Sun Studio Entertainment,
Claim Number: FA0805001189842
Complainant is Sun Studio Entertainment, Inc. (“Complainant”), represented by Samuel
F. Miller, of Baker, Donelson, Bearman, Caldwell &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <memphisrecordingservice.com>, registered with Tucows 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.
Jeffrey M. Samuels as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 12, 2008.
On May 12, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <memphisrecordingservice.com> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 May 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 2008 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.
A timely Response was received and determined to be complete on June 2, 2008.
On June 5, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
A timely “Additional Submission” was submitted by Complainant on June 9, 2008.
A timely “Response to Complainant’s Additional Submission” was submitted by Respondent on June 16, 2008.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Since 1987, Complainant has operated a recording studio and museum
dedicated to memorializing a number of well-known artists, including Elvis
Presley, Carl Perkins, Jerry Lee Lewis, and Johnny Cash. The studio is located at
Complainant contends that, since 1987, it has continuously used the mark MEMPHIS RECORDING SERVICE to market its museum and recording studio services, including the use of a neon sign bearing the MEMPHIS RECORDING SERVICE mark, in the windows of the museum. Complainant owns U.S. Trademark Registration No. 2,011,855 for the service mark MEMPHIS RECORDING SERVICE, as used in connection with museums and recording studio services. The registration issued in October 1996. See Complaint, Exhibit A. According to Complainant, millions of music fans have visited Complainant’s museum, which provides tours of, historical facts about, and exhibits related to the world-famous and historic studio. See Complaint, Exhibit, B, consisting of Declaration of John Schorr, President of Sun Studio Entertainment, Inc.
Complainant asserts that the disputed domain name, <memphisrecordingservice.com>, incorporates the entirety of the MEMPHIS RECORDING SERVICE mark and that the only differences between the mark and the domain name, i.e., the different spacing and the addition of the top level domain “com.”, are irrelevant. “Respondent’s registration thus is indistinguishable from, and confusingly similar to, Complainant’s MEMPHIS RECORDING SERVICE mark,” Complainant declares.
Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant insists that Respondent is using several of Complainant’s registered and unregistered marks, as well as other information, to create the impression that Complainant created, authorized, or authenticated the goods sold on Respondent’s website. “This is neither a bona fide offer of goods and services nor a legitimate noncommercial or fair use as contemplated by the Policy,” Complainant declares.
Complainant notes that the disputed domain name was registered 17 years
after Complainant began use of the MEMPHIS RECORDING SERVICE mark and contends
that Respondent uses the phrase “Memphis Recording Service” on its website in a
manner that creates an association in the minds of consumers between the
parties’ products. For example,
Complainant points out that Respondent’s site uses various stylized versions of
Complainant’s MEMPHIS RECORDING SERVICE mark, pictures of Complainant’s
unregistered stylized version of the mark embodied in a flashing neon “Memphis
Recording Service” sign, and a picture of Complainant’s store front. See
Complaint, Exhibits E, F, and G.
Complainant also alleges that the disputed site recites the history of
Memphis Recording Service and discusses the various artists who recorded music
According to Complainant, while Respondent’s <memphisrecordingservice.com> site disclaims any affiliation with Sony/BMG, Elvis Presley Enterprises or Sun Entertainment Corporation, it does not disclaim any affiliation with Complainant.
Complainant notes that Respondent owns an EU trademark registration (No. 3,961,836) for the mark “Memphis Recording Service” (see Complaint, Exhibit H), but contends that such registration “does not save its case.” Complainant points out that the EU registration was obtained two years after registration of the disputed domain name and argues that “it appears that Respondent procured the EU trademark for the sole reason of circumventing the Policy.”
Complainant maintains that Respondent registered the disputed domain
name in bad faith for the purpose of capitalizing on the long-established
goodwill associated with Complainant’s MEMPHIS RECORDING SERVICE mark.
Complainant emphasizes that the disputed domain name was registered eight years
after Complainant obtained its
The domain name in issue is also being used in bad faith, Complainant
urges. Complainant argues that due to the valuable goodwill created over the
past 20 years, consumers will instinctively search for Complainant’s website by
using the <memphisrecordingservice.com>
domain name, but, instead of locating of Complainant’s site, will unexpectedly
arrive at Respondent’s site.
