Bia2 LLC v. hamed d/b/a bia2music
Claim Number: FA0708001055135
Complainant is Bia2, LLC (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bia2music.com>, registered with Onlinenic, Inc.
The undersigned certifies that she has acted independently and impartially and 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 electronically August 3, 2007; the National Arbitration Forum received a hard copy of the Complaint August 6, 2007.
On August 6, 2007, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <bia2music.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. verified that Respondent is bound by the Onlinenic, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August
16, 2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 5, 2007,
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 postmaster@bia2music.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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 assertions:
1. The domain name that Respondent registered, <bia2music.com>, is confusingly similar to Complainant’s BIA2 mark.
2. Respondent has no rights to or legitimate interests in the <bia2music.com> domain name.
3. Respondent registered and used the <bia2music.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bia2 LLC, operates the number one Iranian music and entertainment site on the web, located at the <bia2.com> domain name. “Bia2” has the meaning of “come inside” in the Farsi language and Complainant has used the mark and corresponding domain name since 2003 to promote Iranian popular culture and music, including offering song, video, and ring tone downloads. Complainant holds a trademark registration for the BIA2 mark, filed on January 26, 2005, with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,076,164 issued April 4, 2006).
Respondent registered the <bia2music.com> domain name June 26, 2005. Respondent’s disputed domain name resolves to a website very similar to Complainant’s popular website. Respondent’s website prominently features the BIA2 mark and offers features and services in competition with those offered by Complainant. Complainant alleges that Respondent offers illegal song and video downloads of copyrighted works, which are available legitimately at Complainant’s website.
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."
Respondent sent email messages to the case manager at the National Arbitration Forum and these were forwarded to the Arbitration for review. Respondent filed no formal Response pursuant to the rules and given Respondent's failure to submit a response in compliance with the Rules, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Notwithstanding the failure to file a formal Response, the Arbitrator considers to available evidence before making a determination. Moreover, had the communications to the case worker contained information that would have required a different result the Arbitrator would have given preference to substance over form and procedure and requested more information.
Paragraph 4(a) of the Policy requires Complainant to 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.
Although Complainant’s registration date of the BIA2 mark
with the USPTO does not predate Respondent’s registration of the <bia2music.com> domain name,
previous UDRP panels have held that the effective date of a complainant’s mark
is the date the registration was filed with the USPTO. Thus, with respect to the BIA2 mark, although
the registration date is April 4, 2006 (approximately ten months after
Respondent registered the disputed domain name), Complainant’s rights in the
mark effectively began on the filing date, January 26, 2005, five months before
Respondent’s registration of the <bia2music.com>
domain name. Therefore, the Panel
finds that Complainant sufficiently established that it has rights in the BIA2
mark pursuant to Policy ¶ 4(a)(i). See Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of
Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27,
2003) (“As Complainant’s trademark application was subsequently approved by the
U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the
mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing
date.”).
Complainant first alleges that Respondent’s <bia2music.com> domain name is confusingly similar to Complainant’s BIA2 mark. The Panel agrees with this allegation, as the disputed domain name incorporates the entire mark and merely adds the generic term “music” onto the mark, a term which is descriptive of Complainant’s business. In addition, the inclusion of the generic top-level domain “.com” is irrelevant under Policy ¶ 4(a)(i), as a top-level domain is required of all domain names. Thus, the Panel finds that the <bia2music.com> domain name is confusingly similar to Complainant’s BIA2 mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”); 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); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant next alleges that Respondent lacks rights and legitimate interests in the <bia2music.com> domain name. Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case to prove this allegation, the burden then shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds that Complainant met the burden of making a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also 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).
Based on Respondent’s failure to respond to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the <bia2music.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel examines all evidence in the record to determine if the evidence suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Respondent’s <bia2music.com>
domain name resolves to a website that prominently displays Complainant’s
BIA2 mark and offers goods and services in direct competition with
Complainant. The Panel presumes that
Respondent profits when Internet users take advantage of the features displayed
on its website. The Panel finds that
this does not constitute either a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii), and further finds that it
indicates Respondent’s lack of rights and legitimate interests in the <bia2music.com> domain name. See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also
U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6,
2003) (holding that the respondent’s
use of the complainant’s mark and the goodwill surrounding that mark as a means
of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
Complainant asserts
that Respondent is not commonly known by the <bia2music.com> domain name, which also indicates a lack of
rights and legitimate interests under Policy ¶ 4(c)(ii). Although Respondent’s WHOIS information
indicates that Respondent is “hamed d/b/a bia2music,” there is nothing further
in the record to suggest that Respondent is known by the disputed domain name,
and Complainant has not permitted Respondent to use its BIA2 mark for any
purpose. Thus, the Panel finds that
Respondent also lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Finally, Complainant alleges that Respondent registered and is using the <bia2music.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Respondent is using the disputed domain name to display a website in direct competition with Complainant. The Panel finds that such use constitutes a disruption of Complainant’s business and indicates bad faith registration and use under Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Furthermore, the Panel presumes that Respondent benefits commercially from the website that resolves from the <bia2music.com> domain name, which is confusingly similar to Complainant’s BIA2 mark. Respondent is thus capitalizing on the likelihood that Internet users, presumably seeking Complainant’s business, will be confused as to Complainant’s affiliation with the disputed domain name. This is further evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also State Fair of Tex. 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 goodwill and attract Internet users to the respondent’s website).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bia2music.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 10, 2007.
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