Daddy’s Junky Music Stores, Inc. v. Amjad
Kausar
Claim Number: FA0301000140598
PARTIES
Complainant is Daddy’s Junky Music Stores, Inc., Manchester, NH, USA (“Complainant”) represented by Eleanor M. Musick, of Kilpatrick Stockton LLP. Respondent is Amjad Kausar, Karachi, Pakistan (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <daddysjunkymusic.com>, registered with eNom, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 7, 2003; the Forum received a hard copy of the Complaint on January 10, 2003.
On January 13, 2003, eNom, Inc. confirmed by e-mail to the Forum that the domain name <daddysjunkymusic.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 January 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 3, 2003 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@daddysjunkymusic.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 7, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has 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 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. Respondent’s <daddysjunkymusic.com> domain name is identical to Complainant’s Daddy’s Junky Music mark.
2. Respondent does not have any rights or legitimate interests in the <daddysjunkymusic.com> domain name.
3. Respondent registered and used the <daddysjunkymusic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds several marks for Daddy’s Junky Music registered with the United States Patent and Trademark Office (“USPTO”), including Daddy’s Junky Music Stores (Reg. No. 1,359,864, registered September 10, 1985), Daddy’s (Reg. No. 1,579,993, registered January 30, 1990, and Reg. No. 1,594,679, registered May 1, 1990) and Daddy’s Junky Music (Reg. No. 2,404,045, registered November 14, 2000). Complainant uses the mark in relation to its chain of retail stores, which sell new and used musical instruments, recording equipment and accessories. Complainant operates a website located at <daddys.com>. The mark Daddy’s Junky Music is used prominently throughout the website.
Respondent registered the <daddysjunkymusic.com> domain name on September 29, 2001, with eNom, Inc. after Complainant unintentionally allowed its registration to expire on August 29, 2001. Respondent is using the domain name to redirect Internet users to <www.ownbox.com>, a domain name that is also registered to Respondent. <www.ownbox.com> links to <clickhere.gito.com>, which provides a search engine for searching by a topic or category. Among the available topics are gambling, sex and shopping. One category is entitled “music.” Respondent does not display or use the mark Daddy’s Junky Music or any variation thereof anywhere in the websites to which the domain name is linked.
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."
In view of 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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that 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 Respondent is identical 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.
Complainant has established rights in the Daddy’s Junky Music mark through registration with the USPTO and continuous use of the mark in commerce since 1975.
Respondent’s <daddysjunkymusic.com>
domain name is virtually identical to Complainant’s Daddy’s Junky Music mark because Respondent’s domain name
incorporates Complainant’s entire mark and merely removes the apostrophe and
the spaces between the words, and adds the top-level domain “.com”. The
addition of a top-level domain adds no distinct characteristics because
top-level domains are a required feature of every domain name. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant); see also Blue
Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to
Complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference").
In addition, the disputed domain
name removes the apostrophe and the spaces between the words of Complainant’s
mark. The lack of an apostrophe in the domain name is not a distinguishing
difference because punctuation is not significant in determining the similarity
of a domain name and a mark. See
Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000)
(finding the domain name <chichis.com> to be identical to Complainant’s
CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the
mark). The removal of the spaces between the words of a mark does not
differentiate the domain name because spaces are impermissible in domain names. See Victoria's Secret v. Hardin, FA
96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY BY
VICTORIA mark); see also Little
Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001)
(finding that <mysticlake.net> is plainly identical to Complainant’s
MYSTIC LAKE trademark and service mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).
Furthermore,
Respondent has failed to invoke any circumstances that could demonstrate rights
and legitimate interests in the domain name. When Complainant asserts a prima
facie case against Respondent, the burden of proof shifts to Respondent to
show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests in respect of the domain, the burden shifts to Respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a Response, Respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name).
Respondent
is using the disputed domain name to divert Internet users to
<www.ownbox.com>, a domain name also registered to Respondent. This
website links to another website, <clickhere.gito.com>, which provides a
search engine that searches by topic or category. Using Complainant’s mark to
divert Internet users to Respondent’s website is not a use in connection with 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 Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks); see
also AltaVista v. Krotov,
D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct
users to other, unconnected websites does not constitute a legitimate interest
in the domain name).
Respondent
has not come forward with any proof and there is no evidence on record to
establish that Respondent is commonly known as Daddys junky music or <daddysjunkymusic.com>.
Therefore, Respondent has failed to establish that it has rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to divert Internet users to <www.ownbox.com>. The Panel infers that Respondent is making a profit from the Internet traffic that is diverted to this website. Respondent is therefore using a virtually identical domain name to create Internet user confusion for its own commercial benefit, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Moreover, Respondent has registered numerous domain names that incorporate the marks of others. See Northwest Airlines, Inc. v. Amjad Kausar, FA 124851 (Nat. Arb. Forum Oct. 31, 2002), Residential Equity, LLC v. Amjad Kausar, FA 125266 (Nat. Arb. Forum Nov. 15, 2002) and Alta Vista Company v. Amjad Kausar, D2002-0934 (WIPO Nov. 29, 2002). This pattern of registration is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).
Accordingly, the Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <daddysjunkymusic.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 11, 2003
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