WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eMusic.com Inc. v. 1-800 Communications, Inc.
Case No. D2010-1181
1. The Parties
Complainant is eMusic.com Inc. of New York, United States of America represented by Sonnenschein Nath & Rosenthal of United States of America.
Respondent is 1-800 Communications, Inc. of United States of America.
2. The Domain Name and Registrar
The disputed domain name <wwwemusic.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2010. On July 19, 2010, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On July 19, 2010, Dotster, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 26, 2010.
The Center verified that the Complaint and amended 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 Respondent of the Complaint, and the proceedings commenced on July 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 18, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 20, 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.
4. Factual Background
Complainant has registered the stylized word and word service mark EMUSIC on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 2,036,441, dated February 11, 1997, stylized, in International Class (IC) 42, covering "retail store services through computer communications featuring sound recordings", and further specified, and; registration number 3,348,261, dated December 4, 2007 , in ICs 35 and 38, covering "online retail store services featuring downloadable recorded music and podcasts". The stylization of the first filed EMUSIC mark consists of using a particular type-font to display the term, without additional graphics, colorization or other differentiating characteristics.
Complainant has registered the word service mark EMUSIC on the trademark registers of a number of countries other than the United States, including (but not limited to) Argentina, China, Germany and Mexico, and Complainant holds a Community Trade Mark (CTM) registration for the mark. Details concerning such registrations were provided by Complainant.
Complainant has registered the domain name <emusic.com>, as well as more than 75 other domain names incorporating in some form the term EMUSIC. Complainant operates a commercial Internet website at “www.emusic.com” where it offers Internet users a paid service permitting downloads of MP3 music files and other expressive content. According to Complainant it has operated this service, including through its predecessors in interest, for over 15 years.
According to the Registrar's verification, Respondent is the registrant of the disputed domain name. According to a Doster WhoIs report of June 15, 2010 furnished by Complainant, the record of registration of the disputed domain name was created on April 12, 2000. Registrant information underlying the initial registration was protected by a privacy shield, listing the registrant as "c/o WWWEMUSIC.COM". According to the Registrar, Respondent is the party behind that privacy shield.
Prior to on or about May 10, 2010, Respondent used the disputed domain name to direct Internet users to a link farm parking page. This parking page included various "Sponsored Listings" that included Complainant (as its first link), but also included links to competitors of Complainant such as “www.kazaa.com” and “music-oasis.com”. On May 10, 2010, Complainant transmitted by e-mail and registered mail a cease and desist and surrender/cancellation demand to Respondent. Shortly thereafter, the content of Respondent's website was modified to advertise and offer a hand sanitizer product ("4 Hour Protection"). As of July 13, 2010, the disputed domain name directed Internet users to Complainant's commercial Internet website.
The registration agreement in effect between Respondent and Dotster, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges rights in the service mark EMUSIC as evidenced by registration at the USPTO and use in commerce in the United States. Complainant further alleges rights in the service mark EMUSIC based on registration in countries outside the United States, and use in commerce in other countries.
Complainant contends that the disputed domain name, <wwwemusic.com>, is confusingly similar to its service mark. Complainant argues that the addition of "www", which is a common acronym for "World Wide Web" that typically forms part of an Internet address inserted in a browser, is intended to take advantage of mistakes likely to be made by Internet users seeking to enter Complainant's Internet address. Complainant argues that the addition of this generic or descriptive term does not serve to distinguish the disputed domain name from Complainant's mark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent has not been commonly known by the disputed domain name, and prior to notification by Complainant, had used the disputed domain name solely for the purpose of operating a pay-per-click link farm that sought to take advantage of Complainant's business. Complainant contends that this does not establish legitimate noncommercial or fair use, and does not establish rights or legitimate interests.
Complainant contends that Respondent registered and used the disputed domain name in bad faith. Complainant argues that its service mark was registered at the time Respondent registered the disputed domain name, and that Respondent knew or should have known of its mark. Complainant argues that registration of a mark establishes constructive notice of the mark. Complainant also argues that its mark is widely known for offering music and entertainment related products and services.
