WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CNR Music B.V. v. High Performance Networks, Inc.
Case No. D2005-1116
1. The Parties
The Complainant is CNR Music B.V. of Naarden, the Netherlands, represented by S.V. Rutgers, Fruytier Lawyers in Business, of Amsterdam, the Netherlands.
The Respondent is High Performance Networks, Inc., of New York, United States of America, represented by John Berryhill, of Media, Pennsylvania, United States of America.
2. The Domain name and Registrar
The disputed domain name is <arcade.com>. It is registered with GoDaddy.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2005, in hard copy and on November 3, 2005, electronically. On October 25, 2005, the Center transmitted by email to GoDaddy.com a request for registrar verification in connection with the domain name at issue.
On October 25, 2005, the registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact and confirming that it had received the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). The Center issued a Complaint Deficiency Notice on November 2, 2005. The Complainant filed an electronic copy of the Complaint and a further copy of the Complaint with the Complaint cover sheet in response thereto on November 3, 2005.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2005. Such notifications were sent to the email address provided by the registrar and to various postmaster email addresses.
On November 29, 2005, the Respondent submitted a Response, receipt of which was acknowledged by the Center on November 30, 2005.
On December 8, 2005, the Complainant requested that it be permitted to make a supplementary submission. On December 15, 2005, the Center stated to the Complainant that the Panel would make any decision as to further submissions.
The Complainant requested the appointment of a three-member panel in the Complaint.
The Center appointed Charles Gielen and M. Scott Donahey as panelists and Thomas Webster as presiding panelist and notified the parties thereof on December 29, 2005. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
In accordance with paragraph 12 of the Rules, on January 3, 2006, the Panel issued a procedural order inviting additional submissions by the Complainant by the close of business on January 9, 2006, and by the Respondent by the close of business on January 16, 2006. Pursuant to paragraph 10 (c) of the Rules, the Panel extended the date for rendering its decision until January 26, 2006.
The Complainant made its further submission on January 9, 2006. The Respondent made its further submission on January 16, 2006. Both supplemental submissions were admitted by the Panel.
4. Factual Background
The Complainant and its affiliates are active in the music business. In the Complaint, the Complainant states that:
“Complainant, or in any case his legal predecessors (notarial certificates Annex 4) is the subsequent owner of the trademark “arcade” which is registered by Complainant and its affiliated companies in more than 12 countries, amongst others, the Unites States, Canada, the United Kingdom, Ireland, the Benelux, Ireland, Norway, Denmark, Greece and Switzerland (Annex 5a). Complainant has invested substantial amounts in marketing the name “arcade” which has, in some territories, become a “household” name associated with phonographic records releases. Complainant also has registered a number of variations of its trademark in different countries. For example, in addition to the trademark “arcade” there are also logo types of the trademark arcade (Annex 5b). Since approximately 1983 “arcade” has also been used worldwide by Complainant and its affiliated companies in the execution of its business.
On September 23, 1996, the Dutch private company with limited liability Arcade Entertainment Group B.V. (an affiliated company of Complainant, vide Annex 4) registered the domain name <arcade.com> (Annex 6). Due to an error on the part of the Registrar of Complainant, Xs4all (at present called Evonet), the registration of the domain name <arcade.com> was not renewed somewhere in 2003 or 2004 on behalf of Complainant. The domain name <arcade.com> had been used since the September 23, 1996 by Complainant.
Go Daddy Software. Inc. registered the domain name <arcade.com> in 2004 and in its turn offered it for registration (Annex 7 Whois Database) and assigned it to High Performance Networks, Inc.”
The Respondent does not directly describe itself, but in connection with this matter states as follows:
“[i]n July 2003, the Respondent was interested in acquiring domain names relating to video and computer games, and noticed the domain name at that time was registered to a Georgos Athanasakis. Accordingly, the Respondent offered to purchase the domain name from Mr. Athanasakis. The record of the negotiation, with prices redacted, is attached as Exhibit D.
Apparently Mr. Athanasakis had registered the domain name subsequent to the lapse in renewal which the Complainant dimly recalls. The Respondent concluded negotiations with the then-registrant of the domain name and purchased it in accordance with the transfer agreement attached hereto as Exhibit E. Accordingly, the Respondent legitimately purchased the domain name from the registrant thereof.
Attached hereto as Exhibit F are records from the Internet Archive at www.archive.org, showing that the Respondent has been using the domain name since its acquisition for the purpose of providing paid advertising links to computer and arcade games.”
5. Parties’ Contentions
The Complainant maintains that it (and its affiliates) owns the trademark “Arcade” and that this trademark has been registered in a number of countries. The Complainant also states that an affiliate registered the domain name <arcade.com> but that due to an oversight, the registration was not renewed.
The Complainant maintains that the Respondent does not hold any trademark to “Arcade”; that it is registered as inactive in New York and that the Respondent has apparently taken steps to ensure that one cannot trace where the <arcade.com> domain name leads.
The Complainant also refers to a domain name decision of the National Arbitration Forum that held that the Respondent had registered a name in bad faith.
Moreover, the Complainant claims that the Respondent has not demonstrated any legitimate interests in respect of the domain name that is the subject of the Complaint as it simply redirects to other sites.
In its reply, the Complainant notes in particular that:
“Respondent’s intention to sell the domain name, the (planned) use in violation with Complainant’s (trademark) rights, and the hijacking and pinging through of other domain names of Complainant to Respondent’s website clearly show Respondent’s bad faith with regard to registration and using of the domain name.”
The Respondent emphasizes that the word “Arcade” is generic in nature and that it is “universally associated with video game arcades, shopping arcades.”
