DISPUTE
(ICANN
Rules 3(b) (iv) and (vii))
The
following domain names are subject of this respondent /counter-complainant
thenewnolimitrecords.com
pmillercollection.com
Pmiller-collection.com
nolimitrecords.com
domainregistrar@register.com 212-798 9200
Registrar’s Name: Register.com, Inc,
Registrar Address: 575 Eighth Avenue 11thFloor, New York, NY 1001
III.
Trademark
ICANN RULE (3b) (viii)/ (5b) (i)
The complainant, Percy Miller famous as Master
P, a former Drug Dealer on his own confession, a Gang-Music Rapper (Annex 20)
is trying to hijack the Domain Names of the Trademarked and registered
incorporated company, The New No Limit Records, Inc. (Annex 1-a)
The Serial Number of The New No Limit Records
Trademark is 78/103738 (Annex 1)
The serial number of the P. Miller Trademark is
78/105071(Annex 2)
The New No limit Records Inc owns the
thenewnolimitrecords.com and pmillercollection.com
Percy Miller’s, (complainant’s) trademarks were
disqualified by the United States Patent and
Trademark Office, on the grounds of
over-similarity to our Trademark P. Miller (Annex 3/4)
Response/Complaint
(ICANN
Rule 3(b) (xi) / 5(b) (1)
(Annex 5) P
MILLER
Recent Trademark App
Date: May 6 2002
(Annex 6) P MILLER
ROMEO Recent Trademark
App Date: April 29 2002
(Annex 7) P Miller Signature Collection Recent Trademark App
Date: April 29 2002
(Annex 8) P.Miller Signature Collection Recent Trademark App
Date: April 22 2002
(Annex 9) P. Miller Clothing Recent Trademark App Date: April 22 2002
He registered names that violate the rules
in a bid to hijack our domain names.
His initial intent to use registration with The USA Trademark and patent
office were
disqualified on the grounds of over similarity with our Trademark P.
Miller
(Annex 3) P.Miller Shorties
Date Disqualified April 4
2002
(Annex 4) Passion by P.Miller
Dates Disqualified April 4
2002
When the complainants Trademarks were
Disqualified, he approached us and offered to purchase the Trademarks and
domain Names. We refused on the grounds
that we were building our own clothing company since 1998.
It is apparently obvious that the complainant
has no need to play a fair game. He
will keep registering the same domain
names and Trademarks as long as they will allow him to do business or because
he has the ability hire 20 different attorneys to represent him against a small
cooperation like ours or has the money and means to send people to ransack our
office for documents. (See Annex on
Police Reports, annex 10a and 10b)
Our refusal to sell followed physical threats
from the complainant, Percy Miller and his young brother Corey Miller of
Physical Bodily harm to Divine Mafa. He
promised that something will happen to us. Following those events we had
break-ins at our office suite. See police reports Annex 10a and 10b.
Rap
Lyrics from Master P Music downloaded from the internet (Annex 15). Most Of
these Gang-Music Rappers live the life of what they preach. His young brother
Corey Miller, who phone called Divine Mafa threatening to do harm, is now on a
2nd Degree murder charge in Louisiana State. (Annex 16)
Anyone in his right mind would not want to have
anything to do with Percy Miller and his young brother. It is unfortunate that our situation and
position with them is purely coincidental.
We never even knew who they were.
If
the complainant has been doing business as P. Miller clothing, since 1999 how
come he has just began to register Trademarks and Domains as early as last
month, May 2002?
More-so
complainant has been using, No Limit Clothing In commerce since 1999, and
not
P. Miller. (Annex 13a and 13b). The complainant’s statement are dishonest and not credible.
The complainant, Percy Miller breaks the rules
arrogantly just like the lyrics in his Gang-
Rap
Music, disregarding
the Law and the Government because he believes that his money can protect
him and he likes to bully those without as much money as he has. See Annexes 33 and 34. Claimant was sued for
fraud and deceit and unjust enrichment.
