WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Development Hell Limited v. James Robertson/DJ Mag Limited
Case No. D2014-1530
1. The Parties
The Complainant is Development Hell Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Sipara, United Kingdom.
The Respondent is James Robertson/DJ Mag Limited of London, United Kingdom, represented by Speechly Bircham LLP, United Kingdom.
2. The Domain Names and Registrars
The disputed domain name <mixmag.asia> is registered with Mesh Digital Limited, and the disputed domain name <mixmag.tv> is registered with EuroDNS S.A. The disputed domain names are together referred to as the "Domain Names".
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 5, 2014. On September 5, 2014, the Center transmitted by email to the registrars a request for registrar verification in connection with the Domain Names. On September 8, 2014, the registrars transmitted by email to the Center their verification responses confirming James Robertson as the registrant of the Domain Name <mixmag.asia> and DJ Mag Limited as the registrant of the Domain Name <mixmag.tv> and providing 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 September 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2014. The Response was filed with the Center on September 29, 2014.
The Center appointed Ian Lowe as the sole panelist in this matter on October 13, 2014. 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
The Complainant is an independent media company based in London. The Complainant publishes a magazine (both hard copies and online) under the brand MIXMAG. It was the world's first dance music magazine and has been published internationally for over 30 years. The Complainant also offers entertainment and music promotion services under its MIXMAG brand.
The Complainant is the registered proprietor of UK trademark number 2049824 filed on December 23, 1995 for the word device MIXMAG and of Community trademark number 12262499 for the word mark MIXMAG filed on October 29, 2013.
The Respondent operates a website at "www.djmag.com" and is a competitor of the Complainant offering dance music magazines to consumers.
The Domain Name <mixmag.asia> was registered on November 6, 2012. At the date of the Complaint, <mixmag.asia> resolved to a parking page containing sponsored links to third-party websites. The Domain Name <mixmag.tv> was registered on March 3, 2009 and at the date of the Complaint did not resolve to any website. In addition to the Domain Names, the Respondent registered <mixmag.jp> and <mixmag.es> on March 3, 2009, <mixmag.cz> on March 4, 2009 and <mixmag.eu> on December 20, 2011.
5. Parties' Contentions
The Complainant contends that the Domain Names are confusingly similar to its MIXMAG trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent registered and is using the Domain Names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Complainant argues that the Respondent's use of <mixmag.asia> to redirect traffic through links to third-party websites cannot be considered a bona fide offering of goods or services or a noncommercial or fair use of <mixmag.asia>. The Complainant points out that it has not granted the Respondent any licence or permission to use the Domain Names. It further submits that the Respondent has made no demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. Furthermore, the Respondent is not known as MIXMAG. On the contrary, the Respondent is widely known to be a competitor of the Complainant.
On October 23, 2012, the Complainant received a letter from the representative of the Respondent, on behalf of Top 100 DJs Limited, offering to purchase the Complainant for GBP 250,000. The Complainant rejected the offer as being derisory by letter dated November 2, 2012. The Respondent registered <mixmag.asia> four days later.
The Complainant understands that the Respondent claims to have registered the Domain Names in anticipation of purchasing the Complainant. However, given the rejection of the offer by the Complainant days before the registration of the <mixmag.asia> Domain Name, the Complainant submits that the registration could not have been made in contemplation of the purchase of the Complainant.
The Complainant further points out that <mixmag.tv> was registered by the Respondent on March 3, 2009. Since this was more than three years before the offer to purchase the Complainant was made, the Complainant cannot accept that the registration could possibly have been made in contemplation of the purchase of the Complainant. Furthermore, Top 100 DJs Limited is not a parent or subsidiary of the Respondent and this offer was not, therefore, made by the Respondent but by a company outside the Respondent group.
The Complainant alleges that the Respondent has used the Domain Names in bad faith because when the Complainant offered to buy the Domain Names from the Respondent for a sum representing the administrative costs spent by the Respondent on the Domain Names, Mr. Robertson invited the Complainant to "think again" thereby clearly indicating that the Respondent would only accept an offer if it was higher than out of pocket expenses.
In addition the Complainant claims that the Respondent has engaged in a pattern of registering domain names that are identical to the Complainant's MIXMAG brand, namely <mixmag.jp>, <mixmag.cz>, <mixmag.eu> and <mixmag.es>, in addition to the Domain Names. Furthermore, the Respondent's conduct is said to have disrupted the Complainant's business in that the Complainant is prevented from expanding its business in Tuvalu (the territory for which ".tv" is the country code Top Level Domain) and Asia, as well as preventing the Complainant's expansion of online platforms showing videos of dance music through the ".tv" domain, commonly seen by consumers to refer to "television" or designating an online TV channel.
The Complainant also asserts that the Respondent has used the <mixmag.asia> Domain Name to misdirect Internet users looking for the Complainant's website, redirecting them to third party websites not affiliated to the Complainant, by creating a likelihood of confusion with the Complainant's MIXMAG brand as to the source, affiliation, sponsorship or endorsement of the listed pay-per-click websites.
