Guitar Center, Inc. v. Tangwangzhongtuo Technology Beijing Co., Ltd
Claim Number: FA1307001512054
Complainant is Guitar Center, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Tangwangzhongtuo Technology Beijing Co., Ltd (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guitarcebter.com>, <guitarcenrer.com>, <guitarcewnter.com>, <guitasrcenter.com>, <guitracenter.com>, <guitrarcenter.com>, <muaiciansfriend.com>, <musiciansfreiend.com>, <musiciansfriedn.com>, and <musiciansfriens.com>, registered with Guangzhou Ming Yang Information Technology Co., Ltd.
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 29, 2013; the National Arbitration Forum received payment on July 30, 2013. The Complaint was submitted in both English and Chinese.
On August 1, 2013, Guangzhou Ming Yang Information Technology Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <guitarcebter.com>, <guitarcenrer.com>, <guitarcewnter.com>, <guitasrcenter.com>, <guitracenter.com>, <guitrarcenter.com>, <muaiciansfriend.com>, <musiciansfreiend.com>, <musiciansfriedn.com>, and <musiciansfriens.com> domain names are registered with Guangzhou Ming Yang Information Technology Co., Ltd and that Respondent is the current registrant of the names. Guangzhou Ming Yang Information Technology Co., Ltd has verified that Respondent is bound by the Guangzhou Ming Yang Information Technology Co., Ltd 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 August 12, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 3, 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@guitarcebter.com, postmaster@guitarcenrer.com, postmaster@guitarcewnter.com, postmaster@guitasrcenter.com, postmaster@guitracenter.com, postmaster@guitrarcenter.com, postmaster@muaiciansfriend.com, postmaster@musiciansfreiend.com, postmaster@musiciansfriedn.com, and postmaster@musiciansfriens.com. Also on August 12, 2013, the Chinese language 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 September, 10, 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. 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MUSICIAN’S FRIEND and GUITAR CENTER marks. Respondent’s domain names are confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <guitarcebter.com>, <guitarcenrer.com>, <guitarcewnter.com>, <guitasrcenter.com>, <guitracenter.com>, <guitrarcenter.com>, <muaiciansfriend.com>, <musiciansfreiend.com>, <musiciansfriedn.com>, and <musiciansfriens.com>, domain names, and that Respondent registered and uses the domain names 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.
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 claims that it uses the GUITAR CENTER mark to sell guitars and other musical instruments such as drums and keyboards, along with related products. Complainant registered the GUITAR CENTER mark with the USPTO (Reg. No. 1,290,481 registered August 14, 1984). A trademark need not be registered in the same location as a respondent. Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001). Thus, the Panel holds that Complainant has established rights in the GUITAR CENTER mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant uses the MUSICIAN’S FRIEND mark to offer retail services and catalog services for music-related goods and services. Complainant registered the MUSICIAN’S FRIEND mark with the USPTO as well (Reg. No. 1,812,560 registered December 21, 1993). For the foregoing reasons the Panel that Complainant has established rights in the MUSICIAN FRIEND mark so as to meet the required showing under Policy ¶ 4(a)(i).
Complainant next argues that Respondent has registered these various domain names, all of which merely affix the gTLD “.com” and make single character alterations to the mark, either through adding a new letter into the mark or by replacing one of the mark’s letters with an indiscriminate character. With respect to the GUITAR CENTER mark, the <guitarcebter.com>, <guitarcenrer.com>, <guitarcewnter.com>, <guitasrcenter.com>, <guitracenter.com>, and <guitrarcenter.com> domain names all add the gTLD “.com,” remove the mark’s spacing, and make a unique single-character modification to the mark. The deletion of spacing and the addition of the gTLD are irrelevant under the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Whenthe only substantive difference between a trademark and a domain name is the modification, addition, or transposition of a single-character or letter, the domain name is confusingly similar to the underlying mark. See, e.g., Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel therefore agrees that the changes made in forming the <guitarcebter.com>, <guitarcenrer.com>, <guitarcewnter.com>, <guitasrcenter.com>, <guitracenter.com>, and <guitrarcenter.com> domain names do nothing to defeat the confusing similarity between the domain names and the GUITAR CENTER mark under Policy ¶ 4(a)(i).
