Alexey Mezenin v. John Baselmans
Claim Number: FA0603000664060
Complainant is Alexey Mezenin (“Complainant”), represented by Brett E. Lewis, of Lewis & Hand LLP, 45 Main Street, Suite 818, Brooklyn, NY 11201. Respondent is John Baselmans (“Respondent”), 245 West 17 Street, New York, NY 10011.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <musicsonglyrics.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 21, 2006.
On March 22, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <musicsonglyrics.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 March 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 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@musicsonglyrics.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <musicsonglyrics.com> domain name is identical to Complainant’s MUSICSONGLYRICS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <musicsonglyrics.com> domain name.
3. Respondent registered and used the <musicsonglyrics.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alexey Mezenin, began operating a website providing music and song lyrics at the <musicsonglyrics.com> domain name on November 27, 2002. Complainant has continuously and extensively used the MUSICSONGLYRICS.COM mark in connection with its music and song lyrics listings since that time. Complainant has generated substantial commercial traffic to its website in connection with the MUSICSONGLYRICS.COM mark, including 500,000 visitors per month in 2002. Through several marketing agreements, Complainant has also earned advertising revenue of between $4,000 and $7,000 per month in connection with its mark. As a result, Complainant’s MUSICSONGLYRICS.COM mark is well known by online advertisers.
According to the WHOIS information, Respondent registered the <musicsonglyrics.com> domain name on November 27, 2002. However, Complainant claims that Respondent hijacked the domain name on September 25, 2005 by manipulating Complainant’s password access and entering Complainant’s web hosting account. Thus, while the WHOIS information lists Respondent as the registrant of the disputed domain name, Complainant is the true registrant. Respondent is using the disputed domain name to operate a website virtually identical to Complainant’s former website at the disputed domain name. The website displays a search page allowing Internet users to browse music and song lyrics and contains online 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."
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 is not
required to own a trademark registration to establish rights in the
MUSICSONGLYRICS.COM mark under Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”); see also SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist).
In the absence of any Response from Respondent or other
rebutting allegations, the Panel finds that Complainant has established de
minimus common law rights in the MUSICSONGLYRICS.COM mark through
continuous use of the mark in connection with its music and song lyrics website
since 2002. Complainant receives
considerable online traffic from Internet users seeking music and song
lyrics. Therefore, the Panel finds that
Complainant’s MUSICSONGLYRICS.COM mark has acquired secondary meaning
sufficient to establish common law rights in the mark. See
Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding
common law rights in a mark where its use was continuous and ongoing, and
secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of [KEPPEL BANK] in connection with
its banking business, it has acquired rights under the common law.”).
Respondent’s <musicsonglyrics.com> domain name is identical to Complainant’s MUSICSONGLYRICS.COM mark, because it wholly incorporates Complainant’s mark, including the generic top-level domain “.com.” Panels have consistently held that generic top-level domains are irrelevant in determining whether a domain name is confusingly similar to a mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, Respondent’s <musicsonglyrics.com> domain name is identical to Complainant’s MUSICSONGLYRICS.COM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <musicsonglyrics.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 to or legitimate interests in the <musicsonglyrics.com>
name. See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise); see also Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain name.”). 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 “John Baselmans,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <musicsonglyrics.com> domain name. As a result, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Moreover, Respondent is using the <musicsonglyrics.com> domain name, which wholly incorporates Complainant’s MUSICSONGLYRICS.COM mark, to operate a website virtually identical to the website Complainant operated at the disputed domain name before Respondent hijacked the domain name. Respondent’s website displays Complainant’s MUSICSONGLYRICS.COM mark and features the same search engine feature and online advertising. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the respondent was using the <aig-ma.com> domain name to operate a website displaying the complainant’s logo and attempting to offer the same financial services that complainant offered under the AIG mark. The panel found that the respondent’s attempts to impersonate the complainant online provided evidence that the respondent lacked rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii). Id. Here, Respondent is attempting to pass itself off as Complainant in order to generate revenue from online advertising. Such use does not constitute 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 Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because Respondent has hijacked the <musicsonglyrics.com>
domain name from Complainant and is using it to operate a website virtually
identical to the website Complainant previously operated at the disputed domain
name, Respondent has registered and is using the disputed domain name for the
primary purpose of disrupting Complainant’s business pursuant to Policy ¶
4(b)(iii). See Lambros v. Brown, FA
198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered
a domain name primarily to disrupt its competitor when it sold similar goods as
those offered by the complainant and “even included Complainant's personal name
on the website, leaving Internet users with the assumption that it was
Complainant's business they were doing business with”); see also S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent
registered the domain name in question to disrupt the business of the
complainant, a competitor of the respondent).
Furthermore, Respondent has registered and is using the <musicsonglyrics.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent is
attempting to attract, for commercial gain, Internet users to a website
virtually identical to Complainant’s former website at the disputed domain
name. In Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30,
2000), the panel found that respondent’s use of the <identagene.com>
domain name, which was confusingly similar to the complainant’s IDENTIGENE
mark, to operate a website offering Internet users similar services as
Complainant constituted bad faith registration and use because it was likely to
cause consumer confusion as to the source or sponsorship of the services
offered at the domain name. Likewise, Respondent is taking advantage of
consumer confusion as to the source, affiliation, sponsorship or endorsement of
the disputed domain name and profiting from the goodwill associated with the
MUSICSONGLYRICS.COM mark. Therefore,
Respondent’s use of the disputed domain name constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is
using the domain name at issue to resolve to a website at which Complainant’s
trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s
business and trademarks. The Panel finds that this conduct is that which is
prohibited by Paragraph 4(b)(iv) of the Policy.”).
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 <musicsonglyrics.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 8, 2006
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