Prosound Communications, Inc. v. H.E.Designs Inc.
Claim Number: FA1303001488965
Complainant is Prosound Communications, Inc. (“Complainant”), represented by Katherine Bond of Sheldon Mak & Anderson, California, USA. Respondent is H.E.Designs Inc. (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xoticguitar.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2013; the National Arbitration Forum received payment on March 7, 2013.
On March 8, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <xoticguitar.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2013 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@xoticguitar.com. Also on March 11, 2013, 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 April 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Trademark/Service Mark Information: ICANN Rule 3(b)(viii). The following Registered Trademark is owned by Complainant Prosound Communications and is in use by Complainant Prosound Communications in connection with its ongoing business activities. The “xoticguitar” domain name as well as the text and images used at the “www.xoticguitar.com” website are identical to, tarnish and dilute the following mark:
U.S. Trademark Registration No. 3,688,497
Mark: XOTIC
IC Class 015
Goods and Services: electric guitars and electric bass guitars; sound effects pedal for musical instruments
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The domain name is identical to a trademark or service mark to which the Complaintant has rights.
Complainant Prosound Communications, Inc. (hereinafter “Prosound”) is a corporation that is engaged in, among other things, the production, sale and distribution of music equipment, namely guitars. Complainant Prosound has been in business for over 25 years and operates the website www.prosoundcommunications.com and www.xotic.us.
Complainant Prosound is the owner of several well-known trademarks, including the word mark XOTIC (the "XOTIC Mark"), which is the subject of U.S. Trademark Reg. No. 3,688,497 (the “497 Registration”). Additionally, Complainant Prosound had a prior federal registration for XOTIC GUITARS, U.S. Registration No. 2,141,823, which was registered in 1998. As evidenced by both trademark registrations, since at least as early as 1995, Complainant Prosound began using the XOTIC Mark in commerce to identify its goods and to distinguish them from the goods and services made and sold or offered by others by, among other things, prominently displaying the mark on its products, on its Internet website and on advertising materials promoting its goods.
The presence of the XOTIC Mark on Complainant Prosound’s goods, on its website and on advertising for Complainant Prosound’s goods indicates to the public that goods and services provided under the XOTIC Mark originate with, or are provided by, Complainant Prosound. Complainant Prosound adheres to strict quality standards in the manufacture of its music instruments. Thus, the public has come to associate the XOTIC Mark with musical instruments of the highest quality. As a consequence of all of the foregoing, the XOTIC Mark has attained considerable value and the goodwill associated with them represents a valuable business asset.
[b.] The Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint.
Respondent H.E. Designs, Inc. (hereinafter “H.E. Designs”) operates a website at the offending domain, www.xoticguitar.com. The homepage starts by confusingly identifying itself as “Xotica Guitars” and “Synth Access Elecro Acoustic” with images of guitars. Based on the WhoIs information, in 2006, Respondent H.E. Designs registered the website www.xoticguitar.com (“the website”) which contains in its entirety Complainant Prosound’s registered XOTIC Mark with the additional term “guitar”. The domain name was registered years after Complainant Prosound had begun using the XOTIC Mark in commerce and after Prosound had received its first trademark registration for XOTIC GUITARS.
The Respondent was unknown because of a privacy setting for the WhoIs listing. Complainant Prosound sent a cease and desist letter on January 18, 2013 to DomainsByProxy in order to seek the identity and contact information for the actual operator of the infringing website. One important reason for the registrant’s name and contact information to be public is to allow owners of intellectual property to communicate with, and enforce their rights against, those who pirate or otherwise infringe intellectual property. Only after retaining legal counsel was Complainant able to attempt to communicate with the Respondent.
The offending website www.xoticguitar.com is set up as a pseudo-type business website purporting to provide information about “Xotica” guitars. Additionally, the website discusses other guitars and manufacturers, past notices of intellectual property infringement issues, and links to other websites such as YouTube®. The website has no affiliation with Complainant Prosound or any business entities or persons associated with Complainant Prosound. Further, the poor quality of the website is not representative of Complainant Prosound or XOTIC guitars.
The website’s use of the XOTIC Mark in interstate commerce constitutes an infringement of Complainant Prosound’s rights in the trademark, developed through Complainant Prosound’s use of the trademark in interstate commerce in association with the sale of guitars and the US trademark registration.
[c.] The domain name should be considered as having been registered and being used in bad faith.
The only purpose for purchasing this domain and creating this website, using the XOTIC Mark was to mislead the public into believing that the website was being sponsored or was affiliated with Complainant Prosound and to direct traffic away from Complainant Prosound and toward the website. Respondent H.E. Designs has intentionally attempted to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant Prosound’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product on the website.
The XOTIC Mark is owned by Complainant Prosound and Complainant Prosound has continuously used the mark in commerce since at least as early as 1995. Complainant Prosound is informed and it believes that the acts have been undertaken with full knowledge of Complainant Prosound’s rights in and to the XOTIC Mark and the willful and deliberate intent to cause confusion, mistake and deception among members of the consuming public and to trade on the goodwill associated with the XOTIC Mark.