With respect to the <muaiciansfriend.com>, <musiciansfreiend.com>, <musiciansfriedn.com>, and <musiciansfriens.com> domain names, all of these domain names include the deletion of the mark’s spacing and of the mark’s apostrophe, as well as the addition of the gTLD “.com.” Each domain name either replaces a letter in the mark with a nearby letter (on a QWERTY keyboard), incorporates a random letter into the mark, or transposes two letters within the mark. Respondent’s changes in regards to spacing, the apostrophe, and the gTLD are wholly irrelevant to this Policy analysis. 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 determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). As noted above, domain names that vary only slightly from a registered trademark are confusingly similar under Policy ¶ 4(a)(i). Thus the Panel finds that the <muaiciansfriend.com>, <musiciansfreiend.com>, <musiciansfriedn.com>, and <musiciansfriens.com> domain names are confusingly similar to the MUSICIAN’S FRIEND mark 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 names. 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 contends that Respondent has not been commonly known by these domain names, and that Complainant has not otherwise authorized or licensed Respondent’s use of the MUSICIAN’S FRIEND or GUITAR CENTER marks in domain names. The WHOIS information for all of these domain names lists “Tangwangzhongtuo Technology Beijing Co., Ltd” as the registrant. When there is no evidence to even suggest that a respondent could potentially be known by the domain names in dispute, Policy ¶ 4(c)(ii) applies. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel agrees that Respondent is not known by the domain names at issue in this matter under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses these domain names to redirect Internet users to a website that features generic links to third-party websites, some of which are operated by Complainant’s competitors. Complainant contends that Respondent cannot appropriate confusingly similar domain names in such a manner and claim a bona fide offering of goods or services. All of the domain names resolve to websites that promote an array of hyperlinks to various related and unrelated goods. In Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), the panel examined a disputed domain name’s website, which consisted entirely of generic hyperlink advertisements, and concluded there was no basis to find that such a use could be bona fide without some other evidence to the contrary. The Panel agrees that Respondent is not providing a Policy ¶ 4(a)(i) bona fide offering of goods or services, or a Policy ¶ 4(a)(iii) legitimate noncommercial or fair use through the present use of the domain names.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent is unfairly disrupting Complainant’s legitimate business through the use of these confusingly similar domain names for purposes of promoting competitive goods. All of the domain names include various hyperlinks to the kinds of goods and services that Complainant provides: the sale of musical instruments and sheet music, or the provision of music lessons. The presence of hyperlinks to competitive businesses is a sufficient ground for concluding that a respondent registered a confusingly similar domain name for an unfair and disruptive purpose. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Accordingly, the Panel finds that all of the domain names here were registered in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant next argues that Respondent promotes a likelihood that Internet users will confuse Complainant as the source or origin of the competing and unrelated hyperlink advertisements solicited through the domain names’ websites. Complainant claims that Respondent likely generates advertising profits through the hosting of such advertisements. The Panel agrees that the domain names are indeed used to promote hyperlink advertisements, some of which send Internet users to competing businesses. In TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), the panel held that a likelihood of confusion exists when a respondent uses a confusingly similar domain name to profit off of the chance that confused Internet users will associate the hyperlinks on the domain name’s website with the complainant and its mark. The Panel agrees that all of the domain names were registered by Respondent to take advantage of the likelihood that Internet users will confuse Complainant as the source or origin of the hyperlinked products and services, and thus Respondent has acted in Policy ¶ 4(b)(iv) bad faith.
Complainant suggests that Respondent’s typosquatting is in itself evidence of bad faith and that the domain names were formed through a misspelling of the domain names. In Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), the panel found that when domain names appear to be common misspellings of a trademark, the misspelling of the mark alone can provide a basis for finding bad faith registration under Policy ¶ 4(a)(iii). The Panel agrees.
Complainant claims that Respondent surely had actual knowledge of Complainant’s rights in the trademarks at the time the domain names were registered. Complainant believes that Respondent would not otherwise register ten domain names that merely introduce spelling errors into Complainant’s trademarks. The Panel agrees that the record supports Complainant’s contention that Respondent had actual knowledge of Complainant’s trademarks which establishes Policy ¶ 4(a)(iii) bad faith registration. See 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guitarcebter.com>, <guitarcenrer.com>, <guitarcewnter.com>, <guitasrcenter.com>, <guitracenter.com>, <guitrarcenter.com>, <muaiciansfriend.com>, <musiciansfreiend.com>, <musiciansfriedn.com>, and <musiciansfriens.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 20, 2013
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