National Arbitration Forum

 

DECISION

 

Sun Studio Entertainment, Inc. v. Memphis Recording Service

Claim Number: FA0805001189842

 

PARTIES

Complainant is Sun Studio Entertainment, Inc. (“Complainant”), represented by Samuel F. Miller, of Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C., Tennessee, USA.  Respondent is Memphis Recording Service (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <memphisrecordingservice.com>, registered with Tucows 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.

 

Jeffrey M. Samuels as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 12, 2008.[1]

 

On May 12, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <memphisrecordingservice.com> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 May 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 2008 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@memphisrecordingservice.com by e-mail.

 

A timely Response was received and determined to be complete on June 2, 2008.

On June 5, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

A timely “Additional Submission” was submitted by Complainant on June 9, 2008.

 

A timely “Response to Complainant’s Additional Submission” was submitted by Respondent on June 16, 2008.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Since 1987, Complainant has operated a recording studio and museum dedicated to memorializing a number of well-known artists, including Elvis Presley, Carl Perkins, Jerry Lee Lewis, and Johnny Cash.  The studio is located at 706 Union Avenue, Memphis, Tennessee, which is where these artists recorded their first hit songs.

 

Complainant contends that, since 1987, it has continuously used the mark MEMPHIS RECORDING SERVICE to market its museum and recording studio services, including the use of a neon sign bearing the MEMPHIS RECORDING SERVICE mark, in the windows of the museum.   Complainant owns U.S. Trademark Registration No. 2,011,855 for the service mark MEMPHIS RECORDING SERVICE, as used in connection with museums and recording studio services.  The registration issued in October 1996. See Complaint, Exhibit A. According to Complainant, millions of music fans have visited Complainant’s museum, which provides tours of, historical facts about, and exhibits related to the world-famous and historic studio.  See Complaint, Exhibit, B, consisting of Declaration of John Schorr, President of Sun Studio Entertainment, Inc.

 

Complainant asserts that the disputed domain name, <memphisrecordingservice.com>, incorporates the entirety of the MEMPHIS RECORDING SERVICE mark and that the only differences between the mark and the domain name, i.e., the different spacing and the addition of the top level domain “com.”, are irrelevant. “Respondent’s registration thus is indistinguishable from, and confusingly similar to, Complainant’s MEMPHIS RECORDING SERVICE mark,” Complainant declares.

 

Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name.  Complainant insists that Respondent is using several of Complainant’s registered and unregistered marks, as well as other information, to create the impression that Complainant created, authorized, or authenticated the goods sold on Respondent’s website.  “This is neither a bona fide offer of goods and services nor a legitimate noncommercial or fair use as contemplated by the Policy,” Complainant declares.

 

Complainant notes that the disputed domain name was registered 17 years after Complainant began use of the MEMPHIS RECORDING SERVICE mark and contends that Respondent uses the phrase “Memphis Recording Service” on its website in a manner that creates an association in the minds of consumers between the parties’ products.  For example, Complainant points out that Respondent’s site uses various stylized versions of Complainant’s MEMPHIS RECORDING SERVICE mark, pictures of Complainant’s unregistered stylized version of the mark embodied in a flashing neon “Memphis Recording Service” sign, and a picture of Complainant’s store front.  See Complaint, Exhibits E, F, and G.  Complainant also alleges that the disputed site recites the history of Memphis Recording Service and discusses the various artists who recorded music at 706 Union.

 

According to Complainant, while Respondent’s <memphisrecordingservice.com> site disclaims any affiliation with Sony/BMG, Elvis Presley Enterprises or Sun Entertainment Corporation, it does not disclaim any affiliation with Complainant.

 

Complainant notes that Respondent owns an EU trademark registration (No. 3,961,836) for the mark “Memphis Recording Service” (see Complaint, Exhibit H), but contends that such registration “does not save its case.”  Complainant points out that the EU registration was obtained two years after registration of the disputed domain name and argues that “it appears that Respondent procured the EU trademark for the sole reason of circumventing the Policy.”  

