Jeremy Same v. Richard Weston / dreamGEAR, LLC
Claim Number: FA1311001531432
Complainant is Jeremy Same (“Complainant”), represented by John Di Giacomo of Revision Legal, Michigan, USA. Respondent is Richard Weston / dreamGEAR, LLC (“Respondent”), represented by Eric Bjorgum of Karish & Bjorgum, PC, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <isound.com> (the “Domain Name”), registered with NANJING IMPERIOSUS TECHNOLOGY CO. LTD.
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.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2013; the National Arbitration Forum received payment on November 25, 2013. The Complaint was received in both Chinese and English.
On December 2, 2013, NANJING IMPERIOSUS TECHNOLOGY CO. LTD. confirmed by e-mail to the National Arbitration Forum that the <isound.com> domain name is registered with NANJING IMPERIOSUS TECHNOLOGY CO. LTD. and that Respondent is the current registrant of the name. NANJING IMPERIOSUS TECHNOLOGY CO. LTD. has verified that Respondent is bound by the NANJING IMPERIOSUS TECHNOLOGY CO. LTD. 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 December 9, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 30, 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@isound.com. Also on December 9, 2013, the Chinese language 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.
A timely Response was received and determined to be complete on December 30, 2013. The Response was received in English and Chinese.
On January 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sebastian M W Hughes 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant asserts the following:
Complainant is an Internet entrepreneur recognized across the world for his introduction of innovative and disruptive technologies to the music industry.
Complainant’s predecessor in title, DJ Burdick, first used the trade mark ISOUND (the “Trade Mark”) in commerce in association with music discovery, music downloads, and social networking services on approximately April 14, 2004. On September 27, 2011, Complainant purchased all right, title, and interest in and to the Trade Mark, the Domain Name, and the ISOUND website from DJ Burdick for $31,000.
Complainant both himself and through his predecessor in title has consistently and exclusively used the Trade Mark in commerce in association with music discovery, music downloads, and social networking services from April 14, 2004 to approximately October 1, 2012.
On approximately October 2, 2012, Complainant removed the ISOUND website from the Internet to begin work on an updated website and mobile application for the ISOUND brand that would reflect an updated revenue model, which had not been changed in over eight years. While Complainant worked on an updated business model, the Domain Name was linked to a one page website which continued to use the Trade Mark and informed former users of Complainant’s service that Complainant’s business model was moving to a new form.
On April 30, 2013, the Domain Name was wrongfully transferred to Respondent when the domain name expired and Complainant was not informed of its expiration.
The Domain Name is confusingly similar to the Trade Mark.
There is no indication that Respondent has ever been commonly known by the Trade Mark, nor has Respondent acquired trademark rights in the Trade Mark. Prior to notice of this dispute, Respondent did not make demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, nor has Respondent made a legitimate noncommercial or fair use of the Domain Name.
Respondent has previously linked the Domain Name to a website offering sponsored links to websites in competition with Complainant’s services. Respondent has therefore used the Domain Name in bad faith in order to misleadingly divert consumers to its own website for commercial gain.
Respondent has also acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant, the owner of the Trade Mark, for valuable consideration in excess of Respondent’s out-of-pocket costs incurred in registering the Domain Name, by offering to sell the Domain Name to Complainant for US$50,000.
B. Respondent asserts the following:
Respondent is one of the fastest growing video game and audio accessory companies in the United States. It is also a leading provider of premium portable speakers and electronic accessories under the trade mark I.SOUND (the “I.SOUND Mark”). Respondent currently has over 300 separate products being sold under the I.SOUND Mark. It has sold products under the I.SOUND Mark in 54 countries, including Australia. Since 2004, Respondent has grossed well over $50 million in sales of products under the I.SOUND Mark.
Respondent owns registrations for the I.SOUND Mark in several jurisdictions worldwide, including a registration in the US with a filing date of September 3, 2004, registration date of June 20, 2006 and first use in commerce date of October 7, 2004, and an international registration registered on April 26, 2005.
Complainant offered to sell the Domain Name to Respondent two years ago, citing a valuation akin to Apple’s then-recent purchase of “iCloud.com” for over $4 million. Respondent was not interested, and Complainant let the Domain Name go abandoned. It was then registered by a third party who subsequently sold it to Respondent.
