Sony BMG Music Entertainment, LLC v. Will Kang
Claim Number: FA0812001239773
Complainant is Sony
BMG Music Entertainment, LLC, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sonybmgcdtechsettlement.com>, registered with Network Solutions, Inc.
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 electronically December 23, 2008; the National Arbitration Forum received a hard copy of the Complaint February 4, 2009.
On February 4, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <sonybmgcdtechsettlement.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, 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 February 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 2, 2009, 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@sonybmgcdtechsettlement.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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, <sonybmgcdtechsettlement.com>, is confusingly similar to Complainant’s SONY BMG mark.
2. Respondent has no rights to or legitimate interests in the <sonybmgcdtechsettlement.com> domain name.
3. Respondent registered and used the <sonybmgcdtechsettlement.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sony BMG Music Entertainment, LLC, is one of the largest music and entertainment companies in the world. Complainant has operated since August 4, 2004, as a joint venture between Sony Music Entertainment and Bertelsmann Music Group (“BMG”). Complainant has widely promoted its mark since such time, and enjoyed revenue sales of $4 billion in 2007. Complainant previously registered the disputed <sonybmgcdtechsettlement.com> domain name in connection with settlement of certain consumer claims, and the registration expired in January 2008.
Respondent registered the disputed <sonybmgcdtechsettlement.com> domain name after the January 2008 expiration of Complainant’s registration. The disputed domain name resolves to a website that displays links to gambling websites.
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."
Given 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 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.”).
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 to 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.
The Panel finds that it is not necessary for Complainant to
demonstrate rights in a mark through a trademark registration with a
governmental trademark authority under Policy ¶ 4(a)(i); provided Complainant
can demonstrate its common law rights in the mark via secondary meaning. See Artistic Pursuit LLC v.
calcuttawebdevelopers.com,
FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that
Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark); see also
Complainant has asserted that its SONY BMG mark has been
used extensively since 2004, and that it has garnered billions of dollars in
revenue under the mark. Complainant has
also submitted evidence of the various compact discs (“CDs”) that have been
released by its famous artists. The
Panel therefore finds that Complainant has shown sufficient common law rights
in the mark under Policy ¶ 4(a)(i), in that the mark has achieved the requisite
secondary meaning. See Jerry Damson, Inc.
v.
Respondent’s <sonybmgcdtechsettlement.com>
domain name includes Complainant’s SONY BMG mark, while adding the additional
phrase “cd tech settlement” and the generic top-level domain “.com.” Neither of these alterations carries any
meaningful distinction. See
Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May
19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER
mark in the respondent’s <shop4harrypotter.com> and
<shopforharrypotter.com> domain names failed to alleviate the confusing
similarity between the mark and the domain names); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,”
“.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark under Policy ¶
4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must make a sufficient prima facie case supporting its allegations before Respondent has to demonstrate its rights or legitimate interests in the domain name. The Panel finds that Complainant met that burden, and that, therefore, Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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).
No evidence in the record, including the WHOIS information, suggests that Respondent is commonly known by the disputed domain name. Moreover, Complainant contends that Respondent is not a licensee of Complainant, and that Respondent is not authorized to register or use the disputed domain name or the SONY BMG mark. Therefore, the Panel finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s disputed domain name resolves to a website that
features third-party advertisements for gambling websites. The Panel infers that Respondent receives
click-through fees from this activity. Moreover,
the fact that Complainant previously held the disputed domain name implies a
lack of rights or legitimate interests on behalf of Respondent. Therefore, the Panel finds that Respondent
failed to show 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). 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006)
(finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark
to redirect Internet users to respondent’s own website for commercial gain does
not constitute either a bona fide
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 also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that the complainant’s prior registration of the same domain name is a
factor in considering the respondent’s rights or legitimate interests in the
domain name).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel finds that Respondent has engaged in bad faith
registration and use under Policy ¶ 4(b)(iv) by intentionally creating a
likelihood of confusion for commercial gain as to Complainant’s affiliation
with Respondent’s confusingly similar disputed domain name and corresponding
website that displays links for gambling websites. The Panel also takes note of the fact that
Complainant previously held this disputed domain name for a time prior to
Respondent. See Encyclopaedia
Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding
that the respondent violated Policy ¶ 4(b)(iv) by using the domain name
<britannnica.com> to hyperlink to a gambling site); see also InTest Corp. v. Servicepoint, FA 95291
(Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously
used by the Complainant, subsequent registration of the domain name by anyone
else indicates bad faith, absent evidence to the contrary.”).
The Panel finds that Complainant satisfied the elements of ICANN 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 <sonybmgcdtechsettlement.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 19, 2009.
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