Anita L. Roye / ALR Events, LLC v. Sterling Music Productions
Claim Number: FA1008001339347
PARTIES
Complainant is Anita L. Roye / ALR Events, LLC (“Complainant”), represented by Adam S. Stephenson, of Adam R. Stephenson, LTD., Arizona, USA. Respondent is Sterling Music Productions (“Respondent”), represented by Daniele E. Bourgeois, of Troutman Sanders LLP, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <alrevents.net> and <abrevents.net>, registered with GoDaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2010.
On August 6, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <alrevents.net> and <abrevents.net> domain names are registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 August 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@alrevents.net and postmaster@abrevents.net. Also on August 17, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 7, 2010.
A timely Additional Submission by Complainant was received and determined to be complete on September 13, 2010.
A timely Additional Submission by Respondent was received and determined to be complete on September 20, 2010.
All submissions were considered by the Panel.
On September 17, 2010, 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant owns the trademark ALR EVENTS, U.S. Reg. No. 3,809,870, registered on June 29, 2010.
ALREVENTS.NET contains the ALR EVENTS mark, and is, therefore, identical to the registered trademark.
ABREVENTS.NET contains ABR EVENTS, which is similar in sound, visual appearance, and commercial impression to the ALR EVENTS. When used in conjunction with special events planning-related services, ABR EVENTS.NET creates a substantial likelihood of consumer confusion as to whether the services originate from Complainant or Eric Horne acting on behalf of Respondent.
Complainant Anita Roye registered the domain ALREVENTS.COM in 2002 and has been using the ALR EVENTS mark in conjunction with event planning and special event related services since January 2002.
Sterling Music Productions through Eric Horne registered the domain name ALREVENTS.NET on June 22, 2009. Eric Horne began providing commercial special event services using the ALR EVENTS mark after that date.
At the time Eric Horne registered the domain name, Anita Roye had established common law rights to the mark ALR EVENTS throughout the United States, including the Atlanta, Georgia area. Complainant has rights in the ALR EVENTS mark conferred by federal statute that are superior to Eric Horne’s as she was the first user of the mark in interstate commerce.
Eric Horne filed to register the ABR EVENTS.NET domain on December 21, 2009. He took the content of the existing ALREVENTS.NET site and transferred it to the ABREVENTS.NET domain, and changed the term on the site from ALR EVENTS to ABR EVENTS. Because ABR EVENTS is similar in sound, sight, commercial impression, and was being used for commercial services identical to those used with the ALR EVENTS mark, a high degree of likelihood of consumer confusion exists between the ABR EVENTS and the ALR EVENTS mark.
Anita Roye became aware of Eric Horne’s activities involving the mark ALR EVENTS when he asked to connect with her on LinkedIn October 7, 2009. Eric Horne was formally notified of his infringing activities on or October 16, 2009, when a cease and desist letter was sent to him.
In December 2009 to early 2010, Eric Horne moved the content on the ALREVENTS.NET domain to ABREVENTS.NET domain. The ALR references to ABR EVENTS was still used as a keyword in the meta tags of each page on the site.
ALREVENTS.NET domain was renewed by Eric Horne at the end of June 2010. Following the renewal, the DNS for the domain was so that the ALREVENTS.NET domain automatically redirects visitors to the ABREVENTS.NET domain content. This redirect clearly shows an intent to continue associating the ALREVENTS.NET and ABREVENTS.NET domains with each other and accordingly, the ALR EVENTS mark.
B. Respondent
Sterling Music Productions was owned by Eric Horne. In January, 2009, Sterling Music Productions began doing business as ALR Events; Tara Whitney Vann, was co-owner. After being contacted by the Complainant, Mr. Horn dissolved Sterling Music Productions and the DBA for ALR Events. Mr. Horne and Ms. Vann then started the non-profit corporation, ABR Events, Incorporated d/b/a Atlanta Bully Rescue. Thus, ABR Events is the true Respondent in this matter.
Mr. Horne co-founded a recording label called Abstract Logic Recording (ALR) in Atlanta in 1999. The label became known as ALR. When Mr. Horne began offering mobile DJ services for weddings, he added “Events” to the ALR name to give it a more formal sound and to distinguish his services from ALR’s club DJs. Prior to adopting the ALR Events name, Mr. Horne did a search of the federal trademark database, which did not reveal any identical or similar marks because this was prior to Complainant filing her application for the ALR Events mark.
Despite having legitimate and senior trademark rights in the ALR name in the Atlanta area, the Respondent did not have the resources to engage in a trademark dispute with Ms. Roye. Accordingly, in December 2009, Respondent dissolved Sterling Music Productions d/b/a ALR Events and started ABR Events, Incorporated d/b/a/ Atlanta Bully Rescue so they could change the name and incorporate as a nonprofit. ABR Events is a mobile DJ service, whose services fund the Atlanta Bully Rescue animal shelter.
Respondent registered the domain name prior to Ms. Roye’s filing a federal application for the Mark, which would have provided constructive notice of her rights. Respondent submits that it has senior rights in the ALR name in the Atlanta, Georgia name.
The <abrevents.net> Domain Name is not identical or confusingly similar to the ALR EVENTS mark. Though the descriptive term “Events” is the same, ALR and ABR are not confusingly similar in sight, sound and meaning. Just as Complainant can co-exist with ALM EVENTS for the same services and AFR EVENT FURNISHINGS for related services, ALR Events and ABR EVENTS are not confusingly similar.
Complainant is not entitled to exclusive rights to the descriptive word “Events,” as evidenced by its disclaimer of EVENTS on its registration. ABR EVENTS is not confusingly similar to ALR EVENTS. Complaint’s rights simply do not extend to any and all marks beginning with AL or incorporating AR.