Complainant’s position is groundless. Respondent is a bona fide purchaser in
good faith who has grossed millions of dollars in sales under the I.SOUND
Mark, far outstripping Complainant’s half-hearted attempts to revive its abandoned brand.
Respondent was approached by its predecessor in interest, W7 Media, Inc., almost two years after Complainant’s previous registration for the Domain Name expired and asked if it wanted to purchase the Domain Name.
Respondent and Complainant are not in competing industries. Respondent did not buy the Domain Name in order to cause confusion with Complainant’s customers. Respondent has never considered whether Complainant’s customers are the same as its customers. Moreover, Complainant offers a service, and Respondent sells products. Nobody searching for Complainant’s music services will be confused by Respondent’s physical products.
Respondent denies having ever offered to sell the Domain Name to Complainant and notes the email relied upon by Complainant as evidence of the offer to sell for US$50,000 was sent not by Respondent but by “domainnamesales.com.”
Complainant has failed to establish all the elements entitling it to transfer of the Domain Name.
Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances.
Complainant is an Australian national and Respondent is a company based in the United States. Both the Complaint and the Response have been filed in English and in Chinese. There is no evidence therefore that either party will be prejudiced if the language of the proceeding is English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
Substantive Elements of the Policy
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.
Complainant has obtained common law or unregistered rights in respect of his use, and the use by his predecessor in title, of the Trade Mark for several years.
The Domain Name is identical to the Trade Mark. The Panel therefore finds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Respondent has filed evidence which clearly establishes its rights and legitimate interests in respect of its I.SOUND Mark, registered and used since 2004 in respect of its portable speakers and electronic accessories sold worldwide.
Complainant’s evidence of use of the Trade Mark in 2004 and in 2007 amounts to single screen shots of two quite different and apparently now defunct websites. Even if Complainant’s predecessor in title made use of the mark in 2004, on the evidence filed, such use appears to have been very limited.
Respondent’s continuous and widespread use of the I.SOUND Mark is to be contrasted with the wording of the temporary notice website apparently posted by Complainant from October 2012 until the expiry of Complainant’s registration for the Domain Name:
“Dear Music fans and artists,
Due to increasing competition for quality music discovery platforms online, it is no longer viable for iSound to continue in its current form.
Thank you to all the fans and artists who have supported iSound over the last few years, and we look forward to bringing you the next chapter, whenever that may be.
In the meantime, if you have any enquiries, please contact info@tuneday.com
The iSound Team.”
The Panel concludes the above posting is more consistent with (1) Complainant’s use of the Trade Mark not commencing until several years after Respondent had registered and commenced use of its I.SOUND Mark; and (2) Complainant having abandoned or at least suspended the use of the Trade Mark at the material time.
The Panel therefore finds that the Complainant has failed to fulfil the second condition of paragraph 4(a) of the Policy.
Having found the Complainant has failed to establish Respondent has no rights or legitimate interests in the Domain Name, it is not strictly necessary for the Panel to address this limb of the Policy. For the sake of completeness, however, the Panel concludes Complainant has failed to establish bad faith registration and use on the part of Respondent, for the following reasons:
1. The evidence shows it was the previous registrant of the Domain Name, and not Respondent, who operated a parking page with sponsored links at the material time;
2. The Panel accepts Respondent’s contention that the apparent offer to sell the Domain Name relied upon by Complainant was not made by Respondent;
3. The evidence shows Respondent’s use of its I.SOUND Mark likely precedes any use of the Trade Mark by Complainant’s predecessor in title, and that Respondent has continued to coexist with Complainant in the marketplace in using its I.SOUND Mark;
4. In all the circumstances, and given Respondent’s long-standing registration and use of the I.SOUND Mark, Respondent was a bona fide purchaser in good faith of the Domain Name.
The Panel therefore finds that the Complainant has failed to fulfil the third condition of paragraph 4(a) of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <isound.com> domain name REMAIN WITH Respondent.
Sebastian M W Hughes, Panelist
Dated: January 20, 2014
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