WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sam Ash Music Corporation v. Ekomm International
Case No. D2006-1623
1. The Parties
The Complainant is Sam Ash Music Corporation, Hicksville, New York, United States of America, represented by Katten Muchin Rosenman LLP, New York, New York, United States of America.
The Respondent is Ekomm International, Lawrence, Massachusetts, United States of America.
2. The Domain Name(s) and Registrar(s)
The disputed domain name <samash.net> is registered with the domain name registrar Enom, Inc. f/k/a BulkRegister.com.1
3. Procedural History
The Complaint was filed by e-mail with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2006, and in hardcopy on December 22, 2006. On December 22, 2006, the Center transmitted by e-mail to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On December 27, 2006, BulkRegister.com’s successor, Enom, Inc., transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the domain name registrant and providing the contact details for the administrative, billing, and technical contact. 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for a Response was January 23, 2007. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on January 24, 2007. From the file record provided by the Center, it appears that the Center’s communications to Respondent by e-mail were successful, but that physical delivery of the printed Complaint and attachments to Respondent’s Whois address-of-record was not.
After clearing potential conflicts of interest, the Center appointed Jonathan Hudis as the sole panelist in this matter on February 6, 2007. The Panel finds that it was properly constituted. 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.
After reviewing the case file, on March 9, 2007, the Panel issued an interim Order requesting that the parties provide certain further documents and information.2 Complainant responded to the Panel’s interim Order on that same day. Respondent did not respond to the Panel’s interim Order at all. The Panel shall discuss the Complainant’s response and relevant additional submissions in the course of rendering its decision below.
4. Factual Background
Complainant, Sam Ash Music Corporation, is a retailer of musical instruments, sheet music, accessories, audio equipment and related products. Complainant asserts that it has used its SAM ASH corporate name, trade name, trademark and service mark for and in connection with its products and services since 1924. Complainant asserts that it has used its SAM ASH name and mark continuously since its adoption, with such use expanding over time. Complainant asserts that it currently operates over forty retail stores throughout the United States, all under its SAM ASH name and mark.
Complainant contends it is the owner of trademark and service mark registrations in over thirty-five countries. Attached to the Complaint are database abstracts of registrations for the mark SAM ASH (in block and stylized formats) issued by the U.S. Patent and Trademark Office. In its Complaint, Complainant asserts it is the owner of several other registrations issued for the SAM ASH mark in countries such as Argentina, Canada, France, Germany, Mexico, and the United Kingdom.
Complainant asserts that, through long and extensive use and promotion of the SAM ASH mark in the United States and abroad, the SAM ASH name and mark has acquired distinctiveness and secondary meaning signifying Complainant. Complainant asserts that it has built up and owns valuable goodwill symbolized by the SAM ASH mark.
On March 21, 2002, Respondent registered the domain name <samash.net>. Complainant asserts that, upon registering this domain name, Respondent began using the <samash.net> domain name as a web site to intercept and siphon off Internet users searching for Complainant’s SAM ASH branded goods and services. Therefore, says Complainant, Respondent is not making any legitimate use of the domain name. Complainant’s counsel sent cease-and-desist letters to Respondent on November 21, 2006 (by e-mail and U.S. mail – albeit bearing the wrong postal address) and December 12, 2006 (by U.S. mail). Neither the Complaint itself nor the attachments thereto state or show whether Respondent ever received these communications. In any event, Complainant asserts that Respondent never responded to either of these communications.
In response to the Panel’s interim Order, Complainant provided the following:
1) Regarding Complainant’s communication to Respondent of November 21, 2006, the Panel inquired what address(es) were used, and from what source(s) was it/were they obtained; what proof exists (if any) that said communication was received by Respondent; and what proof exists (if any) that said communication was undeliverable to Respondent. Complainant advised, with supporting documents, that the address(es) used were taken from the registrar’s Whois records; that Complainant’s e-mail communication was not returned as undeliverable, but that Complainant has no proof, one way or the other, whether its communication was in fact received or was undeliverable.
