Music Makers Holdings LLC v. Pauline Cooper / Bach to Rock Music School
Claim Number: FA1312001534699
Complainant is Music Makers Holdings LLC (“Complainant”), represented by Nate Garhart of Cobalt, LLP, California, USA. Respondent is Pauline Cooper / Bach to Rock Music School (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bachtorock.co>, registered with GoDaddy.com, 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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2013; the National Arbitration Forum received payment on December 16, 2013.
On December 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bachtorock.co> 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 December 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2014 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@bachtorock.co. Also on December 19, 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 January 8, 2014.
On January 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton 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. Policy ¶ 4(a)(i)
a. Complainant has made extensive and prominent use of the BACH TO ROCK mark for over 23 years. Complainant owns various trademarks incorporating the terms BACH TO ROCK in connection with, among other things, its music school services, and has invested significantly in those marks. Over 2,300 students participate in Complainant’s BACH TO ROCK-branded classes weekly.
b. Complainant holds multiple United States Patent and Trademark Office (“USPTO”) trademark registrations for the BACH TO ROCK mark (e.g., Reg. No. 4,075,612 filed January 15, 2008; registered December 27, 2011).
c. Respondent’s <bachtorock.co> domain name wholly incorporates Complainant’s BACH TO ROCK mark without any differentiating characteristics, and as such is identical to the mark in which Complainant has rights.
2. Policy ¶ 4(a)(ii)
a. Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent has no United States registered trademark or service mark and no trademark or service mark application or registration anywhere in the world for any mark including the term BACH TO ROCK.
ii. Respondent is not a licensee of Complainant.
iii. Respondent has chosen to ignore Complainant’s suggested avenue for settlement, evidencing Respondent’s attempt to benefit from likely confusion.
3. Policy ¶ 4(a)(iii)
a. Respondent registered the <bachtorock.co> domain name after becoming aware of Complainant’s services and/or that the “.com” domain name, i.e., <bachtorock.com>, was already taken. Because Respondent registered the domain name under the “.co” TLD, Respondent was at least constructively aware of Complainant’s rights in the BACH TO ROCK mark and was in fact aware of Complainant’s use of the mark.
b. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s BACH TO ROCK mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s services of the same type and nature as those of Complainant.
B. Respondent
1. Respondent has a legitimate interest in the disputed domain name.
a. The domain name is being used for a bona fide business which has operated on commercial property since 2005. Respondent is a sole proprietor whose business provides music lessons to less than 150 students.
b. The predecessor domains that were being used were <bachtorockin.com>, registered in 2006, and <bach2rock.org>, registered in 2008. Respondent then registered the <bachtorock.co> domain name on December 27, 2010.
c. Respondent’s domain name is in no way designed to draw traffic away from Complainant’s website. Complainant and Respondent are not competitors.
i. Complainant does business in the Northeast and California; Respondent only does business in Sugar Land, Texas.
d. Respondent has used the name “Bach to Rock” since 2005, and filed an Assumed Name Record (“D/B/A”) for the name “Bach to Rock Music School” with the county of Fort Bend, Texas on August 16, 2004. See Respondent’s Exhibit B.
e. The name “Bach to Rock” has been used by other music schools throughout the country, and the name itself does not describe a specific product or service. Complainant’s use of the name is not widespread or famous, and consumers within Respondent’s geographic market area are not familiar with Complainant.
f. Respondent advertises its services in several publications in Fort Bend County, Texas, and surrounding cities. See Respondent’s Exhibits C & D. Respondent also supports local non-profit organizations and public schools.
2. The <bachtorock.co> domain name was not registered, and is not being used, in bad faith.
a. Respondent does not seek to create confusion with Complainant’s business, and no such confusion is created by Respondent’s registration and use of the <bachtorock.co> domain name.
b. Respondent was unaware of Complainant’s use of the BACH TO ROCK mark at the time Respondent registered the disputed domain name, as Complainant was not using the mark in Texas, Respondent’s place of business. Complainant has no basis for its assertion otherwise.
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 claims to have made extensive and prominent use of the BACH TO ROCK mark for over 23 years. Complainant claims to own various trademarks incorporating the terms BACH TO ROCK in connection with, among other things, its music school services, and to have invested significantly in those marks. Complainant states that over 2,300 students participate in Complainant’s BACH TO ROCK-branded classes weekly. Complainant provides evidence of its USPTO registrations for the BACH TO ROCK mark (e.g., Reg. No. 4,075,612 filed January 15, 2008; registered December 27, 2011) in support of its claim to rights in the mark.
Previous panels have agreed that USPTO registration confers rights under Policy ¶ 4(a)(i) that date back to the trademark application’s date of filing. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also 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.”).
The Panel holds that Complainant has Policy ¶ 4(a)(i) rights in the BACH TO ROCK mark dating back to January 15, 2008.
