Capitol Records, LLC d/b/a Capitol Music Group v. Michael Seay / Disc Mobile
Claim Number: FA1212001474312
Complainant is Capitol Records, LLC d/b/a Capitol Music Group (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Michael Seay / Disc Mobile (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitolmusicgroup.com>, registered with 1&1 INTERNET AG.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2012; the National Arbitration Forum received payment on December 5, 2012.
On December 6, 2012, 1&1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <capitolmusicgroup.com> domain name is registered with 1&1 INTERNET AG and that Respondent is the current registrant of the name. 1&1 INTERNET AG has verified that Respondent is bound by the 1&1 INTERNET AG 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 December 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2012 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@capitolmusicgroup.com. Also on December 6, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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
Complainant owns the CAPITOL family of marks, which represents substantial fame in the music industry in connection with recorded music and similar services since the 1940s. Complainant owns trademark registrations for the CAPITOL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 971,850 registered October 30, 1973). See Exhibit 2. Complainant’s CAPITOL mark is well-known to consumers and has significant goodwill in the industry. Complainant also owns the <capitolrecords.com> domain name, which it uses to promote its music and services. Complainant began doing business under the corporate name “Capitol Music Group” in 2007 and registered the name as a d/b/a of Complainant in California and New York, and has come to be publicly recognized under the “Capitol Music Group” name. Complainant owned the <capitolmusicgroup.com> domain name until the middle of 2010, when the domain name was inadvertently deleted and removed from Complainant’s possession.
Respondent registered the <capitolmusicgroup.com> domain name in January of 2010, after it was deleted from Complainant’s portfolio. The disputed domain name is confusingly similar to the CAPITOL mark and the “Capitol Music Group” d/b/a name. Respondent cannot claim rights or legitimate interests in the <capitolmusicgroup.com> domain name, as it is not commonly known by the domain name nor does it make a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. Respondent had constructive and actual knowledge of the CAPITOL mark and Complainant’s use of the “Capital Music Group” name at the time it registered the <capitolmusicgroup.com> domain name. Respondent registered the <capitolmusicgroup.com> domain name in bad faith by using a name confusingly similar to that which Complainant uses as its mark, and attempts to capitalize from Internet users who are attracted to the resolving website as a result of the confusing similarity. Respondent’s registration of the domain name shortly after Complainant lost possession of it is further evidence of Respondent’s bad faith. Respondent fails to use the <capitolmusicgroup.com> domain name in any active manner.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Capitol Records, LLC d/b/a Capitol Music Group, is one of the oldest and most respected names in the music business. Complainant is one of the largest record companies in the world, distributing sound recordings across the globe in the form of records, compact discs, cassette tapes and digital recordings. Complainant owns trademark registrations for the CAPITOL mark with the United States Patent and Trademark Office (“USPTO”) (ie, Reg. No. 971,850 registered October 30, 1973).
Complainant owned the <capitolmusicgroup.com> domain name until the middle of 2010, when the domain name was inadvertently deleted and removed from Complainant’s possession.
Respondent, Michael Seay / Disc Mobile, registered the <capitolmusicgroup.com> domain name in January of 2010, after it was deleted from Complainant’s portfolio. Respondent fails to use the <capitolmusicgroup.com> domain name in any active manner.
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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint 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.”).
Complainant owns rights in the CAPITOL mark under Policy ¶ 4(a)(i) through USPTO registration. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006)(the complainant’s rights in its mark were established through USPTO registration).
Complainant contends that the <capitolmusicgroup.com> domain name is confusingly similar to its CAPITOL mark, as well as to its “Capitol Music Group” d/b/a name, based on the incorporation of the entire CAPITOL mark in the domain name, and the added descriptive terms “music” and “group,” which describes Complainant’s services. Complainant also points out that the <capitolmusicgroup.com> domain name includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that the <capitolmusicgroup.com> domain name is confusingly similar to Complainant’s CAPITOL mark as applicable to Policy ¶ 4(a)(i) despite the addition of descriptive terms and a gTLD to the mark within the domain name. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
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).
Complainant alleges that Respondent could not be commonly known by the <capitolmusicgroup.com> domain name or the “Capitol Music Group” name due to the WHOIS information on record, which indicates that the registrant is “Disc Mobile c/o Michael Seay.” Complainant also argues that Respondent is not a licensee of Complainant nor does it have authorization to use the CAPITOL mark or the “Capitol Music Group” name. The Panel finds that Respondent is not commonly known by the <capitolmusicgroup.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (the respondent was not commonly known by the disputed domain names because the WHOIS information and all other information on record failed to support such a contention and the complainant did not authorize the respondent to use its mark in any way).
Respondent does not make an active use of the <capitolmusicgroup.com> domain name and the domain name does not resolve to an active website. The Panel concludes that Respondent’s failure to actively use the <capitolmusicgroup.com> domain name does not show 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 VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was 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)).
Complainant asserts that Respondent registered and uses the <capitolmusicgroup.com> domain name in bad faith as a result of Respondent’s purposeful selection of a domain name using Complainant’s well-established CAPITOL mark. Complainant contends that the domain name was registered with the intent to confuse Internet users and attract traffic to the website. The Panel finds that Respondent’s registration of a confusingly similar domain name to attract Internet users to its empty website is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).
Complainant argues that Respondent demonstrates bad faith registration and use of the <capitolmusicgroup.com> domain name due to its failure to make an active use of the resolving website. The Panel concludes that Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii) is shown by the inactive use of the resolving website. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)(by not making an active use of the domain name, the respondent’s inaction satisfies the requirement of Policy ¶ 4(a)(iii)).
Complainant contends that Respondent registered the <capitolmusicgroup.com> domain name at a time immediately following the domain name’s deletion from Complainant’s domain name portfolio, which Complainant asserts is additional evidence of bad faith. The Panel concludes that Respondent demonstrates bad faith registration under Policy ¶ 4(a)(iii) as a result of its registration of the <capitolmusicgroup.com> domain name after Complainant’s registration lapsed.
See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003)(the complainant’s previous registration of the disputed domain name, combined with the respondent’s registration of the same domain name after the complainant failed to renew its registration gave rise to an inference of bad faith registration).
Complainant alleges that Respondent had actual, and at the least, constructive knowledge of Complainant’s rights in the CAPITOL mark when Respondent registered the <capitolmusicgroup.com> domain name. Complainant argues that its USPTO trademark registrations, as well as the fame associated with the mark gave Respondent notice of the mark. The Panel concludes that the constructive knowledge given by Complainant’s USPTO registrations does not satisfy Policy ¶ 4(a)(iii) to find bad faith registration. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."). However, the Panel finds that Complainant’s CAPITOL mark and Complainant’s prominent use of the “Capitol Music Group” d/b/a name gave Respondent actual notice of Complainant’s mark establishing Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitolmusicgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 18, 2013
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