2) Regarding Complainant's communication to Respondent of December 12, 2006, the Panel inquired what address(es) were used, and from what source(s) was it/were they obtained; what proof exists (if any) that said communication was received by Respondent; and what proof exists (if any) that said communication was undeliverable to Respondent. Complainant advised, with supporting documents, that the address(es) used were taken from the registrar’s Whois records (verified a second time); that Complainant’s postal communication was returned as undeliverable, and that Complainant has no proof that its communication was received by Respondent.
3) Before filing its Complaint with the Center, Complainant did not attempt to make contact with Respondent by telephone. However, on April 6, 2006, according to Complainant, Respondent contacted Complainant by telephone. During this telephone conversation, Respondent offered to sell the <samash.net> domain name registration to Complainant for $250,000. Complainant offered to pay Respondent $1,500 for a voluntary transfer of the domain name registration, but Respondent never followed up with a reply to Complainant’s counter-offer.
4) Under the UDRP Rules, Complainant was obligated to serve Respondent with a copy of the Complaint. In response to the Panel’s inquiries, Complainant states that it served Respondent by Federal Express courier and by e-mail; the addresses Complainant used were taken from the domain name registrar’s Whois database; the electronic version was not returned to Complainant as undeliverable; and that the hard copy version was returned to Complainant as undeliverable.
5. Parties’ Contentions
Complainant asserts that the contested <samash.net> domain name is identical and/or confusingly similar to its SAM ASH mark; that Respondent has no rights or legitimate interest in the domain name; and that the domain name was registered and is being used in bad faith.
The Respondent did not submit a Response or otherwise respond to the Complainant’s contentions in these proceedings.
6. Discussion and Findings
Complainant has the burden of proving all three of the following elements under paragraph 4(a) of the policy:
(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The failure to prove any one of these factors is fatal to the Complaint.
Respondent had the opportunity to respond and present evidence that it has rights or legitimate interests in respect of the contested domain name. Respondent chose not to do so. Complainant is not entitled to relief simply by reason of Respondent’s default. However, the Panel can and does draw evidentiary inferences from Respondent’s failure to respond.
As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Decision Overview” available at http://arbiter.wipo.int/domains/search/overview/)3 makes clear, “the Respondent’s default does not automatically result in a decision in favor of the Complainant. Subject to [the minimum prima facie case to be asserted by the Complainant that the Respondent lacks rights or legitimate interests], the Complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. While a panel may draw negative influences from the Respondent’s default, paragraph 4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in the UDRP proceeding.” WIPO Decision Overview at Sections 2.1 and 4.6.
Paragraph 14 of the Rules provides that:
(a) In the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these rules or the Panel, the Panel shall proceed to a decision on the Complaint.
(b) If a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement, these Rules or any requests from the Panel, the Panel shall draw such interests therefrom as it considers appropriate.
The Panel now must decide whether Complainant has come forward with sufficient evidence to satisfy the requirements of paragraphs 4(a)(i), (ii) and (iii) the policy.
A. Identical or Confusingly Similar
Complainant has demonstrated its rights in the SAM ASH mark to the Panel’s satisfaction by its submission with the Complaint of database abstracts of its Federal U.S. trademark and service mark registrations for the SAM ASH mark. Notwithstanding that Complainant did not provide examples of its common law use of the SAM ASH mark, the Panel takes judicial notice of the long and extensive use of the SAM ASH mark in connection with retail services for the sale of music equipment, musical instruments, musical recording equipment, sheet music, and related products and services sold to professional musicians and members of the general public. In any event, Respondent has not come forward to dispute Complainant’s rights in its SAM ASH mark. The disputed domain name is identical to the SAM ASH mark, it being well established that the gTLD “.net” and the absence of the space between “sam” and “ash” may be disregarded for the purpose of this comparison.
