J Records, LLC v. Nasedine Mecheri
Claim Number: FA0206000114652
PARTIES
Complainant
is J Records, New York, NY, USA
(“Complainant”) represented by Brad D.
Rose, of Pryor Cashman Sherman &
Flynn, LLP. Respondent is Nasedine Mecheri, Paris, FRANCE
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <jrecords.tv>,
registered with The .tv Corporation.
PANEL
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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 18, 2002; the Forum received a hard copy of the
Complaint on June 18, 2002.
On
July 8, 2002, The .tv Corporation confirmed by e-mail to the Forum that the
domain name <jrecords.tv> is
registered with The .tv Corporation and that Respondent is the current
registrant of the name. The .tv Corporation
has verified that Respondent is bound by the The .tv Corporation 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
July 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 29,
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 postmaster@jrecords.tv 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
August 9, 2002 pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<jrecords.tv> domain name is identical to Complainant's J RECORDS
mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant has used the J RECORDS mark
since 2000 as a record label. In its
first year of existence, Complainant’s J RECORDS label registered over $200
million in sales on just eleven different albums. Complainant’s J RECORDS mark is the label for artists such as
five-time grammy winner Alicia Keys, O-Town, Luther Vandross, and Busta
Rhymes.
Complainant owns the following trademark
applications for J RECORDS.
Class 9:
Musical sound recordings and audio-visual recordings, namely, compact
discs, tape cassettes, records, CD-ROMs, video tapes, dvds and laser discs. |
||
Class 35: Computerized on-line retail and
ordering services in the field of musical sound recordings and audio-visual
recordings provided by means of a global computer network. |
||
Class 41: Entertainment services, namely,
producing and distributing musical audio and video recordings; organizing
concerts featuring live musical performances. |
||
Class 41: Entertainment services, namely,
producing and distributing musical audio and video recordings; organizing
concerts featuring live musical performances. |
||
Complainant has spent large amounts of
money ($65 million in 2001 alone) and time marketing and promoting its J
RECORDS mark. Complainant has also
received worldwide publicity with respect to its business operations due to the
fame of its founder, Clive Davis the former head of Arista Records.
Respondent registered the disputed domain
name <jrecords.tv> on February 18, 2002, well after Complainant
began using and promoting its J RECORDS mark.
Furthermore, Respondent registered the domain name after Complainant’s
very successful business year resulting in four top-ten, platinum selling
albums and immediately after J RECORDS label artists received three American
Music Awards and six Grammy nominations.
Respondent is not currently using the disputed domain name, but has
admitted to Complainant that it plans to use the domain name in relation to the
music industry.
DISCUSSION
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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(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
Complainant has established that it has
rights in the J RECORDS mark through its numerous trademark registrations. Respondent’s <jrecords.tv>
domain name is identical to Complainant’s J RECORDS mark because it
incorporates Complainant’s entire J RECORDS mark and merely adds the country
code “.tv.” The addition of a country
code, like a generic top-level domain name such as “.com,” does not create a
distinct mark capable of overcoming a claim of identical or confusing
similarity. See World
Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that “[t]he addition of the
country code top level domain (ccTLD) designation <.tv> does not serve to
distinguish those names from Complainant’s marks since ‘.tv’ is a common
Internet address identifier that is not specifically associated with
Respondent”); see also Clairol
Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name
<clairol.tv> is identical to Complainant’s CLAIROL marks).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or
legitimate interests in the disputed domain name. See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See 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”).
Respondent is using a domain name
identical to Complainant’s well-known mark in order to create a likelihood of confusion
and divert Internet users interested in Complainant to Respondent’s domain
name. This type of use is not
considered to be in relation to a bona offering of goods or services pursuant
to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding
that, because the Respondent's sole purpose in selecting the domain names was
to cause confusion with the Complainant's website and marks, it's use of the
names was not in connection with the offering of goods or services or any other
fair use); 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).
There is no evidence on record, and
Respondent has not come forward to offer any proof that it is commonly known as
J RECORDS or <jrecords.tv>.
Therefore, Respondent has not established that it has rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Based on the notoriety Complainant’s
mark has achieved and its numerous registrations with the United States Patent
and Trademark Office, it can be inferred that Respondent had knowledge of
Complainant’s mark when it registered the disputed domain name. Registration of an infringing domain name
with actual or constructive knowledge of Complainant’s mark is evidence of bad
faith registration pursuant to Policy Para. 4(a)(iii).
See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th
Cir. Feb 11, 2002) (finding that
“[w]here an alleged infringer chooses a mark he knows to be similar to another,
one can infer an intent to confuse”); see also Victoria’s Cyber Secret Ltd.
P’ship v. Secret Catalogue, Inc., 161 F. Supp.2d 1339, 1349
(S.D.Fla. 2001)(noting that “a Principal Register registration [of a trademark
or service mark] is constructive notice of a claim of ownership so as to
eliminate any defense of good faith adoption” pursuant to 15 U.S.C. Sec. 1072);
see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat.Arb. Forum
Apr. 17, 2000) finding that evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration).
Furthermore, any attempt to use the
disputed domain name in the music industry by Respondent will result in a
likelihood of confusion as to the source, sponsorship, and affiliation of <jrecords.tv>. This confusion will likely produce
commercial gain for Respondent, which is evidence of bad faith use pursuant to
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 intended to use Complainant’s marks to attract the public to the web
site without permission from Complainant); 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).
Respondent has refused Complainant’s
attempts to purchase the domain name and commented about participating in the
music industry. Based on this behavior, it can be inferred that Respondent
registered the <jrecords.tv> domain name in order to disrupt
Complainant’s business and prevent Complainant from reflecting its mark in a
domain name with the “.tv” country code, which is evidence of bad faith use
pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001)
(finding that, given the competitive relationship between Complainant and
Respondent, Respondent likely registered the contested domain name with the
intent to disrupt Complainant's business and create user confusion); see
also Toyota Jidosha Kabushiki Kaisha
v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that
“Registration of a domain name [by Respondent that incorporates another’s
trademark] goes further than merely correctly using in an advertisement the
trademark of another in connection with that other’s goods or services: it
prevents the trademark owner from reflecting that mark in a corresponding
domain name”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
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 <jrecords.tv> be transferred from Respondent to
Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 12, 2002
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