The Respondent accepts that the Complainant has a trademark for “Arcade” but notes that it is limited to “pre-recorded and audio recording material” and that there are hundreds of other trademark registrations with the name “Arcade” in the United States alone. Moreover, the Respondent maintains that, with respect to some trademarks at least, the registrant has accepted that the term “Arcade” is generic.
Therefore, the Respondent states that: “the Respondent has no opinion on the Complainant’s assertions relative to specific goods and services because, as discussed below, the Respondent registered and has been using the domain name <arcade.com> in connection with the ordinary meaning of the word arcade.”
The Respondent maintains that it has a legitimate right and interest in the domain name because it purchased it in July 2003 and has used it since that date. The Respondent maintains that it purchased a “dictionary word” that provides a great number of returns when entered through Google and refers to various domain name cases in this respect.
The Respondent acknowledges that it uses the domain name for “pay-per-click” advertisements for computer games and maintains that, in line with various domain name decisions on which it relies, this use is legitimate.
The Respondent maintains that there is no demonstration of bad faith in this instance due to the common meaning of the word arcade and that the Complainant has even acknowledged that the Respondent had apparently innocently claimed the domain name. Moreover, the Respondent notes that it did not hear from the Complainant between March 1, 2004, and the date of the filing of the Complaint with respect to this domain name.
As regards redirecting, the Respondent maintains that this is caused by the fact that the Complainant at one time did own the <arcade.com> domain name and that the Complainant or its Internet service provider had not updated the relevant program to reflect the fact that that was no longer the case.
6. Discussion and Findings
Under the Policy, paragraph 4(a) the Complainant must prove that each of the following three elements are present:
(i) the Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant and its affiliates hold the trademark ARCADE in various jurisdictions. The domain name is identical to the trademark. Therefore, the domain name is identical with a trademark in which the Complainant has interests.
The Respondent’s argument that there are other entities holding trademarks including the word “Arcade” does not affect this aspect of the case. The Respondent holds no such trademarks. A word with an ordinary dictionary meaning may, of course, be used as a trademark.
The fact that the Complainant holds the trademark for ARCADE is sufficient to satisfy the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The first issue with respect to rights and legitimate interests is the timing of the legitimate use. Paragraph 5(c) of the Policy provides that a respondent may demonstrate his rights or legitimate interests in various ways including:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services …”
In essence, the Respondent’s argument is that it uses the generic name “arcade” to attract Internet users interested in video games and apparently other computer and electronic products. This issue overlaps with the issue of bad faith discussed below. Since the Panel finds that the Complainant has failed to demonstrate bad faith within the meaning of the Policy with respect to this domain name, the issue of rights and legitimate interests of the Respondent need not be addressed any further.
C. Registered and Used in Bad Faith
The fundamental obstacle for the Complainant is that the term “arcade” has a broad variety of meanings in English, ranging from an architectural term, to a term used in connection with amusement centers and video games. The Panel accepts the Complainant’s evidence that, in a specific area, music, “arcade” is well-known and associated with the Complainant’s group and trademark. However, the basic issue in most cases under the Policy is whether the respondent has sought to take advantage of the complainant’s reputation as embodied in the trademark for the respondent’s commercial benefit.
In this case, the Panel finds that the Complainant has been unable to establish that this is the case. The registration of the domain name appears to have been aimed at exploiting the ability of the word itself to attract Internet users, and not aimed at taking advantage of the Complainant’s reputation or trademark. The Panel accepts that the name “arcade” probably does attract Internet users interested in a broad range of products that have nothing to do with the Complainant or the Complainant’s business. In fact, the Respondent may well have an interest in using the domain name with respect to various areas other than music, such as computer games.
The Complainant’s trademark has been registered for categories, such as computer devices, that are beyond the music category. However, the fact that the Respondent is seeking to appeal to Internet users interested in those products does not suffice to show bad faith under the Policy. The essence of the Policy is to protect trademark holders from use of their trademark by third parties. The existence of a trademark is one of the necessary conditions to meet the requirements of the Policy. However, other conditions are also applicable. The Policy also requires bad faith on the part of the respondent. To establish bad faith, there must be some attempt by the respondent to profit from the trademark owner’s use of its trademark.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of the Policy, paragraph 4(a)(iii) shall be evidence of the registration and use of the domain name in bad faith, including:
“(i) 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 trademark 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
As regards paragraph 4(b)(i) of the Policy, the Respondent may well have purchased the domain name to sell it, but, if so, the Respondent simply presumably wished to sell it to the highest bidder, and not necessarily or primarily to the Complainant.
As regards paragraph 4(b)(ii) of the Policy, given the common use of the term, the Panel is not satisfied on the evidence presented that the Respondent sought to prevent the Complainant from using its trademark. The Respondent appears to have sought a domain name with as wide a generic appeal as possible, probably for resale.
As regards paragraph 4(b)(iii) and (iv) of the Policy, there is no evidence of an intention to disrupt the Complainant’s business. The Respondent’s intent was apparently to attract Internet users seeking as broad a range of products as possible and the Panel is not satisfied on the evidence presented that there was an attempt to lure Internet users to the Respondent’s site based on the Complainant’s trademark.
The Panel understands the Complainant’s irritation that the Respondent has acquired a domain name corresponding to the Complainant’s trademark. However, that appears to be attributable to the fact that the Complainant’s Internet provider allowed the domain name to lapse and the domain name happens to consist of a word with a particularly wide range of common usage in English. The current situation does not appear to be result of the Respondent’s bad faith as defined in the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel denies the Complainant’s request that the domain name be transferred to the Complainant.
M. Scott Donahey
Dated: January 23, 2006