The Panel finds, therefore, that Complainant has met its burden with respect to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in the <samash.net> domain name. Complainant asserts that Respondent has not made any preparations to use the <samash.net> domain name in connection with any bona fide offering of goods or services. Respondent has no Agreements, legal or otherwise, with Complainant authorizing Respondent to use the SAM ASH mark, whether as all or as part of a domain name or as a trademark or service mark. Complainant asserts that Respondent has not been personally identified or commonly known by names comprised, in whole or in part, of the name “SAM ASH”. Complainant asserts that Respondent owns no trademark registrations for any mark comprised, in whole or in part, of the term “Sam Ash”, nor has Respondent applied for any such trademark registrations. Finally, Complainant asserts that Respondent’s use of SAM ASH constitutes an infringement of Complainants trademark and service mark rights.
The Panel, in the exercise of its judicial investigative authority, visited the web site located at the URL http://www.samash.net, in its current and historical forms.4 The <samash.net> web site currently displays the header/banner “RareCPUs.com”. Immediately beneath this header/banner reads: “A Section of Samash.net has branched off into a new site. Please click the following link to redirect: http://www.RareCPUs.com. We will leave this [web page] up here on SAMASH.net for about, one, two million years? Whatever it takes to get all the previous fans and loyal members to recognize our new branch. Thanks for looking, enjoy!” Thus, as Complainant asserts, the web page located at <samash.net> apparently serves as a “home page for a different web site namely “www.rarecpus.com” (in actuality, it appears that the <samash.net> web page is a manual redirect/referral page to <rarecpus.com>).
Both the “samash.net” web page and the “rarecpus.com” web site are apparently used as aftermarket trading sites in old model computers, computer processors, computer spare parts and computer chips. At the bottom of every page of both sites, there is a copyright notice in which the owner of the web content is claimed to be “Paul Ash”. Moreover, the designated administrative contact for the <samash.net> domain name is listed as Mariam Ash of Lawrence, Massachusetts.
Given that the subject domain name has been registered since 2002, the Panel also used its judicial investigative authority to determine whether historical use had been made of any web pages corresponding to the contested domain name. The Panel employed the resources of the Internet Archive’s Wayback Machine for this purpose.5 Search results on the Internet Archive’s Wayback Machine for the URL http://www.samash.net showed that the Internet Archive captured sample historical web pages from this URL from May 2002 through February 2005. No pages corresponding to this URL were captured by the Internet Archive for 2006 or any part of 2007 to date.
So far as the Panel’s Internet Archive research disclosed, an “Under Construction” page was located at the URL http://www.samash.net from May 2002 until October 2003. This first “Under Construction” page contained the same address in Lawrence, Massachusetts as is indicated in the Whois records for the subject domain name. In October 2003, the “Under Construction” page was substituted by a “Place Holder” page, which contained no other graphic or textual elements. From November 2003 until February 2005, it appears that the “samash.net” website was used for several pages of underlying content, including “Internet links”, a “catalogue” “other” items, “news” items, and an e-mail interface. The Wayback Machine search results, showing no captured web page content from March 2005 through February 2007, could not inform the Panel as to when the current text and graphics located at the present <samash.net> web site were created and published to the Internet.
It appears that Respondent “may” have used the <samash.net> domain name in connection with a bona fide offering of goods and services, or at the very least information, before Respondent had notice of this dispute. Policy, paragraph 4(c)(i). Alternatively, it appears that Respondent, at least as early as November 22, 2003, and continuing to date, “may” have been making a legitimate non-commercial or fair use of the domain name, without the intent for commercial gain to misleadingly divert consumers or to tarnish the SAM ASH trademark or service mark. Policy, paragraph 4(c)(iii). However, in the absence of a response from Respondent, the Panel would be engaging in speculation as to what Respondent’s proofs, if any, “would” have shown.6
Additionally, the claimed creator of the web page content under the <samash.net> domain name is Paul “Ash”. Further, according to the domain name registrar’s Whois records, the named administrative contact for this domain name is Mariam “Ash”. The Panel notes that Respondent has not come forward to identify any individual associated with the named Registrant, Ekomm International, named “Sam Ash”. The Panel is left to wonder, therefore, whether one of Respondent’s principals has been commonly known by the name “Sam Ash”, even if Respondent itself has not acquired any trademark or service mark rights in this name. Policy, paragraph 4(c)(ii). However, no claims or evidence have been put forward by the Respondent on this point.