 

Complainant maintains that Respondent registered the disputed domain name in bad faith for the purpose of capitalizing on the long-established goodwill associated with Complainant’s MEMPHIS RECORDING SERVICE mark. Complainant emphasizes that the disputed domain name was registered eight years after Complainant obtained its U.S. trademark registration and about 17 years after Complainant first used its mark. Moreover, Complainant adds, Respondent was not commonly known as “Memphis Recording Service” until 2005, one year after the domain name was registered.

 

The domain name in issue is also being used in bad faith, Complainant urges. Complainant argues that due to the valuable goodwill created over the past 20 years, consumers will instinctively search for Complainant’s website by using the <memphisrecordingservice.com> domain name, but, instead of locating of Complainant’s site, will unexpectedly arrive at Respondent’s site.  Respondent’s site, Complainant maintains, deceives the consumer into believing that he/she has reached a site affiliated with Complainant by incorporating a depiction of Complainant’s building, pictures of Complainant’s MEMPHIS RECORDING SERVICE neon signs, and a history of 706 Union.  “Thus,” according to Complainant, “Respondent registered and uses <memphisrecordingservice.com> in bad faith to attract consumers for its own commercial gain and to Complainant’s detriment by creating a likelihood of confusion with Complainant’s mark as prohibited by the Policy.”  

 

 

 

B. Respondent

Respondent Memphis Recording Service first notes that it was formed in the United Kingdom in 2005 and is in the business of distributing CDs and DVDs and other related media products in Europe.  Its name, Respondent contends, was derived from a recording service in Memphis for the walk-in trade of personal recordings, “which was a separate business of Sun Studio and Sun records in the 1950’s formed by Sam Phillips.  Please note that MRS [Memphis Recording Service] and Sun Studio/Records were of separate entity that operated in the same building.”  Respondent indicates that it was formed after publication of a book detailing the early life of Elvis Presley, who, according to Respondent, made his first recording at MRS.  According to Respondent, the initial promotion of the book used photographs of the building at 706 Union and new insertions of logos on the building windows.

 

Respondent points out that it owns an EU trademark registration for “Memphis Recording Service” and that the disputed domain name was registered earlier[2] “but did not go live until after the company’s formation and only prior to the release of its product … [in] November 2005.”

 

According to Respondent, Complainant’s president, Mr. Schorr, met with Respondent on various occasions and Complainant sold Respondent’s products at its Memphis store.  In July 2006, Respondent called Mr. Schorr asking whether Complainant would be interested in selling more MRS product.  During such call, Mr. Schorr stated he was unhappy with Respondent’s registration of the disputed domain name.

 

Respondent maintains that <memphisrecordingservice.com> is not identical to <sunstudio.com>.  Respondent also contends that Complainant has not continuously used Memphis Recording Studio to market its museum and recording studio services since 1987 or as a service today.  Respondent asserts that Complainant offers walk-in guests an opportunity to make a recording and that such recording is offered under the “Sun Studio” mark.   According to Respondent, “MRS is not even evident on any of the Complainant’s brochures, promotional materials, or even their website.”  Respondent indicates that Complainant sells t-shirts and coffee mugs under the MEMPHIS RECORDING SERVICE mark but adds that Respondent does not use such mark.

 

Respondent further points to the results of an internet search for the words “Memphis Recording Service” which show that the vast majority of listings refer to Respondent.  See Response, Exhibit D.

Respondent urges that it has rights or legitimate interests with respect to the disputed domain name.  It states as follows:

“Respondent has a huge legitimate interest in the domain name as it is the recording label of our artists that no one in the world uses including the Complainant. MRS in the EU are known as an independent record label and are under the trademark and the selling of products within our own jurisdiction of the EU. We do not use any of complainant’s registered trademark and we do not sell similar … goods and, we do not sell in the USA.”

“The company is well established and is trading as a record label from 2005. The company has all its email addresses established ending with the domains .com with thousands of people including accounting firms and Govt related offices, key industry contacts and musicians from around the world etc and we completely rely on our email address that is with our domain .com.”

