WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mars, Inc. v. Double Down Magazine
Case No. D2000-1644
1. The Parties
The Complainant is Mars, Inc., a corporation organized under the laws of the State of Florida, United States of America, having its principal place of business at 5300 North Powerline Road, Ft Lauderdale, Florida, United States of America.
The Respondent is Double Down Magazine, an entity having an address at 332 South Michigan Ave., Suite 1144, Chicago, Illinois, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <marssmusic.com>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 27, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated November 30, 2000.
3.2 On December 4, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On December 8, 2000, NSI confirmed by reply e-mail that the domain name is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on December 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of December 31, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On January 5, 2001, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On January 22, 2001, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
4.1 Complainant applied for registration of the mark MARS MUSIC in connection with prerecorded music on tapes, CD's, digital files and other media, and related goods and services, and on clothing with the United States Patent Office ("USPTO") on March 20, 2000, on November 9, 1999 in connection with music magazines, sheet music, music instruction and related goods and services.
4.2 Complainant has used the MARS and related marks in connection with music related goods and services since March, 1997.
4.3 Complainant's predecessor in interest registered the domain name <marsmusic.com> in June, 1995.
4.4 Complainant has engaged in extensive advertising of the mark, and since 1997 has invested millions of dollars in such promotional activities.
4.5 On October 9, 2000, Respondent registered the domain name <marssmusic.com>.
4.6 The domain name at issue resolves to a web site entitled "InterCasino" where gambling services are offered. (Footnote 1)
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is identical to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(2) that the Respondent has no legitimate interests in respect of the domain name; and,
(3) that the domain name has been registered and is being used in bad faith.
6.4 The domain name at issue <marssmusic.com> is identical to a mark in which the Complainant has rights. America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Case No. FA93679 (addition of "n" in <americanonline.com> did not avoid a finding of identicality).
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011.
6.6 Respondent has used a misspelling of Complainant's mark in a domain name that resolves to a gambling site, for which Respondent undoubtedly receives compensation. As Respondent has used the domain name to attract users to the web site for commercial gain, Respondent's practices constitute bad faith registration and use under Paragraph 4(b)(iv) of the Policy.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <marssmusic.com> be transferred to the Complainant.
M. Scott Donahey
Dated: January 24, 2001
1. The visit to a web site is tantamount to the taking of judicial notice, and prior Panel decisions have recognized this practice. United States Federal Rules of Evidence, Rule 201. Chernow Communications, Inc. v. Jonathon D. Kimball, WIPO Case No. D2000-0119.