Korg, U.S.A., Inc. and Korg Europe Limited v. Dirk Dutton d/b/a Sunset Strip Broadcasting Company LLC
Claim Number: FA0111000102490
Complainant is Korg, U.S.A., Inc. and Korg Europe Limited, Melville, NY (“Complainant”) represented by Nancy Rubner-Frandsen, of Drinker, Biddle & Reath, LLP. Respondent is Dirk Dutton d/b/a Sunset Strip Broadcasting Company LLC, North Hollywood, CA (“Respondent”) represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon & Associates, PC.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <voxamp.com>, <voxamps.com>, <voxamplifiers.com>, <vintagevoxamps.com>, and <vintagevoxamplifiers.com>, registered with Register.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 20, 2001; the Forum received a hard copy of the Complaint on November 26, 2001.
On November 21, 2001, Register.com confirmed by e-mail to the Forum that the domain names <voxamp.com>, <voxamps.com> <voxamplifiers.com>, <vintagevoxamps.com>, <vintagevoxamplifiers.com> are registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 17, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com, firstname.lastname@example.org,email@example.com,firstname.lastname@example.org, and email@example.com by e-mail.
The Response deadline was extended to January 7, 2002 at the Respondent’s request.
A Response was received and determined to be complete on January 8, 2002. The Response was not timely filed.
Complainant’s Additional Response was received on January 14, 2002. The Additional Response was timely filed.
Respondent’s Additional Response was received on January 24, 2002. The Additional Response was not timely filed.
On February 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Complainant contends that the Respondent used the “Vox” trademark unlawfully, by registration of the domain names at issue in bad faith. The Complaint also contends that the domain names at issue are identical or confusingly similar to its famous mark, and that the Respondent has no rights or legitimate interests in the domain names.
The Respondent contends that the Complainant did not sustain the burden of proof as to the allegations of the domain names being identical or confusingly similar to Complainant’s famous mark, that the Respondent has no rights or legitimate interests in the domain name, or that the domain names were registered in bad faith.
C. Additional Submissions
The Complainant filed an Additional Response raising the following contentions as to the untimely filing of the response: that the Respondent failed to establish the existence of exceptional circumstances, that the Complainant would be prejudiced by the late Response, that the Respondent’s communication dated December 17, 2001 was not a Response as it was never forwarded to the Complainant. The Complainant also reinforces its position as to the confusing similarity of the domain names to the Complainant’s famous mark, and presents rebuttal arguments to Respondent’s claim that the domain names are used as a fan site, and that the disclaimer on one of the websites negates the likelihood of confusion. The Complainant also contends that the Respondent has not offered any evidence to rebut the allegations of bad faith.
The Respondent filed an additional submission to request two procedural determinations, as follows: whether Respondent is to be deprived of its right to have this dispute heard by a three-member Panel and whether the Panel will consider the Response to Complainant’s Supplemental Statement of January 14, 2002. The Respondent also includes a request to Panelists for consideration of said additional submission.
1. Timely Filing of Response, Request for Three Member Panel,
and Additional Submission
On December 14, 2001, Respondent requested an extension of twenty (20) days to file its Response. On December 17, 2001, The Forum granted an extension until January 7, 2002 to file the Response, representing the maximum extension provided by Supplemental Rule 6(a)(iv), absence the existence of exceptional circumstances.
On January 8, 2002, Respondent advised The Forum that several difficulties had delayed the submission of the Response, and that the Response would be forthcoming in several hours. The Response was delivered to The Forum at 5:03 P.M. On January 9, 2002, The Forum advised both the Complainant and Respondent that as the Respondent had been granted an extension to January 7, 2002, the Response did not comply with the established time periods, and that the request for a three-member Panel could not be honored. The Forum advised the parties that the case would be forwarded to a single member Panel.
As this Panel cannot find exceptional circumstances in any of the Respondent’s reasons for the untimely filing, The Forum’s decision regarding the untimely filing of the Response and request for a three-member panel is upheld.
The Respondent’s Additional Response also was not timely filed. Again, this Panel finds no exceptional circumstances to allow the untimely filing.
Even though the Respondent’s Response and Additional Response were not timely filed, in an effort to exercise judicial discretion , this Panel reviewed both documents as if in fact they had been timely filed.
