national arbitration forum

 

DECISION

 

Myspace LLC v. MYSPACE RADIO, LLC

Claim Number: FA1111001414953

 

PARTIES

Complainant is Myspace LLC (“Complainant”), California, USA.  Respondent is Myspace Radio, LLC (“Respondent”), represented by Rayon Payne, Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myspaceradio.com>, registered with GoDaddy.com, Inc.

 

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2011; the National Arbitration Forum received payment on November 9, 2011.

 

On November 10, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myspaceradio.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2011 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@myspaceradio.com.  Also on November 14, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 1, 2011.

 

On December 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

            1.         Respondent’s <myspaceradio.com> domain name is identical and/or confusingly similar to Complainant’s Myspace mark.

 

            2.         Respondent does not have any rights or legitimate interests in the  <myspaceradio.com> domain name.

 

            3.         Respondent registered and used the <myspaceradio.com> domain name in bad faith.

 

B. Respondent

           

            1.         Respondent’s <myspaceradio.com> domain name is comprised of common words.

 

            2.         Respondent does have rights or legitimate interests in the  <myspaceradio.com> domain name.

 

            3.         Respondent states he was not the original owner of the name but procured <myspaceradio.com> domain name in good faith.

           

FINDINGS

Complainant is a social media site emphasizing music and entertainment.  Complainant holds three trademarks, all registered in the United States, as follows:  MYSPACE (U.S. Reg. No. 2911041, application date 12/1/2003, first used in commerce July 2003); MYSPACE (U.S. Reg. No. 3629478, application date 12/31/2007, first used in commerce July 2003); and MYSPACE (U.S. Reg. No. 3183151, application date 9/6/2005, first used in commerce in July 2004).

 

Respondent states he procured the domain name at issue in 2004 from an individual who originally registered the domain name in order to take advantage of his radio background.

 

DISCUSSION

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts it is a social media site emphasizing music and entertainment, offering its social media site under the MYSPACE mark.  In support of its claim of rights in the MYSPACE mark, Complainant provides information about its trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MYSPACE mark (e.g., Reg. No. 2,911,041 registered December 14, 2004).  The Panel concludes that Complainant owns Policy ¶ 4(a)(i) rights in its MYSPACE mark.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Respondent’s Myspace Radio, LLC domain name <myspaceradio.com> combines Complainant’s MYSPACE mark and the generic term “radio,” making the disputed domain name confusing similar to Complainant’s mark.  The disputed domain name also contains the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the additions to Complainant’s mark do not adequately distinguish the domain name, and such additions do not remove the disputed domain name from the Policy ¶ 4(a)(i) realm of confusing similarity. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); 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.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).

 

While Respondent contends that the <myspaceradio.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s 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 mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

Rights or Legitimate Interests

 

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.”).

 

Complainant does not allege that Respondent is not commonly known by the <myspaceradio.com> domain name.  The WHOIS information lists “Myspace Radio, LLC” as the registrant of the disputed domain name; however, Complainant claims that Respondent is represented by Rayon Payne and Respondent affirms this claim.  Respondent does not present any evidence, aside from the WHOIS information, that it is commonly known by the disputed domain name, and the Panel concludes that Respondent is not commonly known by the <myspaceradio.com> domain name for the purposes of Policy ¶ 4(c)(ii).  See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”). 

 

Complainant contends that Respondent is attempting to sell the <myspaceradio.com> domain name, and provides a screenshot of an auction website that purports to offer the disputed domain name for sale.  See Complainant’s Annex 5.  Respondent’s auctioning of the disputed domain name is evidence that Respondent lacks Policy ¶ 4(a)(ii) rights and legitimate interests in the <myspaceradio.com> domain name.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).

 

Registration and Use in Bad Faith

 

Respondent listed the <myspaceradio.com> domain name for sale on a third-party auction website.  This offer to sell the disputed domain name is evidence of Policy ¶ 4(b)(i) bad faith registration and use.  See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where the respondent made no use of the domain names except to offer them to sale).

 

Complainant contends that Respondent registered the <myspaceradio.com> domain name on November 8, 2005, after News Corporation purchased MySpace from Complainant.  It appears that Respondent registered the disputed domain name for the purpose of taking advantage of that acquisition, and Respondent’s opportunistic registration of the disputed domain name evidences Policy ¶ 4(a)(iii) bad faith registration and use.  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do.  The panel finds a negative inference from this.”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change.  This is also evidence of bad faith.”).

 

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 <myspaceradio.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  December 20, 2011

 

 

 

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