 

“The company has now sold over 50,000 media products in the few years it has been operating and the company’s full domain.com is placed on the back of every CD, DVD and Book of our products in stores across Europe and other parts of the world including Asia and Australia. Our company is even to enter The 2009 edition of the Guinness Book of Records. The respondent’s website is commonly known around the world for its products that are bona fide, in no way similar and is without any confusion to complainants.” 

 

“The logo used on the 2 products by complainant is different to the neon logo which is the only logo used by MRS in the UK. The neon logo is an unregistered trademark for complainant and is a registered trademark for MRS UK in the European Union.”

 

Respondent notes that its website at <memphisrecordingservice.com> includes a disclaimer of any affiliation with Elvis Presley Enterprises and Sun Entertainment.  The reference to Sun Entertainment, Respondent declares, was supposed to include Sun Studio since Sun Studio used the trademarks of Sun Entertainment.

 

According to Respondent, “[t]his is purely a takeover attempt.  Mr. Schoor has known of the products and services of MRS Ltd. for 30 months and only now, feels that he would like an interest in using the domain .com after the success of our released products and entry into the 2009 edition of the Guinness Book of Records.  None of our products are related and we certainly do not claim to be a recording studio and have no interest to do so.”

 

With respect to the issue of “bad faith” registration and use, Respondent argues that its site is not being used in bad faith “as first and foremost there is no connection between it and the Complainant’s websites.  Nothing on the domain name in question is repeated and our products are in no way connected to Sun Studio.”

 

Respondent emphasizes that MRS is its record label operating in the European Union for products and services which are bona fide and legal in the EU and many other countries.  Respondent notes that it does not sell t-shirts and coffee mugs, which, according to Respondent, are the only products on which Complainant uses its MEMPHIS RECORDING SERVICE mark.  “There is no confusion between Sun Studio in Memphis with MRS in the EU,” Respondent asserts.

 

Respondent accuses Complainant of a “total fabrication” in contending that, as a result of the valuable goodwill created over 20 years, consumers will instinctively search for Complainant by using the disputed domain name.  Respondent maintains that almost everyone refers to Complainant as “Sun” and no one “would ever think of searching the Complainant through typing the domain name in question.”

 

C. Additional Submissions

In its “Additional Submission,” Complainant argues that Respondent cannot reasonably deny that the domain name <memphisrecordingservice.com> is confusingly similar to Complainant’s MEMPHIS RECORDING SERVICE mark.  While Respondent contends that Complainant is not commonly known as “Memphis Recording Service,” Complainant urges that “[t]his does not matter.  The only relevant inquiry is whether the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.”

 

Complainant further asserts that Respondent has not presented any arguments which, even if supported by evidence, would establish legitimate rights in the domain name. Rather, Complainant indicates, Respondent admits that it is aware of the history associated with Complainant’s business, the domain name was chosen to capitalize on the the history associated with Complainant’s building and mark, and that, at the time the domain name was registered, Respondent was not commonly known as “Memphis Recording Service.”

 

Complainant adds as follows:

 

Respondent argues that “[its] website is commonly known around the world for its products that are bonafide, in no way similar and is without any confusion to complainants.”  Quite the contrary, the only products sold by Respondent are recordings of, and books about, Elvis Presley.  See generally <memphisrecordingservice.com>.  For Respondent to argue that selling such products using the MEMPHIS RECORDING SERVICE mark would not cause any confusion is disingenuous.  Complainant built its business over twenty years by memorializing the artists that formerly recorded at 706 Union.  See Schorr Decl. ¶7.  The millions of music fans who have visited Complainant’s museum certainly have seen Complainant’s MEMPHIS RECORDING SERVICE lights in the windows of 706 Union.  See id. ¶¶ 7, 10.  Any consumer that purchases an Elvis Presley recording or book with a corporate logo that is identical to Complainant’s MEMPHIS RECORDING SERVICE signs would logically conclude that it was produced by, authorized by, or associated with Complainant.  In light of this, the sale of these products is not bona fide.

