Estate of James Brown  v. LAC Music – Jack Bart c/o Gregory J. Chamberlain and

A recent decision[1] rendered by the National Arbitration Forum in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), highlights the limitations of the Policy when it comes to matters that fall outside the scope of the Policy.

LAC Music (also known as LAC Management, Inc.), was allegedly contacted by the Estate of James Brown (the “Estate”) and offered to sell the domain (the “Domain Name”) to the Estate. [N.B.  LAC Management, Inc. manages the RJ & The James Brown Band, the group which performed with James Brown up until his death in 2006[2]].

The Estate proceeded to file a complaint with the National Arbitration Forum in accordance with the Policy.  In their complaint, the Estate stated that they held the common law and federal rights to the trademark “James Brown”.  They asserted that LAC Music had no rights or legitimate interest in the Domain.

In order to be successful in a Policy complaint, the Estate had to prove three elements, in accordance with Paragraph 4(a) of the Policy:

(1)          the domain name registered by the 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 Estate was able to prove the first element, however, they had some trouble when it came to the third element of bad faith.  LAC Music contended that the registration of the Domain Name was obtained with the consent of James Brown and was used for legitimate business purposes during the lifetime of James Brown.

The Estate responded to LAC Music’s response with arguments surrounding the laws of agency and how they apply to LAC Music’s relationship with the late James Brown. The Estate also applied estate law to the evidence presented by LAC Music.

The panel, of three arbitrators, disregarded the agency and estate law arguments and declared that these were outside the scope of the Policy and not applicable to the arbitration proceeding.  They then continued with their analysis of the three elements and found that the Complainant had failed to prove that the Domain Name was registered in bad faith, as even the Estate admitted in their own evidence that LAC Music had registered and used the Domain Name during James Brown’s lifetime with his consent.

Where does this leave the Estate?  Although the ICANN dispute resolution process was unable to address their arguments regarding agency and estate law, a court of competent jurisdiction may still be able to consider these.  For now the Domain Name will continue to be owned by LAC Music.

Should you have any trademark or domain name queries, we would be pleased to discuss them with you.