The Respondent asserts that the mark MIXMAG is non-distinctive and that it is broadly descriptive in the context in which it is used by the Complainant. It is said to be a composite of "mix" (a term used by DJs and in the music world to refer to the process by which multiple recorded sounds are combined into one channel) and "mag" (commonly used as an abbreviation for the word "magazine"). The Respondent does not accept that the Complainant's mark has acquired distinctiveness or a secondary meaning through use. Furthermore, the Respondent points to the fact that third parties have registered domain names containing the name "mixmag" and peacefully co-exist with the Complainant, including <mixmag.info>, an independent Russian website and portal on electronic music.
The Respondent claims to have legitimate commercial reasons to use the Domain Names because it registered the Domain Names in contemplation of a proposed purchase of the Complainant's business.
The Respondent had a number of meetings in 2012 with a director of Information Business at Guardian News and Media (who was also a former director of the Complainant) concerning the purchase of its shares in the Complainant and an offer was sent to him by the Respondent on August 22, 2012. An offer was later made to the Complainant on behalf of Top 100 DJs Limited on October 23, 2012 to acquire certain assets of the Complainant (or its share capital). The Respondent accepts that the <mixmag.asia> Domain Name was purchased by the Respondent four days after the offer was rejected by the Complainant, but submits that the rejection of the offer did not preclude the possibility of a revised offer being made or the purchase of <mixmag.asia> being made in contemplation of such a revised offer.
The Respondent also claims to have registered the Domain Names in contemplation of a proposed purchase of the <mixmag.com> domain name from Newbay Media LLC. The domain name <mixmag.com> currently resolves to the website at "www.mixonline.com", a website for the US magazine "Mix", described as "the world's leading magazine for the professional recording and sound production technology industry". The Respondent had discussions with the then publisher of "Mix" and "Remix" magazines on January 20, 2006, offering to purchase both publications, but that proved unsuccessful. The Respondent is now engaged in discussions with Newby Media LLC, the current owner of "Mix" magazine as to the purchase of the <mixmag.com> domain name.
The Respondent submits that its legitimate interests in respect of the Domain Names illustrate that they were not registered in bad faith and that, given those legitimate interests, its registration of other domain names comprising MIXMAG does not amount to engaging in a pattern of registrations in bad faith. The Respondent denies using the words "think again" during a telephone discussion concerning an offer by the Complainant to buy the Domain Names but contends that even that was said it would have been legitimate for the Respondent to ask for more than simply the out of pocket expenses of registering and maintaining the registrations of the Domain Names given its other expenses in relation to the Domain Names including legal fees.
The Respondent does not accept that there is any evidence that the Respondent registered the Domain Names primarily for the purpose of disrupting the business of a competitor. It points out that the Complainant did not provide any evidence of its business in Tuvalu and insufficient evidence to support its claims as to the commercial recognition, value or notoriety of the MIXMAG name in Asia or as to how the inability of the Complainant to register <mixmag.asia> is preventing it from expanding its business in Asia.
The Respondent notes that the Complainant admits that for over five years the <mixmag.tv> Domain Name has not been used in relation to any goods or services.
The Respondent refutes the Complainant's allegations that the Respondent is making financial gain from the <mixmag.asia> parking page. It denies that it receives any payment from the links that appear on the <mixmag.asia> parking page or that it authorised the placing of those links on that page or had any input into the nature or content of those links, all of which, it suggests, are the responsibility of the domain name registrar.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Preliminary procedural Issue: Consolidation of Proceedings
Consolidation of multiple registrants as respondents in a single proceeding may in certain circumstances be appropriate provided the complainant can demonstrate that the domain names are subject to common control and that the panel determines that consolidation would be procedurally efficient and fair and equitable to all parties.
The Panel notes that the registrants of the Domain Names are different. However, the address for James Robertson, the registrant of the <mixmag.asia> Domain Name, is the same address as that for DJ Mag Limited, the registrant of the <mixmag.tv> Domain Name. In addition, James Robertson is the named contact at DJ Mag Limited and his email address ([redacted]@DJmag.com) is specified as the registrant email in the case of both the Domain Names. The representative of the Respondent has not raised any objections to a single complaint being made in respect of both the Domain Names. In the circumstances, the Panel is satisfied that it is appropriate for a single decision to be given in respect of both Domain Names, given the effective identity of the registrant.