 

Respondent spends much time arguing about whether Complainant has any rights in its neon signs or whether those rights can be enforced in the EU.  This misses the point.  The issue is not whether Complainant could enforce its trademark rights against Respondent in Europe, but whether Respondent was using the domain name to create a likelihood of confusion between itself and Complainant.  See ICANN Policy ¶4(b)(iv).  The undisputed facts show that the top banner of Respondent’s website contains a MEMPHIS RECODING SERVICE logo that flashes just like a neon sign.  See <memphisrecordingservice.com>.  The undisputed facts show that identical neon signs have adorned Complainant’s business since 1987, seventeen years before Respondent registered the domain name.  See Schorr Decl. ¶¶6–9; Complaint at Exhibits F & G; Response at 3.  The undisputed facts show that Complainant obtained its MEMPHIS RECORDING SERVICE trademark registration in 1996, eight years before Respondent registered the domain name.  See Schorr Decl. ¶¶6–9.  These facts unmistakably show that Respondent wants visitors to associate the domain name with Complainant, regardless of whether Complainant could enforce any of its trademark rights against Respondent.  This evidences Respondent’s bad faith registration and use of, and lack of legitimate rights in, the domain name.

 

In its “Response to Complainant’s Additional Submission,” Respondent first notes that it has a valid EU trademark registration for the MEMPHIS RECORDING SERVICE mark and that “it’s the Complainant’s own fault … that it did not protect its mark outside the USA.”  It then reiterates its claim that Complainant has no intention of ever promoting “Memphis Recording Service” other than in connection with the sale of a t-shirt and coffee mug.  Contrary to Complainant’s assertion, Respondent contends that Complainant’s most current CD product does not include the MEMPHIS RECORDING SERVICE mark.  Rather, according to Respondent, such CD only includes the SUN STUDIO mark.  See “Response to Complainant’s Additional Submission,” Exhibit A. 

 

Respondent also asserts that it does not use the neon lights as its mark and that the same “Memphis Recording Service” lights found at Complainant’s museum can be seen one mile away at the “Rock n Soul” Museum.  Respondent further argues that the neon light is not a registered trademark of Complainant.   Respondent indicates that it is common knowledge that the way “Memphis Recording Service” is displayed on the windows of Complainant’s museum “is to give effect of how the windows looked in the 1950’s.”  Respondent further argues that the main sign on the museum today includes the SUN STUDIO mark and that the “Memphis Recording Service” neon lights are turned on only in the evening. 

 

Respondent maintains that both parties are trading upon the goodwill of Sam Phillips’ reputation and “finds it impossible to suggest that it has used the goodwill of the Complainant since they have not created any goodwill from the words pertaining to [Memphis Recording Service], let alone any that the respondent can use.”

 

FINDINGS

The Panel finds that: (1) the domain name <memphisrecordingservice.com> is identical or confusingly similar to the mark MEMPHIS RECORDING SERVICE and that Complainant has rights in such mark; (2) Respondent has rights or legitimate interests in the domain name <memphisrecordingservice.com>; and (3) in view of its determination on the issue of rights or legitimate interests, it is not necessary to consider whether the domain name was registered and is being used in bad faith.

 

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.

 

Identical and/or Confusingly Similar

 

The Panel concludes that the disputed domain name, <memphisrecordingservice.com>, is, for all intents and purposes, identical to the MEMPHIS RECORDING SERVICE mark.[3]  Respondent’s domain name incorporates the mark in its entirety and merely omits the spacing between the words and adds the top-level domain “.com.”  These differences are not sufficient to avoid a determination that, for purposes of the applicable Policy, the name and mark are identical.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> identical to HANNOVER RE “as spaces are impermissible in domain names and a generic top-level domain such as .com is required in domain names).  See also Snow fun, Inc. v. O’Connor, FA 96578 (Nat. Arb. Forum March 8, 2001) (finding that domain name termquote.com is identical to TERMQUOTE mark). 

