WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

EMI Records Limited v Complete Axxcess

Case No. D2001-1230

 

1. The Parties

1.1 The Complainant is EMI Records Limited, a limited liability company organised and existing under the laws of England and Wales.

1.2 According to the information in the WHOIS database of Network Solutions ("NSI"), the Registrant of the domain name in dispute is Complete Axxcess of 203 Durango Drive, Roanoke TX, 76262. Complete Axxcess was the original named Respondent in these proceedings. An email from Shaun Johnson to the WIPO Arbitration and Mediation Center on October 18, 2001, requested all proceedings be sent to Shaun Johnson.

 

2. The Domain Name and Registrar

The domain name upon which this Complaint is based is <abbeyroad.com>. The registrar of the domain name as at the date of the Complaint is NSI.

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") in hard copy on October 10, 2001, and by email on October 16, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint stated that a copy of the Complaint had been sent or transmitted to the Respondent in accordance with paragraph 2(b) of the Rules and that a copy of the Complaint had been sent or transmitted to the Registrar of the domain name in dispute, NSI.

3.3 On October 15, 2001, the Center sent the Complainant an Acknowledgment of Receipt of Complaint.

3.4 The Center sent a Request for Registrar Verification to NSI on October 16, 2001. On October 17, 2001, NSI responded to the Centerís request by email, verifying that:

(a) NSI is the Registrar of the Domain name in dispute;

(b) the registrant of the domain name in dispute is Complete Axxcess;

(c) the administrative contact for the domain name in dispute is Shaun Johnson;

(d) the NSI Service Agreement Version 5 was in effect and the Policy applies to the domain name; and

(e) the domain name in dispute is active in status.

3.5 The Center sent an email to the Complainant on October 16, 2001, requesting that the Complainant send the Complaint, together with the Complainant Transmittal Cover sheet (and any annexes possible) in electronic form as set out in Para 3(b) of the Rules for Uniform Domain Name Dispute Resolution Policy to the Center.

3.6 The Complainant forwarded to the Center by email on October 16, 2001, a copy of the Complaint in electronic form. In this email the Complainant stated that it was not possible to send the annexes in electronic form.

3.7 The Center received an email from the Respondent on October 18, 2001, requesting that all proceedings be sent to Shaun Johnson of 750 N.Shoreline Blvd #109, Mountain View, CA 94043 or emailed to sbjohns@stanford.edu.

3.8 The Center forwarded an email to the Respondent on October 22, 2001, acknowledging receipt of the email correspondence from the Respondent and informing the Respondent that in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, Para 2(h)(iii), any communication by a Party should be copied to the other Party. This email was copied to the Complainant.

3.9 The Centerís Formal Requirements Compliance Checklist was completed on October 23, 2001.

3.10 The Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" to the Respondent by email to "mailto:sbjohns@stanford.edu" on October 24, 2001. The following documents were attached to this email":

(a) the Notification of Complaint and the Commencement of Administrative Proceeding; and

(b) the Complaint without attachments.

The Respondent was advised that the documents were also being sent by courier with attachments and by fax without the attachments. The Notification of Complaint and Commencement of Proceedings was sent to the Complainantís representatives by email (without attachments).

3.11 The Center received a Response via email from the Respondent on November 7, 2001. The Center received the hard copy version of the Response from the Respondent on November 14, 2001.

3.12 The Center sent to the Respondent via email on November 8, 2001, the Acknowledgment of Receipt of Response.

3.13 The Center sent via email on December 7, 2001, to the representative of the Complainant and to the Respondent the Notification of Appointment of Administrative Panel and Projected Decision Date.

 

4. Factual Background

4.1 Activities of the Complainant and the Complainantís Trade Marks

The following is asserted as fact by the Complainant:

The Complainant is the proprietor of various trade mark registrations of ABBEY ROAD which it has used for many years in relation to the services it provides in the course of its business as a music company including recording studio services, production of masters of sound and/or visual recordings, enhancement of sound and images, merchandise and café services.

The Complainantís trade marks as registered with the Trade Marks Registry of the Patents Office of Great Britain and Northern Ireland are as follows:

- Registration No.1503748 "abbey road" and symbol registered as of June 17,  1992, in class 25; and

- Registration No.1278280 "ABBEY ROAD" registered as of October 1, 1986, in respect of goods and services included in Class 41.

The Complainant has the following trade mark registered with the US Patent and Trade Mark Office:

- Registration No.2422410 "ABBEY ROAD" filed January 12, 1995, and registered January 23, 2001, in respect of, inter alia, jewellery, stationery, articles made from leather, glassware, home ware and clothing.

The Complainantís trade marks as registered with the Community Trade Marks Office are as follows:

- Application No.001406735 "ABBEY ROAD" registered May 29, 2001, in respect of various goods and service in classes 9, 14, 16, 21, 25, 29, 30, 32, 33, 40, 41 and 42; and

- Application No.000135111 "abbey road" and symbol registered as of October 22, 1998, in respect of various goods and services in classes 9, 14, 16, 21, 25 and 41.

