NATIONAL ARBITRATION FORUM
URS FINAL DETERMINATION
Sam Ash Music Corporation v. CSIT Investments LLC et al.
Claim Number: FA1410001582951
DOMAIN NAME
<samash.vegas>
PARTIES
| Complainant: Sam Ash Music Corporation of Hicksville, NY, United States of America | |
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Complainant Representative: Katten Muchin Rosenman LLP
Bret J Danow of New York, NY, United States of America
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| Respondent: Thomas L Ross of Las Vegas, NV, United States of America | |
REGISTRIES and REGISTRARS
| Registries: Dot Vegas, Inc. | |
| Registrars: eNom, Inc. (R3212-AGRS) |
EXAMINER
| 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 Examiner in this proceeding. | |
| Ms. Kateryna Oliinyk, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: October 2, 2014 | |
| Commencement: October 2, 2014 | |
| Response Date: October 7, 2014 | |
| Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Findings of Fact: Under URS 9.1. the evidences will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire records used by the Examiner to make a Determination. URS 8.2. reads that the burden of proof shall be clear an convincing evidences. Under URS 8.6. if the Examiner finds that all three standards provided for by URS 8.1. are satisfied by clear and convincing evidences and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favour of the Complainant. Any of the defenses must be asserted by showing that there are facts legally sufficient to excuse the Respondent. The Complainant contends that Sam Ash Music has been serving musicians since 1924 and is selling different musical instruments both in real world and online. The Complainant holds valid US trademark registrations for the SAM ASH marks, including word marks under U.S. reg. No. 2,839,116 (registered May 4, 2004), U.S. reg. no. 2,971,283 (registered July 19, 2005). Thus, the Complainant contends that it has valid trademark rights in the SAM ASH mark and that the Respondent does not have any legitimate right or interest to the domain name <samash.vegas>, and that the Respondent registered and is using the domain name in bad faith. In his response, the Respondent contends that he is the long-term customer of the Complainant with the positive experience and that he made no effort to create a website nor had one created on my behalf and did not intend to profit from the website. In further communication, he noted that he is ready to transfer the domain name but the transfer cannot be completed for 60 days after the initial registration, which was on 9/16/14. Thus, inasmuch as no transfer has taken place by now and the Respondent currently holds the domain name <samash.vegas> the Examiner will conduct the URS proceeding within the scope of the URS in a manner it considers appropriate in accordance with the URS Procedure and these Rules under 8(a) of the URS Rules. |
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URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The registered domain name <samash.vegas> fully incorporates the word mark SAM ASH for which the Complainant holds a valid national registration and that is in current use. T In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus “.vegas” is of no consequence here. Respectively, the Examiner finds that the domain name <samash.vegas> is identical to the Complainant’s SAM ASH mark under URS 1.2.6.1. (i). [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant The Examiner determines that the Respondent is not commonly known by the SAM ASH name and he has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use Complainant’s SAM ASH mark in a domain name or otherwise. The domain name is neither generic nor descriptive, and the use of the domain name to PPC links will not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods in which the rights holder is trading. In light of that the Examiner does not admit the legitimate interest argument of the Respondent to use a trademark that belongs to a third party. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.2.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the domain name. The Respondent has offered no explanation as to why the domain name <samash.vegas> was chosen and no legitimate reason is apparent. In the present case the fact that Complainant's name and trade mark is known, coupled with the fact that Respondent is the customer of the Complainant, makes it inevitable that Respondent registered the domain names in full knowledge of Complainant's rights and interests. The inference may be drawn therefore that in some way Respondent hoped to capitalise on the reputation of Complainant in bad faith. Thus, the Examiner finds such behavior to evidence Respondents’ bad faith registration and use under URS 1.2.6.3 (d). FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ submissions, the Examiner determines that the Complainant
has demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for
the duration of the registration:
|
Ms. Kateryna Oliinyk
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