MusicSpeak v. Whiting Music
Claim Number: FA0606000725931
PARTIES
Complainant is MusicSpeak (“Complainant”), PO Box 252, Hardwick, VT 05843. Respondent is Whiting Music c/o Jamey A. Whiting (“Respondent”), PO Box 110905, Nashville, TN 37211.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <musicspeak.net> and <musicspeak.org>, registered with Innerwise, Inc. d/b/a Itsyourdomain.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.
The Honorable Patrick C. Guillot
(ret.) served as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 2, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 5, 2006.
On June 5, 2006, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by
e-mail to the National Arbitration Forum that the <musicspeak.net> and <musicspeak.org> domain names are
registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that the Respondent
is the current registrant of the names.
Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is
bound by the Innerwise, Inc. d/b/a Itsyourdomain.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 June 9, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 29, 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@musicspeak.net and
postmaster@musicspeak.org by e-mail.
A timely Response was received and determined to be complete on June
26, 2006.
Objections to the Response were received on June 28, 2006.
On June 28, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honorable Patrick C. Guillot
(ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The domain names in
dispute are confusingly similar to the registered trademark and other
registered domain names used by MusicSpeak®, whose trademark and incorporation
occurred before the registration of the contested domain names of <musicspeak.org>
and <musicspeak.net>.
2. Respondent has no
rights or legitimate interest in the domain name.
3. Respondent registered
and used the disputed domain name in bad faith.
B. Respondent
1. The domain names are
not confusingly similar to the registered trademark and other registered domain
names used by Complainant.
2. The Respondent has had
certain rights and legitimate interests in the domain names <musicspeak.org>
and <musicspeak.net>.
3. Respondent properly
registered the domain names, which are not being used, in bad faith.
C. Additional Submissions
1. Complainant replied to
Respondent’s Response stating that the Response was inadequate under the
National Arbitration Forum’s rules 5(b)(i) because the Respondent provided no
bases or evidence to continue to retain registration and use of the domain
name.
2.. Complainant further
replied to the Respondent’s Response stating that the Response was inadequate
under the National Arbitration Forum’s rules 5(b)(vi) because the Response did
not include mention of the Cease and Desist Order of October 31, 2005, wherein
Respondent agreed to transfer the three (3) domain names of
<musicspeak.com>, <musicspeak.org>, and <musicspeak.net>
to Complainant.
FINDINGS
Identical and/or Confusingly Similar Policy ICANN ¶4(a)(i)
A. Complainant has established its rights in the MusicSpeak® trademark.
B. The Complainant has established a singular and unique identity through use of its trademark as early as 1993 and through trademark registration in 1996. It has further established itself as a singular, unique identity on the Internet through its registration and use of its solely owned trademark and the domain name of MusicSpeak in its several variant extensions.
C. Respondent does not contest the issue of an identical or confusing similarity of the domain names.
D. With respect to identical or confusingly similar under ICANN Policy ¶ 4(a)(i), the Panel finds for the Complainant.
Rights and Legitimate Interests Policy ICANN ¶4(a)(ii)
A. Complainant asserts that Respondent has no legitimate right to the domain names in question due to several issues of fact:
1. Respondent agreed to and signed a Cease and Desist Agreement Letter dated October 3, 2005 on Page 3 wherein Respondent agreed to “transfer any and all rights of the undersigned in and to the following domain names to Gary Williams: <musicspeak.com>, <musicspeak.org>, and <musicspeak.net> (collectively the “Domain Names”); (ii) cease and desist from any and all use of the Domain Names; and (iii) cease and desist from any and all use of the registered trademark MUSICSPEAK”. Such Agreement was signed by Respondent on October 31, 2005.
2. Respondent failed to transfer ownership as agreed and instead transferred registration of the <musicspeak.com> domain to another registrant on February 5, 2006, four months after Respondent had signed the Cease and Desist Agreement agreeing to transfer ownership to Gary Williams, owner of MusicSpeak
3. Respondent has further failed to transfer the <musicspeak.org> and <musicspeak.net> domain names as agreed and instead renewed both domain registrations on December 22, 2005, three months after the Cease and Desist Agreement was signed by Respondent.
4. Respondent is not using and has not used the domain names in question in the normal course of business or for personal applications beyond registering the domains and renewing their registrations.
