Richard A. Nielsen a/k/a Rick Nielsen, is the lead guitarist, backup vocalist, and primary songwriter for the American rock band Cheap Trick was just award the domain name ricknielsen.com in a UDRP handled by the National Arbitration Forum

As I read through the case I got the feeling that had the domain holder had a different attorney he may have gotten a different result.

The case cites two other decisions for other famous musicians, one for Mick Jagger and the other for Paul McCartney.

While Cheap Trick is a well-known band, sorry Mr. Nielsen your common law fame doesn’t rank up there with these other two gentlemen.

Here are the relevant facts and findings by the one member panel:

Nielsen “been a successful performing artist for nearly 50 years, performed in more than 5,000 shows, recorded 26 albums, sold over 20 million records, appeared on 29 movie soundtracks, and has been awarded 40 gold and platinum records but also had a trademark for the term RICK NIELSEN filed August 3, 2012.

The domain holder registered the domain back on June 30, 2005.

“Prior UDRP Panels have held that musicians and entertainers can indeed possess common law trademark rights in their personal names under the UDRP.  See Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (this Panelist determined that the complainant held common law trademark rights in his famous name MICK JAGGER); see also MPL Commc’ns Ltd v. Hammerton, FA 95633 (Nat. Arb. Forum Oct. 25, 2000) (finding that the complainant owned common law rights to the name Paul McCartney).”

“Here, while not as famous as the MICK JAGGER common law mark, the Panel finds that Complainant has presented sufficient evidence – particularly the evidence relating to the museum – to show common law rights in the RICK NIELSEN name and mark.  Therefore, the Complainant has successfully established the first prong of Policy ¶ 4(a)(i).”

“Respondent does not own trademark rights or registrations for the RICK NIELSEN mark and is not individually known by the name RICK NIELSEN.  Within its Additional Submission, Complainant has shown that Respondent has not brought forth any evidence indicating that it is commonly known by the disputed domain name.  The WHOIS information identifies the registrant of the <ricknielsen.com> domain name as “Nextnet Tech / Domain Dept,” which is not similar to the domain name at issue.  Respondent is certainly not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”

“Respondent essentially has admitted, as Complainant has alleged and shown, that Respondent is using the disputed domain name to divert Internet users to unassociated, music-related advertising websites and that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”

“Complainant provides a screenshot of the resolving website, which the Panel notes contains various headings under the “Related Searches,” section such as “Christian Music,” “Electric Guitars,” “Music,” and many others.  “

“Complainant argues, and Respondent admits, that Respondent is collecting pay-per-click fees through the use of the website.  ”

“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  “

“While the Complainant’s name and the domain name are clearly identical, the issue is the existence of a common law mark, for Complainant has only applied for a trademark.  Here, Complainant has presented facts showing that his name has attained some secondary meaning.  While the name is not as famous as that of Mick Jagger, see Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000), the evidence of secondary meaning, including the evidence of a museum dedicated to Complainant’s musicianship, is sufficient to show a common law mark.”

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

“Accordingly, it is Ordered that the <ricknielsen.com> domain name be TRANSFERRED from Respondent to Complainant.”