 

The Panel further concludes that Complainant, through its registration covering and use of the MEMPHIS RECORDING SERVICE mark, has rights in such mark.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”)  While Respondent appears to contend that Complainant does not use the MEMPHIS RECORDING SERVICE mark, the evidence submitted by Complainant contradicts such assertion.  The Second Declaration of Complainant’s president, Mr. Schorr, submitted with Complainant’s “Additional Submission,” states that “Sun Studio has used and continues to use the MEMPHIS RECORDING SERVICE mark in commerce” and Exhibit C to such submission shows use of such mark on a self-recorded CD and postcard.  

  

Rights or Legitimate Interests

 

The issue of whether a respondent’s ownership of a trademark registration incorporating

 the domain name in dispute gives rise to “rights or legitimate interests” under the

 applicable Policy was discussed at some length in BECA Inc. v. Can Am Health Source,

 Inc., D2004-0298 (WIPO July 23, 2004).  In that case, the panel, upon review of earlier

 panel decisions,[4] set forth a number of guiding principles or factors to consider in

 determining whether a respondent’s ownership of trademark rights grants sufficient

 rights under paragraph 4(a)(ii) of the Policy.  According to the BECA panel:

 

(i)                  When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent.  The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP.  In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.

 

(ii)                The chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent’s domain name registration.  A trademark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest.

 

(iii)               The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant’s rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name. 

 

(iv)              The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is “legitimate.”

 

The evidence in this case indicates that Respondent, which is located in the United Kingdom, filed its EU trademark registration on July 28, 2004, which was only a few weeks after the disputed domain name was registered and well before notice of the instant dispute, and that Respondent is a legitimate business engaged in selling CDs, DVDs and related media products in Europe and elsewhere.   The evidence also seems to establish that Respondent registered the disputed domain knowing of the history surrounding a recording service in Memphis, known as “Memphis Recording Service,” at which Elvis Presley and other well-known artists recorded.  Respondent contends that the recording studio became a tire shop in the early 1960s and remained so until the building was bought by Complainant, which turned it into a museum. Respondent contends that Complainant is known as “Sun Studio” and not as “Memphis Recording Service,” although it does note that Complainant uses the MEMPHIS RECORDING SERVICE mark on T-shirts and coffee mugs.  The Respondent’s <memphisrecordingservice.com> website, where it advertises for sale various Presley recordings, features a flashing neon sign bearing the phrase “Memphis Recording Service.”  This sign mimics that which appears on Complainant’s storefront windows.

 

This is a difficult case and highlights the limitations of the Policy, both from the standpoint of substance and procedure.[5]  In the end, though, the Panel is not persuaded that Complainant has established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under the Policy.  See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006).  Upon review of all the evidence, the Panel concludes that Respondent did not register the domain name in dispute or its mark to capitalize on Complainant’s use of the MEMPHIS RECORDING SERVICE mark.  Rather, in the opinion of the Panel, the evidence indicates that Respondent registered its domain name and mark to capitalize on the history surrounding a recording studio in Memphis known as the “Memphis Recording Service.”[6]  

 

In the view of the Panel, Respondent’s ownership of an EU trademark registration for the MEMPHIS RECORDING SERVICE mark was not obtained merely to circumvent the Policy.  Relying on the factors identified in BECA, the Panel notes that Respondent applied to register its mark prior to notice of the dispute and close in time to registration of the domain name[7] and that Respondent is located in a jurisdiction that is part of the EU.  While Complainant owns a U.S. trademark registration for MEMPHIS RECORDING SERVICE, Respondent contends that it was under the understanding that Complainant only uses the mark SUN STUDIO. While Respondent’s understanding is incorrect,[8] such understanding is relevant as to whether Respondent may be found to have rights or legitimate interests in the disputed domain name.  The evidence also indicates that Respondent is engaged in a legitimate business, having sold over 50,000 media products in Europe, Asia, and Australia.

 

Registration and Use in Bad Faith

 

Given that Complainant has failed to succeed under paragraph 4(a)(ii) of the Policy, it is not necessary for the Panel to consider whether or not the Respondent has registered or is using the domain name in bad faith under paragraph 4(a)(iii).

 

DECISION

 

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

Jeffrey M. Samuels, Panelist
Dated: June 19, 2008