WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wherehouse Entertainment, Inc. v. The Wherehouse? Inc.
Case No. D2001-0035
1. The Parties
1.1 Complainant is Wherehouse Entertainment, Inc., a corporation organized under the laws of the State of Delaware, U.S.A. ("Complainant"). Respondent is The Wherehouse? Inc., a sole proprietorship with a principal place of business at 109 Lyman Street, Holyoke, Massachusetts 01040, U.S.A. Complainant is represented by counsel, The Trademark Group.
2. The Domain Name and Registrar
2.1 The domain name which is the subject of this proceeding is <the-wherehouse.com> owned by The Wherehouse? Inc. The domain name is registered with Network Solutions, Inc., Herndon, Virginia, USA.
3. Procedural History
3.1 Complaint was submitted on January 8, 13 and 16, 2001 (four hard copies, e-mail and an original respectively).
3.2 Acknowledgment of Receipt of Complaint was transmitted on January 12, 2001.
3.3 Complaint Deficiency Notification was issued on January 12, 2001.
3.4 Centerís Request for Registrar (NSI) Verification was sent on January 15, 2001, and the Verification was received on January 16, 2001.
3.5 Centerís Formal Requirements Compliance Checklist was completed on January 17, 2001.
3.6 Notification of Complaint and Commencement of Administrative Proceeding was sent on January 17, 2001.
3.7 Notification of Respondent Default was sent on February 7, 2001.
3.8 Late Response was submitted on February 7 and 12, 2001; e-mail and hard copy.
3.9 Centerís e-mail Communication to Respondent regarding Late Response was sent on February 8, 2001.
3.10 E-mail Communication from Respondent was received on February 15, 2001.
3.11 Notification of Appointment of Administrative Panel was issued on February 20, 2001.
4. Factual Background
4.1 Wherehouse Entertainmentís trademark THE WHEREHOUSE was first used in 1970 and has been in continuous use since and has been registered.
4.2 Wherehouse Entertainment has developed a number of marks using its mark WHEREHOUSE in various forms, including the following in the United States:
THE WHEREHOUSE, THE WHEREHOUSE MUSIC, MOVIES & MORE, TU MUSICA THE WHEREHOUSE, WHEREHOUSE, WHEREHOUSE.COM, WHEREHOUSE GAMES, WHEREHOUSE MUSIC.COM, WHEREHOUSE MUSIC, WHEREHOUSE ON DEMAND, WHEREHOUSE STAR, WHEREHOUSE SUPERSTAR
4.3 Wherehouse Entertainment furthermore uses the following marks internationally:
THE WHEREHOUSE, China, THE WHEREHOUSE, Hong Kong, THE WHEREHOUSE, Korea, THE WHEREHOUSE, Taiwan, TU MUSICA THE WHEREHOUSE, Mexico, WHEREHOUSE, Mexico, WHEREHOUSE ENTERTAINMENT, China, WHEREHOUSE ENTERTAINMENT, Hong Kong, WHEREHOUSE ENTERTAINMENT, Korea, WHEREHOUSE ENTERTAINMENT, Taiwan, WHEREHOUSE MUSIC, Canada, WHEREHOUSE MUSIC, Mexico.
5. Partiesí Contentions
5.1 The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
5.2 The Respondent has no rights or legitimate interests with respect to the domain name. Respondentís domain name, <the-wherehouse.com> uses the uniquely coined spelling of Complainantís famous mark, THE WHEREHOUSE, and is confusingly similar to Complainantís famous family of marks. Respondentís use of the word "wherehouse" is confusing to consumers who have become accustomed to associating the uniquely coined spelling of "wherehouse" in connection with Complainantís goods and services.
5.3 Furthermore, Respondentís use of "wherehouse" constitutes dilution of Complainantís famous mark, under the Federal Trademark Dilution Act, 15 U.S.C. section 1125(c). Complainantís mark, WHEREHOUSE, is inherently distinctive due to the unique spelling of the word, as opposed to the dictionary spelling, "warehouse". Complainant has used the unique spelling "wherehouse" in connection with its goods and services for 30 years and the mark has gained recognition both nationally and internationally in the media retail industry. Finally, Complainantís family of marks is registered on the Principal Register with the United States Patent and Trademark Office.
5.4 Based upon the foregoing, Complainantís marks are subject to the utmost protection and Respondent has no rights to use WHEREHOUSE when it is spelled in the manner in which Complainant has coined and registered the word.
5.5 The domain name was registered and is being used in bad faith. On
October 19, 1999 counsel for Complainant corresponded with Respondent The Wherehouse? Inc. advising The Wherehouse? Inc. of its violation of THE WHEREHOUSE trademark and service mark. Complainant requested that The Wherehouse? Inc. execute a Name Change Agreement transferring the domain name <the-wherehouse.com> to Complainant Wherehouse Entertainment.
5.6 On November 12, 1999 counsel for Complainant again corresponded with The Wherehouse? Inc. however, no response has been received to either of Complainantís requests for an amicable resolution.