2. Domain Name Complaint
The Complainant is the owner and exclusive U.S. licensee of the Vox trademark for use in connection with musical instruments and musical equipment. Their most significant use of the trademark has been for guitar amplifiers and guitar effect pedals.
The development of what ultimately was to become the first Vox amplifier began in 1957, and the first one was produced in January, 1958. Due to the clean guitar sound produced by the amplifiers, Vox amplifiers were being used by various artists, including The Beatles. The classic sound that these amplifiers produce make them the preferred by recording artists throughout the world.
The Complainant currently owns two United States trademark registrations for the Vox mark, one for use in connection with guitars, guitar accessories and guitar amplifiers, and one for use in connection with electric organs and auxiliary amplification devices. Since they were placed into use, the marks have become legendary in the industry and an invaluable asset to the Complainant.
The Respondent operates what is described as a multimedia/Internet/info services business, per its Limited Liability Company Articles of Organization filed with the State of California, Secretary of State.
The Respondent states that he has a hobbyist interest in vintage amplifiers and wanted to provide easy access to Internet sites for fans and enthusiasts of vintage amplifiers, without any commercial intent or purpose. The Respondent also declares that the ownership of the domain names at issue is separate from his business activities.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Complainant is the registered owner of the famous VOX trademarks. The domain names at issue pair the Complainant’s marks with the addition of a generic descriptive term, and the .com suffix . In this case, by coupling the trademark with the descriptive term causes more confusion as the descriptive terms also describe the Complainant’s product for which the trademark is held, and for which the Complainant is famous. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the Complainant's mark since it merely adds the word auction used in its generic sense); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark).
Also, a typical Internet user may easily mistake any website associated with the domain names at issue as being affiliated with, sponsored by or owned by Complainant.
Rights or Legitimate Interests
The Respondent’s use of the domain names at issue are not in connection with a bona fide offer of goods and services Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). The <voxamp.com> and <voxamplifiers.com> domain names do not resolve to active websites and the <voxamps.com> websites offers no goods or services of any kind. See Chi-Chi’s Inc. v. Restaurant Commentary, D2000-0321 (WIPO July 13, 2000) (finding that Respondent had no rights or legitimate interest in the domain name even though Respondent stated that it intended to use the domain name for “public comment” on the Internet); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).
The Respondent has not provided any evidence that would demonstrate rights or legitimate interests in the domain names at issue. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).
Further, the Complainant has not licensed or otherwise authorized Respondent to use the VOX marks. It appears from the evidence presented that the Respondent is commonly known by Dirk Dutton and possibly Sunset Strip Broadcasting Company LLC or Dutton Books, but is definitely not commonly known by any of the domain names or any name incorporating the famous VOX mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Registration and Use in Bad Faith
On March 17, 2000, the Complainant sent Respondent a cease and desist letter, offering to reimburse Respondent for out of pockets costs related to the registration of the domain names at issue. The Respondent’s reply, through counsel, that the Respondent would license for no fee, a website to Complainant in consideration for Respondent being paid a fee to act as the official historian and web-consultant for Complainant’s product line. See Metallica v. Schnieder, FA 95636 (Nat. Arb. Forum Oct. 18, 2000) (finding bad faith based on Policy ¶ 4(b)(i) where the Respondent offered to transfer the domain name in return for non monetary consideration (i.e., if the Complainant met with the Respondent, called two of his friends, and granted the Respondent on interview)); see also American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Gutterbolt, Inc. v. NYI Bldg. Prod. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000) (finding that the demanded consideration does not have to be monetary in nature, but can be anything of value that exceeds the amount spent in registering and maintaining the domain name).
From the evidence presented, it would also appear that the Respondent is using Complainant’s marks to confuse Internet users and divert them to his websites. Policy ¶ 4(b)(iv). See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a website that contains information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, where a visitor to the website may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site).
As to Respondent’s request for a three-member panel, the original decision of The Forum denying this request is upheld by this Panel.
As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this Panel that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain names <voxamp.com>, <voxamps.com>, <voxamplifiers.com>, <vintagevoxamps.com> and <vintagevoxamplifiers.com> be transferred from the Respondent to the Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: February 25, 2002
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