THE
NATIONAL ARBITRATION FORUM
P.O. BOX 50191
MINNEAPOLIS, MINNESOTA 55405 USA
SLEP-TONE ENTERTAINMENT CORPORATION
D/B/A SOUND CHOICE ACCOMPANIMENT TRACKS
14100 South Lakes Drive
Charlotte, North Carolina 28273
COMPLAINANT
CHRISTOPHER C. DREMANN
Christopher C. Dremann, P.C.
10925 David Taylor Drive, Suite 100
Charlotte, North Carolina 28262
COMPLAINANT'S REPRESENTATIVE
vs.
SOUND CHOICE DISC JOCKEYS, INC.
87 Federal City Road
Lawrenceville, New Jersey 08648
RESPONDENT
DECISION
Forum File No.: FA#2002000093636
The above-entitled matter came on for an administrative hearing on March 13, 2000, before Paul A. Dorf, Arbitrator, on the Complaint of Slep-Tone Entertainment Corporation, d/b/a South Choice Accompaniment Tracks, by Christopher C. Dremann, their attorney, hereafter "Complainant" against Sound Choice Disc Jockeys, hereafter "Respondent." There was no representation on behalf of Respondent. Upon the written submitted record, the following DECISION is made:
PROCEDURAL FINDINGS
Domain Name: sound-choice.com
Domain Name Registrar: Network Solutions
Response Due Date: March 3, 2000
The Complainant filed its complaint with the National Arbitration Forum on February 7, 2000. In compliance with the rules, The Forum transferred the Complaint to the Respondent on February 9, 2000. The Respondent did not submit a response to The Forum within twenty (20) days, which would have been March 3, 2000.
The Respondent registered the domain name with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name Network Solutions, the Respondent agreed to resolve any dispute regarding its domain name through ICANN'S Uniform Domain Name Dispute Resolution Policy.
This Complaint is based on the following registered trademarks:
United States Trademark Registration No. 1,923,448; SOUND CHOICE for pre-recorded audio cassette tapes and compact discs containing musical compositions and compact discs containing video related to musical compositions in International Class 9.
United States Trademark Registration No. 2,026,912; SOUND CHOICE for printed publications, namely catalogs pertaining to audio recordings in International Class 16.
European Community Trademark Registration No. 000115287; SOUND CHOICE for pre-recorded musical compositions and pre-recorded video related to musical compositions in International Class 9; printed publications pertaining to pre-recorded musical compositions and pre-recorded video related to musical compositions in International Class 16; and recording services pertaining to pre-recorded musical compositions and pre-recorded video related to musical compositions in International Class 41.
FINDINGS OF FACTS
Slep-Tone Entertainment Corporation ("Slep-Tone") is the owner of United States Trademark Registration No. 1,923,448 for the trademark SOUND CHOICE in International Class 9 for pre-recorded audio cassette tapes and compact discs containing musical compositions and compact discs containing video related to musical compositions. (Exhibit A) Slep-Tone is also the owner of United States Trademark Registration No. 2,026, 912 for the trademark SOUND CHOICE in International Class 16 for printed publications, namely catalogs pertaining to audio recordings. (Exhibit B) Slep-Tone is also the owner of European Community Trademark Registration No. 000115287 for the trademark SOUND CHOICE in International Class 9 for pre-recorded musical compositions and pre-recorded video related to musical compositions; in International Class 16 for printed publications pertaining to pre-recorded musical compositions and pre-recorded video related to musical compositions; and in International Class 41 for recording services pertaining to pre-recorded musical composition and pre-recorded video related to musical compositions. (Exhibit C) Slep-Tone has been using the mark SOUND CHOICE on or in connection with the goods and services stated herein in the music industry since at least as early as 1986 and has owned a United States trademark registration for the mark since 1989. Accordingly, the mark, SOUND CHOICE, is considered strong.
The second level domain of the Respondent's domain name "sound_choice.com" is virtually identical to Slep_Tone's registered trademarks. Slep_Tone also registered the mark SOUND CHOICE as the second level domain in its own domain name "soundchoice.com". Because Respondent's second level domain is virtually identical to Slep_Tone's trademark, Internet users and consumers are likely to be confused into believing there is some affiliation, connection, sponsorship, approval or association between Respondent and Slep_Tone, when in fact no such affiliation or association exists.
The likelihood of confusion is further increased by the fact that the Respondent and Slep-Tone operate within the same industry. Slep_Tone arranges previously recorded musical compositions and records the new arrangements in karaoke format. Slep_Tone manufactures and distributes audio cassettes and compact discs containing the musical compositions, and compact discs containing video related to the musical compositions for sale to others for use in karaoke shows. Respondent operates a disc jockey service in which professional disc jockeys play music and serve as masters of ceremonies for private functions such as weddings and parties. (Exhibit D) Karaoke shows are run by persons, known as karaoke jockeys or KJs, at private functions such as weddings and parties, as well as at commercial establishments. Many disc jockeys also host karaoke shows. While they are not in direct competition, both parties conduct business in the musical entertainment industry. Therefore, it is likely that the consumers of Respondent's goods and services will be deceived into believing that Respondent's goods and services originate with Slep_Tone when in fact they do not.
