Guitar Center, Inc. v. Wanzhongmedia / Zhong Wan
Claim Number: FA1307001512055
Complainant is Guitar Center, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Wanzhongmedia / Zhong Wan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guitarcentet.com> and <guitatcenter.com>, registered with EuroDNS S.A.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2013; the National Arbitration Forum received payment on July 30, 2013.
On August 1, 2013, EuroDNS S.A. confirmed by e-mail to the National Arbitration Forum that the <guitarcentet.com> and <guitatcenter.com> domain names are registered with EuroDNS S.A. and that Respondent is the current registrant of the names. EuroDNS S.A. has verified that Respondent is bound by the EuroDNS S.A. 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 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 2013 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@guitarcentet.com, postmaster@guitatcenter.com. Also on August 12, 2013, 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 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
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
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent made the following domain name registrations:
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Guitar Center Inc., which list its address as Westlake Village, CA, USA. Complainant owns the mark GUITAR CENTER which it states it first used in 1965 for retail musical instrument sales and services and which it has continuously since that time. Complainant alleges that it is the world’s largest retailer of musical instruments as well as pro audio and recording equipment. Complainant owns several domestic registrations for the mark and operates hundreds of retail stores as well as engages in e-commerce from its many websites, including <guitarcenter.com>.
Respondent is Wanzhongmedia/Zhong Wan which list its address as Shen Zhen City, China. Respondent’s registrar’s address is listed as Luxemborg. Respondent registered the disputed domains on or about the following days;
<guitarcentet.com>, on March 2, 2009; and, <guitatcenter.com>, on November 17, 2005.
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."
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:
(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.
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 the respondent’s failure to respond 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.”).
Complainant claims that it uses the GUITAR CENTER mark to sell guitars and other musical instruments such as drums and keyboards, along with related products. Complainant has registered the GUITAR CENTER mark with the USPTO (Reg. No. 1,290,481 registered on August 14, 1984). In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), the panel noted that a trademark need not be registered in the same location as a respondent. The Panel finds that Complainant has established rights in the GUITAR CENTER mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant next argues that Respondent has registered the <guitarcentet.com> and <guitatcenter.com> domain names, each of which merely affix the gTLD “.com” and make single character alterations to the mark, either through adding a new letter into the mark or by replacing one of the mark’s letters with an indiscriminate character. The Panel notes that the <guitarcentet.com> and <guitatcenter.com> domain names are formed by removing the spacing in the mark, adding the gTLD, and substituting the letter “t” for the letter “r,” or the letter “r” for the letter “t.” The Panel finds the deletion of spacing and the addition of the gTLD to be irrelevant under the Policy. 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 terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Previous panels have also found that when the only substantive difference between a trademark and a disputed domain name is the modification a single-character or letter, the domain name is confusingly similar to the underlying mark. See, e.g., Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel finds that the <guitarcentet.com> and <guitatcenter.com> domain names are confusingly similar to the GUITAR CENTER mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant asserts that Respondent has not been commonly known by these domain names, and Complainant has not otherwise authorized or licensed Respondent’s use of the GUITAR CENTER mark in domain names. The Panel notes that the WHOIS information lists “Wanzhongmedia / Zhong Wan” as the registrant. Previous panels have favored complainants under Policy ¶ 4(c)(ii) when there was no evidence to even suggest that the respondent could potentially be known by the disputed domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). The Panel finds that Respondent is not known by the disputed <guitarcentet.com> and <guitatcenter.com> domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses these <guitarcentet.com> and <guitatcenter.com> domain names to redirect Internet users to a website that features generic links to third-party websites, some of which are operated by Complainant’s competitors. Complainant states that Respondent cannot appropriate confusingly similar domain names in such a manner and claim a bona fide offering of goods or services. The Panel notes that both of the <guitarcentet.com> and <guitatcenter.com> domain names resolve to websites that promote an array of hyperlinks to various related and unrelated goods. See Complainant’s Ex. H. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel examined a disputed domain name’s website, which consisted entirely of generic hyperlink advertisements, and concluded that there was no basis to find that such a use could be bona fide without some other evidence to the contrary. The Panel finds that Respondent is not providing either a Policy ¶ 4(a)(i) bona fide offering of goods or services, or a Policy ¶ 4(a)(iii) legitimate noncommercial or fair use through the present use of the domain names.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has placed “some or all of” the <guitarcentet.com> and <guitatcenter.com> domain names for sale. Complainant suggests that the offering of domain names for sale, even to a third-party, supports a finding of bad faith. The Panel notes that the WHOIS information obtained through DomainTools includes hyperlink advertisements indicating that the <guitatcenter.com> domain name is for sale for $3,100 USD, and the <guitarcentet.com> domain name is for sale for $637. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel concluded that the public offering of a domain name for general sale constituted bad faith under Policy ¶ 4(b)(i). The Panel finds that the solicitation of the disputed domain names through hyperlink advertisements constitutes Policy ¶ 4(b)(i) bad faith.
