WIDEawake-Deathrow Entertainment LLC v. Death Row Records South
Claim Number: FA1108001403443
Complainant is WIDEawake-Deathrow Entertainment LLC (“Complainant”), represented by Stephen J. Strauss of Fulwider Patton LLP, California, USA. Respondent is Death Row Records South (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <deathrowrecordssouth.com> and <tharowrecords.net>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2011; the National Arbitration Forum received payment on August 16, 2011.
On August 16, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <deathrowrecordssouth.com> and <tharowrecords.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@deathrowrecordssouth.com and postmaster@tharowrecords.net. Also on August 17, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant owns the intellectual property and music rights to the DEATH ROW RECORDS mark and music label.
Death Row Records, founded in 1991, has generated more that $7 billion in revenue through the sales of more than 100 million albums worldwide.
From the date of its founding, Death Row Records acquired and maintained common law rights in its mark.
In 2006, Death Row Records declared bankruptcy.
In 2009, Complainant purchased the Death Row Records music library and trademark rights, thereafter forming Complainant to handle all business dealings associated with the mark.
Complainant’s common law rights in the Death Row Records trademark have been valid and continuing from 1991 to the present.
Complainant holds registrations for the DEATH ROW RECORDS trademark, on file with the United States Patent and Trademark Office ("USPTO"), including Reg. No. 3,884,831, filed July 20, 2009, registered December 7, 2010).
Respondent registered the <deathrowrecordssouth.com> domain name on June 26, 2009, and the <tharowrecords.net> domain name on May 26, 2011.
Respondent’s domain names resolve through the <tharowrecords.net> domain name to a website which offers music services in competition with the business of Complainant.
Respondent’s <deathrowrecordssouth.com> and <tharowrecords.net> domain names are confusingly similar to Complainant’s DEATH ROW RECORDS mark.
Respondent is not commonly known by the <deathrowrecordssouth.com> and <tharowrecords.net> domain names.
Respondent is not authorized or licensed to use Complainant’s DEATH ROW RECORDS mark.
Respondent does not have any rights to or legitimate interests in the domain names <deathrowrecordssouth.com> and <tharowrecords.net>.
Respondent registered and uses the domain names <deathrowrecordssouth.com and <tharowrecords.net> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond to a UDRP complaint allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the DEATH ROW RECORDS trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).
Complainant’s rights in its DEATH ROW RECORDS trademark trace from July 20, 2009, the filing date of its application for registration with the USPTO. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effectiveness of a complainant’s trademark rights begin on the mark’s registration application filing date).
Complainant also has common law rights in the DEATH ROW RECORDS mark dating from 1991, when the original Death Row Records music label was created. Common law rights are sufficient to meet the requirements of Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and where secondary meaning was established); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that a complainant had established common law rights in the mark for purposes of Policy ¶ 4(a)(i) through continuous use of the mark since 1995).
Complainant’s trademark certificates identify its first use in commerce in 1991. Further, Complainant relies on a previous UDRP decision which determined that Complainant had rights in the DEATH ROW RECORDS mark dating from 1991. See WIDEawake-Deathrow Ent. LLC v. LogoMaster.com, FA 1382039 (Nat. Arb. Forum May 17, 2011). In that decision, the panel determined as follows:
Thus it can be assumed that rights in the mark DEATH ROW and in the grisly device of the man in the electric chair go back to approximately 1991. There does seem to have been a gap in their use between a declaration of bankruptcy in 2006 and 2009 when the company’s assets were acquired by Complainant at auction…The Panel is therefore prepared to accept that common law rights in the two trademarks on which Complainant relies, and both of which subsequently registered with the USPTO in 2010, are valid and long-standing.
For purposes of this proceeding, we adopt the prior panel’s conclusion as to the 1991 effective date of Complainant’s common law rights in its mark.
The <deathrowrecordssouth.com> and <tharowrecords.net> domain names are confusingly similar to Complainant’s DEATH ROW RECORDS mark. The <deathrowrecordssouth.com> domain name contains Complainant’s mark in its entirety, merely removing the spaces between the terms of the mark and adding the generic term “south” and the generic top-level domain (“gTLD”) “.com.” For its part, the <tharowrecords.net> domain name omits the DEATH portion of the mark as well as the spaces between the terms of the mark while adding the generic slang term “tha” and the gTLD “.net.” None of these alterations to the mark in forming the contested domain names distinguish the domains from the mark under the standards of the Policy. Respondent’s domain names are therefore confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between the terms of a mark and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a resulting domain name from the mark under Policy ¶ 4(a)(i)); further see WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding the <westjets.com> domain name confusingly similar to a complainant’s WEST JET AIR CENTER mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights to or legitimate interests in the <deathrowrecordssouth.com> and <tharowrecords.net> domain names under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of these allegations. Once Complainant has produced such a prima facie case, the burden shifts to Respondent to demonstrate that it has rights to or legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that once a complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii), whereupon the burden shifts to that respondent to show that it has such rights or interests).
Complainant has made a prima facie showing that Respondent lacks rights and legitimate interests in the <deathrowrecordssouth.com> and <tharowrecords.net> domain names, while Respondent has failed to respond to the allegations of the Complaint in this this proceeding. We may therefore presume that Respondent lacks rights to and legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Nonetheless, we will examine the evidence of record, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the <deathrowrecordssouth.com> and <tharowrecords.net> domain names, and that Respondent is not authorized or licensed to use Complainant’s DEATH ROW RECORDS mark. On this record, we conclude that Respondent is not commonly known by the either of the <deathrowrecordssouth.com> and <tharowrecords.net> domain names so as to have rights to or legitimate interests in either of them under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although a respondent listed itself as “AIM Profiles” in its WHOIS contact information, there was no evidence in the record to suggest that that respondent was commonly known by that domain name).
We also observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain names to resolve to a commercial website located at the <tharowrecords.net> domain name, and that the resolving website promotes music products in competition with the business of Complainant. Respondent’s use of the domain name in this manner 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.
See also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services competing with those offered by a complainant under its marks).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names in the manner alleged in the Complaint to compete with Complainant in the music industry. This disrupts Complainant’s business. Therefore, Respondent registered and is using the domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that a respondent’s registration of a domain name confusingly similar to a complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Further, it is evident on the record before us that Respondent registered and uses the disputed domain names in order to create consumer confusion as to the possibility of Complainant’s sponsorship of or affiliation with the domain names. In the circumstances here presented, we may comfortably presume that Respondent does this to procure financial gain through increased sales of its music products. Such use of the domain names evidences bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that a respondent’s use of the <arizonashuttle.net> domain name, which contained a complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to that respondent’s website, which offered competing travel services, came within the meaning of Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a contested domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for the website of a complainant to its own website, likely profiting in the process).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <deathrowrecordssouth.com> and <tharowrecords.net> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 20, 2011
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