eMusic.com Inc. v. Warren Bird c/o Ivolution
Entertainment Ltd.
Claim Number: FA0607000747940
PARTIES
Complainant is eMusic.com Inc. (“Complainant”), represented by Richard S. Mandel, of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036. Respondent is Warren Bird c/o Ivolution Entertainment Ltd. (“Respondent”), represented by Warren Bird, of Ivolution Group Ltd.West Greenbank, Hickmans Lane, Haywards Heath RH16 2DR, UK.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <emusicservices.net>, <emusicawards.net>, <emusicblogcast.com>, <emusiccard.com>, <emusicplugging.com>, <emusicmail.net>, <emusicstore.org>, <emusicspace.net>, <emusicpr.net>, <emusicpress.com>, <emusicdistribution.net>, <emusicbank.net>, <emusicadvertising.com>, <emusicanswers.com>, <emusicblog.com>, <emusicchart.com>, <emusicengine.com>, <emusicgig.com>, <emusicpay.com>, <emusicpayments.com>, <emusicsale.com>, <emusicticket.com>, <emusicmuso.com>, <emusiccorp.com> and <emusicpassport.com>, registered with Onlinenic, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 13, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 17, 2006.
On July 19, 2006, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the <emusicservices.net>, <emusicawards.net>, <emusicblogcast.com>, <emusiccard.com>, <emusicplugging.com>, <emusicmail.net>, <emusicstore.org>, <emusicspace.net>, <emusicpr.net>, <emusicpress.com>, <emusicdistribution.net>, <emusicbank.net>, <emusicadvertising.com>, <emusicanswers.com>, <emusicblog.com>, <emusicchart.com>, <emusicengine.com>, <emusicgig.com>, <emusicpay.com>, <emusicpayments.com>, <emusicsale.com>, <emusicticket.com>, <emusicmuso.com>, <emusiccorp.com> and <emusicpassport.com> domain names are registered with Onlinenic,
Inc. and that the Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent
is bound by the Onlinenic, Inc. registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 25, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 14, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@emusicservices.net, postmaster@emusicawards.net, postmaster@emusicblogcast.com, postmaster@emusiccard.com, postmaster@emusicplugging.com, postmaster@emusicmail.net,
postmaster@emusicstore.org, postmaster@emusicspace.net, postmaster@emusicpr.net,
postmaster@emusicpress.com, postmaster@emusicdistribution.net, postmaster@emusicbank.net,
postmaster@emusicadvertising.com, postmaster@emusicanswers.com, postmaster@emusicblog.com,
postmaster@emusicchart.com, postmaster@emusicengine.com, postmaster@emusicgig.com,
postmaster@emusicpay.com, postmaster@emusicpayments.com, postmaster@emusicsale.com,
postmaster@emusicticket.com, postmaster@emusicmuso.com, postmaster@emusiccorp.com
and postmaster@emusicpassport.com by e-mail.
A timely Response was received and determined to be complete on August
14, 2006.
Complainant filed a timely Additional Submission on August 21, in
accordance with Supplemental Rule 7.
Respondent also filed a timely Additional Submission on August 28, 2006.
On August 22, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Sandra J. Franklin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <emusicservices.net>, <emusicawards.net>, <emusicblogcast.com>, <emusiccard.com>, <emusicplugging.com>, <emusicmail.net>, <emusicstore.org>, <emusicspace.net>, <emusicpr.net>, <emusicpress.com>, <emusicdistribution.net>, <emusicbank.net>, <emusicadvertising.com>, <emusicanswers.com>, <emusicblog.com>, <emusicchart.com>, <emusicengine.com>, <emusicgig.com>, <emusicpay.com>, <emusicpayments.com>, <emusicsale.com>, <emusicticket.com>, <emusicmuso.com>, <emusiccorp.com> and <emusicpassport.com> domain names are confusingly similar to Complainant’s EMUSIC mark.
2. Respondent does not have any rights or legitimate interests in the <emusicservices.net>, <emusicawards.net>, <emusicblogcast.com>, <emusiccard.com>, <emusicplugging.com>, <emusicmail.net>, <emusicstore.org>, <emusicspace.net>, <emusicpr.net>, <emusicpress.com>, <emusicdistribution.net>, <emusicbank.net>, <emusicadvertising.com>, <emusicanswers.com>, <emusicblog.com>, <emusicchart.com>, <emusicengine.com>, <emusicgig.com>, <emusicpay.com>, <emusicpayments.com>, <emusicsale.com>, <emusicticket.com>, <emusicmuso.com>, <emusiccorp.com> and <emusicpassport.com> domain names.
3. Respondent registered and used the <emusicservices.net>, <emusicawards.net>, <emusicblogcast.com>, <emusiccard.com>, <emusicplugging.com>, <emusicmail.net>, <emusicstore.org>, <emusicspace.net>, <emusicpr.net>, <emusicpress.com>, <emusicdistribution.net>, <emusicbank.net>, <emusicadvertising.com>, <emusicanswers.com>, <emusicblog.com>, <emusicchart.com>, <emusicengine.com>, <emusicgig.com>, <emusicpay.com>, <emusicpayments.com>, <emusicsale.com>, <emusicticket.com>, <emusicmuso.com>, <emusiccorp.com> and <emusicpassport.com> domain names in bad faith.
