The Complainant is eMusic.com Inc. of New York, New York, United States of America, represented by Jessica R. Friedman, United States of America.
The Respondent is Obada Alzatari of Jerusalem, Israel.
The Disputed Domain Name <emusique.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2010. On January 29, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On January 29, 2010, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2010. The Response was filed with the Center on February 25, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on March 5, 2010. 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.
The Complainant owns trade mark registrations in numerous countries, including United States registration number 3348261 for the word mark EMUSIC and also for device marks incorporating its word mark. It also owns 87 domain names incorporating the EMUSIC mark and the Complainant submits that it has operated a website at “www.emusic.com” since 1995, although the InterNic records indicate this domain name was created in 1999.
The Complainant submits that it owns registered trade mark rights in its EMUSIC mark. It says that the term “emusique” in the Disputed Domain Name is merely the translation in French of its EMUSIC trade mark and, as acknowledged by the Respondent in previous correspondence, is as a result confusingly similar to its trade mark.
The Complainant further says that the Respondent has made no demonstrable preparations to use and is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Nor is there any evidence that the Respondent is known by or in connection with the Disputed Domain Name or has ever been engaged in any business in relation to it or has made any legitimate noncommercial use of the Disputed Domain Name. The Complainant says that all that the Respondent has done with the Disputed Domain Name is to offer to sell it to the Complainant which is not consistent with a demonstration of rights or legitimate interests in the Disputed Domain Name.
As far as the third element of the Policy is concerned the Complainant says that the Respondent owns between 180 and 195 different domain names and is listed as the WhoIs contact for many others. It submits that the absence of any content other than a collection of weblinks, or of evidence that the Respondent has ever been known by or associated with the Disputed Domain Name or has engaged in any business in relation to it, strongly indicates that the Disputed Domain Name was registered in bad faith and primarily for the purposes of selling, renting or otherwise transferring the Disputed Domain Name to the owner of a related trade mark for a considerable profit.
Further, by making two unsolicited offers to sell the Disputed Domain Name for well in excess of its out of pocket costs and by repeatedly threatening to sell the Disputed Domain Name to someone else if the Complainant did not meet the price, the Respondent has clearly acted in bad faith. See for example Louis Vuitton v. Net-Promotion, WIPO Case No. D2000-0430 or Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus, WIPO Case No. D2000-0166.
The Respondent says that the Complainant's registration of the English word mark EMUSIC does not entitle the Complainant to monopolize domain names that consist of a foreign language translation of EMUSIC. It says that various foreign language equivalents have been registered for some time and are either being offered for sale or are parked by their registrars.
The Respondent submits that, although he does not use the Disputed Domain Name, he believes that it is composed of a generic term and that the parking page to which the Disputed Domain Name resolves is simply the page provided by the relevant domain name registrar. Accordingly, the Respondent considers that this is not a case in which it has no rights or legitimate interests in the Disputed Domain Name.
As far as bad faith is concerned, the Respondent says that registering and offering generic domain names for sale is a valid and permissible activity and is an activity engaged in by many domain name traders or brokers. As part of marketing these domain names he contacts potentially interested parties and offers the domains for sale. This does not mean that he necessarily registered it in bad faith but rather found potential in it as a generic domain name and was prepared to offer it to anyone who showed interest in it. In accordance with this approach, the Disputed Domain Name was offered through the domain name marketplace at “www.sedo.com” and the Respondent simply invited the Complainant to bid on the Disputed Domain Name. The Respondent says that he located several potential buyers but wanted to hear back from the Complainant before he passed the deal on to another prospect. The Respondent submits that the Complainant has attempted to claim that its conduct amounts to cybersquatting when this is not the case and that the Complainant's conduct amounts to reverse domain name hijacking.
As a preliminary matter the Panel notes that a number of addresses were listed by the Registrar as being contact addresses for the Respondent. In particular, the Disputed Domain Name automatically redirected Internet users at one stage to the website at “www.musiqueplus.com” and the Complaint was forwarded to the registered owner of this website, who subsequently denied any knowledge of the Respondent. The Panel is satisfied that the Respondent was the proper registered owner of the Disputed Domain Name at the date of this Complaint and for the purposes of these proceedings.
