Foundation To Be Named Later, Inc. v. Hiroshi Ishiura
Claim Number: FA1411001590402
Complainant is Foundation To Be Named Later, Inc. (“Complainant”), represented by Ben Wagner of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., California, USA. Respondent is Hiroshi Ishiura (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hotstovecoolmusic.org>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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 Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2014; the National Arbitration Forum received payment on November 17, 2014. The Complaint was submitted in English and Japanese.
On November 18, 2014, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the National Arbitration Forum that the <hotstovecoolmusic.org> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 November 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 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@hotstovecoolmusic.org. Also on November 24, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 Japanese 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <hotstovecoolmusic.org> domain name is identical to Complainant’s HOT STOVE COOL MUSIC mark.
2. Respondent does not have any rights or legitimate interests in the <hotstovecoolmusic.org> domain name.
3. Respondent registered and uses the <hotstovecoolmusic.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the <hotstovecoolmusic.com> domain name, previously owned by Complainant, on February 24, 2005, and uses it to promote schemes involving “cash back advertising.”
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 uses the HOT STOVE COOL MUSIC mark in connection with its non-profit fundraising and charity concerts, and for CDs and DVDs. Complainant claims to own the mark through common law rights dating back to at least 2001. The Panel notes that HOT STOVE, COOL MUSIC is a bi-annual charity concert that was created in December of 2000. Complainant provided proof that the events have been continued to the present and include prominent national venues and artists, and that the events are widely publicized, raising significant funds for various non-profit organizations. A complainant may demonstrate its rights in a mark without having trademark registrations. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”). The Panel finds that Complainant has provided evidence to sufficiently demonstrate common law rights in its HOT STOVE COOL MUSIC mark pursuant to Policy ¶ 4(a)(i). See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Complainant argues that the <hotstovecoolmusic.org> domain name and the HOT STOVE COOL MUSIC mark are identical under Policy ¶ 4(a)(i). The Panel agrees that removing the mark’s spacing and adding the generic top-level domain (“gTLD”) “.org” do not distinguish the disputed domain name from Complainant’s mark, and finds that the domain name and mark are identical under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent cannot claim that it is commonly known by the <hotstovecoolmusic.org> domain name because Respondent is neither a licensee nor affiliate. The WHOIS record for the disputed domain name lists “Hiroshi Ishiura” as the registrant of record. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel held that there was no relationship between the respondent and the name of the domain name when nothing in the record could show the respondent had been known by that name in a meaningful way. The Panel similarly finds that Respondent is not commonly known as the domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses the <hotstovecoolmusic.org> domain name to promote schemes involving “cash back advertising.” Complainant argues that such use is not bona fide or legitimately noncommercial. The Panel notes that the disputed domain name is a Japanese-language website promoting advertising and phone-related marketing programs, and finds that this is not bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <hotstovecoolmusic.org> domain name to promote Respondent’s own advertising schemes and profit on the likelihood Internet users would be confused as to Complainant’s association with Respondent’s website. The Panel finds that this use is evidence of Policy ¶ 4(b)(iv) bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds that 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 <hotstovecoolmusic.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 23, 2014
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