4. The
respondent owns the domain name Pmillercollection.com. The complainants domain name
Pmiller-collection.com is confusingly similar to respondents. Complainant has attempted to legitimize
hijacking our domain names by filing an-intent to us trademark for P Miller and
various other derivative names as early last month May 2002. (See annex 5,6,7,8 and 9.)
Said application is prima facie evidence that
Complainant did not use the P Miller mark prior to those dates. Complainant’s
intent to use applications will cause us strife financially since we have to
keep vigorously defending our marks and opposing his intentions to hijack them from
us However, it is not a big deal to our complainant because he can afford to
keep hiring top notch attorneys and hopes that we will just give up the fight.
5
Complainant Percy Miller asserts that he has used the Trademarks P. Miller for
clothing labels since 1999. That is untrue. Records indicate that No Limit Clothing is his clothing
company and has Trademark since 1998 (annex 13a/b).
6. Respondent has a legal Right to own the
domain names since he has trademarked the domain names first, and published the
domains first, and had no knowledge of the claimant existence.
7. The New No Limit Records, is trademarked (See
Annex 1) by the respondent and is nowhere similar to No limitrecords.com. They
are six character letters before the no limit records, which is also a password
rule. Claimant’s assertions that user’s will be confused is unrealistic.
If
the claimant claims that our application for The New No Limit Records mark in
January 2002 is prima facie evidence that we did not use the
mark prior to that date, then it will be fair for the Panel to apply the same
rule to him for having recently filed “intent to Use” Trademarks for www.pmillercollection.com as
recently as May 2002.(See Annex 5 , Annex 6, Annex 7, Annex 8, and Annex
9) IT IS PRIMA FACIE EVIDENCE AGAINST’S
CLAIMANT THAT HE NEVER USED MARK PRIOR TO DATES APPLIED FOR MARK. Our fact is
that the claimant’s reasoning is not honest in nature.
8. Percy Miller asserts that he has a right to everything that bears the name P. Miller and every other domain name on the internet,
just because his birth name is Percy Miller.
In our company we have partners named Patrick
Miller, Percy Miller, friends named Paul Miller and the phone book ( Annex 30) is
listed with a lot of people called P. Miller.
The
trademark law does not allow anyone to trademark a person’s name, for the simple reason that a person
is not a product. A product is tangible and can be sellable.
Percy Miller has never used his birth name as a
commercial mark till after an ITU filing in May 2002. It should not be allowed to be a Law that the mark P. Miller be
given to him alone when in actual fact he has just began trying to register it
as a name.
Percy Miller also asserts
that he is a famous entertainer, and
claims that he should be given the domain, name Pmillercollection.com on this
basis. His own attorney has shown evidence that Percy Miller is very famous as Master P.(complainants Annexes 2 ,3 AND 4) It
will not be logical to give him leverage as far as the Master P name is concerned since he is known amongst the blacks and
Gang- Rap music community. The majority of the citizens in this Great Country
of United States of America have never heard of this complainant. His claims of
being famous do have very little leverage to this complaint.
“Master P’’ is his commercial mark (annex 4).and
he known by that. He sells Gang-Rap Music using pseudo name, Master P. Continues……
Respondent’s registration of trademark P. Miller
and Domain name pmillercollection.com is based on its appeal and easiness in
terms of advertising European clothing products and his design styles.
When we registered these names, we had
absolutely no knowledge of who Percy Miller is.
Claimant
manufactured and fabricated evidence, asserting that we had web page pop-ups
with his client. His accusation is ludicrous. Why should we have his pop-ups.
First of all, the respondent web sites were
published much earlier than claimant’s web sites. We were only made aware of
the existence of a hyphened Pmiller-collection.com site when the claimant
contacted us by telephone offering pay $500.00
Claimant accuses us of legitimizing P. Miller.