After receiving the letter DomainsByProxy attempted to contact Respondent regarding the allegations in the letter. Despite being listed as the registrant of the domain name, Respondent failed to respond to the cease and desist letter, failed to identify any other entity as owning or controlling the infringing website, and failed to shut down the website.
Taking into consideration (i) the high degree of distinctiveness of the XOTIC Mark, (ii) the fact that Complainant Prosound has been making exclusive use of the XOTIC Mark in connection with guitars for at least 18 years, (iii) the degree of consumer recognition of the XOTIC Mark as a consequence of Complainant Prosound’s extensive use and promotion of this mark over the past 18 years, (iv) the intention of Respondent H.E. Designs in adopting and using the XOTIC Mark, and (v) the actual association in the minds of consumers between Complainant Prosound’s XOTIC Mark and Respondent H.E. Designs use of the XOTIC Mark has caused or, in the alternative, is likely to cause dilution by blurring of the XOTIC Mark.
The above-described acts of Respondent H.E. Designs constitute trademark infringement as well as unfair competition in that Respondent H.E. Designs is attempting to pass off the website, products and services as those of Complainant Prosound or having some affiliation and/or association with Complainant Prosound. Such acts have caused and will continue to cause irreparable and immediate injury to Complainant Prosound for which Complainant Prosound has no adequate remedy at law.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 Prosound Communications, Inc. claims it is engaged in, among other things, the production, sale, and distribution of guitars. Complainant has been in business for over 25 years and operates the website <prosoundcommunications.com> and < xotic.us>. Complainant owns trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the XOTIC mark (Reg. No. 3,688,497, registered September 29, 2009). Complainant’s registration of the XOTIC mark with the USPTO sufficiently establishes its rights in the mark under Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶4(a)(i)).
Complainant claims Respondent’s <xoticguitar.com> domain name is identical to a trademark or service mark to which Complainant has rights. Respondent’s domain name contains Complainant’s mark in its entirety with the additional descriptive term “guitar.” The term “guitar” describes Complainant’s business (and use of the mark). The addition of a descriptive term does not adequately distinguish Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). The addition of the generic top-level domain (“gTLD”) “.com” to the domain name must be disregarded because a domain name must contain either a gTLD or a ccTLD. Adding the gTLD to the domain name does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Respondent’s <xoticguitar.com> domain name is confusingly similar to Complainant’s XOTIC mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 argues Respondent’s website has no affiliation with Complainant or any business entities or persons associated with Complainant. The current WHOIS information lists “H.E.Designs Inc.” as the registrant of the disputed domain name. Respondent failed to provide evidence it is commonly known by the disputed domain name. Based upon the now revealed registered name, there is no similarity between the owner’s name and the domain name, Therefore, the Panel concludes Respondent is not commonly known by the <xoticguitar.com> domain name under Policy ¶4(c)(ii). See 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 claims the offending website <xoticguitar.com> is set up as a pseudo-type business website purporting to provide information about “Xotica” guitars. Complainant contends the website also discusses other guitars and manufacturers, past notices of intellectual property infringement issues, and links to other websites such as YouTube. Respondent’s disputed domain name resolves to a competing website titled “Xotica Synth Access And Electro Acoustic Guitars.” The Panel finds Respondent’s use of the disputed domain name to provide a competing use is not a bona fide offering of goods and services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See 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).
Furthermore, Respondent purchased the disputed domain name by using a privacy service. As this Panel has repeatedly held, Respondent cannot acquire any rights to the disputed domain name in a commercial context while it is held in another’s name. The disputed domain name’s true owner was not revealed until this proceeding was commenced.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims the only purpose for purchasing this disputed domain name and creating this website was to mislead the public into believing the website was sponsored or was affiliated with Complainant and to direct traffic away from Complainant and toward the website. The Panel notes Respondent’s disputed domain name resolves to a competing website titled “Xotica Synth Access And Electro Acoustic Guitars.” It appears Respondent is attempting to pass off the website, products and services as those of Complainant or having some affiliation and/or association with Complainant. Respondent’s competing use of the disputed domain name shows bad faith use and registration under Policy ¶4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant argues Respondent actually knew about Complainant’s rights, when taking into consideration (i) the high degree of distinctiveness of the XOTIC mark, (ii) the fact that Complainant has been making exclusive use of the XOTIC mark in connection with guitars for at least 18 years, (iii) the degree of consumer recognition of the XOTIC mark as a consequence of Complainant’s extensive use and promotion of this mark over the past 18 years, (iv) the intention of Respondent in adopting and using the XOTIC mark, and (v) the actual association in the minds of consumers between Complainant’s XOTIC mark and Respondent’s use of the XOTIC mark. Based upon these uncontroverted claims, this Panel is willing to find Respondent had actual knowledge of the mark and Complainant's rights. Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Finally, registering a disputed domain name by using a privacy services raises the rebuttable presumption of bad faith registration and use in a commercial context. Respondent has done nothing to rebut this presumption. This alone is sufficient to support a finding of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <xoticguitar.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, April 22, 2013
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