WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ARTISTdirect, Inc. v. OLDGlory.com

Case No. D2000-1367

 

1. The Parties

The Complainant is: ARTISTdirect, Inc., 5670 Wilshire Blvd., Suite 200, Los Angeles, California 90036, USA. Complainant is represented by: Randy Lipsitz, Esq., Kramer Levin Naftalis & Frankel LLP, 919 Third Avenue, New York, New York 10022, USA.

The Respondent is: OldGlory.com, 90 Knothe St., Westbrook, Connecticut 06498, USA. Respondent is represented by: Barry L. Kelmachter, Esq., Bachman & LaPointe, P.C., Suite 1201, 900 Chapel Street, New Haven, Connecticut 06510-2802, USA.

 

2. The Domain Name and Registrar

The domain name in dispute is: <artistsdirect.com> The registrar is: Tucows.com, Inc. of 96 Mowatt Avenue, Toronto, Ontario, Canada M6K 3M1.

 

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed on October 12, 2000. On October 13, 2000 the Center requested that the registrar, Tucows.com, Inc., check and report back on the registrant for the domain name <artistsdirect.com>. On October 19, 2000 the registrar reported to the Center that the registrant was the Respondent: OldGlory.com, 90 Knothe St., Westbrook, Connecticut 06498, U.S.A.

On October 20, 2000, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail, and this proceeding officially began.Respondentís Response was received by the Center on November 9, 2000. Per the Rules Section 5, Respondent elected to have a decision by a three (3) member panel.

The third member of the Administrative Panel submitted a Declaration of Impartiality and Independence on December 1, 2000, and the Center proceeded to appoint the Panel on December 5, 2000.

On November 9, 2000 the Complainant requested that the Center allow the Complainant to respond to the Respondentís Response. The Center deferred this ruling for the Panel. By this Decision, the Panel denies Complainant leave to file a reply to Respondentís Response. The Panel does not see a need to solicit further information from the parties in order to reach its Decision (the Rules, para 12).

The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.

This Decision was due by December 18, 2000.

 

4. Factual Background

Complainant is in the business of selling recorded music in various forms, such as via internet or on cdís, and has some other businesses related to music. Respondent sells via catalogue and through its stores famous musiciansí memorabilia such as T-shirts and other collectibles.

Complainant registered the domain name <artistdirect.com< at an unspecified date. Respondent registered the disputed domain name <artistsdirect.com> on August 15, 1998.

Both parties acknowledge that beginning in October, 1999 they have had a number of letter and telephone exchanges during which, at times, Complainant attempted to purchase the disputed domain name from Respondent. No agreement was reached, and Respondent now states it is not interested in selling the disputed domain name, but rather intends to use the name in another internet business which will sell fine art such as paintings and sculptures.

Claimant is seeking to have the disputed domain name transferred to itself in this proceeding.

 

5. The Partiesí Contentions

Complainantís Contentions:

- Complainant filed to register its trademark "ARTISTDIRECT" in the United States in August, 1996. Since that time, Complainant has used the trademark continuously in connection with its website selling recorded music in various forms such as cdís and on-line streaming.

- Because of sales and promotion, the "ARTISTDIRECT" trademark has become famous.

- When Respondent registered the disputed domain name on August 15, 1998, Respondent was aware of Complainantís trademark rights in the disputed domain name.

- Complainant has attempted to avoid this proceeding by buying the disputed domain name from Respondent and by sending Respondent several cease and desist notices.

- The disputed domain name, <artistsdirect.com> is confusingly similar to Complainantís trademark "ARTISTDIRECT". Respondent has no rights or interests in the disputed domain name. Respondent has registered and is using the disputed domain name in bad faith.

- The disputed domain name should be transferred to the Complainant.

Respondentís Contentions:

- Despite Respondentís registration of the disputed domain name, by Complainantís own admission some 84,000 daily visitors find their way to Complainantís website.

- Respondent believes it does not need the consent of Complainant to use the <artistsdirect.com> domain name provided it is not used in connection with Respondentís current business, ie, selling music-related material.

- Without any solicitation by Respondent, it was Complainant that offered $10,000, $15,000 and even $50,000 to Respondent for the disputed domain name. Respondent never evinced an interest in selling the disputed domain name.

- Respondent has never intended to use the disputed domain name in connection with Respondentís current line of goods and services, which would be in competition with Complainant. Rather, Respondent intends to use the disputed domain name to sell fine art such as paintings and sculptures.

- Respondentís disputed domain name is not confusingly similar to Complainantís trademark because Respondent intends to use the disputed domain name to offer a different class of goods and services.