How can we legitimize something we have no knowledge with. We never knew of this
claimant existence until the time he contacted us by telephone offering $500.00
to purchase the domain names. More-so the claimant registered his Trademarks as
early as last May 2002, and he has just recently published them, long after our
web sites had been running. In a normal circumstance, we could have never
register a hyphened business domain name like Pmiller-collection.com. This is
prima facie evidence against the claimant’s intent to hijack the respondent’s
domain names. Claimant promises
the Panel vigorous opposition of our Trademarks. How truthful are his promises,
(or it is a Bluff) when in actual fact he has lost two P. Miller trademarks on
April 4th 2002?
( see Annexes 4,5,6,7and 8)
9.
Percy’s Miller attorney called me on the 10th of June 2002 advocating
that we settle the case or risk loosing the domain names. We refused, but then
he told us that he was From Harvard University and had some influence with
people at ICAAN and the trademark office. He assured us that some of the people
working at ICAAN were his former classmates.
On the 12th
of June 2002, our site Pmillercollection.com
had been hacked and not working. We called Register.com our host, to find
out the problem and could not figure out what the problem was right away.
Someone had gone into our system and tried to transfer the Domain name to
another hosting company without our consent. As of now, our domain name and
sites are still not functioning because, they were corrupted.
It is ludicrous for Percy Miller to assert that we were
hiding from him posing as another company. If so, that
we changed the registered owner 19th June 2002, how come Mr. Percy
Miller’s attorney, George netter was able to write a letter to us on the 27th March 2002 with
information from the registration data, by register.com. (See Annex 10)
We have nothing to hide from Percy Miller, even
after receiving threats from him over the phone.
The only item we changed on the 12th
of June 2002 was our email address. This was after our web site
Pmillercollection.com had been hacked after the threats from Percy Miller’s
attorney about him using his influence to shut us down. We spoke to
Register.Com customer service and they wanted us to give them an email that
would easily reach us. When we gave them, the email, ndabezitha@london.com, and the customer
service advised us to change the email from the hotmail account email listed on
the site administration systems to the one that could easily reach us. This was
purely administrative.
We have no knowledge of the company Percy Miller
is mentioning. We strongly believe that his evidence of communication with this
company should be forthcoming or he has doctored documents to tarnish our
credibility. It is so obvious that Percy
Miller’s attorney allegations are
fabrications and a standard format that he uses to present a case before ICAAN.
10 On the 18th June 2002, we never
emailed any letters to any one demanding any kind of money.
The claimant telephoned us to making offers to
purchase the site from Percy Miller and his Attorney at several occasions. We
advised them that the domain names were not for sale.
If they are any letters, our company did not
write them. They were probably doctored so we
appear as if we are cyber-squatting and also tarnish our credibility
before the Panel.
11. On the 19th June 2002, our
administrative information had always been the same, save the email that was
changed to facilitate communication with register.com
Never did Divine Mafa carry any conversation
about selling the site for $100 000.00 or seek advice from claimant’s attorney.
If respondent was hiding from Claimant, by using
a fake corporate address, how then did his attorney contact him as early as
March 2002.(See Annex 10) This is prima facie evidence against the claimant’s
fabricated and manufactured evidence in a bid to hijack our domain names.
Claimant is plainly presenting fake
unsubstantiated evidence before the Panel. Claimant’s allegations and case
before the Panel are a desperate measure by to acquire domain names that they
can not purchase.
The domain name Pmillercollection.com
was published online much earlier than Pmiller-collection.com
allegedly owned by the complainants. Our domain name registration was not
driven
by any pre-hand knowledge about the existence of
a hyphened domain name like
Pmiller-Collection.com. We were made aware of the existence of the
domain name pmiller-collection.com, when the complainant contacted us offering
to purchase our domain name pmillercollection.com, without a hyphen.
We the respondents have other domain names along
the same line, Pmillergear.com and
Pmillerwear.com. These were registered to help drive traffic to our main
site PmillerCollection.com. Thus more
evidence to our dedication and commitment to our projects.
