BMG Direct
Marketing, Inc. v "BM GMusic Services" Russia a/k/a Private
Claim Number: FA0108000098466
PARTIES
Complainant is BMG Direct Marketing, Inc., New York, NY (“Complainant”)
represented by Brian M. Davis, of Alston & Bird, LLP. Respondent is "BM GMusic Services" Russia a/k/a Private, Moscow,
Russia (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <wwwbmgmusicservice.com>, <bmgmusicservices.com>, registered with BulkRegister.com, Inc.
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 3, 2001; the Forum received a hard copy of the Complaint on August 7, 2001.
On August 14, 2001, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain names <wwwbmgmusicservice.com> and <bmgmusicservices.com> are registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name. BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, 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 August 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 4, 2001 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@wwwbmgmusicservice.com and postmaster@bmgmusicservices.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a well known
provider of web-based and club services relating to prerecorded audio and music
products and other goods. These
services are provided through a variety of channels, including through Complainant’s
website at <bmgmusicservice.com>.
Complainant has exclusively used the service mark BMG MUSIC SERVICE to
identify its services. Respondent
acting in bad faith, has registered and is using the domain names <wwwbmgmusicservice.com> and <bmgmusicservices.com>.
Respondent’s domain names are confusingly similar to Complainant’s BMG
MUSIC SERVICE mark, and Respondent has no preexisting rights or legitimate
interests in respect of said domain names.
Respondent’s actions fall squarely within the activities that the ICANN
Policy is intended to remedy.
Respondent is using the domain names <wwwbmgmusicservice.com> and <bmgmusicservices.com> to intentionally misdirect individuals seeking Complainant’s website to a competitor’s website and a gambling website affiliated with Respondent, and has linked to other websites in the past, notwithstanding that Respondent has no rights or legitimate interests in respect of said domain name, and the subject domain names are confusingly similar to Complainant’s BMG MUSIC SERVICE mark.
B. Respondent
No Response received.
FINDINGS
Complainant is a corporation duly organized and existing under the laws of Delaware, having a principal place of business in New York City, New York. Complainant has used the BMG MUSIC SERVICE mark in commerce in connection with the retail sale of prerecorded audio and music products since at least as early as 1986. Further, Complainant registered the domain name <bmgmusicservice.com> on December 19, 1995, and expanded its business by operating a retail website at that domain name since January, 1998.
The services of Complainant have been and are still being advertised and/or promoted under the BMG MUSIC SERVICE mark in various forms of media. Complainant has expended a great deal of time and money promoting its BMG MUSIC SERVICE mark. In the year 2000 alone, Complainant had sales revenue of approximately $800,000,000 (U.S.) and spent $115,000,000 (U.S.) on advertising and promotional materials featuring this mark. Complainant’s <bmgmusicservice.com> website had approximately 24 million visitors and generated approximately $80,000,000 (U.S.) in sales revenue in the year 2000.
Respondent registered the <bmgmusicservices.com> and <wwwbmgmusicservice.com> domain names on January 21, 2000 and February 13, 2000,
respectively.
Respondent has used the disputed domain names as a portal to divert Internet traffic to pop-up advertisements for various goods and services. Respondent generates a profit from the advertisers who place the advertisements on his site.
DISCUSSION
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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.
Identical and/or
Confusingly Similar
Because Complainant had used the name BMG MUSIC SERVICE in conjunction with web-based and club services relating to prerecorded audio and music products and other goods since 1986, it is the finding of the Panel that Complainant acquired common law rights to the mark prior to Respondent’s registration of the disputed domain name. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).
The subject domain name <bmgmusicservices.com> is a misspelling of Complainant’s service mark BMG MUSIC SERVICE and the domain name <bmgmusicservice.com>. The subject domain name <bmgmusicservices.com> includes an additional "s" after the service mark BMG MUSIC SERVICE. Giving no consideration to the ".com" suffix, this is the only difference between the subject domain name and the Complainant’s mark BMG MUSIC SERVICE. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter "s" from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark); see also Victoria's Secret et al v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> is confusingly similar to Complainant’s trademark, VICTORIA’S SECRET).
Likewise, the domain name <wwwbmgmusicservice.com> is virtually identical in sound, appearance, and meaning to the Complainant’s BMG MUSIC SERVICE mark. The only differences between Complainant’s mark and the domain name are the addition of "www" and the ".com." These differences, for purposes of the Policy, are insignificant and irrelevant. The addition of a “www” in front of a mark to form a second level domain name does not alter the fact that the domain name so contracted is confusingly similar to the mark. See Dow Jones & Co., Inc. and Dow Jones, L.P. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names “wwwdowjones.com”, “wwwwsj.com”, “wwwbarrons.com” and “wwwbarronsmag.com” to Complainants).
The Panel concludes that the <wwwbmgmusicservice.com> and <bmgmusicservices.com> domain names are virtually identical and/or confusingly similar to Complainant’s BMG MUSIC SERVICE mark. Accordingly, Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has not demonstrated any rights to the domain name in question. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess).
Redirecting the domain name to advertisements does not constitute a bona fide offering of goods and services under Policy 4(c)(i) nor is it a noncommercial or fair use of the domain name under Policy 4(c)(iii). See Victoria's Secret et al v. Personal, FA 96491 (Nat. Arb. Forum Feb. 27, 2001) (finding no rights or legitimate interests where Respondent used a domain name confusingly similar to Complainant’s mark and redirected Internet traffic to various websites for the profit of Respondent).
There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the name “BMGMUSICSERVICES” or “WWWBMGMUSIC SERVICE” pursuant to the Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Therefore, the Complainant has established that Respondent has no rights or legitimate interests with respect to the <wwwbmgmusicservice.com> and <bmgmusicservices.com> domain names. Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Because Respondent attracted Internet users to a series of advertisements using a domain name confusingly similar to Complainant’s famous BMG MUSIC SERVICE mark, Respondent’s actions constituted bad faith registration and use under Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <wwwbmgmusicservice.com> and <bmgmusicservices.com> domain names be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 19, 2001
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