B. Respondent makes the
following assertions:
1.
Complainant does not have rights in the EMUSIC mark because “emusic” is
a “common-use” term, and Respondent’s <emusicservices.net>, <emusicawards.net>, <emusicblogcast.com>, <emusiccard.com>, <emusicplugging.com>, <emusicmail.net>, <emusicstore.org>, <emusicspace.net>, <emusicpr.net>, <emusicpress.com>, <emusicdistribution.net>, <emusicbank.net>, <emusicadvertising.com>, <emusicanswers.com>, <emusicblog.com>, <emusicchart.com>, <emusicengine.com>, <emusicgig.com>, <emusicpay.com>, <emusicpayments.com>, <emusicsale.com>, <emusicticket.com>, <emusicmuso.com>, <emusiccorp.com> and <emusicpassport.com> domain names would not create confusion
with Complainant’s EMUSIC mark.
2.
Respondent has rights and legitimate interests in the <emusicservices.net>, <emusicawards.net>, <emusicblogcast.com>, <emusiccard.com>, <emusicplugging.com>, <emusicmail.net>, <emusicstore.org>, <emusicspace.net>, <emusicpr.net>, <emusicpress.com>, <emusicdistribution.net>, <emusicbank.net>, <emusicadvertising.com>, <emusicanswers.com>, <emusicblog.com>, <emusicchart.com>, <emusicengine.com>, <emusicgig.com>, <emusicpay.com>, <emusicpayments.com>, <emusicsale.com>, <emusicticket.com>, <emusicmuso.com>, <emusiccorp.com> and <emusicpassport.com> domain names because “emusic” is a
“common-use” term, because Respondent operates in the music industry, and has
developed a website under <emusicawards.net>.
3. Respondent did not register and use the <emusicservices.net>, <emusicawards.net>, <emusicblogcast.com>, <emusiccard.com>, <emusicplugging.com>, <emusicmail.net>, <emusicstore.org>, <emusicspace.net>, <emusicpr.net>, <emusicpress.com>, <emusicdistribution.net>, <emusicbank.net>, <emusicadvertising.com>, <emusicanswers.com>, <emusicblog.com>, <emusicchart.com>, <emusicengine.com>, <emusicgig.com>, <emusicpay.com>, <emusicpayments.com>, <emusicsale.com>, <emusicticket.com>, <emusicmuso.com>, <emusiccorp.com> and <emusicpassport.com>
domain names in bad faith because Respondent did
not know EMUSIC was a registered trademark.
B. Additional Submissions
1.
The primary
point in Complainant’s Addition Submission is that ICANN Panels cannot properly
address the invalidity of a Registered Trademark based on the contention that
the mark is in common use.
2.
Respondent
reiterates its original arguments in its Additional Submission, and argues
generally that there should be enough room in the music industry and on the
Internet for more than one player to use the brand “emusic”.
FINDINGS
Complainant holds Registered Trademarks in
the United States, Canada, the United Kingdom, Japan, South Korea, Taiwan,
Benelux, China and Germany for the mark EMUSIC. The first use date in the U.S. Registration is June 9, 1995, more
than 11 years ago. Complainant also
holds various domain names incorporating its EMUSIC mark, including
<emusic.com>, registered in 1999.
Respondent appears to have filed its twenty-five “emusic” domain names
at various times within the last year.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Complainant has established rights in the EMUSIC mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,036,441 issued February 11, 1997), the United Kingdom Patent Office (“UKPO”) (Reg. No. 2,209,519 issued September 23, 1999) as well as registrations in other jurisdictions. In Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002), and in Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002), the panels held that the complainant’s registration of a mark with a governmental authority, such as the USPTO, is evidence that a mark is distinctive.
This Panel agrees with Complainant and many previous Panels that it is not in the Panelist’s purview to invalidate a registered trademark. See Register.com v. Reile, FA 208576 (Nat. Arb. Forum, Jan. 27, 2004) (“Panel will simply defer, as it must, to the USPTO’s determination implicit in its having granted a registration, i.e., that each of Complainant’s REGISTER marks have acquired sufficient distinctiveness and hence are not merely descriptive, and thus qualify for trademark protection and enjoy all the rights afforded thereby.”). As Respondent is well aware, there are other venues to challenge trademark validity.
All twenty-five of Respondent’s “emusic” domain names are confusingly similar to Complainant’s EMUSIC mark. Each of the domain names include Complainant’s mark in its entirety, and merely appends a generic term to the end of Complainant’s mark before adding a generic top-level domain, such as “.com” or “.net.” The generic terms used by Respondent include the terms “services,” “store,” “ticket” and “advertising” amongst others. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
As
Respondent states, Complainant and Respondent are in the same music
industry. In this Panel’s view, it
would be impossible for Respondent to make any use of “emusic” as a brand (as
Respondent intends to do) and not cause confusion.