With these questions unanswered due to Respondent’s default, the Panel is satisfied that the Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Examples recited in the Policy of a Respondent’s bad faith registration and use of a domain name include proof that: Respondent registered or acquired the disputed domain name primarily for the purpose of sale to the Complainant for profit in excess of costs; Respondent registered the domain name to prevent Complainant from registering its SAM ASH mark in a corresponding domain name (and that Respondent has engaged in a pattern of such conduct); Respondent registered the contested domain name primarily for the purpose of disrupting Complainant’s business as a competitor; and intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s SAM ASH mark as to the source, sponsorship, affiliation, endorsement of Respondent’s web site or the products or services on Respondent’s web site. Policy, paragraphs 4(b)(i) – (iv). Of these recited examples, the Panel finds that Respondent’s offer to sell the contested domain name to Complainant for $250,000 constitutes bad faith registration and use of the <samash.net> domain name. Policy, paragraph 4(b)(i).
The “bad faith factors” specified in paragraph 4(b) of the Policy are not exclusive or exhaustive. Therefore, the Panel finds the following additional facts and circumstances indicating bad faith registration and use of the subject domain name on the part of Respondent:
1) Respondent’s failure to respond to Complainant’s correspondence, plus the additional bad faith factors noted immediately above and below, as well as Respondent’s constructive notice of Complainant’s numerous trademarks registered with the U.S. Patent and Trademark Office. A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Gordon Rahschulte, WIPO Case No. D2001-0901 (September 17, 2001) (“[T]the Panel declines to infer bad faith from Respondent’s failure to respond to Complainants’ correspondence alone. Silence, without more, cannot prove that Respondent acted in bad faith. However, at the time Respondent registered the domain name, Respondent had constructive, if not actual, notice of Complainants’ rights to its marks. The Panel therefore infers that Respondent registered the domain name in bad faith.”).
2) In view of Complainant’s and the Center’s failed attempts to serve Respondent with printed copies of the Complaint and attachments, and no explanation coming from Respondent when it appears that Respondent’s e-mail address continues to function, the Panel can only conclude that Respondent has provided false contact information to the domain name registrar; or that if this information was at one time correct, it has not been updated. A domain name registrant who has provided false contact information to the domain name registrar has been found to be a further example of bad faith registration and use of a domain name. Verio Inc. v. Sunshinehh, WIPO Case No. D2003-0255 (June 24, 2003).
Therefore, Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
For the reasons stated hereinabove, and pursuant to paragraph 4(i) of the Policy, and Paragraph 15 of the Rules, this Panel grants the remedy requested by Complainant in the Complaint, namely that the domain name <samash.net> is hereby transferred to Complainant.
Dated: March 12, 2007
1 In July 2006, eNom, Inc. purchased the business and assets of Bulkregister, LLC. See, http://www.enom.com/inthe news.asp?pr=060726bulkregister&mc=no
2 See Rules, Rule 12 (In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the parties).
3 Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP. When such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency in UDRP decisions. Fresh Intellectual Properties, Inc. v.800network.com, Inc., Case No. D2005-0061 (WIPO March 21, 2005), at n.3.
4 “A Panel may visit the Internet site linked to the disputed domain name in order to obtain more information about the Respondent and the use of the domain name. The Panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. If the Panel feels that it requires further information to make a decision in a proceeding, it can issue a Panel order to the parties.” WIPO Decision Overview at Section 4.5.
5 The Internet Archive is a non-profit corporation that was founded to build an Internet library, with the purpose of offering permanent access for researchers, historians, and scholars to historical collections that exist in digital format. Founded in 1996 and located in San Francisco, California, the Internet Archive includes text, audio, moving images, software, and archived web pages. See http://www.archive.org/about.php. The Internet Archive makes no claim that it is a complete and accurate representation of the Internet of every day of its existence since the mid-1990s.
6 “While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Decision Overview at Section 2.1.