WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Herederos de Manuel De Falla C.B. v. Music Sales Group
Case No. D2001-1234
1. The Parties
The Complainant is Herederos de Manuel De Falla C.B., C/ Bretòn de los Herreros 55 Ė bajo F , 28003 Madrid, Spain.
The Respondent is Music Sales Group 8-9 Frith Street, London, W1V STZ, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is <manueldefalla.com> (Domain Name), which Domain Name is registered with Network Solutions, Inc., 505 Huntmar Park Drive, Hurdon, Virginia, 20170 Ė 5139, USA (the Registrar).
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), was submitted electronically to the WIPO Arbitration and Mediation Center (the Center) on October 10, 2001. The signed original with attachments was received by the Center on October 12, 2001.
On October 15, 2001, the Center acknowledged receipt of the Complaint. On October 23, the Center transmitted to the Registrar a request for Registrar Verification in connection with this case and on October 24, the Registrar confirmed, inter alia, that: (i) Network Solutions is the Registrar of the Domain Name; (ii) the current registrant of the Domain Name is the Respondent; (iii) the administrative and billing contacts are NetescaliburUK Limited and (iv) the Domain Name is in active status.
On October 30, 2001, the Center transmitted to the Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) electronically, by fax and by courier. In the Commencement Notification the Center advised the Respondent that a response was due on November 19, 2001. On the same date the Commencement Notification was copied to the Complainant and to ICANN and the Registrar.
Having received no response from the Respondent, on November 22, 2001, the Center transmitted to the Respondent a Notification of Respondent Default, copy to the Complainant.
On the same date the Center received an e-mail from the Respondent claiming that the Respondent had not received the Commencement Notification and therefore the Respondent was not aware of the fact that a Response was to be submitted on November 19, 2001. In any case the Respondent had no objection to the Domain Name being transferred to the Complainant.
On November 23, 2001, the Center replied to the Respondent indicating that the Administrative Panel would be informed about the Respondentís e-mail and would decide in its sole discretion whether to consider it in deciding the case.
On November 23, 2001, a second e-mail from the Respondent followed, confirming the Respondentís intentions to withdraw any claim to the Domain Name so that the Domain Name could be transferred to the Complainant. On November 28, 2001, the Center replied that the administrative proceeding could be withdrawn only upon the Complainantís consent and invited therefore the Respondent to contact the Complainant.
On December 4, 2001, the Center notified the parties that Ms. Anna Carabelli had been appointed as the Administrative Panel in this proceeding, indicating that, absent exceptional circumstances, the Administrative Panel was required to send its decision to the Center by December 18, 2001.
The Panel has independently determined that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant has provided evidence of a Community trademark registration dated February 21, 2000, for the words "MF Manuel De Falla" (Attachment 2 to the Complaint), where the letters MF correspond to the initials of Manuel and Falla.
The Complainant also submitted copies of Network Solutions Whois database, indicating that (i) the Respondent registered the Domain Name on February, 29, 2000, (Attachment 1 to the Complaint) and (ii) the Complainant is the owner of the domain names <manueldefalla.org>, <museomanueldefalla.com> and <auditoriomanueldefalla.com>, all registered in November 2000 (Attachments 9-11 to the Complaint).
In addition the Complainant submitted copies of the correspondence exchange in October 2000, with Chester Music Limited, a subsidiary of the Respondent (Attachment 3 to the Complaint). Chester Music Limited confirmed that the Domain Name was registered by the Respondent in connection with the development of Music Sales/ Chester website, in order to promote the life and work of the composer Manuel De Falla.
As Attachment 4, the Complainant submitted a notaryís certificate attesting that, one year later, there is no website corresponding to the Domain Name.
Finally, Attachments 5-7 to the Complaint show that, as the legitimate heirs of Manuel De Falla, the Complainant has established various companies and business entities for handling, managing and promoting the works of Manuel De Falla.
5. Partiesí Contentions
The Complainant contends that:
- the Complainant is the legitimate heirs of the composer Manuel De Falla;
- the Respondentís Domain Name is identical to the Complainantís Community trademark "MF Manuel De Falla" and creates confusion in respect to such mark and the Complainant;
- the Respondent has no rights or legitimate interests in the Domain Name;
- the Respondentís bad faith in using the Domain Name is demonstrated by the fact that the Respondent has not made any use of the Domain Name and there is no active website corresponding to the Domain Name.