Respondent’s site, Complainant maintains, deceives the consumer into
believing that he/she has reached a site affiliated with Complainant by
incorporating a depiction of Complainant’s building, pictures of Complainant’s
MEMPHIS RECORDING SERVICE neon signs, and a history of 706
Respondent Memphis Recording Service first notes that it was formed in
Respondent points out that it owns an EU trademark registration for “Memphis Recording Service” and that the disputed domain name was registered earlier “but did not go live until after the company’s formation and only prior to the release of its product … [in] November 2005.”
According to Respondent, Complainant’s president, Mr. Schorr, met with
Respondent on various occasions and Complainant sold Respondent’s products at
Respondent maintains that <memphisrecordingservice.com> is not identical to <sunstudio.com>. Respondent also contends that Complainant has not continuously used Memphis Recording Studio to market its museum and recording studio services since 1987 or as a service today. Respondent asserts that Complainant offers walk-in guests an opportunity to make a recording and that such recording is offered under the “Sun Studio” mark. According to Respondent, “MRS is not even evident on any of the Complainant’s brochures, promotional materials, or even their website.” Respondent indicates that Complainant sells t-shirts and coffee mugs under the MEMPHIS RECORDING SERVICE mark but adds that Respondent does not use such mark.
Respondent further points to the results of an internet search for the words “Memphis Recording Service” which show that the vast majority of listings refer to Respondent. See Response, Exhibit D.
Respondent urges that it has rights or legitimate interests with respect to the disputed domain name. It states as follows:
“Respondent has a huge legitimate interest in the
domain name as it is the recording label of our artists that no one in the
world uses including the Complainant. MRS in the EU are known as an independent
record label and are under the trademark and the selling of products within our
own jurisdiction of the EU. We do not use any of complainant’s registered
trademark and we do not sell similar … goods and, we do not sell in the
“The company is well established and is trading as a record label from 2005. The company has all its email addresses established ending with the domains .com with thousands of people including accounting firms and Govt related offices, key industry contacts and musicians from around the world etc and we completely rely on our email address that is with our domain .com.”
“The company has now sold over 50,000 media
products in the few years it has been operating and the company’s full
domain.com is placed on the back of every CD, DVD and Book of our products in
stores across Europe and other parts of the world including Asia and
logo used on the 2 products by complainant is different to the neon logo which
is the only logo used by MRS in the
Respondent notes that its website at <memphisrecordingservice.com> includes a disclaimer of any affiliation with Elvis Presley Enterprises and Sun Entertainment. The reference to Sun Entertainment, Respondent declares, was supposed to include Sun Studio since Sun Studio used the trademarks of Sun Entertainment.
According to Respondent, “[t]his is purely a takeover attempt. Mr. Schoor has known of the products and services of MRS Ltd. for 30 months and only now, feels that he would like an interest in using the domain .com after the success of our released products and entry into the 2009 edition of the Guinness Book of Records. None of our products are related and we certainly do not claim to be a recording studio and have no interest to do so.”
With respect to the issue of “bad faith” registration and use, Respondent argues that its site is not being used in bad faith “as first and foremost there is no connection between it and the Complainant’s websites. Nothing on the domain name in question is repeated and our products are in no way connected to Sun Studio.”
Respondent emphasizes that MRS is its record label operating in the
European Union for products and services which are bona fide and legal in the EU and many other countries. Respondent notes that it does not sell
t-shirts and coffee mugs, which, according to Respondent, are the only products
on which Complainant uses its MEMPHIS RECORDING SERVICE mark. “There is no confusion between Sun Studio in
Respondent accuses Complainant of a “total fabrication” in contending that, as a result of the valuable goodwill created over 20 years, consumers will instinctively search for Complainant by using the disputed domain name. Respondent maintains that almost everyone refers to Complainant as “Sun” and no one “would ever think of searching the Complainant through typing the domain name in question.”