12.
Respondent has demonstrated use of his web site contrary to
claims by the claimant. We have clothing and accessories on the sites. (Annex
11)
Thenewnolimitrecords.com is news and information
site and also posts information about our company.
However our pmillercollection.com has been
hacked down after receiving threats from the complainant attorney, and the
attorney’s promise of using his “connections” to shut us down.
We have Trademark rights to the name.
Complainant can not claim trademark rights since he just filed for an-
intent-to use about a month ago.
Claimant is not commonly known by these names as
evidenced by his own admission in his annexes, 2, 3 and 4.
Claimant
asserts that our Trademarks applications are fraudulent
whereas in-actual fact, it is the claimant who has trademark applications that
have been deemed fraudulent by the United States Patent and Trademark Office
(See Annexe3 and 4).As of April 4th 2002.
13. Our Domain names Pmillercollection.com and
Thenewnolimitrecords.com are legitimately registered and trademarked.
a)
Claimants evidence is lacking, manufactured and the attorney is using a
fabricated format to hijack domain names. Not a single day did the respondent
ever offer to sell any domain names to claimant. Claimant’s annexes are
fabricated and unfortunate.
b)
Respondent does not sell domain names and has never sold a single domain name.
Claimant is challenged to demonstrate the accusation.
c)
Respondent has no intention of disrupting Complainants business because they
have no similar market and interest. Respondent had no knowledge of who
complainant was before the dispute occurred.
d)
Complainants accusations are desperate. He accuses respondents of trying to
sell domain names and then disrupting business for him and at the same time
gaining commercially by attracting complainants internet users. If respondent
is gaining commercially, why then will he have the need to dispose of the domain
name. The argument by the claimant is not logical.
The claimant is in a desperate bid to accuse us
of everything that ICCAN POLICY is against.
Complainant’s argument is evidence that the claimant is not fair and is very
dishonest.
Congress passed law against cyber-squatting. It
was designed to help build the country’s economy and improve e-commerce.
Ownership is very important and it is our very capitalistic nature that built
the economy of this country.
Percy miller has nothing to gain from hijacking
our domain names and will not be hurt commercially if he does not hijack our
domain names because he made a choice to register the names he has the way he
did and the time he did
We have right of ownership of these domain names
because we found them first. Not on the internet alone but also at the
trademark office. Ownership is our right and part of our freedom in this
country.
We should not be forced to sell to someone,
because he has more financial leverage.
VII
Remedy Sought
ICCAN Rule 3(b)(x ) 5 (b)(1)
The Respondents request the Panel issue a
decision that domain-name
be transferred to Respondent”.
Domain name thenewnolimitrecords.com remains
with respondents and domain name nolimitrecords.com remains with claimant since
they are not similar in any slight way
* * *
I quote here the UDRP
section 4(a) which bind the Panel.
“a. Applicable Disputes. You [Domain name registrant, Respondent
here] are required to submit to a mandatory administrative proceeding in the
event that a third party (a “complainant”) [Percy Miller and his companies
here] asserts to the applicable Provider, in compliance with the Rules of
Procedure, that
“(i) your [RESPONDENT’S] domain name is identical or confusingly
similar to a trademark or service mark in
which the complainant has rights; and
“(ii) you [RESPONDENTS] have
no rights or legitimate interests in respect of
the domain name; and
“(iii) your [RESONDANTS’]
domain name has been registered and is being
used in bad
faith.
In
the administrative proceeding, the complainant [Percy Miller here] must prove
that each of these three elements are present.
* `* `*
c.
How to Demonstrate your [Registrant’s]
rights to and Legitimate Interests in the Domain Name . . .
. . . Any of the following
circumstances, in particular but without limitation, if found by the Panel to
be proved based on its evaluation of all evidence presented, shall demonstrate
your rights or legitimate interests to the domain name for purposes
“(i) before any notice to you of the dispute, your use of,
or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in
connection with a bona fide offering of goods or services;
“(ii) you (as an individual, business, or other
organization) have been commonly known by the domain name, even if you have
acquired no trademark or service mark rights; or
“(iii) you are making a legitimate noncommercial or fair use
of the domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue.