Based on the above, the Complainant requests the transfer of the Domain Name.
The Respondent did not file any response and is in default.
The Panel must decide whether to consider the two e-mails dated November 22, 2001, and November 23, 2001, sent to the Center by the Respondent. It is in the Panelís discretion to take any such decision, as stated in the Centerís Commencement Notification: "The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do soÖ" and indicated in the Centerís reply to the Respondent dated November 23,2001.
The Panel decides to consider the above mentioned Respondentís mails since, in the Panelís opinion, they contribute to the resolution of the dispute, as the Respondent clearly states therein that: (i) the Domain Name was registered "as a means of protection for the composer and his heirs"; and (ii) the Respondent has no objection to the Domain Name being transferred to the Complainant.
6. Discussion and finding
1. Art. 15.a. of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
As a preliminary comment, the Panel notices that there appear to be no conflicts here between the parties as to the application of the remedy sought by the Complainant since the Respondent has declared to the Center that it has no objection to the Domain Name being transferred to the Complainant. However, since, despite the above, the parties have not come to any amicable solution as demonstrated by the fact that the Complainant has not withdrawn the Complaint, the Panel deems to examine the existence of the three concurrent factors required by the Policy.
Under paragraph 4.a of the Policy, the complainant must prove each of the following:
(i) The domain name in issue is identical or confusingly similar to the complainantís trademark or service mark; and
(ii) the 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.
Paragraph 4.b of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4.a (iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c of the Policy sets out three illustrative circumstances any one of which if proved by respondent, shall be evidence of the respondentís rights to or legitimate interests in the domain name for the purpose of paragraph 4.a(ii) above.
(a) Identity or confusing similarity
In the Panelís opinion the Domain Name is confusingly similar to the Complainantís trademark "MF Manuel De Falla". In this connection, the Panel notices that: (i) the letters MF correspond to the initials of Manuel and Falla; (ii) the Domain Name employs lower case letters while the Complainantís trademark is generally reproduced in a different graphical shape (capital letters for MF plus the reproduction of the composerís signature (Attachment 2 to the Complaint); and (iii) the Domain Name adds the generic TLD.com. None of the above factors has any legal significance in comparing the Domain Name to the Complainantís trademarks in view of establishing the existence of any confusing similarity.
(b) Rights or legitimate interests
Based on the Complaint it is clear that the Complainant has never authorized or licensed the Respondent to use the Complainantís trademark. On the other hand, by saying that the Domain Name was registered "as a means of protection for the composer and his heirs" (see the Respondentís e-mail to the Center dated November 22, 2001) the Respondent clearly admits that it has no rights or legitimate interests in the Domain Name.
The Panel therefore considers that this element had been established.
(c) Bad Faith
Under the Policy, the Complainant is required to prove also the third element provided for in paragraph 4.a (iii), namely that the domain name "has been registered and is being used in bad faith".
In the Panelís opinion the Respondentís bad faith in registering and using the Domain Name results here from the following facts. As established in paragraph 6.b above, the Respondent Ė by its own admission - has no rights or legitimate interests in the Domain Name and therefore could not possibly make any plausible actual or contemplated active use of the Domain Name.
In addition, the Respondent, which is in the music business, knew about the fact that the Domain Name incorporates the name of the famous composer Manuel De Falla.
On the other hand, the Respondent has acted with passive holding, which has been repeatedly and consistently regarded by the Panelsí decisions as use in bad faith, since the very early decision Telstra Corporation Ltd. v. Nuclear Marshmallows (case D2000-0003).
Therefore the Panel concludes that the Domain Name has been registered and used in bad faith.
The Complainant has also requested that the Respondent be ordered to pay costs. Such a remedy, however, is not available under the Policy.
The Panel decides that: (a) the Domain Name <manueldefalla.com> registered by the Respondent is confusingly similar to the Complainantís trademarks; (b) the Respondent has no rights or legitimate interests in respect of the Domain Name manueldafalla.com; and (c) the Domain Name <manueldefalla.com> has been registered and is being used in bad faith by the Respondent.
Accordingly the Panel requires that the Domain Name <manueldefalla.com> be transferred to the Complainant.
Dated: December 18, 2001