Music Notes, Inc. v. Jay Chow
Claim Number: FA1201001425896
Complainant is Music Notes, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Jay Chow (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwmusicnotes.com>, registered with Moniker Online Services, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2012; the National Arbitration Forum received payment on January 23, 2012.
On January 24, 2012, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwmusicnotes.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 February 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2012 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@wwwmusicnotes.com. Also on February 1, 2012, 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 February 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwmusicnotes.com> domain name is confusingly similar to Complainant’s MUSICNOTES.COM mark.
2. Respondent does not have any rights or legitimate interests in the <wwwmusicnotes.com> domain name.
3. Respondent registered and used the <wwwmusicnotes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Music Notes, Inc., is an Internet-based sheet music store that began operating in 1997. Complainant offers its sheet music under the MUSICNOTES.COM mark. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MUSICNOTES.COM mark (Reg. No. 2,724,094 registered June 10, 2003). Complainant also owns the <www.musicnotes.com> domain name that it uses to host its website.
Respondent, Jay Chow, registered the <wwwmusicnotes.com> domain name on October 21, 2011. The disputed domain name resolves to a parked website that contains hyperlinks that resolve to Complainant’s competitors’ websites.
Respondent has been a respondent in prior UDRP proceedings in which Respondent was ordered to transfer the disputed domain names to the respective complainants. E.g., Hotel Servs. Co. LLC v. Chow, D2011-1828 (WIPO Dec. 19, 2011); Victoria’s Secret Stores Brand Mgmt. v. Chow, FA 1393077 (Nat. Arb. Forum July 18, 2011).
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 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.”).
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.
Policy ¶ 4(a)(i) requires a complainant to demonstrate that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
In Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), and Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), the panels found that a complainant may demonstrate rights in a mark if the complainant presents evidence of a USPTO trademark registration. In this case, Complainant holds a trademark registration with the USPTO for its MUSICNOTES.COM mark (Reg. No. 2,724,094 registered June 10, 2003). Therefore, the Panel finds that Complainant has demonstrated its rights in the MUSICNOTES.COM mark under Policy ¶ 4(a)(i), even though Respondent resides or operates in China. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
In Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000), and Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002), the panels held that the removal of the period separating the “www” portion from the rest of the disputed domain name did not remove the disputed domain name from the realm of confusing similarity. In the <wwwmusicnotes.com> domain name, Respondent removes the period separating the “www” portion of the domain name from Complainant’s MUSICNOTES.COM mark. Consequently, the Panel holds that Respondent’s <wwwmusicnotes.com> domain name is confusingly similar to Complainant’s MUSICNOTES.COM mark pursuant to Policy ¶ 4(a)(i).
The Panel deems Policy ¶ 4(a)(i) satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <wwwmusicnotes.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panels concluded that a respondent is not commonly known by a disputed domain name if the respondent is not affiliated with the complainant, the WHOIS information is not similar to the disputed domain name, and the respondent failed to present any affirmative evidence that it is commonly known by the domain name. In the case at hand, Complainant claims that Respondent is not sponsored or affiliated with Complainant and that Respondent is not licensed to use Complainant’s MUSICNOTES.COM mark. The WHOIS information for the <wwwmusicnotes.com> domain name identifies the registrant as “Jay Chow,” which is not similar to the disputed domain name. Respondent did not respond to this case and did not present any evidence that it is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the <wwwmusicnotes.com> domain name for the purposes of Policy ¶ 4(c)(ii).
In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), the panels determined that the hosting of competing hyperlinks did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. Respondent’s <wwwmusicnotes.com> domain name resolves to a website that hosts third-party hyperlinks, many of which resolve to Complainant’s competitors. Complainant’s screen shots of the resolving website show hyperlinks entitled “Sheet Music,” “Music Online,” “Music Download,” and “Sheet Music Online.” Based on the evidence in the record, the Panel finds that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <wwwmusicnotes.com> domain name.
In Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005), and Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003), the panels found that a respondent is guilty of typosquatting if the respondent removes the period separating the “www” from the rest of the disputed domain name because the respondent is attempting to take advantage of typing mistakes made by Internet users attempting to reach Complainant online. In the <wwwmusicnotes.com> domain name, Respondent removes the period separating the “www” from Complainant’s mark and the rest of the disputed domain name. The Panel determines that Respondent is guilty of typosquatting and, therefore, lacks rights and legitimate interests in the <wwwmusicnotes.com> domain name pursuant to Policy ¶ 4(a)(ii).
The Panel deems Policy ¶ 4(a)(ii) satisfied.
Policy ¶ 4(a)(iii) requires a complainant to demonstrate that a respondent registered and uses a disputed domain name in bad faith. Policy ¶ 4(b) establishes four different avenues for a complainant to demonstrate bad faith registration and use: (i) the respondent registered the domain name for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs; (ii) the respondent registered and uses the disputed domain name as a part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name; (iii) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or (iv) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
In Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), and Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003), the panels determined that previous UDRP decisions in which a respondent was ordered to transfer a domain name is evidence of the respondent’s pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). In this case, Respondent has been a respondent in prior UDRP proceedings in which Respondent was ordered to transfer the disputed domain names to the respective complainants. See Hotel Servs. Co. LLC v. Chow, D2011-1828 (WIPO Dec. 19, 2011); see also Victoria’s Secret Stores Brand Mgmt. v. Chow, FA 1393077 (Nat. Arb. Forum July 18, 2011). Complainant also argues that Respondent currently owns domain names that contain third-party trademarks. The Panel chooses to ignore these domain names because they are not a part of this current UDRP proceeding and a UDRP panelist has not made any findings regarding the domain names under the Policy. However, the Panel does find that Respondent’s previous UDRP cases confirm that Respondent registered and uses the <wwwmusicnotes.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
In Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panels concluded that a respondent registered and uses a disputed domain name in bad faith under Policy ¶ 4(b)(iii) if the disputed domain name resolves to a website hosting competing hyperlinks because such a website disrupts a complainant’s business. Respondent’s <wwwmusicnotes.com> domain name resolves to a website that features competing hyperlinks. Internet users interested in Complainant’s sheet music may be diverted from Complainant to Complainant’s competitors because of Respondent’s registration and use of the disputed domain name, which would disrupt Complainant’s business. Thus, the Panel concludes that Respondent registered and uses the <wwwmusicnotes.com> domain name in bad faith under Policy ¶ 4(b)(iii).
In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), and TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), the panels held that a respondent registered and uses a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) if the respondent attempted to create Internet user confusion by registering a confusingly similar domain name and using the domain name to commercially gain by receiving click-through fees from competing hyperlinks. Respondent registered the confusingly similar <wwwmusicnotes.com> domain name and Respondent hosts competing hyperlinks at the resolving website. The Panel infers that Respondent receives click-through fees from the aforementioned hyperlinks. Based on UDRP precedent, the Panel determines that Respondent registered and uses the <wwwmusicnotes.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
In Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003), and Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), the panel determined that a respondent’s typosquatting is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). As the Panel already found Respondent guilty of typosquatting, the Panel holds that Respondent registered and uses the <wwwmusicnotes.com> domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel deems Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwmusicnotes.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 29, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page