B. Identical or Confusingly Similar
Although the Respondent challenges the strength of the Complainant's rights in the mark MIXMAG, it does not appear to deny that the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is the registered proprietor of a United Kingdom trademark for the word device MIXMAG registered as of December 23, 1995 of which the word "mixmag" is the dominant element and the Respondent does not deny that the Complainant has traded under the name MIXMAG for over 30 years. Except for the ".asia" and ".tv" suffixes, the Domain Names are identical to the mark MIXMAG. The Panel accordingly finds that the Domain Names are identical to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Respondent asserts that it has rights or legitimate interests in respect of the Domain Names because it registered them (and a number of other domain names comprising "mixmag") in contemplation of acquiring the Complainant's business. Accordingly, there is no doubt that the Respondent had the Complainant (and its rights in the MIXMAG mark) in mind when it registered the Domain Names. However, the Panel approaches the Respondent's assertions with some scepticism. The Domain Name <mixmag.tv> and the domain names <mixmag.cz>, <mixmag.jp> and <mixmag.es> were all registered on or about March 3, 2009. However, the Respondent claims only to have had discussions about the acquisition of the domain name <mixmag.com> from a third party in January 2006 (apparently reinstigated very recently) and then discussions concerning the purchase of an interest in the Complainant in August 2012. The Respondent offers no explanation whatsoever as to its motives for registering these domain names in March 2009, more than three years after the first activity and more than three years before the approach in relation to the Complainant's business. Furthermore, no use appears to have been made of the <mixmag.tv> Domain Name since it was registered.
The Panel is not convinced in this case that the speculative prospect of acquiring a business could give rise to a right or legitimate interest in respect of a domain name that is identical to the trading name and registered trademark of that business. The Panel finds it may well impact on the question of whether the domain name was registered in bad faith, but not generate rights or legitimate interests in respect of the domain name. In this case, in view of the above and given the unexplained timing of the registration of the <mixmag.tv> Domain Name in 2009, and its disconnect with the timing of the moves made by the Respondent in relation to the MIXMAG magazine, the Panel finds on balance that the Respondent has no rights or legitimate interests in respect of the Domain Name <mixmag.tv>.
In similar vein, the <mixmag.asia> Domain Name was registered by the Respondent in the name of James Robertson on November 6, 2012, but the Respondent claims that it was registered in contemplation of the proposed purchase of the Complainant's business and/or of the proposed acquisition of the <mixmag.com> domain name owned by a third party. However, the Respondent gives no explanation as to the timing of the registration which was almost seven years after the Respondent made the first approach for the <mixmag.com> domain name, almost two years after the second approach and four days after the offer to purchase the Complainant's business (by a company associated with the Respondent and its representative) was firmly rejected by the Complainant.
Once again, the Panel finds on balance that these facts could not possibly give rise to the Respondent having rights or legitimate interests in respect of the <mixmag.asia> Domain Name, even without the unexplained discrepancy in the timing of the registrations. The Respondent has not provided evidence that he has made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods and services.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.
D. Registered and Used in Bad Faith
The Respondent clearly accepts, indeed it asserts, that it had the Complainant and its business in mind when it registered the Domain Names. The Respondent seeks to excuse its registration on the basis that it registered them in contemplation of the purchase of the Complainant's business and/or the acquisition of the <mixmag.com> domain name. However, as set out above, there is no explanation for the timing of the <mixmag.tv> Domain Name registration in 2009 and the Panel finds implausible the suggestion that the <mixmag.asia> Domain Name was registered in 2012 in contemplation of the purchase of the Complainant's business, four days after the Complainant had robustly rejected the offer from an associate of the Respondent. Although it is unnecessary for the Panel to make any finding on this issue, it appears much more likely that the Respondent registered the <mixmag.asia> Domain Name in reaction to the rejection of the offer. The Panel finds therefore that both Domain Names were registered in bad faith.
The Panel has not given any weight to the Complainant's submission that the registration of the Domain Name <mixmag.tv> has inhibited its business in Tuvalu. However, in the Panel's view, the Respondent must have regarded the use of the <mixmag.tv> Domain Name as relevant to the carrying on of the Complainant's business since it would not otherwise have registered it in contemplation of the acquisition of the Complainant's business as it asserts. The Respondent describes the Complainant's assertions that the Complainant has expanded the use of the MIXMAG brand internationally over the years into territories including Asia as "vague and unsubstantiated". The Panel notes, however, that the Respondent must have regarded the Asia market as significant to the Complainant's business since it would not otherwise also have registered the <mixmag.asia> Domain Name in contemplation of the purchase of the Complainant's business as it claims.
With respect to the use of the Domain Name, numerous UDRP panels have found the passive holding of a domain name, as in the case of <mixmag.tv>, does not disqualify a finding of bad faith use. Panels have also held that even where a registrant has no direct control over the use made by a registrar of an inactive domain name for a parking page, the registrant cannot simply disclaim all responsibility for such use. The Domain Name <mixmag.asia> resolves to a website with pay-per-click links to third-party websites and websites of the Complainant's competitors, which evidences bad faith use. The Respondent has held the Domain Names believing them to be of significance to the Complainant's business (hence the Respondent's registration of them).
On balance the Panel also considers it more likely than not that the Complainant correctly understood the Respondent to indicate a preparedness to sell the Domain Names to the Complainant for more than relevant out of pocket expenses during the telephone conversation concerning the Complainant's offer to purchase the Domain Names.
In all the circumstances, the Panel finds that the Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <mixmag.asia> and <mixmag.tv>, be transferred to the Complainant.
Date: October 27, 2014