The Panel finds that the Complainant has demonstrated that it owns registered trade marks in the EMUSIC trade mark in various countries worldwide.
Further the Panel finds that the essential element, “emusique” of the Disputed Domain Name is confusingly similar to the Complainant's trade mark EMUSIC. As the French language translation of the Complainant's registered trade mark, the Panel considers that there would be an obvious association between the Disputed Domain Name and the Complainant's trade mark such as would amount to confusing similarity. This is more particularly the case in these circumstances where the Complainant's mark is registered and used in numerous countries and this view is consistent with the approach taken by previous panels in Compagnie Generale Des Etablissements Michelin - Michelin & Cie. v. Graeme Foster, WIPO Case No. D2004-0279 and in Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085.
Accordingly, the Panel has found that the first element of paragraph 4(a) of the Policy is satisfied.
The onus is upon the Complainant to make out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then up to the Respondent to rebut this case.
The Complainant asserts and the Respondent has conceded that the Respondent is not known by and makes no actual bona fide commercial use of the Disputed Domain Name except in relation to its Registrar's parking page. Neither does the Respondent appear to have made any noncommercial use of the Disputed Domain Name nor to have received permission from the Complainant to use the EMUSIC mark. Accordingly, the Complainant has made out its prima facie case.
The Respondent maintains however that it has as much right as the Complainant to the Disputed Domain Name because it comprises a generic term and its business as a domain name broker is built upon registering and trading in generic domain names. While it is correct that the Respondent has as much right to register and use a truly generic domain name as anyone else, in this Panel's view it is still incumbent upon the Respondent to ensure that the domain name that it considers is generic is not, in fact, likely to be confusingly similar to a mark in which another party has established trade mark rights. See, e.g. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
In this case the Complainant asserts that it has used its EMUSIC trade mark on-line since 1995, appears from news articles submitted with the Complaint to have actively used it since around 1998. Further, the Complainant appears to have registered trade mark rights dating back to a priority date in 1995. The Disputed Domain Name was by contrast registered in 2004 some years after the Complainant obtained registered trade mark rights and after the Complainant was actively engaged in on-line business under the EMUSIC trade mark. It seems reasonable to the Panel that had the Respondent undertaken any reasonable level of searching prior to registering the Disputed Domain Name it would have come across the Complainant's on-line presence or registered trade marks. Indeed, it strikes the Panel as more likely than not that the Respondent did undertake some searching at this stage and, aware of the Complainant's trade mark rights, saw that the Disputed Domain Name was available and thought that he might obtain it for the purpose of on-selling it to the Complainant.
In all the circumstances and taking into account the Respondent's proactive attempts to sell the Disputed Domain Name to the Complainant at a very inflated value as set out below, the Panel finds that the Respondent has not successfully rebutted the case made out by the Complainant. As a result the Complaint succeeds in relation to the second element of the Policy.
The circumstances in this case indicate clearly to this Panel that the Respondent acquired the Disputed Domain Name for the purpose of trading it on in the course of his business as a domain name broker. The Panel is satisfied in the circumstances that this was more likely than not because of its potential trade mark value, and not due solely to its potential value as a generic or descriptive mark. After acquiring the Disputed Domain Name he then proceeded on an unsolicited basis to offer it to the Complainant for USD 25,000 and when this offer was not accepted, dropped his offer to USD 21,000, finally threatening to sell it to a third party if his offer was not accepted.
Previous panels in cases such as Louis Vuitton v. Net-Promotion, WIPO Case No. D2000-0430, and Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus, WIPO Case No. D2000-0166 have found bad faith in circumstances where unsolicited offers have been made to sell domain names at a price well in excess of their out-of-pocket cost, and where threats have been made to on-sell to third parties in the event that their offer was not accepted. Similarly this Panel finds that the Respondent acquired the Disputed Domain Name primarily for the purpose of selling it to the Complainant for a consideration well in excess of its out-of-pocket costs under paragraph 4(b)(i) of the Policy.
Accordingly, the Panel finds that the Complaint succeeds in relation to the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <emusique.com> be transferred to the Complainant.
Dated: March 21, 2010