4.2 Activities of the Respondent

From the period September 2000, to present the Respondent has been a student at Stanford University. Prior to this, during the period August 28, 1996, to May 8,1997, the Respondent was undertaking a Bachelor of Science at the University of Texas at Dallas. From January 1998, to May 2000, the Respondent was undertaking a Bachelor of Science at the University of Texas, Austin.

The Respondent registered the domain name in dispute on August 6, 1996.

 

5. Parties Contentions

The Complainantís contentions in the Complaint

5.1 The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

5.2 In reference to the element in paragraph 4(a) (i) of the Policy, the Complainant asserts that the disputed domain name, <abbeyroad.com>, is identical/confusingly similar to the Complainants by virtue of the fact that it consists of the trade mark "ABBEY ROAD" with the .com suffix added.

5.3 In reference to the element in paragraph 4(b) (ii) of the Policy, the Complainant asserts that the Beatles album, ABBEY ROAD, was recorded at the Complainantís recording studios of that name and by virtue of the success of the album the studios have become world renowned. The Complainant asserts that the Respondent should be considered as having no legitimate interest in respect of the disputed domain name. The Complainant states that even if the Respondentís girlfriend/fiancé [sic] is called Abbey, this does not provide a legitimate reason for registering the Complainantís trade mark as a domain name and the professed reason for registering the domain name is not borne out by the subsequent lack of use and offer to sell the domain name.

5.4 In reference to the requirements of paragraph 4(a) (iii), the Complainant asserts that the Respondent has no legitimate use of the domain name but has simply tried to make money from it by offering it for sale or lease. The Complainant submits that the domain name was registered in bad faith.

In support of this assertion, the Complainant submits the following:

(a) The Complainant first became aware of the registration of the disputed domain name on July 8, 1996, and contacted the Respondent. The Respondent advised by email that:

"I have spoken with the customer, and they do not have the intentions of using the domain name. They did say that it is not as important to them as it might be to you, so if your company would like to pay/barter with the customer for the domain, they are willing to accept offers."

(b) The Complainant monitored the use of the domain name and in January 2001, the Complainant discovered that the Respondent was advertising the domain name in dispute for lease.

(c) The Complainant contacted the Respondent via email on February 10, 2001, asking the Respondent to provide details of the proposed use of the domain name in dispute and an offer of £1,000 was made for the transfer of the domain name in dispute. The Respondent, via return email on March 10, 2001, refused the offer of £1,000. In a further email to the Complainant from the Respondent on March 10, 2001, the Respondent advised the Complainant that the Respondent had bought the domain name in dispute for the following reason:

"because my girlfriend/fiancé [sic], wanted a website. We were going to call it ĎAbbeyís road to the internetí". Currently there is an unofficial Beatles tribute site in the works, but all for fun and no profit."

(d) In a further email to the Complainant from the Respondent on March 10, 2001, the Complainant stated that he would be willing to sell the domain name in dispute for a ballpark figure of £20,000.

The Respondentís Contentions

5.5 In relation to the allegation that the domain name <abbeyroad.com> is identical/confusingly similar to the Complainantís trade mark by virtue of the fact that it consists of the trade mark with the .com suffix added. The Respondent admits that the Complainant does own the trade mark "ABBEY ROAD" registered with the US Patent and Trade Marks Office. The Respondent states that the trademark was approved for publishing on December 3, 1996. The Respondent asserts that the domain name in dispute was registered by the Respondent on August 6, 1996. The Respondent asserts that he had no intention of registering a domain name that was also a trade mark and at that time had no way of knowing Abbey Road Studios was filing for the trade mark. The Respondent submits that he did not know that Abbey Studios existed at the time of registration of the domain name in dispute. The Respondent asserts that it is unjust to say that the domain name was registered with the intent to attract for commercial gain.

5.6 In response to the allegation that the Respondent has no legitimate interest in respect of the domain name <abbeyroad.com>, the Respondent submits that:

(a) the Complainantís US trade mark was not certified for publishing until 4 months after the registration of the domain name in dispute by the Respondent;

(b) the domain name in dispute was and is registered with the intention of using it for "Abbeyís Road to the Internet";

(c) the existence of Abbey in the Respondentís life gives Abbey and the Respondent rights to the domain name;

(d) the lack of use of the domain name is attributed to the fact that every month since the domain name was registered the Respondent has been enrolled as a full-time college student with no supplemental income;

(e) the reason that the Respondent cannot put up a second-tier domain name is because the Respondent cannot afford to;

(f) upon graduation [from school] in June 2002, the Respondent intends to find a host for the domain name that can be afforded through a regular income and the lack of subsequent use is therefore justified;

(g) the Respondent has a legitimate interest in the domain name and registered the domain name in dispute with no knowledge of a trade mark; and

(h) offering to sell the domain name in dispute does not constitute bad faith or provide reason for illegitimate use. The Respondent made reference to Etam, plc v Alberta Hot Rods WIPO Case No. D2000-1654 (offers to sell are not evidence of bad faith where registrant has independent legitimate interest).