Complainant also notes that Respondent has been subject to other UDRP proceedings. See, e.g., Ashley Furniture Industries, Inc. v. Wanzhongmedia / Zhong Wan, FA 1471619 (Nat. Arb. Forum Jan. 10, 2013); Taxhawk, Inc. v. Wanzhongmedia / Zhong Wan, FA 1501397 (Nat. Arb. Forum July 1, 2013); KOHL'S ILLINOIS, INC. v. Wanzhongmedia / Zhong Wan, FA 1429792 (Nat. Arb. Forum Apr. 9, 2012). Previous panels have concluded that there is an implication of Policy ¶ 4(b)(ii) bad faith when a respondent has been subject to prior UDRP proceedings. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”). The Panel finds that Respondent registered the <guitarcentet.com> and <guitatcenter.com> domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant claims that Respondent is unfairly disrupting Complainant’s legitimate business through the use of the confusingly similar <guitarcentet.com> and <guitatcenter.com> domain names for purposes of promoting competitive goods. The Panel notes that all of the domain names include various hyperlinks to the kinds of goods and services that Complainant provides: the sale of musical instruments and sheet music. See Complainant’s Ex. H. Previous panels have concluded that the presence of hyperlinks to competitive businesses is a sufficient ground for concluding that a respondent registered a confusingly similar domain name for an unfair and disruptive purpose. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel finds that the <guitarcentet.com> and <guitatcenter.com> domain names were registered as an act of bad faith disruption pursuant to Policy ¶ 4(b)(iii).
Complainant next argues that Respondent promotes a likelihood that Internet users will confuse Complainant as the source or origin of the competing and unrelated hyperlink advertisements solicited through the domain names’ websites. Complainant claims that Respondent likely generates advertising profits through the hosting of such advertisements. The Panel finds that the domain names are used to promote hyperlink advertisements, some of which send Internet users to competing businesses. See Complainant’s Ex. H. In BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002), the panel held that a likelihood of confusion exists when a respondent uses a confusingly similar domain name to profit off of the chance that confused Internet users will associate the hyperlinks on the domain name’s website with the complainant and its mark. The Panel finds that the <guitarcentet.com> and <guitatcenter.com> domain names were registered by Respondent to take advantage of the likelihood that Internet users will confuse Complainant as the source or origin of the hyperlinked products and services, and thus Respondent has acted in Policy ¶ 4(b)(iv) bad faith.
Complainant contends that Respondent’s typosquatting is in itself evidence of bad faith. The Panel notes that the disputed domain names were formed through capturing a misspelling of the domain name—through the transposition of the letters in the mark—or through the addition of another character that is located next to the character a user would use in correctly forming the domain name (e.g., <guitarcentet.com> placed a letter “t” when the correct letter “r” is right next to the letter “b” on a QWERTY keyboard). In Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), it was asserted that when domain names appear to be common misspellings of a trademark, the misspelling of the mark alone can provide a basis for finding bad faith registration under Policy ¶ 4(a)(iii), even if typosquatting is not enumerated, and is not as engrained in the Policy as is often suggested in complaints submitted under the UDRP. The Panel finds that the disputed domain names exemplify typosquatting and as such evidence Policy ¶ 4(a)(iii) bad faith registration.
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <guitarcentet.com> and <guitatcenter.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 23, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page