Musidor B.V. v. Phil K.
Claim Number: FA0602000648140
Complainant is Musidor B.V. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is Phil K. (“Respondent”), 545 Liper, Gatineau, PQ H4H 4K6, CA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <stonesconcerts.com>, registered with Enom, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 17, 2006.
On February 17, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <stonesconcerts.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@stonesconcerts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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." 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 makes the following assertions:
1. Respondent’s <stonesconcerts.com> domain name is confusingly similar to Complainant’s THE STONES mark.
2. Respondent does not have any rights or legitimate interests in the <stonesconcerts.com> domain name.
3. Respondent registered and used the <stonesconcerts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Musidor B.V., is the exclusive owner of the trademark, copyright, licensing, and performance rights for the ROLLING STONES band and its members. The ROLLING STONES, often referred to as THE STONES, is one of the world’s most famous rock-and-roll bands. Complainant markets a variety of content featuring the marks ROLLING STONES and THE STONES, including, but not limited to, musical sound recordings, concert DVDs, and pre-recorded video tapes.
Complainant has registered the following marks with the United States Patent and Trademark Office (“USPTO”): ROLLING STONES (Reg. No. 1,358,893 issued September 10, 1985; Reg. No. 1,916,524 issued September 5, 1995; Reg. No. 2,201,605 issued November 3, 1998) and THE STONES (Reg. No. 3,035,916 filed March 31, 2004 and issued December 27, 2005). Complainant also holds trademark registrations in Canada for the ROLLING STONES mark (Reg. No. TMA200263 issued July 5, 2004; Reg. No. TMA376312 issued November 30, 2005; Reg. No. TMA409356 issued March 12, 1993).
Respondent registered the <stonesconcerts.com> domain name on January 28, 2005. Respondent is using the disputed domain name to operate a website selling bootleg copies of the ROLLING STONES concerts as well as other merchandise featuring Complainant’s registered marks.
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."
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.”).
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 has established rights to the ROLLING STONES and
the THE STONES marks by registering the marks with the USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”). Complainant’s
trademark registrations for the ROLLING STONES mark all pre-date Respondent’s
registration of the disputed domain name, and Complainant filed a trademark
registration for the THE STONES mark with the USPTO on March 31, 2004 (Reg. No.
3,035,916). Therefore, Complainant has
adequately shown rights in the marks prior to Respondent’s registration of the <stonesconcerts.com>
domain name on January 28, 2005. See
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.”); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960,
144 U.S.P.Q. 435 (C.C.P.A. 1965) (holding that registration on the Principal
Register is prima facie proof of continual use of the mark, dating back
to the filing date of the application for registration).
Respondent’s <stonesconcerts.com>
domain name is confusingly similar to Complainant’s
THE STONES mark pursuant to Policy ¶ 4(a)(i), because it merely eliminates the
article “the” and adds the generic term “concerts,” which has an obvious
relationship to Complainant’s business activities. In Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409
(WIPO Dec. 9, 2000), the panel found that the addition of generic words to the
end of the SONY mark rendered the respondent’s domain names confusingly similar
because “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case.” Therefore, Respondent’s addition of the term
“concerts” to the dominant portion of Complainant’s THE STONES mark in the <stonesconcerts.com>
domain name is also confusingly similar.
See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the respondent’s domain name combines
the complainant’s mark with a generic term that has an obvious relationship to
the complainant’s business); see also Saul Zaentz Co. v. Dodds, FA
233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the
definite article “the” and the preposition “of” from the complainant’s mark and
thus, failed to “sufficiently distinguish the domain name from the mark
pursuant to Policy ¶ 4(a)(i)”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the <stonesconcerts.com> domain name. Complainant must first make a prima facie
case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that, under certain circumstances, the mere assertion by the
complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <stonesconcerts.com>
domain name. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw
adverse inferences from the respondent’s failure to reply to the complaint); see
also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22,
2004) (“Respondent’s failure to respond to the Complaint functions as an
implicit admission that [Respondent] lacks rights and legitimate interests in
the disputed domain name. It also
allows the Panel to accept all reasonable allegations set forth…as
true.”). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name
“Phil K.,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the <stonesconcerts.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the <stonesconcerts.com>
domain name pursuant to Policy ¶ 4(c)(ii).
G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Furthermore, Respondent’s <stonesconcerts.com> domain
name, which is confusingly similar to Complainant’s THE STONES mark, resolves
to a website selling bootleg copies of concerts and merchandise related to the
mark. In Am. Tool & Machining,
Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002), the
respondent registered a domain name confusingly similar to the complainant’s
EZ-HITCH mark and used the domain name to sell products in direct competition
with the complainant. The panel stated,
“[r]espondent has attempted to trade opportunistically on Complainant’s
established goodwill in the industry by emulating Complainant’s mark and
product when registering a confusingly similar domain name.” The panel
thereafter held that the respondent’s actions of “expropriating [c]omplainant’s
mark and business” did not constitute a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶ 4(c)(iii). Likewise, Respondent is selling merchandise featuring
Complainant’s THE STONES mark in direct competition with Complainant, and has
also attempted to “trade opportunistically” on Complainant’s established
goodwill in the music industry by registering the <stonesconcerts.com>
domain name. Therefore, Respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶¶ 4(c)(i) and 4(c)(iii). See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that
the respondent's “use of the domain name (and Complainant’s mark) to sell
products in competition with Complainant demonstrates neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <stonesconcerts.com>
domain name, which is confusingly similar to Complainant’s THE STONES mark, to
sell bootleg copies of concerts and merchandise featuring Complainant’s
mark. Respondent likely profits from
each sale of these bootleg products at the expense of Complainant’s genuine
offering of these concerts and merchandise for sale. Thus, Respondent is taking advantage of the confusing similarity
between Respondent’s domain name and Complainant’s THE STONES mark, and profiting
from the goodwill associated with the mark.
Use of the disputed domain name for commercial gain is indicative of bad
faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (finding that the respondent’s use of the
<saflock.com> domain name to offer goods competing with the complainant’s
illustrates the respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see
also Nintendo of Am., Inc. v. Pokemonplanet.net, D2001-1020 (WIPO Sept. 25, 2001) (“By using the [<pokemonplanet.net>]
Domain Names [sic] to sell Complainant’s [POKEMON]
products, Respondents have shown bad faith in use of the Domain Name.”).
In addition, by registering a domain name confusingly
similar to Complainant’s THE STONES mark and selling products featuring the
mark, Respondent has registered and is using the disputed domain name for the
sole purpose of disrupting Complainant’s business. Complainant offers for sale genuine copies of concerts as well as
merchandise featuring the ROLLING STONES and THE STONES marks, and Respondent
is using the <stonesconcerts.com> domain name to offer bootleg
copies of these products for its own commercial gain. Such disruptive use constitutes bad faith registration and use
under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stonesconcerts.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 29, 2006
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