C. Additional Submissions
In its “Additional Submission,” Complainant argues that Respondent cannot reasonably deny that the domain name <memphisrecordingservice.com> is confusingly similar to Complainant’s MEMPHIS RECORDING SERVICE mark. While Respondent contends that Complainant is not commonly known as “Memphis Recording Service,” Complainant urges that “[t]his does not matter. The only relevant inquiry is whether the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.”
Complainant further asserts that Respondent has not presented any arguments which, even if supported by evidence, would establish legitimate rights in the domain name. Rather, Complainant indicates, Respondent admits that it is aware of the history associated with Complainant’s business, the domain name was chosen to capitalize on the the history associated with Complainant’s building and mark, and that, at the time the domain name was registered, Respondent was not commonly known as “Memphis Recording Service.”
Complainant adds as follows:
that “[its] website is commonly known around the world for its products that
are bonafide, in no way similar and is without any confusion to
complainants.” Quite the contrary, the
only products sold by Respondent are recordings of, and books about, Elvis
Presley. See generally <memphisrecordingservice.com>. For Respondent to argue that selling such
products using the MEMPHIS RECORDING SERVICE mark would not cause any confusion
is disingenuous. Complainant built its
business over twenty years by memorializing the artists that formerly recorded
much time arguing about whether Complainant has any rights in its neon signs or
whether those rights can be enforced in the EU.
This misses the point. The issue
is not whether Complainant could enforce its trademark rights against
its “Response to Complainant’s Additional Submission,” Respondent first notes that
it has a valid EU trademark registration for the MEMPHIS RECORDING SERVICE mark
and that “it’s the Complainant’s own fault … that it did not protect its mark
Respondent also asserts that it does not use the neon lights as its mark and that the same “Memphis Recording Service” lights found at Complainant’s museum can be seen one mile away at the “Rock n Soul” Museum. Respondent further argues that the neon light is not a registered trademark of Complainant. Respondent indicates that it is common knowledge that the way “Memphis Recording Service” is displayed on the windows of Complainant’s museum “is to give effect of how the windows looked in the 1950’s.” Respondent further argues that the main sign on the museum today includes the SUN STUDIO mark and that the “Memphis Recording Service” neon lights are turned on only in the evening.
Respondent maintains that both parties are trading upon the goodwill of Sam Phillips’ reputation and “finds it impossible to suggest that it has used the goodwill of the Complainant since they have not created any goodwill from the words pertaining to [Memphis Recording Service], let alone any that the respondent can use.”
The Panel finds that: (1) the domain name <memphisrecordingservice.com> is identical or confusingly similar to the mark MEMPHIS RECORDING SERVICE and that Complainant has rights in such mark; (2) Respondent has rights or legitimate interests in the domain name <memphisrecordingservice.com>; and (3) in view of its determination on the issue of rights or legitimate interests, it is not necessary to consider whether the domain name was registered and is being used in bad faith.
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.
The Panel concludes that the disputed domain
is, for all intents and purposes, identical to the MEMPHIS RECORDING SERVICE
mark. Respondent’s domain name incorporates the
mark in its entirety and merely omits the spacing between the words and adds
the top-level domain “.com.” These
differences are not sufficient to avoid a determination that, for purposes of
the applicable Policy, the name and mark are identical. See
The Panel further concludes that Complainant, through its registration covering and use of the MEMPHIS RECORDING SERVICE mark, has rights in such mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”) While Respondent appears to contend that Complainant does not use the MEMPHIS RECORDING SERVICE mark, the evidence submitted by Complainant contradicts such assertion. The Second Declaration of Complainant’s president, Mr. Schorr, submitted with Complainant’s “Additional Submission,” states that “Sun Studio has used and continues to use the MEMPHIS RECORDING SERVICE mark in commerce” and Exhibit C to such submission shows use of such mark on a self-recorded CD and postcard.
The issue of whether a respondent’s ownership of a trademark registration incorporating
the domain name in dispute gives rise to “rights or legitimate interests” under the
applicable Policy was discussed at some length in BECA Inc. v. Can Am Health Source,
Inc., D2004-0298 (WIPO July 23, 2004). In that case, the panel, upon review of earlier
panel decisions, set forth a number of guiding principles or factors to consider in
determining whether a respondent’s ownership of trademark rights grants sufficient
rights under paragraph 4(a)(ii) of the Policy. According to the BECA panel:
(i) When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.