A.
The ICANN UDRP Process
Each of the submissions
before me, and the one in comparison with the other, gives rise to reasonable
skepticism about many of the conclusory facts alleged by each party, including
some of the key disputed facts.
The ICANN process is
intended to be a fast-track inexpensive process narrowly focused on egregious
and provable cybersquatting, and therefor is without party-initiative
discovery, cross examination, personal hearings.
Being a process without
party-to-party discovery, cross examination or live hearings and their values
in testing the accuracy of self-serving conclusory allegations, the process is
a poor process for the resolution of swearing matches and issues submitted
without well-supportive circumstantial evidence, including evidence of context
of activities which are relevant to the decision and issues such as those
involving intent.
The burden of proof is
upon the Complainant on his/its issues, and the Respondent-Counter-claimant on
his/its counter-claim issues, but the Complainant commonly does not have good
or meaningful access to evidence necessary to carry his/its burden and
accessible to the other party.
For these various
reasons among others, the ICANN process is not binding, thereby so as to
accommodate its focus upon fast-track-low-cost at the sacrifice of good tools
for the development of truth as against exaggerations or other misleading
allegations, but rather is subject to a judicial-process re-determination if
timely initiated within ten days of this Decision.
Where there is
uncertainty as between conflicting allegations, the context I’ve just described
is a basis for finding against the party with a burden of proof.
Further, in ICANN UDRP
cases where relevant to such issues as what facts make a common law trademark,
or whatever evidence from persons with personal knowledge is inclusive of
- affidavits reporting
(i) a given context in detail (ii) supported by
illustrative exhibits, (iii) when events happened or were
continued or terminated,
and (iv) how did the
affiant come by personal
knowledge of the facts;
- how substantial in
terms of money or man-hours expended
in a mark promotion or
a product launch under a given mark;
- what are the relevant market segments and channels of
advertising and trade;
- whether events
actions or circumstances were de minimus or substantial and
significant in context, and why;
- nature, number of ad
units, time, market segment, and cost
and timing
of advertising the
product launch;
- types of channels of the advertising, as magazine ads with
many samples
submitted in evidence, bill board ads with
number and locations
submitted in evidence, radio tv or other
ads with amount, dollar value, costs of the project, and quantity and dates of sale of goods under a mark, etc.
is highly meaningful and persuasive of
some common points;
- the nature of the connection and relationship-uses of the
mark in connection
with
product A, B, and C, and when those connection/relationship events
occurred;
- a true copy of the official PTO the office PTO file of a
trademark application and Patent/Trademark Office Actions and applicant
responses thereto and a relevant
domain name application;
- a chronology of dates of first uses, applications and
registration dates.
Evidence not presented
in this case, in each of those categories, would have been helpful on one or
another issue in or potentially in this case. That kind of evidence is of high probative value, carries with
it high persuasiveness, on points to which it is relevant, whereas mere allegations of self-serving conclusions of contested issues are often almost
completely meaningless to the Panel.
These various
difficulties are substantial in this case, making it difficult to arrive at
well-founded conclusions on a number of subsidiary facts.
B. Party relationships
on each side.
There appears to be no
real contest on the point of Complainant Percy Miller, for our purposes here,
being accepted as either doing business as or owning effective controls over
“Boutit Inc.”, “Boutit Intellectual Properties …”, “100% U Clothing
Corporation,” and “Soldier University, Inc.,” “Universal Records / Motown.”
The evidence as to effective quality control and license contract
quality control among these entities is variable and in some instances weak to
non-existent.
On Complainant’s side,
some of these company and corporate forms appear to be trade names of
wholly-owned corporate entities, whether they be manufacturers, dealers,
distributors or outlets of Percy Miller’s products, or products of or some
other form of affiliate of Miller activities.
