national arbitration forum

 

DECISION

 

The Music Zoo Corporation v. -

Claim Number: FA1305001500499

PARTIES

Complainant is The Music Zoo Corporation (“Complainant”), represented by Brett A. Nadler of Ballon Stoll Bader & Nadler, P.C., New York, USA.  Respondent is - (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <musiczoo.com>, registered with GODADDY.COM, LLC.

 

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.

 

Antonina Pakharenko-Anderson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2013; the National Arbitration Forum received payment on May 28, 2013.

 

On May 20, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <musiczoo.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name.  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 May 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@musiczoo.com.  Also on May 31, 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.

 

A timely Response was received and determined to be complete on June 20, 2013.

 

On June 27, 2013 Complainant filed an Additional Submission, namely beyond the 5 days term following the receipt of the Response, which is found to be untimely under the Supplemental Rule 7, and therefore is not taken into account by the Panel during consideration of this case.

 

On July 2, 2013 the Forum received an Additional Submission from Respondent, which is timely in light of the Supplemental Rule 7.

 

On June 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

  1. Complainant
    1. Policy ¶ 4(a)(i)

                                          i.    Complainant, The Music Zoo Corporation, owns the MUSIC ZOO and THE MUSIC ZOO service marks and trade names, which it used in commerce in 1994 in connection with Complainant’s music store, “The Music Zoo.”

                                         ii.    Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MUSIC ZOO mark (Reg. No. 4,053,988, filed October 7, 2010, registered November 8, 2011) and for the THE MUSIC ZOO mark (Reg. No. 4,053,989, filed October 7, 2010, registered November 8, 2011).

                                        iii.    Respondent’s domain name, <musiczoo.com>, is identical to Complainant’s MUSIC ZOO marks.

    1. Policy ¶ 4(a)(ii)

                                          i.    Respondent has no rights or legitimate interests in respect of the infringing domain name.

                                         ii.    Respondent has never been commonly known by the infringing domain name.

                                        iii.    Beginning on or about November 14, 2012, Respondent set up the infringing domain name to automatically redirect to another URL, <reversedomainnamehijacking.webs.com>.

    1. Policy ¶ 4(a)(iii)

                                          i.    Respondent’s registration and use of the infringing domain name can only be considered as having been in bad faith.

                                         ii.    It appears Respondent was attempting to solicit or entice Complainant, as the owner of the MUSIC ZOO marks, or another potential interested party, to purchase the infringing domain name.

                                        iii.    Respondent has engaged in a pattern of registering domain names in order to prevent the owner of trademarks or service marks such as Complainant from reflecting the mark in a corresponding domain name.

                                       iv.    Respondent has used the infringing domain name in an intentional attempt to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s MUSIC ZOO marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

  1. Respondent
    1. Policy ¶ 4(a)(i)

                                          i.    Complainant claims to have been doing business as “The Music Zoo” since 1994, yet no exhibits are presented to support that claim.

                                         ii.    The domain name <musiczoo.com> is not the same as THE MUSIC ZOO or MUSIC ZOO which are there words and two separate words respectively. There is no space between “music” and “zoo” in the disputed domain name <musiczoo.com>.

    1. Policy ¶ 4(a)(ii)

                                          i.    Respondent registered in good faith the name <musiczoo.com> on December 8, 1998 in conjunction with the website he was involved in creating in 1998 named <outletzoo.com>.

    1. Policy ¶ 4(a)(iii)

                                          i.    Respondent has never offered any of his registered domain names for sale.

                                         ii.    Respondent registered in good faith the name <musiczoo.com> on December 8, 1998 in conjunction with the website he was involved in creating in 1998 named <outletzoo.com>. Before the domain name <musiczoo.com> became locked and Respondent no longer had forwarding control, Respondent redirected <musiczoo.com> to <reversedomainnamehijacking.webs.com> where it must remain until this disputed is finalized and <musiczoo.com> is unlocked by the Registrar.

                                        iii.    Respondent had no control over what ads were placed. Respondent registered in good faith the name <musiczoo.com> on December 8, 1998 in conjunction with the website he was involved in creating in 1998 named <outletzoo.com>.

                                       iv.    Respondent had no knowledge THE MUSIC ZOO existed as the Internet was in its infancy at the time and Complainant had yet to have an online presence until February 2, 1999 when Complainant registered <themusiczoo.com>.

 

C. Additional Submissions

Respondent, in his Additional Submission supports his allegations that the disputed domain was registered in conjunction with the website <outletzoo.com> he was involved in creating in 1998.

 

Respondent further alleges that Complainant had not provided the Panel or Respondent any evidence that THE MUSIC ZOO existed prior to purchase offer of December 12, 2002 provided in Exhibit 1 to the Response.

 

Respondent was unaware of Complainant until original contact when Complainant tried to purchase musiczoo.com from Respondent.

 

Respondent further contends that in 1998 when he registered <musiczoo.com>, he was preparing musiczoo.com to be an international online business with automatic price drops.

 

Respondent further notes that there are sufficient evidences showing his involvement with outletzoo concept and the respective business plan.

 

FINDINGS

Complainant is the owner of a trademark registration with the USPTO for the MUSIC ZOO mark (Reg. No. 4,053,988, filed October 7, 2010, registered November 8, 2011) and for the THE MUSIC ZOO mark (Reg. No. 4,053,989, filed October 7, 2010, registered November 8, 2011) as confirmed by Exhibit 1.