Complainant further contends that Respondent used the disputed domain name intentionally for commercial gain to direct Internet users to Respondent's website where Respondent offered services competitive with those of Complainant. Complainant alleges that its service mark is well known, and that Internet users finding services on Respondent's website that compete with those of Complainant would assume that Complainant was the source, sponsor, affiliate or endorser of Respondent's website.
Complainant argues that while Respondent no longer uses the disputed domain name to operate a link farm, Complainant has no assurance that Respondent would not reinstitute that use should the domain name not be transferred to Complainant.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceeding at the physical and email addresses shown in the record of registration of the disputed domain name. Courier delivery records show that the Written Notice was delivered at the physical address of Respondent in Hicksville, New York. The Panel is satisfied that the Center fulfilled its responsibility to provide notice as prescribed in the Policy and Rules, and that Respondent received adequate notice of these proceedings and a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the service mark EMUSIC on the Principal Register of the USPTO and of substantial use in commerce of the mark in the United States. Complainant has also provided evidence of registration of the service mark in countries other than the United States. See Factual Background, supra.
In the United States, registration of a mark on the Principal Register establishes a presumption of validity, and Respondent has not challenged Complainant's rights in the service mark. The Panel will not do so on its own initiative. The Panel notes that the mark is registered in a number of countries outside the United States where English is not the common language. For purposes of the Policy, these registrations would ordinarily be adequate to establish rights in the service mark should the issue of use in the mark of common descriptive terms in English be problematic under United States trademark law.
The disputed domain name incorporates Complainant's EMUSIC service mark in full, and adds the prefix "www", which Complainant properly notes is the common acronym for " World Wide Web" typically used in connection with Internet addresses. The addition of "www", without the following "." in the disputed domain name is, without further explanation from Respondent, almost certainly intended to take advantage of typing mistakes made by Internet users seeking a website identified by Complainant's service mark. The prefix creates a disputed domain name that is confusingly similar to Complainant's service mark.1
The Panel determines that Complainant has rights in the service mark EMUSIC and that the disputed domain name is confusingly similar to that service mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant has argued that Respondent has failed to establish rights or legitimate interests in the disputed domain name because Respondent was not commonly known by the disputed domain name, and Respondent has not made legitimate noncommercial or fair use of the disputed domain name. Complainant has contended that use of the disputed domain name in connection with a link farm parking page that includes links to competitors of Complainant is not fair use of the disputed domain name. Complainant has further argued that Respondent's belated redirection of the disputed domain name to Complainant's website does not establish rights or legitimate interests. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not rebutted Complainant’s prima facie showing regarding lack of rights or legitimate interests in the disputed domain name. It is well-established that operating a link farm parking page using a trademark in a domain name, and providing connection to products competitive with the trademark owner, does not establish rights or legitimate interests. See, e.g., VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925: Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881.
Respondent's decision to at least temporarily suspend the use of the disputed domain name in connection with a link farm parking page subsequent to a cease and desist demand from Complainant is not sufficient to establish rights or legitimate interests in the disputed domain name. Respondent has redirected the disputed domain name to Complainant's website, and such use does not appear to create rights or legitimate interests in favor of Respondent.
The Panel finds the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include that “(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Respondent has used the disputed domain name which is confusingly similar to Complainant's service mark to direct Internet users to a presumptively pay-per-click link farm parking page. Respondent's parking page included a link to Complainant's services, as well as links to competitors of Complainant. The only plausible justification for Respondent to have registered the disputed domain name using the "www" prefix in front of Complainant's service mark was to take advantage of typographical errors on the part of Internet users seeking the website otherwise identified by Complainant's mark. While there are certain mitigating circumstances arguably in favor of Respondent in this proceeding, such as the comparatively descriptive nature Complainant's service mark, these mitigating circumstances are not sufficient from the standpoint of the Panel to overcome the apparent intentional effort on the part of Respondent to take unfair advantage of Complainant's service mark.
The Panel determines that Respondent registered and used the disputed domain name in bad faith by intentionally for commercial gain using Complainant's service mark in the disputed domain name to create Internet user confusion with regard to Complainant acting as source, sponsor, affiliate or endorser of Respondent's website.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wwwemusic.com> be transferred to the Complainant.
Frederick M. Abbott
Dated: September 3, 2010
1 Addition of the gTLD ".com" is not material to the confusing similarity analysis under the Policy in circumstances such as these.