- Complainant is attempting "reverse domain name hijacking", ie, Complainant is attempting to deprive Respondent of a domain name in which it knows Respondent has legitimate rights.

- Respondent should be allowed to keep the disputed domain name.

 

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <artistsdirect.com> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii) that:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the domain name: and

- the domain name was registered and is being used in bad faith.

Identical or Confusingly Similar

Complainant has produced exemplary copies of its "ARTISTDIRECT" trademarks registered on the principal register of the United States Patent and Trademark Office (for example, reg. no. 2,288,100 in international class 41; or reg. no. 2,355, 839 in international class 35; see Complaint Appendix D). Although Complainantís mark is descriptive, there is sufficient evidence it has acquired good will through its use in selling recorded music since Complainant began doing business in 1996 (Complaint pp. 4-7 and Appendices C, F and P).

The domain name in dispute, <artistsdirect.com> differs from Complainantís trademark only by the addition of an "s". It is a well-established principle of United States trademark law and of previous domain name proceedings under the Policy that this de minimis variation does not save the newcomer from being "confusingly similar" and thus infringing the rights of the established mark (see for example Best Western Intíl v. Tourism Online Marketing, National Arbitration Forum, Dec. Claim No.: FA0006000094999 (2000)). The Panel follows this rule in this proceeding and finds Respondentís domain name <artistsdirect.com> confusingly similar to Complainantís trademark "ARTISTDIRECT".

Legitimate Rights or Interests

Respondent registered the disputed domain name on August 15, 1998. Both parties agree that since that time Respondent has made no use of the website located at that domain name. Respondent does not dispute Complainantís contention that Respondent has no license or any other permission from Complainant to use Complainantís trademark "ARTISTDIRECT".

Respondent acknowledges that it would not be able to use the disputed domain name for the same class of goods and services that Respondent now sells, i.e. music memorabilia inter alia, because these products would compete with Complainantís products. Instead, Respondent argues its intention is to use the disputed domain name for a different category of goods and services: pictures and sculptures. However, Respondent has not produced any evidence to substantiate its stated intentions.

The Panel does not believe the Policy (4)(c) is intended to count good intentions stretching over several years as a "legitimate interest" in a domain name. The Policy does speak of "demonstrable preparations", but Respondent has demonstrated nothing, and the nature of the internet and e-commerce is such that two years are a vast stretch of time.

The Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.

Registered and Used in Bad Faith

Respondent argues that its registration and use, or more actually lack of use, of the disputed domain name are not in bad faith. Again, Respondent argues this is so because Respondent intended to use the disputed domain name to offer goods and services in a different class from those of Complainant, which Respondent acknowledges is one of its competitors. However, as we stated above, the Panel is unconvinced that Respondent needed more than two years to set up the business it had in mind, if indeed it ever had such a business in mind.

The Panel finds it peculiar in the extreme that a company registers a domain name which incorporates one of its competitorís trademarks, and then for two years does nothing with the domain name. Respondent cites a previous decision under the Policy which found that bad faith use of a domain name could not be found where the website at the domain name remained inactive because there was no "use" (Sporoptic Pouilloux S.A. v. William H. Wilson, WIPO Case No. D2000-0265). However, as Complainant points out, many other decisions under the Policy have found that even the passive holding of a domain name that infringes a trademark can constitute bad faith use (Complaint, p. 17; see for example, Chernow Communications v. Kimball, WIPO Case No. D2000-0119; also Mondich and American Wine Biscuits, Inc. v. Brown, WIPO Case No. D2000-0004). The Panel believes ours is such a case. It bears repeating that the Panel is unconvinced that Respondent needed two years and more to set up the on-line sale of fine art it argues it has been contemplating.

Accordingly, the Panel believes the Respondentís motive for registering the disputed domain name was to disconcert Complainant and to disrupt Complainantís business in contravention of the Policy at 4 (b) (iii). Respondent argues this is not so because some 84,000 visitors reach Complainantís web site each day anyway. However, the Panel believes it likely that many more visitors would reach Complainantís web site were it not for Respondentís dormant website with the disputed domain name diverting traffic from Complainantís site.

The Panel finds that Respondent registered and is using the disputed domain name in bad faith.

 

7. Decision

The domain name is confusingly similar to Complainantís trademark, the Respondent has no rights or legitimate interests in the domain name and it registered and was using it in bad faith. Therefore, in accordance with ICANN Policy para 4(i) and the Rules para (15), the Panel orders that the disputed domain name, <artistsdirect.com> be turned over to the Complainant, ARTISTdirect, Inc.

 

 


 

 

Dennis A. Foster
Presiding Panelist

Kevin H. Fortin
Co-Panelist

Jeffrey M. Samuels
Co-Panelist

Date: December 18, 2000