Respondent is using the <alrevents.net> Domain Name in connection with a bona fide offering of entertainment services.
UDRP ¶ 4(b) provides most common circumstances as evidence of bad faith, none of which apply to this case.
C. Additional Submissions
Complainant
The Respondent’s statement in the Response “the alrevents.net Domain Name incorporates the whole of Ms. Roye’s ALR EVENTS mark…” admits what the rule requires. The <alrevents.net> domain name is identical to the mark registered by the Complainant.
The Response indicates that Respondent did not officially begin doing business as ALR events until January 2009 and then ceased doing business as ALR Events in December 2009. Respondent did not register the <alrevents.net> domain until June of 2009. Respondent did not adopt the ALR EVENTS mark prior to January 2009.
Respondent seeks to excuse its continued actions and inactions by having changed its name to become a nonprofit enterprise. This is a distinction without a difference.
Eric Horne’s use of the <abrevents.net> domain has created a likelihood of consumer confusion.
A search of the ALR EVENTS was run in Google on 9/10/2010. The <abrevents.net> domain appears on the same page of search results with the Complainant’s website alrevents.com.
Consumers are likely to assume that the two websites bear some relation to each other by the positioning of them on the first page of search results.
Respondent
Respondent does not dispute that <alrevents.net> is essentially identical to the ALR EVENTS Mark. Respondent disputes Complainant’s claim to exclusive rights to this Mark. Respondent had common law rights in the ALR mark for use in connection with entertainment services, namely DJ services, long before Complainant filed an application for ALR Events. Respondent used ALR in connection with its entertainment services for at least a decade before Complainant filed an application or contacted Respondent. The adoption of ALR Events was prior to Complaint’s filing of federal trademark application for the Mark.
Respondent is not attempting to circumvent the rules. Respondent had prior, legitimate rights to ALR. Respondent began using ALR EVENTS without any knowledge of Complainant, as she had not filed a federal application for the Mark.
Respondent’s use of <abrevents.net> has not and will not create a likelihood of confusion with Complainant’s mark.
Respondent conducted the same search as Complainant referenced for ALR EVENTS on Yahoo, Bing and Google. The Yahoo and Bing search engine “robots” only retrieved hits for Complainant and a number of other ALR Events, unrelated to Complainant. Respondent’s site does not appear in the first seven pages of search results as the very last hit. It is highly unlikely that consumers searching on Google will find any association between Complainant’s and Respondent’s respective sites when they appear at opposite ends of the search results with many other ALR Events appearing before ABR Events.
Respondent conducted a similar search for ABR Events on Google, Yahoo and Bing. None of the search engines listed Complainant’s site in the search results. Using the Complainant’s own test of confusion based on search results, there is no association or confusion between Complainant’s mark and Respondent’s abrevents.net.
FINDINGS
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.
The Panel finds that Complainant need not establish rights based on a registered trademark and that a finding of common law rights in its ALR EVENTS mark is sufficient to establish rights under Policy ¶ 4(a)(i). 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant alleges that it does hold a trademark registration for its ALR EVENTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,809,870 filed October 8, 2009; issued June 29, 2010). Complainant indicates that its USPTO registration contains a first use in commerce date of January 30, 2002. Complainant indicates that it registered its <alrevents.com> domain name and uses its ALR EVENTS mark in conjunction with event planning and special event services since January 2002. Complainant asserts that it has conducted numerous events in over 40 states and internationally. Complainant further asserts that its clients have come to associate its quality event planning and special event services with the ALR EVENTS mark. The Panel finds Complainant’s continuous use of the ALR EVENTS mark since 2002 is sufficient to establish Complainant’s common law trademark rights under Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Complainant asserts that Respondent’s <alrevents.net> domain name is identical to Complainant’s ALR EVENTS mark. Complainant contends that Respondent’s disputed domain name contains Complainant’s entire mark and merely deletes the spaces between the terms and adds the generic top-level domain (“gTLD”) “.net.” The Panel finds that these minor alterations do not avoid a finding that Respondent’s <alrevents.net> domain name is identical to Complainant’s ALR EVENTS mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant further asserts that Respondent’s <abrevents.net> domain name is confusingly similar to Complainant’s ALR EVENTS mark. Complainant indicates that Respondent’s disputed domain name merely deletes the space between the terms in Complainant’s mark, replaces the letter “l” with the letter “b,” and adds the gTLD “.net.” The Panel finds that these modifications to Complainant’s mark are not sufficient to avoid a finding of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling).
While Respondent argues that its registration of the <alrevents.net> and <abrevents.net> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain name are identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The WHOIS information for the disputed domain names indicate that the registrant is “Sterling Music Productions.” The Panel finds that the WHOIS information is a sufficient indicator that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent’s disputed domain names resolve to Respondent’s website promoting and advertising Respondent’s special event services that directly compete with those offered by Complainant. The Panel finds that Respondent’s use of the disputed domain names to direct Internet users to Respondent’s competing website is not 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant has proven this element.
Previous panels have held that a respondent who registers and uses a disputed domain name that resolves to a website for the respondent’s own business which offers goods or services that directly compete with the complainant disrupts the complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). Accordingly, the Panel in this case finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant alleges that Respondent is using the disputed domain names to redirect Internet users to his own competing website. The Panel finds that Respondent registered and is using the identical and confusingly similar domain names in an attempt to intentionally attract Internet users, for Respondent’s commercial gain, to Respondent’s competing website. The Panel finds this to be evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant has proven this element.
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 <alrevents.net> and <abrevents.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V.
Fink (Ret.), Panelist
Dated: October 1, 2010
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