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James Brown doesn’t “Feel Good” after losing rights to JamesBrown.com

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In a recent UDRP decision, the Estate of James Brown submitted a Complaint requesting that they be transferred the rights to the domain name jamesbrown.com from the Respondent, Owned by LAC Music, represented by Gregory J. Chamberlain. A three-member Panel was chosen to resolve the dispute; the result being that the domain name rights were not transferred and currently reside with Owned by LAC Music.

Even though the Estate of James Brown lost the challenge to the domain name rights, its representatives did attempt to prove all three steps of ICANN’s policy, which is required to prevail:

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

The first point is a seemingly effortless argument, which the Respondent did not even attempt to challenge and was taken as admitted. The second point was not ruled on by the Panel and instead, they first looked to the third point. Concerning the third point, the Complainant explained that “the registration of the domain was in bad faith because it was in violation of the registration agreement which precludes registration in contravention of the rights of third parties.” However, the Panel had different thoughts, referencing on the Complainant’s exhibits by stating, “Complainant has failed to provide any evidence which would rebut the evidence provided by Respondent to the effect that the domain <jamesbrown.com> was registered and used during the life of James Brown with at least his tacit consent. In fact, even the declaration evidence provided by Complainant indicates that Mr. Brown may have consented to Respondent’s actions in registering the domain in dispute.”

Failing to establish this third point left the Panel no reason to return to examine the second point, already showing that the Complainant has failed to meet the burden of proof necessary. As a result, the relief was denied and the rights to the domain name rights were left with Owned by LAC Music.

To read the full decision, click here.

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2 Comments Post a comment
  1. Hi Amlan:Something in the decision seems a bit odd to me (though not able to place my fgneirs on the precise spot). But let me try and spell out what worries me about this decision…Anyone is entitled to register a domain name so long as they do not fall within the scope of the policy (bad faith and all that). Which means I can be deprived of a name only if I register in bad faith, coupled with a valid TM right (in favour of challenger) and lack of legitimate interest on my part. But I cannot be divested of a domain just because I lack a legitimate interest. Bad faith has to be necessarily proven. And mere non use should not (in my view) constitute bad faith, particularly when the trademark itself is otherwise a generic terms such as internet.Even otherwise, I would argue that using the term “internet” to attract internet traffic (not sure if he used it for selling ads etc) or to sell the name etc online is very much in the spirit of the term “internet” and should qualify as “legitimate” use. And is not “bad faith”. And this precisely is the problem when cybersquatting policy is extended too far to capture even generic terms such as “internet” and convert them to quasi proprietary terms. Thirdly, was the “trademark” internet in actual use by complainant. or had he merely got an Indian registration but not actually used it on his tobaco products?Lastly, I just flipped through the INDP arbitrator names and I’m not sure that a number of them are actually known for their trademark expertise. How did they get picked? We should investigate criteria for picking these arbitrators? For this pick would pretty much determine the quality of jurisprudence we get out of this body. I remember having scanned some of their decisions some years back, and their level of legal knowledge and articulation left a lot to be articulated. They make the IPAB (in its past avatar) look really really good!

    November 28, 2013
  2. The Godfather Speaks #

    The situation was as follows…. Gregory J. Chamberlain was the overseer of the domain name for James Brown when he was alive. LAC Management was James Brown’s management company and it’s founder was an Agent at Universal Attractions for many years, the official booking agent for James Brown (Godfather of Soul). The father of that agent was also the agent for James Brown decades ago and both men had a long history doing business with James Brown. James Brown personally hated the Internet and thought it was evil, and he only wanted a website to be in use to help the “Hardest Working Man in Show Business” stay booked, as well as keep his entire band working, during his life and after his death.

    The so called Estate of James Brown, that was made of attorneys who James Brown never ever met, thought they were entitled to take control of the domain without first considering what James Brown’s wishes were, in so far as keeping the James Brown Band working after his death. That is precisely what the site was being used for.

    Furthermore, when James Brown passed, he owed several thousand dollars in fees for Internet related business. When the attorneys for the estate tried to take the domain without paying the past due fees, that is when they thought they could use the UDRP to recover the domain. They failed. Ultimately, they had to settle up, including the costs to defend the respondents in their failed proceeding.

    January 31, 2014

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