The Panel finds that Complainant has
satisfied Policy ¶ 4(a)(i).
The Panel finds that by submitting a Complaint and asserting that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii), Complainant has established a prima facie case under the Policy. The creation of a prima facie case shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”).
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain names because twenty-four out of Respondent’s twenty-five domain names are currently inactive and Respondent has not shown any demonstrable preparations for use of those domain names. Respondent’s disputed domain names do not resolve to any content and thus, are not being used for a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Previous panels have found that registering and holding a domain name that is identical or confusingly similar to another’s mark without any demonstrable preparations for use does not demonstrate rights or legitimate interests in the disputed domain name. For example, in Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000), the panel held that the respondent did not establish rights or legitimate interests in the disputed domain name through mere registration of the mark. Further, in Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001), the panel found that even where the disputed domain name resolved to an “under construction” page, that was not sufficient evidence of demonstrable preparations to use the disputed domain name to establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Finally, in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel held that where the respondent asserts an intent to develop a website, the respondent is required by Policy ¶ 4(c)(i) to put forth concrete evidence of demonstrable preparations to use the disputed domain name, mere claims of intent to use do not suffice to establish rights or legitimate interests.
The Respondent in this case did not submit any concrete evidence of, but only referred to plans of, developing a family of websites under the name eMusicCorp. Even if developed, as in the one case of <emusicawards.net> where Respondent is using the disputed domain name to redirect Internet users to Respondent’s website regarding a singing and songwriting competition, Respondent is illegitimately trading off the Complainant’s mark. The website has numerous sponsor links which presumably pay advertising fees to Respondent. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel found that the respondent’s use of a confusingly similar domain name to attract Internet users seeking the complainant’s website to the respondent’s website for the benefit of the respondent was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Similarly, in Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003), the panel found that the respondent’s use of a confusingly similar domain name to attract Internet users to the respondent’s website demonstrated a lack of legitimate rights or interests pursuant to Policy ¶ 4(a)(ii). Thus, this Panel finds that Respondent’s use of the <emusicawards.net> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent is using a domain name confusingly similar to Complainant’s mark to redirect Internet users to Respondent’s website for Respondent’s benefit.
Further, Respondent’s WHOIS information shows that Respondent is not commonly known by the disputed domain names. Respondent has no permission from Complainant to include Complainant’s EMUSIC mark in any domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining whether Policy ¶ 4(c)(ii) applies); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
By registering twenty-five domain names containing Complainant’s EMUSIC mark combined with generic terms, Respondent has exhibited a pattern of preventing Complainant from reflecting its mark in domain names which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). In Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000), the panel found that the respondent had exhibited bad faith registration and use pursuant to Policy ¶ 4(b)(ii) through one instance of registering multiple infringing domain names. See Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”); see also Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).
Respondent’s use of
the <emusicawards.net> domain name to redirect Internet users to
Respondent’s website is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). Internet users
seeking Complainant’s website may find themselves redirected to Respondent’s
website because of the confusing similarity between the <emusicawards.net>
domain name and Complainant’s EMUSIC mark.
Once at Respondent’s website, Internet users may mistakenly believe that
the website is sponsored by or affiliated with Complainant, and Respondent is
no doubt profiting from this confusion by posting banner advertisements on its
website. In Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003), the panel held that, “registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”
Complainant states that its EMUSIC mark is well known within the music industry, that Complainant is the second largest digital music store in the United States, and that it operates worldwide, including in the United Kingdom, where Respondent resides. Respondent did not deny any of these statements. Complainant also asserts, and Respondent denies, that Respondent had constructive knowledge in the mark based on Complainant’s registrations of the mark with the USPTO, UKPO and other authorities. This Panel does not find it credible that Respondent could be operating in the music industry and not know of Complainant eMusic.com, Inc. and that Complainant asserts rights in the trademark EMUSIC. Indeed, Respondent states that it placed its own recording artists with Complainant. A simple check of the trademark registries in either the U.S. or the U.K. would have confirmed Complainant’s trademark rights in the well-known name. The Panel finds that Respondent had actual or constructive knowledge of Complainant’s rights in the EMUSIC mark, evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”)
Finally, Respondent has made no demonstrable preparations to use twenty-four out of twenty-five of the disputed domain names, further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). In Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000), the panel found that the respondent’s holding of inactive domain names without evidence of preparations for use was evidence of bad faith registration and use.
The Panel finds that Complainant
has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emusicservices.net>, <emusicawards.net>, <emusicblogcast.com>, <emusiccard.com>, <emusicplugging.com>, <emusicmail.net>, <emusicstore.org>, <emusicspace.net>, <emusicpr.net>, <emusicpress.com>, <emusicdistribution.net>, <emusicbank.net>, <emusicadvertising.com>, <emusicanswers.com>, <emusicblog.com>, <emusicchart.com>, <emusicengine.com>, <emusicgig.com>, <emusicpay.com>, <emusicpayments.com>, <emusicsale.com>, <emusicticket.com>, <emusicmuso.com>, <emusiccorp.com> and <emusicpassport.com> domain names be TRANSFERRED from
Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 4, 2006
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