First Quality Musical Supplies, Inc. d/b/a First Quality Music v. Vertical Axis, Inc c/o Domain Administrator
Claim Number: FA0708001070187
Complainant is First Quality Musical Supplies, Inc. d/b/a First
Quality Music (“Complainant”),
represented by Hanly A. Ingram, of Stoll Keenon Ogden PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <firstqualitymusic.com>, registered with Nameview, Inc.
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 Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 29, 2007.
On September 13, 2007, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <firstqualitymusic.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. 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 September 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 11, 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@firstqualitymusic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Complainant submitted a timely Additional Submission on October 16, 2007.
On October 17, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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. Respondent’s <firstqualitymusic.com> domain name is confusingly similar to Complainant’s FIRST QUALITY MUSICAL SUPPLIES mark.
2. Respondent does not have any rights or legitimate interests in the <firstqualitymusic.com> domain name.
3. Respondent registered and used the <firstqualitymusic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, First Quality
Musical Supplies, Inc. d/b/a First Quality Music, has continuously provided
acoustic and electric instruments and related products for thirty-seven years
under the FIRST QUALITY MUSICAL SUPPLIES mark.
In fact, Complainant is one of only seven authorized Internet resellers
of Gibson products in the
Respondent, Vertical Axis,
Inc c/o Domain Administrator, registered the disputed domain name on November
30, 2001. The wesbite located at the
disputed domain name displays hyperlinks to third-party websites, including
those of Complainant’s competitors, through which Respondent presumably generates
click-through revenue.
Complainant sent Respondent
two cease and desist letters dated June 12, 2007 and July 24, 2007,
respectively, to which Respondent never replied.
Additionally, per Complainant’s Additional Submission, Respondent has served as the respondent in several previous UDRP proceedings in which the disputed domain names in those case were transferred to the respective complainants. See MBNA Am. Bank, N.A. v. Vertical Axis, Inc., FA133632 (Nat. Arb. Forum Jan. 6, 2003); see also Candid Color Sys., Inc. v. Vertical Axis c/o Adm’r, FA 702669 (Nat. Arb. Forum June 27, 2006).
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 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. 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.”).
Paragraph 4(a) of the Policy requires that 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.
Under Policy ¶ 4(a)(i), Complainant
is not required to hold a trademark registration to establish rights in the FIRST QUALITY MUSICAL SUPPLIES mark. See McCarthy on Trademarks and
Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution
policy is “broad in scope” in that “the reference to a trademark or service
mark ‘in which the complainant has rights’ means that ownership of a registered
mark is not required–unregistered or common law trademark or service mark
rights will suffice” to support a domain name complaint under the Policy); see also
Complainant has continuously and
extensively used the FIRST QUALITY MUSICAL SUPPLIES mark for the past thirty-seven years. Further, Complainant provided proof of its
corporate registration with
The <firstqualitymusic.com>
domain name takes Complainant’s mark and removes everything after “MUSIC” and
simply appends the mark with the generic top-level domain (“gTLD”) “.com.” Such minor edits are insufficient to
distinguish the disputed domain name from Complainant’s mark. Accordingly, the Panel finds the disputed
domain name confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See 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 WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb.
Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is
confusingly similar to the complainant’s mark, where the complainant holds the
The Panel finds that Complainant has met the requirements under Policy ¶ 4(a)(i).
Complainant is required, under Policy ¶ 4(a)(ii), to first present a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. However, Complainant’s allegation is sufficient to shift the burden to Respondent to establish that rights or legitimate interests exist. 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).
In this case, Respondent chose not to submit a Response to the Complaint. Respondent’s failure to produce a Response permits the Panel to presume that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Although required to make no further inquiry, the Panel will now review the evidence to determine if Respondent is able to establish rights or legitimate interests under Policy ¶ 4(c).
The Panel finds nothing in the record to support a finding
that Respondent, “Vertical Axis, Inc c/o Domain
Administrator,” is commonly known by the <firstqualitymusic.com>
domain name. Thus, the Panel finds that
Respondent is unable to establish rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Brown v. Sarrault, FA 99584 (Nat.
Arb. Forum Oct. 16, 2001) (finding that the
respondent was not commonly known by the <mobilitytrans.com>
domain name because it was doing business as “Mobility Connections”).
Further, the website located at
the disputed domain name displays hyperlinks to third-party websites, including
Complainant’s competitors, through which Respondent presumably generates
click-through revenue for each Internet user clicking on the displayed
hyperlinks. This conduct is inconsistent
with 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). Therefore,
the Panel determines that Respondent is unable to establish rights under either
section of the Policy. See Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb.
Forum June 24, 2002) (holding that the respondent’s use of the disputed domain
name to redirect Internet users to commercial websites, unrelated to the complainant
and presumably with the purpose of earning a commission or pay-per-click
referral fee did not evidence rights or legitimate interests in the domain name); see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services).
The Panel finds that Complainant has met the requirements under Policy ¶ 4(a)(ii).
Respondent uses the disputed domain name to disrupt Complainant’s business by diverting Internet users to Complainant’s competitors through the use of hyperlinks displayed on the website located at the disputed domain name. The Panel finds this disrupting activity representative of bad faith registration and use under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Further, Respondent uses the confusion as to Complainant’s
affiliation with the disputed domain name to attract Internet users for Respondent’s
own commercial gain by presumably generating click-through revenue with the
hyperlinks displayed on the website located at the disputed domain name. The Panel finds that Respondent registered
and used the disputed domain name in bad faith under 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 Associated Newspapers Ltd. v. Domain Manager,
FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
Additionally, Complainant
submitted sufficient evidence demonstrating that Respondent has served as the
respondent in several previous UDRP proceedings in which the domain names in
those disputes were transferred from Respondent to the respective complainants
in those disputes. The Panel finds
Respondent’s pattern of registering domain names that incorporate other’s marks
is a further indication of Respondent’s bad faith registration and use of the <firstqualitymusic.com> domain name under Policy ¶ 4(b)(ii).
See Nabisco Brands Co. v. Patron Group, Inc.,
D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain
names is one factor in determining registration and use in bad faith); see also Armstrong Holdings, Inc. v. JAZ
Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the
respondent has registered numerous domain names that infringe upon the
complainant’s marks and in addition, the respondent has registered domain names
that infringe upon other entities’ marks).
The Panel finds that Complainant has met the requirements under 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 <firstqualitymusic.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 24, 2007
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