The primary product line for NOLIMITRECORDS is musical recordings of
almost any kind and entertainment performances. The primary product line for P.MILLER involved in our dispute is
clothing.
While there are
significant limits on the concept of accepting conclusory allegations as proven
without supporting evidence of some potentially relevant details, in the
context here of no challenge on this point, I shall treat these named entities
for our purposes here as alter egos one of another.
The reciprocal of that
conclusion of course applies also to Devine Mafa and his “Devine Corporation,”
which I construe to mean The New No Limit Records, Inc. I do not recall there being any evidence or
inference of a form of a trademark quality control in Devine Mafa over any
other dba nor any other dba excepting The New No Limit Records, Inc.
In neither submission
in this case is the record nearly complete in detail, but in the context of all
the submitted material and the possibly de minimus dispute on this detail, that
conclusion of the two paragraphs above seems like one reasonable application of
the parties positions.
I have not found any of
the Respondent’s promised evidence as to Financial Foundations Inc. of
Clearwater Florida, or the source of or support for its name.
C. The Dispute over <thenewnolimitsrecordc.com>
domain name
Respondent’s submission
¶1 is a good summary of all his allegations and presentations by way of defense
against the Complaint with respect to “THE NEW NO LIMIT RECORDS”. It will serve
a purpose if I work through that paragraph sentence by sentence with my
comments as to how a Panelist who is experienced in trademark law and practice
as well as domain name practice, reacts to those sentences.
Respondent
¶1, Sentence 1.
“The New No Limit Records Inc. owns The
Trademark (The New No Limit Records) listed with the United States Patent and
Trademark Office, hence has right to own this domain name (thenewnolimit
records.com)
I regard that as in error.
First, a state
corporate administrator’s granting of a corporate charter under any given name
is a ministerial function without any undertaking to resolve disputes among
businesses with respect to unfair competition, trademark rights, trade name
rights, or the like. No legal rights relating
to competitive use of marks/names are to be inferred from the existence of a
corporate name standing naked and alone, independent of the factors of the
competition or affecting the competition.
Rather the source of determination of disputed trademark/trade
name/domain name rights is the judicial system or arbitration/mediation, rather
than state administrators.
Second, “listed” is a
peculiar word here. By contrast with
persuasive evidence, I find in the record neither registration number nor a
straightforward statement that Respondent owns “common law” or “registered”
trademark rights in THENEWNOLIMITRECORDS. If Respondent relies on its extensive
use of THENEWNOLIMITRECORDS converting that term into a common law mark owned
by Respondent, that theme of its case fails for lack of the kinds of probative
evidence of a common law mark some of which I outlined above; when the use has
been short term the most probative evidence but for cost in time and money
which UDRP seeks to avoid, likely includes public survey. More relevant here it
includes dates of use, geographic extent of use on what dates, channels of
advertising, target market segment, expenditures in development of the market
and the trademark, how much use, what
product line, how much product sales under the mark if any, and a very explicit
explanation as to why Respondent’s claim is superior to Claimant’s given the
premise of my finding noted above that for our purposes here,
“THENEWNOLIMITRECORDS” is confusingly similar to “NOLIMITRECORDS”.
I find only a weak and
unpersuasive presentation of a theme for Respondent’s use of the mark before
Claimant had acquired its trademark rights through registration and the prior
uses going back to l992.
I find that Respondent
has failed to carry its burden of proof that it possesses a common law
trademark, or a matured regular registration of the mark based on use in
Commerce, or a past commercial use of the mark.
While it might be
argued that Respondent was not fully candid in failing to describe its
application to register THENEWNOLIMITRECORDS as an Intent To Use (“ITU”)
application, the record before me points to the conclusion that Respondent’s
trademark application is an Intent To Use (ITU) application. Such an
application is not legal evidence of any business activity or other use in Commerce
of the mark as a mark.