5.7 Respondentís domain name is subject to cancellation under the Anti-Cybersquatting Consumer Protection Act, which is incorporated into section 23 of the Lanham Act. The Lanham Act, at 15 U.S.C. section 1125(d) provides:
A person shall be liable in a civil action by the owner of a mark, including a famous personal name, which is protected under this section if, without regard to the goods or services of the parties, that personó(1) has a bad faith intent to profit from that mark. . .and (ii) registers, traffics in, or uses a domain name that (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark. . .
5.8 Respondent has acted in bad faith by registering and refusing to surrender a domain name that is confusingly similar to, and causes dilution of Complainantís famous marks. By retaining the domain name <the-wherehouse. com>, Respondent has confused Complainantís customers who have been accustomed to the unique spelling of Complainantís name WHEREHOUSE for 30 years, and who seek Complainantís services under the WHEREHOUSE name.
5.9 There is no evidence of Respondentís use of, or demonstrable preparations to use the subject domain name in connection with a bona fide offering of goods or services. Respondent registered the domain name <the-wherehouse.com> in September 1998 and there is no evidence that Respondent has become commonly known by the domain name. Furthermore, there is no apparent legitimate non-commercial or fair use of the domain name.
5.10 The domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Wherehouse? coined the unique spelling of WHEREHOUSE (as opposed to the dictionary spelling, warehouse) and has registered this unique spelling with the Massachusetts Secretary of State. The question mark at the end of The Wherehouse? signified the question associated with the word "where".
5.11 The Wherehouse?ís registration, THE WHEREHOUSE was first used in 1977 and has been in continuous use since. Through use of THE WHEREHOUSE both statewide and nationwide, the mark has become famous.
5.12 Respondentís use of "wherehouse" does not constitute dilution of Complainantís mark, under the Federal Trademark Dilution Act, 15 U.S.C. section 1125(c). Complainantís mark, THE WHEREHOUSE?, is inherently distinctive due to the unique spelling of the word, as opposed to the dictionary spelling, "warehouse". Respondent has used the unique spelling "wherehouse" in connection with its banquet-related goods and services for 24 years and the mark has gained recognition both regionally and nationally in the banquet industry. Based upon the foregoing, Respondentís mark is subject to the utmost protection and Complainant has the rights to use WHEREHOUSE only for limited music goods and music services. Respondent has coined and registered the word WHEREHOUSE for banquet goods and banquet services.
5.13 Respondentís domain name is not subject to cancellation under the Anti-Cybersquatting Consumer Protection Act, which is incorporated into Section 23 of the Lanham Act. The Lanham Act, at 15 U.S.C. Section 1125(d) provides:
A personal shall be liable in a civil action by the owner of a mark, including a famous personal name, which is protected under this section if, without regard to the goods or services of the parties, that person - (i) has a bad faith intent to profit from that markÖand (ii) registers, traffics in, or uses a domain name that (1) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusing similar to that markÖ
5.14 Respondent has acted in good faith by registering and using a domain name that incorporates Respondentís famous mark. By retaining the domain name <the-wherehouse.com>, Respondent has continued to service Respondentís customers who have been accustomed to the unique spelling of Respondentís name THE WHEREHOUSE? for 24 years and who seek Respondentís services under THE WHEREHOUSE? name.
5.15 There is strong evidence of Respondentís use of, and demonstrable preparations to use the subject domain name in connection with the bona fide offering of banquet goods and services. Respondent registered for the domain name <the-wherehouse.com> in September 1998 and there is strong evidence that Respondent has become commonly known by the domain name over the past 24 years. Furthermore, there is strong evidence of fair use of the domain name.
5.16 Respondent filed Supplemental Response regarding the Notification of Default because of the following extraordinary facts:
a. The Complainant has used an incorrect street address for Respondent that caused confusion and delay.
b. The Western Massachusetts region received a snow storm over
February 5 and 6, 2001 that caused a state of emergency and closed businesses.
c. The two-day delay has not caused prejudice to the Complainant.
6. Discussion and Findings
6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will consider all of the evidence before it (Rule 10(d)), and will now look at each one of the elements to determine if Complainant has met its burden of proof.
6.2 The Panel has reviewed the evidence submitted by the Complainant concerning ownership of the trademark WHEREHOUSE and is satisfied that the Complainant has proven trademark rights in such term. Furthermore, the Panel finds that the domain name <the-wherehouse.com> is confusingly similar to the trademark in which the Complainant has rights.
6.3 The record does indicate rights or legitimate interests owned by Respondent in that the name has been in use in connection with a bona fide offering of services by Respondent before notice of the dispute. (Rule 4(c)(i)).
6.4 Since the Complaint fails on the issue of rights or legitimate interests, the Panel need not examine the issue of bad faith.
7.1 The Panel decides that the domain name <the-wherehouse.com> is identical or confusingly similar to the service mark of Complainant and that Respondent has rights or legitimate interests in such domain name.
7.2 The Panel hereby denies the Complaint.
Clark W. Lackert
Dated: March 12, 2001