B. Complainant asserts that Respondent never had a legitimate use of the MusicSpeak nomenclature as Respondent has never been associated with the entity and registered trademark owner; MusicSpeak®. Respondent asserts a legitimate use of the domain names in that a provisional patent application with respect to the utility MusicSpeak was filed in 2001. However, Respondent admits that the application expired one year later (in 2002) and that Respondent chose not to pursue business using that name and has not pursued any separate business under that name not any association with the registered trademark owner MusicSpeak® since that time.
C. Respondent does not contest the issue that he agreed to transfer ownership of the domain names <musicspeak.org> and <musicspeak.net> to Gary Williams, owner of MusicSpeak®; further, Respondent does not contest the issue that, although he may have had a legitimate interest in the domain names in the past, he no longer has any legitimate interests or intentions regarding the contested domain names.
D. With respect to rights and legitimate interests in respect of the domain name under ICANN Policy ICANN Policy ¶ 4(a)(ii), the Panel finds for the Complainant.
Registration and Use in Bad Faith Policy ICANN ¶4(a)(iii)
A. Complainant
asserts that Respondent registered and used the domain names in bad faith. Evidence of the bad faith is the
registration of a domain confusingly similar to Complainant’s trademark which
was well established and searchable nationwide six years before Respondent
registered the MusicSpeak domain names in bulk, thus intentionally and
knowledgably seeking to profit from such registration, either by infringing
upon the reserved trademark rights which registration with the United States
Patent and Trademark office confers and divert attention to Respondent’s
website by inference and association of the MusicSpeak trademark or by
“cybersquatting” on the contested domain names.
B. Complainant
further asserts evidence of registration and use in bad faith by the refusal of
Respondent to transfer the domain names as agreed in the Cease and Desist
Agreement signed October 31, 2005, even after multiple requests and demands to
do so.
C. Respondent
asserts that he has not been “…’squatting’ on these domains. In 2001 I filed a provisional patent
application regarding my utility of MusicSpeak, an application that expired one
year later, as I decided not to pursue the business. I had no intention to squat on these names.” However, Respondent makes no claim of being
in any way associated with the Complainant who owns the trademark and has owned
said trademark since 1996. Furthermore,
Respondent did not register the disputed domain names until August 2002, a full
year after the initial potential interest in the domain names and after the
filing for said provisional patent application had expired.
D. Respondent
further asserts that he has not kept the domain names in bad faith; however,
Respondent does answer in Paragraph 3 of the Response that he had “hoped for a
small offer of remuneration, which didn’t come.” Respondent offers no evidence
to support his continued ownership, registration and use of the contested
domain names, <musicspeak.org> and <musicspeak.net>.
E. With
respect to registration and use in bad faith ICANN Policy ¶ 4(a)(iii),
the Panel finds that the registration and use of the domain names was in bad
faith.
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.”
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.
The
Panel finds that the Respondent does not, in fact, contest any of
Complainant’s allegations regarding the <musicspeak.net>
and <musicspeak.org>
domain names. In particular, the Respondent does not contest that the domain
names are confusingly similar to those being used by the Complainant, nor does
Respondent contest the assertion of infringement of trademark rights and
reservations. Respondent does not claim
any current or future rights or legitimate interests in the contested domain
names. Respondent does not contest that
there exists a Cease and Desist Agreement signed by the Respondent, which is
still valid and in force. Since the Respondent
has consented to transfer of the disputed domain names, the Panel has decided
to forego the traditional UDRP analysis and order the immediate transfer of the
domain names, as is usual under such circumstances. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman
Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain
name registration where the respondent stipulated to the transfer); see also
Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb.
Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain
name to be transferred to the Complainant . . . Since the requests of the
parties in this case are identical, the Panel has no scope to do anything other
than to recognize the common request, and it has no mandate to make findings of
fact or of compliance (or not) with the Policy.”); see also Disney Enters.,
Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such
circumstances, where Respondent has agreed to comply with Complainant’s
request, the Panel felt it to be expedient and judicial to forego the
traditional UDRP analysis and order the transfer of the domain names.”).
The
Panel finds that Complainant is entitled to relief under ICANN Policy ¶
4(a)(i), ¶ 4(a)(ii), and ¶ 4(a)(iii).
It finds that Respondent’s domain names <musicspeak.org>
and <musicspeak.net> are confusingly similar to Complainant’s
mark; that Respondent has no rights or legitimate interests in the domain name,
and that, with respect to the domain names, the Respondent’s registration and
use of them is in bad faith.
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 <musicspeak.net> and <musicspeak.org> domain
names be TRANSFERRED from Respondent to Complainant.
The Honorable Patrick C. Guillot (ret.),
Panelist
Dated: July 17, 2006
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