(ii) The chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent’s domain name registration. A trademark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest.
(iii) The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant’s rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.
(iv) The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is “legitimate.”
The evidence in
this case indicates that Respondent, which is located in the United Kingdom,
filed its EU trademark registration on July 28, 2004, which was only a few
weeks after the disputed domain name was registered and well before notice of
the instant dispute, and that Respondent is a legitimate business engaged in
selling CDs, DVDs and related media products in Europe and elsewhere. The evidence also seems to establish that
Respondent registered the disputed domain knowing of the history surrounding a
recording service in
This is a
difficult case and highlights the limitations of the Policy, both from the
standpoint of substance and procedure. In the end, though, the Panel is not
persuaded that Complainant has established a prima facie case in support of its arguments that Respondent lacks
rights and legitimate interests under the Policy. See
Terminal Supply, Inc. v. HI-LINE ELECTRIC,
FA 746752 (Nat. Arb. Forum Aug. 24, 2006).
Upon review of all the evidence, the Panel concludes that Respondent did
not register the domain name in dispute or its mark to capitalize on
Complainant’s use of the MEMPHIS RECORDING SERVICE mark. Rather, in the opinion of the Panel, the
evidence indicates that Respondent registered its domain name and mark to
capitalize on the history surrounding a recording studio in
In the view of
the Panel, Respondent’s ownership of an EU trademark registration for the
MEMPHIS RECORDING SERVICE mark was not obtained merely to circumvent the
Policy. Relying on the factors
identified in BECA, the Panel notes
that Respondent applied to register its mark prior to notice of the dispute and
close in time to registration of the domain name
and that Respondent is located in a jurisdiction that is part of the EU. While Complainant owns a
Given that Complainant has failed to succeed under paragraph 4(a)(ii) of the Policy, it is not necessary for the Panel to consider whether or not the Respondent has registered or is using the domain name in bad faith under paragraph 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Jeffrey M. Samuels, Panelist
Dated: June 19, 2008
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 In a May 14, 2008, letter from the National Arbitration Forum, Complainant was advised that its Complaint was deficient in a number of respects. The identified deficiencies were later rectified.
 It appears that the disputed domain name was registered on July 5, 2004. See Complaint, Exhibit C.
 Respondent’s argument that <memphisrecordingservice.com> is not identical to <sunstudio.com> is irrelevant in view of the Policy’s direction that the issue is whether the domain name is identical or confusingly similar to a mark in which Complainant has rights. The mark in issue in this case is MEMPHIS RECORDING SERVICE, not SUN STUDIO or <sunstudio.com>.
 See ISL Marketing AG, and the Union des Associations Européennes de Football v. The European Unique Resources Organisation 2000 B.V., D2000-0230 (WIPO July 5, 2000); Madonna Ciccone, p/k/a Madonna v. Dan Parisi and Madonna.com, D2000-0847 (WIPO Oct. 12, 2000).
 By this the Panel means that, except in cases involving “abusive registrations,” the policy set forth in the UDRP leaves the resolution of disputes to the courts. See Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, ¶4.1(c). The Panel further notes that the applicable Policy, as a general matter, does not provide for in-person hearings at which the credibility of witnesses may be assessed and witnesses may be cross-examined. See paragraph 13 of the “Rules for Uniform Domain Name Dispute Resolution Policy.”
 The Panel finds that the Respondent’s use of the flashing neon lights bearing the words “Memphis Recording Service” is intended to invoke the manner in which such sign appeared in the 1950s.
 Contrary to Complainant’s argument, in the opinion of the Panel, the fact that Respondent did not obtain its EU registration until November 2006, more than two years after registration of the domain name in dispute, does not support a determination that the EU registration was obtained to circumvent the Policy. The more relevant date, from the Panel’s perspective, is the date Respondent filed its EU application, i.e., July 28, 2004, which was only 23 days after the domain name registration.
 See Exhibit C to Complainant’s Additional Submission showing use of the MEMPHIS RECORDING SERVICE mark on CDs and postcards.