Fender Musical Instruments Corporation v. Christopher Ruth
Claim Number: FA1008001342834
PARTIES
Complainant is Fender Musical Instruments Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Christopher Ruth (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is/are <fendercustomshop.com>, registered with Network Solutions, LLC.
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.
Jeffrey M. Samuels, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2010.
On August 24, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <fendercustomshop.com> domain name is registered with Network Solutions, LLC and that the Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 August 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@fendercustomshop.com by e-mail. Also on August 27, 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 15, 2010.
Complainant’s Additional Submission was received on September 20, 2010 in compliance with Supplemental Rule 7.
On September 28, 2010, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Fender Musical Instruments Corp., designs, produces, promotes, sells and distributes guitars, musical instrument amplifiers, and related products and services under the FENDER trademark, which it has used since at least as early as 1945. Complainant owns a number of U.S. trademark registrations for the FENDER mark, as used on or in connection with the above-identified goods and/or services, as well as on clothing. See Complaint, Exhibits E1-4.
Complainant’s FENDER guitars and other musical instruments have been extensively promoted, on the internet and elsewhere, and have been used over the years by professional musicians, such as Buddy Holly, Eric Clapton, and Jimi Hendrix.
In addition to its FENDER product line, Complainant frequently offered customized guitars and, in 1987, formed the FENDER CUSTOM SHOP to better serve the demands of some of the world’s foremost and influential musicians and others.
Complainant asserts that the disputed domain name, fendercustomshop.com, which was registered on November 26, 2003, is confusingly similar to Complainant’s FENDER mark. Complainant contends, and cites a number of ICANN panel decisions for the proposition, that the mere addition of generic or other short words or letters to a trademark creates a confusingly similar domain name.
Complainant further maintains that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s “classic” pay-per-click website from which visitors are further diverted to other sites not associated with Complainant and, in some cases, associated with Complainant’s competitors. See Complaint, Exhibit F.
Complainant also argues that Respondent is not commonly known by the name fendercustomshop.com and is not making a legitimate noncommercial or fair use of the domain name. As stated by Complainant, “searchers for Complainant’s FENDER goods and services, who used the domain name fendercustomshop.com, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were in a directory of links to competitors and other goods and services. Such use cannot be considered fair.”
Finally, Complainant asserts that the domain name in dispute was registered and is being used in bad faith. In support of such assertion, Complainant, referring to Respondent’s pay-per-click site, argues that Respondent, by using the domain name in dispute, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with Complainant’s FENDER mark as to the source, sponsorship, affiliation or endorsement of the site or location or of the products or services on the site or location, within the meaning of paragraph 4(b)(iv) of the Policy.
B. Respondent
In its Response, Respondent, Christopher Ruth, offers no responses regarding the first two elements of the Policy. He does, however, challenge the assertion that the disputed domain name was registered and is being used in bad faith. According to Respondent, he has “never earned a single cent” from ownership of the domain name in dispute and has no control over how the domain name is being used. “If it were up to me, [the fendercustomshop.com site] would be a blank page with no text or images.”
Respondent further points out that Complainant’s earlier attempt to seek transfer of the fendercustomshop.com domain name resulted in a decision that “the fendercustomshop.com domain name REMAIN with Respondent.” See Fender Musical Instruments Corp. v. Ruth, FA 1333857 (Nat. Arb. Forum Apr. 9, 2010). According to Respondent, “I can’t help but feel that these multiple filings of complaints are a form of harassment.”
C. Additional Submissions
In its “Additional Submission,” Complainant notes that, while the earlier UDRP proceeding between the parties involving the fendercustomshop.com domain name was not decided in Complainant’s favor, Complainant’s claim was denied “without prejudice.” As such, Complainant asserts, it is within its rights to bring the current UDRP dispute.
Complainant points out that the previous matter was resolved in Respondent’s favor based on the panel’s determination that Complainant had failed to establish that Respondent had no rights or legitimate interests in the domain name. The panel in the earlier matter noted that “Complainant fails to allege any facts related to Respondent’s use or provide any screen shots of Respondent’s resolving website.”
With respect to the issue of “bad faith” registration and use, Complainant indicates that, even if true, it is immaterial that Respondent has not earned any money from his domain. Complainant refers to a number of ICANN panel decisions for the proposition that “there only needs to be commercial gain sought by someone, even if it’s not a respondent, for the use to be commercial.”
Complainant further contends that Respondent is entirely and solely responsible for the contents of its website. Any other finding, Complainant alleges, would mean that “cybersquatters could … routinely get off Scott-free simply by claiming ignorance” as to the contents of its site.
FINDINGS
The Panel finds that: (1) the present action is not barred by the determination in Fender Musical Instruments Corp. v. Ruth, FA 1333857 (Nat. Arb. Forum Apr. 9, 2010); (2) the domain name fendercustomshop.com is confusingly similar to Complainant’s FENDER mark; (3) Respondent has no rights or legitimate interests in the disputed domain name; and (4) the domain name in issue was registered and is being used in bad faith.
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.
Before proceeding to a consideration of the Policy’s three elements, it is necessary to consider the threshold issue of whether Complainant is precluded from maintaining this action as a result of the decision in Fender Musical Instruments Corp. v. Ruth, FA 1333857 (Nat. Arb. Forum Apr. 9, 2010). The Panel concludes that it is not.
Upon review of the earlier decision, it is clear that, as Complainant asserts, relief was denied Complainant “without prejudice.” As such, the instant matter is not precluded.
Respondent chose not to respond to Complainant’s assertions with respect to this element of the Policy and Complainant asserts that, as a result, this element is conceded. While the Panel does not agree that a failure to respond necessarily correlates to a concession, it finds that this element of the Policy has been satisfied.
The disputed domain name incorporates Complainant’s FENDER mark in its entirety, adding only the descriptive term “custom shop” (which Complainant also uses as part of its use of FENDER CUSTOM SHOP) and the generic top-level domain “com.” Previous panels have determined that domain names containing a complainant’s mark entirely while adding a descriptive term and the generic top-level domain (“gTLD”) “.com” are confusingly similar to the respective complainant’s marks. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where kohlerbaths.com, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel further finds that Complainant has rights in the FENDER mark, as evidenced by its ownership of U.S. trademark registrations for the mark and its use and promotion of the mark since at least as early as 1945.
Respondent chose not to respond to Complainant’s assertions with respect to this element of the Policy and Complainant asserts that, as a result, this element is conceded. While the Panel does not agree that a failure to respond necessarily correlates to a concession, it finds that this element of the Policy has been satisfied as well.
The Panel rules that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. The evidence establishes that the domain name in dispute resolves to a pay-per-click website that features links not only to Complainant but to its competitors as well. Under such circumstances, it cannot be found that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or is making a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, e.g., Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)).
There also is no evidence that Respondent is commonly known by the fendercustomshop.com domain name.
The Panel concludes that the disputed domain name was registered and is being used in bad faith. The evidence indicates that Respondent is using the domain name, fendercustomshop.com, which is confusingly similar to Complainant’s FENDER mark, to direct users to a pay-per-click site that includes links both to Complainant and its competitors. Such use, in the view of the Panel, supports a determination that Respondent’s use of the disputed domain name is an intentional attempt to attract Internet users to the website for commercial gain by creating a likelihood of confusion with Complainant’s FENDER mark as to the source, sponsorship, affiliation or endorsement of the website at issue by directing Internet users to competing guitar products and manufacturers and that such use is evidence of bad faith under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
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 <fendercustomshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: October 1, 2010
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