Furthermore, both Slep_Tone and Respondent use the Internet to advertise and promote their business activities. Slep_Tone markets and sells its audio cassettes and compact discs on its Web site at the URL www.soundchoice.com. Sales generated by the Web site represent a significant and growing portion of Slep_Tone's revenues. Respondent also promotes and advertises its services on its Web site at the LJRL www.sound_choice.com. Again, although the two parties do not directly compete, both parties are using the Internet to market their business activities.. Because the second level domains are virtually identical and both domain names contain the same top level domain, Internet users may be attracted to Respondent's Web site, believing it to be the Web site of Slep_Tone. As a result, Internet users may be confused into believing that there is some affiliation, connection, sponsorship, approval or association between Respondent and Slep-Tone, when in fact none exists.
In summary, the Respondent's second level domain name, "sound_choice" is virtually identical to the trademark SOUND CHOICE for which Slep_Tone owns multiple United States and foreign Trademark Registrations. There is a likelihood of confusion because both parties conduct business in the musical entertainment industry and both parties market their business activities on Internet Web sites that are accessed using virtually identical second level domain names.
Respondent should be considered as having no rights or legitimate interests in the domain name, "sound_choice.com" because Respondent's use of that domain name infringes Slep_Tone's rights in and to its registrations for the trademark, SOUND CHOICE. While Respondent also uses the term "Sound Choice" as a business name, that use of the term does not give Respondent rights to the domain name because that use is also an infringement of Slep_Tone's federal and common law trademark rights.
Respondent's domain name is virtually identical to Slep_Tone's federally registered trademark. In addition, both parties conduct business within the same industry and both parties advertise their businesses on the Internet. Because there is a likelihood of confusion, Respondent's domain name infringes Slep_Tone's registered trademark. Thus, Respondent should be considered as having no rights or legitimate interests in the domain name "sound_choice. com".
The domain name "sound_choice. com' ' should be considered as having been registered and being used in bad faith because Respondent failed to discharge its responsibility to select, register and use a domain name that does not infringe the rights of a third party, namely Slep-Tone.
Slep_Tone registered its domain name, "soundchoice.com", on September 19, 1995. (Exhibit E) Respondent registered the domain name in dispute on October 31, 1998. (Exhibit F) It is common practice when registering domain names to acquire the desired second level domain with the ".com" top level domain. If the desired second level domain is not available for use with the ".com" top level domain, then the registrant may settle for the second level domain in conjunction with either the ".net" or ".org" top level domains. Alternatively, the registrant may register a variation of the desired second level domain, such as adding hyphens or underscores between words, or by using common misspellings or phonetic spellings.
It appears that the Registrant chose the latter course of action in this case. When Respondent registered its domain name, it discovered that "soundchoice.com" was unavailable. Because the ".com" top level domain was not available, Respondent chose a variation that is virtually identical to Slep_Tone's trademark and registered "sound_choice.com" instead, which infringes Slep_Tone's rights in and to its registered trademarks as discussed above.
In Paragraph 2 of the Uniform Domain Name Dispute Resolution Policy ("Uniform Policy"), the domain name registrant represents and warrants to the domain name registrar that to the registrant's knowledge, "the registration of the domain name will not infringe upon or otherwise violate the rights of any third party." Further in the same paragraph, the registrant is charged with the responsibility to "determine whether your domain name registration infringes or violates someone else's rights."
In proceeding to register and use the domain name, "sound_choice. cone', Respondent has failed to discharge its contractual obligation to determine that its domain name does not infringe the rights of a third party. Certainly, Respondent knew that the domain name "soundchoice.com" was unavailable and, thus, had notice that there was a third party with an interest in the name "soundchoice". Because Respondent had notice of a third party's interest in the domain name "soundchoice", Respondent had the obligation to investigate the extent of that interest and to refrain from registering and using a domain name that infringes that third party's rights. Respondent failed to do so. Thus, the domain name, "sound_choice.com" should be considered as having been registered and being used in bad faith.
The remedy sought by Complainant is the transfer of the domain name registration to
Complainant. Rule 3(h)(x)
There are no other legal proceedings that have been commenced or terminated in connection with or relating to the domain name that is the subject of this Complaint. Rule 3(b)(xi)
Complainant, Slep_Tone Entertainment Corporation, asserts the following under penalty of perjury:
1. Complainant certifies that the information contained in the Complaint is to the best of the Complainant's knowledge complete and accurate and that this Complaint is not being presented for any improper purpose, such as to harass. Rule 3(b)(xiv)
2. Complainant certifies that the assertions in this Complaint are warranted under these Rules and under applicable law, as ft now exists or as it may be extended by a good faith and reasonable argument. Rule 3(b)(xiv)
CONCLUSIONS
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial, the undersigned makes the following findings and conclusions:
The undersigned has reviewed all the evidence presented in this case by both parties and has concluded to believe the facts and circumstances as set forth by the Complainant. For that reason, the undersigned decides that:
a.The domain name as registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
b.the Respondent has no rights or legitimate interests in respect of the domain name; and
c. the Respondent domain name has been registered and is being used in bad faith.
It is therefore just, right and proper that the domain name "sound-choice.com" be transferred to the Complainant
DECISION
Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "sound-choice.com REGISTERED BY RESPONDENT, SOUND CHOICE DISC JOCKEYS, INC. BE TRANSFERRED TO COMPLAINANT, SLEP-TONE ENTERTAINMENT CORPORATION.
Dated: March 13, 2000, by Judge Paul A. Dorf, (ret.), Arbitrator
PAUL A. DORF, Arbitrator
Adelberg, Rudow, Dorf, Hendler & Sameth
600 Mercantile Bank & Trust Building
2 Hopkins Plaza
Baltimore, Maryland 21201
410-539-5195
800-966-5195