UMG Recordings Inc. v.
Claim Number: FA0904001256084
PARTIES
Complainant is UMG Recordings Inc. (“Complainant”), represented by Steven
M
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dgcrecords.com>, registered with Compana, LLC.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Joel M.Grossman, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 6, 2009; the
National Arbitration Forum received a hard copy of the Complaint on April 8, 2009.
On Aprril 7, 2009, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <dgcrecords.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 April 15, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 5, 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@dgcrecords.com by e-mail.
A timely Response was received and determined to be complete on May 5, 2009.
On May 11, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
First, Complainant asserts that the domain name is identical to, or
confusingly similar to, a mark in which Complainant has rights. Complainant
asserts that it is the owner, by assignment, of the trademarks “DGC” and “DGC
Geffen Records, Inc.” The marks are duly registered federal trademarks.
Complainant notes that very prominent artists, including Nirvana and Counting
Crows, have released albums under the DGC Records label, and that the domain
name incorporates the entirety of this name.
Complainant next asserts that Respondent has no rights or legitimate
interests in the name. In this regard Complainant claims that the Respondent is
not generally known by the domain name. In addition, Complainant states that
the domain name is being operated for commercial gain, as the website has links
which lead to websites belonging to Complainant’s competitors. Complainant also
alleges that the domain name dilutes its registered trademarks, as Internet
users searching for Complainant’s products and arriving at Respondent’s website
will find links to many websites not associated with Complainant.
Finally, Complainant asserts that the domain name was registered and is
being used in bad faith. Complainant notes that prior cases have held that it
is bad faith to use a confusingly similar name to confuse Internet users as to
the source, sponsorship or affiliation of a complainant with a product or
service on the respondent’s website. Complainant further asserts that
Respondent was at least on constructive notice of Complainant’s marks at the
time of registration, indicating bad faith registration.
B. Respondent
Respondent’s Response states that, without admitting that the three
elements of the test have been met, it agrees with Complainant’s request that
the Panel transfer the domain name to Complainant. Respondent does not set
forth any contentions on the three elements.
FINDINGS
Based on Respondent’s declining to dispute
any of the contentions of Complainant the Panel determines that the domain name
be transferred from Respondent to Complainant. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA
133625 (Nat. Arb. Forum Jan. 9, 2003); see
also Malev Hungarian Airlines, Ltd. v. Vertical Axis, Inc., FA 212653 (Nat.
Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the
domain name to be transferred to the Complainant…Since the requests of the
parties in this case are identical, the Panel has no scope to do anything other
than to recognize the common request, and it has no mandate to make findings of
fact or of compliance (or not) with the Policy.”)
DISCUSSION
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.
As set forth above, in light of Respondent’s
consent to the transfer, the Panel makes no findings on this issue.
As set forth above, in light of Respondent’s
consent to the transfer, the Panel makes no findings on this issue.
As set forth above, in light of Respondent’s
consent to the transfer, the Panel makes no findings on this issue.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <dgcrecords.com> domain name be TRANSFERRED
from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: May 22, 2009
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