Musidor B.V. v. Jung Hochul
Claim Number: FA0112000103053
Complainant is Musidor B.V. (“Complainant”) represented by Matt J. Railo, of Mitchell Silberberg & Knupp LLP. Respondent is Jung Hochul, Kyongsan, Kyongbuk, South Korea (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rollingstones.com>, registered with IARegistry.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 16, 2001; the Forum received a hard copy of the Complaint on December 26, 2001.
On January 3, 2002, IARegistry confirmed by e-mail to the Forum that the domain name <rollingstones.com> is registered with IARegistry and that Respondent is the current registrant of the name. IARegistry has verified that Respondent is bound by the IARegistry 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 January 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 23, 2002 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations:
1. The domain name <rollingstones.com>, registered by Respondent, is identical to Complainant's trademark (apart from the generic top-level domain designation ".com"). If the mark is not deemed identical to the domain name at issue, at the very least, the domain name is confusingly similar to Complainant's mark ROLLING STONES.
2. Respondent has no rights or legitimate interests in the domain name <rollingstones.com>. Complainant has not licensed or otherwise authorized Respondent to use the ROLLING STONES mark or apply for use of any domain name incorporating the mark ROLLING STONES.
3. No evidence shows that Respondent has used, or has made preparations to use, the <rollingstones.com> domain name in connection with a bona fide offering of goods or services.
4. Respondent has not been commonly known by the domain name at issue; his name is Hochul Jung or Jung Hochul.
5. Respondent is not making a legitimate noncommercial or fair use of the domain name.
6. Respondent has traded off the goodwill associated with Complainant's mark ROLLING STONES by redirecting Internet traffic from the <rollingstones.com> domain name to Respondent's website located at <soundsgood.com>.
7. Respondent similarly has exhibited bad faith by registering the domain name <rollingstones.com> primarily for the purpose of ultimately selling the domain name registration to the Complainant.
B. Respondent did not file a Response in this proceeding.
1. Complainant owns and controls the commercial rights of the world-renowned musical group the Rolling Stones. Complainant owns registrations worldwide, including Respondent’s home country of South Korea, for the trademark ROLLING STONES for a variety of goods and services, including, inter alia, sound and video recordings, posters, clothing and entertainment services. Complainant's United States registrations for the mark ROLLING STONES in Classes 9, 25 and 41 have been declared incontestable by the United States Patent and Trademark Office.
2. The mark ROLLING STONES has been used substantially, exclusively, and continuously in commerce worldwide since at least 1962, approximately thirty-nine years before Respondent registered the domain name at issue. The Rolling Stones have released more than thirty-six record albums worldwide bearing the mark ROLLING STONES and have sold over fifty-three million albums. Moreover, the Rolling Stones have performed live shows worldwide under the mark ROLLING STONES since at least as early as 1964.
3. In 1994-1995, the Rolling Stones grossed more than $300 million dollars in revenue in connection with their "VOODOO LOUNGE" concert tour, approximately 25% of which constituted the sale of merchandise bearing the mark ROLLING STONES.
4. A party attempting to access the website located at <rollingstones.com> by entering that URL into a browser is automatically redirected to Respondent's site entitled "SOUNDSGOOD.COM," located at <soundsgood.com>. Respondent's website SOUNDSGOOD.COM features the sale of sound recordings of musical artists, including the Rolling Stones.
Paragraph 15(a) of 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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant’s trademark registrations in the United States and abroad are prima facie evidence that Complainant has rights under Policy ¶ 4(a)(i).
The domain name registered by Respondent, <rollingstones.com>, is identical to Complainant’s ROLLING STONES mark. The ommission of the space between Complainant’s ROLLING STONES mark and the generic top-level domain “.com” are disregarded when making a determination of identical or confusingly similar. See Amherst v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding that Respondent’s domain name <customcommerce.com> is identical to Complainant’s CUSTOM COMMERCE trademark registration); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established in this proceeding its rights to and legitimate interest in the ROLLING STONES mark. Respondent has no rights or legitimate interests in the disputed domain name because Respondent has attempted to generate revenue by trading on Complainant’s famous trademark and creating confusion and mistake as to an affiliation with the Complainant. Respondent does not acquire rights or legitimate interests because he intentionally and misleadingly lured Internet users to a website that offered Complainant’s products as well as competing goods. Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).
Complainant has established that Respondent is not known individually or as a business or in any other manner by the “Rolling Stones” mark. Respondent has no affiliation or relationship with Complainant nor any legitimate reason or purpose for using the ROLLING STONES trademark as a domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
Therefore, the Panel determines that Respondent has not established any rights or legitimate interests in the domain name and that Complainant has met the burden set forth under Policy ¶ 4(a)(ii).
Respondent is taking advantage of the recognition of Complainant’s famous ROLLING STONES mark by diverting users seeking the Rolling Stones to a music-retailing site. This is bad faith use and registration under Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by the Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).
Therefore, the Panel determines that a finding of bad faith registration and use is fully supported by precedent and that Complainant has met the burden set forth under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <rollingstones.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 15, 2002.
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