Megatrax Production Music, Inc. v. Fulltone
c/o Michael Fuller
Claim Number: FA0602000649297
PARTIES
Complainant is Megatrax Production Music, Inc. (“Complainant”), represented by Owen J. Sloane, of Berger Kahn, 4215 Glencoe Avenue 2nd Floor, Marina del Ray, CA 90292. Respondent is Fulltone c/o Michael Fuller (“Respondent”), 3815 Beethoven St., Los Angeles, CA 90066.
The domain name at issue is <megatracks.com>,
registered with Register.com.
PANEL
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.
Daniel B. Banks, Anne M. Wallace and Carolyn M. Johnson and as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 20, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 22, 2006.
On February 21, 2006, Register.com confirmed by e-mail to the National
Arbitration Forum that the <megatracks.com>
domain name is registered with Register.com and that the Respondent is the
current registrant of the name. Register.com
has verified that Respondent is bound by the Register.com 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 28, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 20, 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@megatracks.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 29, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Anne M. Wallace and Carolyn
M. Johnson as Panelists.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <megatracks.com> domain name is confusingly similar to Complainant’s MEGATRAX mark.
2. Respondent does not have any rights or legitimate interests in the <megatracks.com> domain name.
3. Respondent registered and used the <megatracks.com> domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Megatrax Production Music, Inc.,
is a premier production music library for film, television, advertising and
multimedia, and is the leading choice at major broadcast networks and Hollywood
studios. Complainant holds a trademark
registration with the United States Patent and Trademark Office (“USPTO”) for
the MEGATRAX mark (Reg. No. 1,898,704 issued June 13, 1995). Complainant has used the mark in connection
with the referenced services since 1993.
Respondent registered the <megatracks.com> domain
name on December 10, 1999. Respondent
has not made any use of the <megatracks.com>
domain name since
registering it in December 1999.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Respondent’s <megatracks.com> domain name is confusingly similar to
Complainant’s mark because the domain name contains the dominant features of
Complainant’s MEGATRAX mark and substitutes the letter “x” for the letters
“cks.” Moreover, Respondent’s
alteration to the MEGATRAX mark renders the domain name phonetically identical
to Complainant’s mark. The Panel finds
that this alteration to Complainant’s registered mark fails to properly
distinguish the disputed domain name pursuant to Policy ¶ 4(a)(i). See Belkin Components v.
Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”); see also Toronto-Dominion Bank v. Karpachev,
D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names
<tdwatergouse.com> and <dwaterhouse.com> are virtually identical to
the complainant’s TD WATERHOUSE name and mark); see also Hewlett-Packard
Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that
a domain name which is phonetically identical to the complainant’s mark
satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray,
D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com>
is confusingly similar to the complainant’s YAHOO mark).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <megatracks.com> domain name. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to prove
that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002) (holding that, where the complainant has asserted that respondent does
not have rights or legitimate interests with respect to the domain name, it is
incumbent on respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); 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 does not have rights or legitimate interests is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist).
Respondent is not authorized or licensed to register or use a domain name that incorporates Complainant’s mark. Moreover, Respondent is not commonly known by the <megatracks.com> domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the mark precede the respondent’s registration; and (3) the respondent is not commonly known by the domain name in question).
Furthermore, Respondent has not made any use of the <megatracks.com> domain name since registering it in December 1999. Without demonstrable preparations to use the disputed domain name, the Panel finds that Respondent’s use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that a respondent made preparations to use the domain name in connection with a bona fide offering of goods or services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the respondents have not established any rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
The Panel finds that Respondent registered the <megatracks.com> domain name in bad faith, because Respondent has made no use of the domain name since registering it in December 1999 and has not provided evidence of demonstrable preparations to use the domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <megatracks.com>
domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Panel Chair
Carolyn M. Johnson, Panelist
Anne M. Wallace, Panelist
Dated: April 12, 2006
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