WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Concord Music Group, Inc. v. Domain Hostmaster, Customer ID: 45460253667202, Whois Privacy Services Pty. Ltd. / Yeonju Hong, Dzone Inc.
Case No. D2015-0836
1. The Parties
The Complainant is Concord Music Group, Inc. of Beverly Hills, California, United States of America, represented by Snell & Wilmer, LLP, United States of America.
The Respondent is Domain Hostmaster, Customer ID: 45460253667202, Whois Privacy Services Pty. Ltd. of Fortitude Valley, Queensland, Australia / Yeonju Hong, Dzone Inc. of Gwangju, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name, <staxmusic.com> (the "Domain Name"), is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 14, 2015. On May 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 15, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 20, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 21, 2015.
The Center verified that the Complaint together with the amendment to 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 May 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 11, 2015.
The Center appointed Tony Willoughby, Sally Abel and Ilhyung Lee as panelists in this matter on June 30, 2015. The Panel finds that it was properly constituted. Each member of 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 amendment to the Complaint stemmed from the fact that the WhoIs details for the Domain Name on the Registrar's database changed between the date that the Complainant filed the Complaint with the Center and the date that the Registrar responded to the Center's verification request. At the time of filing of the Complaint the registrant was identified on the Registrar's WhoIs database as Domain Hostmaster, Customer ID: 45460253667202, Whois Privacy Services Pty. Ltd. Following service of the Complaint upon the Registrar and that registrant, the Registrar's WhoIs database record was changed to identify Yeonju Hong, Dzone Inc. as the registrant. The possibilities are that this is a case of cyberflight (as alleged by the Complainant) or simply the result of the underlying registrant availing himself of a privacy service. The Panel addresses the issue in Section 6B below, but either way, it is appropriate for the Panel to treat the named Respondents as one. If it is cyberflight, it is not appropriate that the recipient should benefit from the transfer and if it is merely the case that the underlying registrant was using a privacy service, it is appropriate that his name should appear as a Respondent, he being the beneficial owner of the Domain Name. Accordingly, save where the context otherwise requires, all references to the "Respondent" are to be taken as references to both named Respondents.
4. Factual Background
The STAX music label is a well-known music label having been used by the Complainant and its predecessors in title since at least as early as 1960.
The Complainant is the registered proprietor of a large number of trade mark registrations for the name STAX, including, by way of example, United States Trade Mark Registration No. 868,198 registered on April 15, 1969 STAX (word) in class 9 for phonographic records.
The Domain Name was registered on August 10, 2009 and connected to a parking page headed "Buy this domain" and featuring sponsored advertising links, mainly music-related.
On January 14, 2015 in response to an enquiry from the Complainant the Respondent emailed the Complainant in the following terms:
"We would like to thank you for your email. We are willing to sell staxmusic.com on (sic) $9000 USD if you want to purchase it immediately. If you agree to this, please log in [an escrow service] to initiate the transaction.
Recently, we've received several serious offers. Therefore, purchase it asap, or you may lose the opportunity. Good luck in your business and may God bless you every single day of your life."
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
B. Procedural Issue
As indicated at section 3 above, the Complainant was invited to amend the Complaint to accommodate a change to the Registrar's WhoIs database. The Complainant duly amended the Complaint, but in so doing, adduced evidence to show that the changes to the Registrar's WhoIs database took place after the original Complaint had been lodged with the Center and following subsequent service of the original Complaint on the original registrant and the Registrar.
The Complainant contends that this is a clear case of cyberflight and is indicative of bad faith. The Complainant continues: "The facts discussed above clearly support the domain name was transferred during a pending proceeding and is in direct violation of the Uniform Domain Name Dispute Resolution Policy ('Policy'). Under Paragraph 8(a) of the Policy, Registrant is expressly prohibited from transferring the domain name during a pending proceeding. The transfer of the subject domain name <staxmusic.com> was made approximately ten (10) hours after serving the Complaint on the Registrant and the Registrar which is in gross violation of the provisions of the policy."
The situation that the Complainant has described is a common one and one that, in the view of the Panel, could equally apply to the use of a privacy service, whereby the terms of the privacy service arrangement are such that on a UDRP complaint being filed against the privacy service, the privacy veil is swept aside to disclose the identity of the underlying registrant.
Occasionally, these changes to the identity of the Respondent can lead to a material change to the Mutual Jurisdiction election. In this case, however, the Complainant has agreed to submit to the jurisdiction of the courts at the location of the Registrar and the identity of the Registrar remains unchanged.
For the purposes of this decision the Panel has not found it necessary to explore the issue any further. The Panel is confident that if the Center is of the view that the matter should be reported to ICANN, it will do so.
C. Identical or Confusingly Similar
The Domain Name comprises the Complainant's trade mark STAX, the word "music" which identifies the Complainant's area of activity and the generic ".com" Top-Level Domain identifier.
The presence in the Domain Name of the generic ".com" Top-Level Domain identifier and the word "music" does nothing to dilute the distinctiveness of the Complainant's trade mark. The Panel finds that the Domain Name is confusingly similar to the Complainant's trade mark.
D. Rights or Legitimate Interests
The Domain Name can only refer to the Complainant and/or its STAX music brand. The Complainant has given the Respondent no permission to use its STAX trade mark in this or any other way.
It seems clear to the Panel on the evidence before it that the Respondent registered the Domain Name with a view to monetizing it either by way of pay-per-click links on its parking page or by way of sale.
As a general proposition there is nothing objectionable in registering domain names with a view to monetizing them, provided that in so doing the registrant is not intentionally targeting the trade mark rights of another.
In this case the facts are clear. As can be seen from Section 4 above, the STAX trade mark is a mark of longstanding, it is well-known in the field of music, the Respondent has connected the Domain Name to a parking page headed "Buy this domain" and permitted commercial links to be placed on the page, links directed in the main to the Complainant's field of operation. On being approached by the Complainant, the Respondent placed a value on the Domain Name (USD 9,000) reflecting its brand value in the music arena and went on to indicate that there were other entities expressing interest in acquiring the Domain Name.
The Panel is satisfied on the evidence before it that the Respondent registered the Domain Name knowing that the Complainant's STAX trade mark is very well-known in the field of music and with intent to trade on the back of the fame of that trade mark. The use of the Domain Name is likely to attract visitors to the Respondent's website expecting to reach a website of or associated with the Complainant. On reaching the website they are exposed to revenue generating advertising links, some of them being links to competitors of the Complainant.
If the Respondent had a justifiable reason for registering the Domain Name he could be expected to have responded to the Complaint, but he did not do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
By the same reasoning the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of either paragraph 4(b)(i) or paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <staxmusic.com>, be transferred to the Complainant.
Date: July 9, 2015