Complainant argues that Respondent’s <bachtorock.co> domain name wholly incorporates Complainant’s BACH TO ROCK mark without any differentiating characteristics, and as such is identical to the mark in which Complainant has rights. The Panel notes that the disputed domain name does remove the spaces between words in Complainant’s mark and affixes the top-level domain “.co.”
Past panels have found these changes to be of little consequence, however. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Further, Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel finds Respondent’s <bachtorock.co> domain name confusingly similar to Complainant’s BACH TO ROCK mark for the purposes of Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 contends that Respondent is without rights and legitimate interests in the disputed domain name. Complainant attests that Respondent is not a licensee of Complainant. Complainant also believes that Respondent has no United States registered trademark or service mark and no trademark or service mark application or registration anywhere in the world for any mark including the term BACH TO ROCK.
Respondent argues that it does have rights and legitimate interests in the <bachtorock.co> domain name. Respondent claims that it has used the name “Bach to Rock” in connection with the provision of music lessons since 2005. Respondent provides evidence of its filing of an Assumed Name Record (“D/B/A”) for the name “Bach to Rock Music School” with the county of Fort Bend, Texas on August 16, 2004. See Respondent’s Exhibit B. Respondent also provides evidence that it has advertised its services under that name in several publications in Fort Bend County, Texas, and surrounding cities. See Respondent’s Exhibits C & D. Respondent asserts that before operating the <bachtorock.co> domain name, it operated <bachtorockin.com>, registered in 2006, and <bach2rock.org>, registered in 2008.
In light of the evidence presented by Respondent, the Panel determines that Respondent is commonly known by the <bachtorock.co> domain name within the meaning of Policy ¶ 4(c)(ii). See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that as the respondent had registered its domain name as its business identity with the New York County Clerk a month after registering the domain name and then conducted his prop rental business under that name, it had demonstrated rights and legitimate interests in the domain name).
Complainant next contends that Respondent uses the disputed domain name in an attempt to benefit from the confusion likely created between Respondent’s website and Complainant. Complainant posits that Respondent’s intention is evidenced by Respondent’s decision to ignore Complainant’s suggested avenue for settlement.
The Panel notes that Complainant does not provide a screenshot of the website resolving from <bachtorock.co>, instead only providing that Respondent’s services are “of the same type and nature as those of Complainant.”
Respondent also argues that it uses the <bachtorock.co> domain name in connection with a bona fide business, which has operated on commercial property since 2005. Respondent states that it is the sole proprietor of its “Bach to Rock Music School,” which provides music lessons to less than 150 students. In addition to filing an Assumed Name Record with its local county and advertising in local media, as discussed above, Respondent also claims to support local non-profit organizations and public schools through its business. Respondent asserts that its registration of the <bachtorock.co> domain name was in no way designed to draw traffic away from Complainant’s website, as Respondent and Complainant are not competitors. Respondent notes that it only does business in Sugar Land, Texas, while Complainant does business in the Northeast and California.
The Panel is cognizant of the fact that Complainant does operate a franchise business related to the BACH TO ROCK mark and indeed could well have future interests in setting up a franchise in Texas. However, this fact is neither pleaded nor is a reality today. There is no evidence in the record that Complainant has made preparations to establish a franchise in Texas.
Based on the evidence in the record, the Panel finds that Respondent uses the disputed domain name in connection with a bona fide offering of services pursuant to Policy ¶ 4(c)(i). See 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); see also AmeriCares Found., Inc. v. Ewing, D2003-0347 (WIPO June 26, 2003) (finding that the <americare.org> domain name was used in a bona fide manner since respondent registered the domain name on behalf of AmeriCare MedServices, which had been using the “AmeriCare” name in business for seven years prior to the dispute).
Respondent also argues that the terms of the <bachtorock.co> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent notes that the name “Bach to Rock” has been used by other music schools throughout the country, and the name itself does not describe a specific product or service. Respondent asserts that Complainant’s use of the name is not widespread or famous, and consumers within Respondent’s geographic market area are not familiar with Complainant.
The Panel agrees with Respondent and finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel accordingly holds that 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).
In light of the Panel’s finding in favor of Respondent with respect to the existence of any rights and legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii), there is no need to reach an analysis of the third element. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name). The Panel nevertheless finds that Complainant failed to meet its burden of proving bad faith registration and use under Policy ¶ 4(a)(iii).
Because Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), it is axiomatic that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Indeed, having found that the mark is comprised of generic terms, the Panel finds that Respondent is free to register domain names consisting of such common terms.
Accordingly, the Panel finds that Respondent did not register the <bachtorock.co> domain name in bad faith under Policy 4(a)(iii).
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 <bachtorock.co> domain name REMAIN WITH Respondent.
Calvin A. Hamilton, Panelist
Dated: January 18, 2014
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