5.7 In response to the allegation that the domain name was registered in bad faith the Respondent submits that:

(a) the Respondent has legitimate rights to the domain name but has been hindered from putting up a site by educational costs;

(b) offering to sell the domain name is not indicative of bad faith; and

(c) the domain name was never registered in bad faith and the Respondent has always intended to use it.

 

6. Discussion and Panel Findings

This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.

6.1 Domain Name identical or confusingly similar to Complainantís trade mark

The domain name in dispute is <abbeyroad.com>. The Complainant has numerous registrations of the trade mark "ABBEY ROAD".

The domain name in dispute incorporates the words "ABBEY" and "ROAD" and is identical to the trade marks owned by the Complainant, the only difference being the lack of a space between the words. In the view of the Panel these differences are incapable of differentiating the domain name in dispute from the Complainantís trade marks. The Panel therefore finds that the domain name in dispute is identical to the Complainantís marks as the gTLD suffix serves no relevant distinguishing purpose.

Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(i) of the Policy.

6.2 The Respondent has no rights or legitimate interests in the Domain Name

As noted above, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel accepts as fact that the Beatles album, ABBEY ROAD, was recorded at the Complainantís recording studios of that name and by virtue of the success of the album the studios have become world renowned. The Respondent has provided no information to the Panel substantiating any right or legitimate interest it has in the disputed domain name. The Complainant has asserted that the Respondent attempted to sell or lease the domain name to the Complainant on a number of occasions. The Respondent did not contest this statement. The Respondent has provided no evidence that it has entered into licensing arrangements with the Complainant to use the words "ABBEY ROAD" or a derivative of them.

Paragraph 4(c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interest in the domain name. In response to the paragraph 4(c) submissions made by the Respondent the Panel finds as follows:

(a) the Respondent had no intention of using the domain name in dispute with a bona fide offering of goods or services;

(b) the Respondent (as either an individual, business, or other organisation) is not commonly known by the domain name in dispute; and

(c) there is no legitimate non-commercial or fair use of the domain name in dispute by the Respondent, without intent for commercial gain.

The Panel finds that the Respondent has no rights or legitimate interest in the domain name in dispute, and the Panel cannot presently conceive of any legally sound basis on which any such assertion might be made. There is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply in the case of the Respondent. The Panel accepts the Complainantís assertion that the existence of "Abbey" in the Respondentís life does not give the Respondent the right to use a trade mark of the Complainant as a domain name. The Panel accepts that the Complainantís assertions that the Respondent has no legitimate reason for registering the Complainantís trade mark as a domain name. There is no relationship between the Complainant and the Respondent that would give rise to any licence, permission or other right by which the Respondent could own or use the trade mark as a domain name.

The Panel distinguishes between WIPO Case No. D2000-1654 and this Case No. D2001-1230 on the following basis:

(a) the Panel accepts the Complainantís submission that the trade mark "ABBEY ROAD" in connection with The Beatles and the record industry has become world renowned; and

(b) the Respondent has not been able to prove any legitimate independent use of the domain name since it was registered in 1996. The only use of the domain name has been an offer to lease or sell the domain name to any interested party.

The Panel finds that the Respondent has no rights or legitimate interest in respect of the domain name. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.

6.3 The Domain Name in dispute has been registered and is being used in bad faith

The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith.

Paragraph 4(b)(i) provides:

"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name".

The Panel accepts the Complainantís submission that the Respondent has made no legitimate use of the domain name but has simply tried to make money from it by offering it for sale or lease on the basis that the Respondent has attempted to lease or sell the domain name in dispute to the Complainant on a number of occasions without any bona fide use of the domain name in dispute.

Paragraph 4(b)(i) of the Policy also requires that the consideration demanded by the Respondent for the domain names be in excess of the Respondentís documented out of pocket costs directly related to the domain names. The Respondent has not denied the allegation in the Complaint that the Respondent requested the sum of £20,000 for the sale of the domain name in dispute to the Complainant. The consideration demanded by the Respondent was obviously more than any out-of-pocket costs that the Respondent might have incurred directly related to the domain name in dispute. Accordingly, the Panel finds that the circumstances in paragraph 4(b)(i) of the Policy have been proven by the Complainant.

As a result, the Panel concludes that the domain name in dispute was registered and is being used in bad faith by the Respondent.

 

7. Decision

The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel directs that the domain name <abbeyroad.com> be transferred by NSI to the Complainant.

 


 

Philip N. Argy
Sole Panelist

Dated: December 18, 2001