Headwaters, Inc. v. soundoasis.com Private Registrant / DreamHost Web Hosting
Claim Number: FA1307001509513
Complainant is Headwaters, Inc. (“Complainant”), represented by John Di Giacomo of Revision Legal, Michigan, USA. Respondent is soundoasis.com Private Registrant / DreamHost Web Hosting (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <soundoasis.com>, registered with New Dream Network, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2013; the National Arbitration Forum received payment on July 12, 2013.
On July 22, 2013, New Dream Network, LLC confirmed by e-mail to the National Arbitration Forum that the <soundoasis.com> domain name is registered with New Dream Network, LLC and that Respondent is the current registrant of the name. New Dream Network, LLC has verified that Respondent is bound by the New Dream Network, 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 July 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@soundoasis.com. Also on July 22, 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 August 12, 2013.
On August 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant first used the SOUND OASIS mark in commerce on September 15, 1998.
2. Complainant owns the SOUND OASIS mark through its registration with the United States Patent and Trademark Office (“USPTO”). (Reg. No. 2,421,852 filed July 27, 1998; registered January 16, 2001).
3. Respondent’s <soundoasis.com> domain name is identical to Complainant’s mark.
4. Complainant has acquired common law trademark rights in the SOUND OASIS mark.
5. Respondent did not make a demonstrable preparation to use the disputed domain name prior to notice of this dispute.
6. Respondent’s use of the disputed domain name directly competes with Complainant’s use.
7. Respondent is not commonly known by the SOUND OASIS trademark and has not acquired rights in the name.
8. Respondent is misleadingly diverting consumers to its own website for commercial gain.
9. Respondent registered the disputed domain name 14 years after Complainant’s first use of the SOUND OASIS trademark and 11 years after Complainant registered the SOUND OASIS trademark with the USPTO.
10. Respondent offered to sell the <soundoasis.com> domain name to Complainant for an excessive out-of-pocket cost.
11. Respondent had actual and constructive notice of Complainant’s trademark with the USPTO.
12. Respondent’s use of the disputed domain name disrupts Complainant’s business and attracts Internet users for commercial gain.
13. Respondent is commercially benefitting from its use of the <soundoasis.com> domain name.
14. Respondent’s act of disabling the competing links does not negate a finding that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
1. Respondent registered the <soundoasis.com> domain name on July 8, 1999, before Complainant’s trademark was established on January 16, 2001.
2. Respondent currently uses the <soundoasis.com> domain name for the sale of recorded music.
Complainant holds trademark rights for the SOUND OASIS mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <soundoasis.com> domain name, and that Respondent registered and uses the domain name 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 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 alleges that it is a world leading provider of sound therapy systems and has provided sound therapy systems and expansion cards under the SOUND OASIS trademark since 1998. Complainant contends that it owns the SOUND OASIS trademark through its registration with the USPTO as well as through its common law trademark rights. Complainant argues that its first use of the SOUND OASIS trademark was on September 15, 1998. Complainant provides the Panel with evidence of its registration with the USPTO (Reg. No. 2,421,852 filed July 27, 1988; registered January 16, 2001). Complainant alleges that its mark is well known across the world and its products have been sold in 49 countries internationally. Complainant provides evidence of its products being featured in media outlets such as; ABC News, WGN Chicago, The Daily Telegraph, Yahoo News, Travel + Leisure Magazine, SkyMall, and Amazon.com. Registration with a recognized authority is sufficient to indicate rights in a given mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Moreover, a complainant’s rights in a trademark through registration of the mark with the USPTO date back to the filing date of the trademark application. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). The Panel concludes that Respondent has rights in the SOUND OASIS mark under Policy ¶ 4(a)(i) dating back to July 27, 1998.
Complainant argues that Respondent’s <soundoasis.com> domain name is identical to Complainant’s SOUND OASIS trademark. Respondent eliminates the space between the words and adds the generic top-level domain (“gTLD”) “.com” as a suffix. These variations are insufficient to differentiate a domain name from a given mark. See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). The Panel concludes that Respondent’s <soundoasis.com> domain name is identical to Complainant’s SOUND OASIS trademark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <soundoasis.com> domain name under Policy ¶ 4(c)(ii). Complainant asserts that Respondent is not commonly known by the disputed domain name, but rather that Respondent is known by the name “soundoasis.com Private Registrant” as indicated by the WHOIS information. A respondent is not commonly known by a disputed domain name even when it appears to be related by information present in the WHOIS information when all other information and allegations contradict this suggestion. See 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 asserts that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent is using the <soundoasis.com> domain name to misleadingly divert consumers to its own website for commercial gain. Complainant contends that Respondent is using Complainant’s SOUND OASIS trademark to provide goods and services in direct competition with Complainant. The screen shots of Respondent’s website feature Complainant’s SOUND OASIS trademark as well as advertisements for sound therapy machines. The resolving website features links such as “sound sleep Canada,” “Natural Tinnitus Relief,” and “Perfect Sound Masking CDs.” Using a confusingly similar domain name to resolve to a website featuring competing links and advertisements and commercially profiting is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”) The Panel therefore concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policies ¶4(c)(i) or Policy ¶4(c)(iii).
Complainant further asserts that Respondent offered to sell the disputed domain name to Complainant for $25,000. A respondent’s willingness to sell a domain name to a complainant suggests that the respondent lacks rights or legitimate interests in the disputed domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name). Because the Panel agrees that an offer to sell a domain name demonstrates disinterest in retaining the domain name, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent acquired the <soundoasis.com> domain name for the purpose of selling it to Complainant. Complainant contends that after Respondent registered the <soundoasis.com> domain name, Respondent offered to sell it to Complainant for $25,000. A respondent’s offer to sell a domain name to a complainant for an excessive out-of-pocket expense indicates bad faith registration and use under Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Therefore, the Panel finds that Respondent’s attempt to sell the disputed domain name to Complainant for $25,000 indicates bad faith use and registration under Policy ¶ 4(b)(i).
Complainant argues that Respondent has registered and is using the <soundoasis.com> domain name to disrupt Complainant’s business by competing with it. Respondent’s resolving website features products such as Sound Oasis sound therapy machines and click through links including, “Sound Oasis Products,” “Perfect Sound Masking CDs” and “White Noise.” Using an identical disputed domain name to resolve to a website being used to disrupt and compete with a complainant’s business is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”) The Panel further concludes that Respondent is using and has registered the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the SOUND OASIS mark. Due to the fame of Complainant's mark, and the fact that Respondent registered the domain name only several months after Complainant began actively using the mark in commerce, the Panel concludes that Respondent had actual knowledge of the mark. Thus, the Panel holds that 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <soundoasis.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 3, 2013
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