 

Complainant provided evidences of the current use of the marks on its website <themusiczoo.com> (see Exhibit 2).

 

Respondent registered its domain <musiczoo.com> on December 8, 1998. At the same time, Respondent is also a registrant for several other domain names comprising the “zoo” element, also registered on the same date as evidenced by the results of the reverse WHOIS search provided in Exhibit 6 to the Complaint.

 

On May 30, 2002 Complainant’s Counsel served a letter to Respondent alleging cybersquatting by Respondent and asking for a discussion of this matter.

 

The evidences provided by Respondent show that the “musiczoo” name was a part of the business concept developed no later than January 1999 and related to the use of the zoo name in online business commerce benefiting from cross-selling between different categories of goods.

 

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’s registration for the MUSIC ZOO mark (Reg. No. 4,053,988, filed October 7, 2010, registered November 8, 2011) and for the THE MUSIC ZOO mark (Reg. No. 4,053,989, filed October 7, 2010, registered November 8, 2011) before the USPTO confers rights under Policy ¶ 4(a)(i) dating back to October 7, 2010, which is the filing date of the respective trademark applications with the USPTO. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).

 

At the same time, the Panel notes that Complainant’s marks were registered after Respondent’s registration of the <musiczoo.com> domain name, which requires looking into the issue of common law rights in these marks which would pre-date the date of domain registration. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

 

The only evidence on the record of the case supporting the allegation in respect of the date of first use in commerce are the copies of the respective USPTO registrations (See Complainant’s Exhibit 1). At the same time, no evidence is provided in support of its accrual of common law rights in the marks beyond its claimed first use of the marks in commerce.

 

Particularly, Complainant has failed to provide evidence of the extent of its use of the MUSIC ZOO or THE MUSIC ZOO marks in commerce outside of Complainant’s USPTO registrations, including evidence supporting the assertion that Complainant has made continuous use of the marks dating back to 1994. In view of this, the Panel does not find that Complainant has established common law rights in the MUSIC ZOO or the THE MUSIC ZOO mark dating back to 1994 for the purposes of Policy ¶ 4(a)(i). See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark).

 

Respectively, Complainant holds rights to the trademarks MUSIC ZOO and the THE MUSIC ZOO, dating back to October 7, 2010.

 

The Panel finds that Respondent’s domain name, <musiczoo.com>, is identical to Complainant’s MUSIC ZOO marks since Respondent’s domain name uses Complainant’s MUSIC ZOO mark in its entirety, while simple removal of the space and adding the generic top-level domain (“gTLD”) “.com.” is inconsequential to a Policy ¶ 4(a)(i) determination. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

 

Therefore, Respondent’s <musiczoo.com> is identical to Complainant’s MUSIC ZOO mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests/Registration and Use in Bad Faith

 

Complainant has the onus of making a prima facie case that Respondent lacks rights and legitimate interests under the Policy. The circumstances of this case make it appropriate to assess the final elements of the Policy together.

 

The submitted evidence shows that Respondent registered the name <musiczoo.com> on December 8, 1998, namely more than ten years prior to the date on which Complainant’s trademarks were applied for registration, in conjunction with the website he was involved in creating in 1998 named <outletzoo.com>. Respondent asserts that it has used the domain name in connection with several other zoo names: <outletzoo.com>, <pczoo.com>, and <softwarezoo.com>, among others, which were part of a business plan dated January 1999 outlining the plans for the <outletzoo.com> name. Respondent argues that its other zoo domain names have survived approximately 15 years and have become pay-per-click domains while Respondent fine tunes the new business plan of <musiczoo.com>

 

The Panel thus finds that Respondent is using the disputed domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods and services. See LifeWatch Holding Corp. v. Network Earth, Inc., FA 96301 (Nat. Arb. Forum Jan. 26, 2001) (finding that Respondent could establish rights or legitimate interests in the <lifewatch.com> domain name where Complainant’s identical LIFEWATCH mark was composed of generic and descriptive terms, Respondent provided evidence that it was preparing to launch multiple websites providing a variety of “watch” services, and Respondent’s domain name provided a service unrelated to Complainant); see also McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”) and  (holding that “Respondent has used the disputed domain name in connection with the bona fide goods and services in the nature of pay-per-click ads which further establishes its legitimate interest”).

 

Thus, Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

 

Moreover, the date of registration of the domain and the subsequent registration of the trademarks does not warrant a finding of bad faith registration under the Policy ¶ 4(a)(iii). Particularly, Complainant filed for registration of its MUSIC ZOO and THE MUSIC ZOO marks in October of 2010, therefore Respondent could not have registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).

 

Furthermore, Respondent might not have actual knowledge of Complainant’s mark at the time and until Complainant had its online presence on February 2, 1999 when it registered its domain <themusiczoo.com>, which does not warrant for bad faith finding under Policy ¶ 4(a)(iii). See It Takes 2 v. C.,J., FA 384923 (Nat. Arb. Forum Feb. 15, 2005) ("[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name, the Panel finds Complainant has failed to establish registration in bad faith.").

 

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <musiczoo.com> domain name REMAIN WITH Respondent.

 

 

Antonina Pakharenko-Anderson, Panelist

Dated:  July 24, 2013

 

 

 

 

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