Guitar Center, Inc. v. CDN Properties Incorporated
Claim Number: FA1307001510604
Complainant is Guitar Center, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, United States. Respondent is CDN Properties Incorporated (“Re-spondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <musiciansfreind.com>, registered with INTERNET.BS CORP.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 19, 2013; the National Arbitration Forum received payment on July 19, 2013.
On July 24, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <musiciansfreind.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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 bil-ling contacts, and to postmaster@musiciansfreind.com. Also on July 24, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses 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 August 21, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 operates over 200 Guitar Center stores across the United States, and it is the world’s largest retailer of musical instruments and professional audio and recording equipment.
Complainant acquired e-commerce catalog company Musician’s Friend in 1999.
Complainant is the owner of the <musiciansfriend.com> domain name, which has been visited by over 1.2 million Internet users.
Complainant holds registrations for the MUSICIAN’S FRIEND service mark, on file with the United States Patent and Trademark Office (“USPTO”), (including Reg. No. 2,412,387, Registered December 12, 2000).
Respondent first registered the <musiciansfreind.com> domain name on Decem-ber 28, 2001.
Respondent’s <musiciansfreind.com> domain name is confusingly similar to Complainant’s MUSICIAN’S FRIEND mark.
Respondent has not been commonly known by its <musiciansfreind.com> domain name.
Complainant has not given Respondent permission to use its MUSICIAN’S FRIEND mark in a domain name.
Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent uses the disputed domain to promote hyperlinks to third-party web-sites, some of which are in direct competition with Complainant’s musical instru-ment products and services.
Respondent does not have any rights to or any legitimate interests in the dis-puted domain name.
Respondent’s use of the domain name to divert Complainant’s potential cus-tomers, for Respondent’s commercial gain, disrupts Complainant’s business.
Respondent has engaged in a pattern of domain name registrations made in bad faith, which is demonstrated by multiple adverse UDRP decisions against it.
Respondent’s domain name is an instance of typo-squatting.
Respondent knew of Complainant and its MUSICIAN’S FRIEND mark when it registered the contested domain name.
Respondent has registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the MUSICIAN’S FRIEND service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. SeeTrip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that a UDRP complainant’s trademark regis-tration with the USPTO was adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Panama). See, for example, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (find-ing that it is irrelevant whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <musiciansfreind.com> domain name is confusingly similar to Complainant’s MUSICIAN’S FRIEND service mark. The domain name differs from its MUSICIAN’S FRIEND mark merely by eliminating from the mark the apostrophe and the space between its terms, inverting the letters “i” and “e” in the word “friend” and appending the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002):
The misspelling of a … mark does not diminish the confusingly sim-ilar nature between the mark[ ] and the disputed domain name[ ].
Also on the point see Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006), the panel there finding that “merely by misspelling” the complainants’ mark, a respondent did not sufficiently differ-entiate the <privelage.com> domain name from the complainant’s PRIVILEGE mark under Policy ¶ 4(a)(i).
Further see Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003):
Punctuation and spaces between words are not significant in deter-mining the similarity of a domain name and a mark because punct-uation and spaces are not reproducible in a domain name.
Finally see Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:
a generic top-level domain, such as ‘.com,’ … is required in domain names. Therefore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <musiciansfreind.com> domain name, and that Complainant has never authorized Respondent to use its MUSICIAN’S FRIEND mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “CDN Properties Incorporated,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested do-main name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), where a panel concluded that the respondent was not commonly known by a disputed domain name where there was no evidence in the record, including the relevant WHOIS information, sug-gesting that that respondent was commonly known by the do-main name. See also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), a panel there finding under Policy ¶ 4(c)(ii) that a respondent failed to establish rights to or legitimate interests in a disputed domain name where that respondent was not authorized to register domain names featuring a UDRP complainant’s mark, and that Respondent failed to submit evidence that it was commonly known by the domain name.
We next observe that Complainant asserts that Respondent’s use of the domain name <musiciansfreind.com> is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), in that Respondent uses the domain name to promote hyperlinks to third-party websites, some of which offer products and services in direct competition with Complainant’s business. In the circumstances here presented, we may comfortably presume that Respondent profits from this use of the domain name. This employment of the domain is neither a bona fide offering of goods or ser-vices under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a domain name derived from a UDRP complainant’s mark and used to attract Internet users to Respondent’s own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.
Therefore the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has shown a pattern of registration of disputed domain names, as evidenced by a record of three prior UDRP proceedings in which it has been found to have registered domain names in bad faith. Under Policy ¶ 4(b)(ii), this pattern stands as evidence of its bad faith in the registration and use of the instant domain name. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where a respondent had been subject to several UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
We are also convinced by the evidence that the website resolving from Respond-ent’s <musiciansfreind.com> domain name displays pay-per-click links that pro-mote the sale of products in competition with the business of Complainant. This disrupts Complainant’s business, and it therefore demonstrates bad faith regis-tration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), where a panel found that a respondent’s use of a domain name derived from a UDRP complain-ant’s mark and resolving to a website that diverted Internet users to the websites of that complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii).
Finally, it appears from the record that the <musiciansfreind.com> domain name constitutes an instance of typo-squatting, which is the creation of a domain name by deliberately misspelling the mark of another in order to attract Internet traffic to the resolving website by taking advantage of the typographical errors made by consumers seeking to enter the identity of a mark holder in a web browser. Un-der Policy ¶ 4(a)(iii), typo-squatting itself establishes bad faith registration and use of a domain name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typo-squatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <musiciansfreind.com> domain name be forth-with TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 3, 2013
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