Kid Glove Enterprises, Inc.
v. Navigation Catalyst Systems, Inc.
Claim Number: FA0703000944346
Complainant is Kid Glove Enterprises, Inc. (“Complainant”), represented by Thomas
A. Canova, of Baker & Hostetler LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hittingthenote.com>, registered with
Go Daddy
Software, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and, to the best of their knowledge, have no known conflict in
serving as Panelist in this proceeding.
Joel M. Grossman, David E. Sorkin and the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 21, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 22, 2007.
On March 21, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <hittingthenote.com> domain name is
registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 26, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 16, 2007 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@hittingthenote.com by e-mail.
A timely Response was received and determined to be complete on April 12, 2007.
On April 20, 2007, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Joel M. Grossman, David E. Sorkin and the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Kid Glove Enterprises, Inc., contends
that Respondent’s <hittingthenote.com> domain name is identical or confusingly similar
to Complainant’s HITTIN’ THE NOTE mark and <hittinthenote.com> domain
name.
Respondent, Navigation Catalyst System (“NCS”), has no rights or legitimate interests in the <hittingthenote.com> domain name. Respondent has never been known by the domain name. The domain name is the name of Complainant’s 15-year old magazine and 8-year old web site and not Respondent’s name. Respondent has conducted no legitimate business on the website and cannot show that it has made a fair or legitimate non-commercial use of the domain name without intent for commercial gain.
Complainant’s HITTIN’ THE NOTE music magazine and merchandise, including various Allman Brothers CDs, have nothing to do with Respondent’s computer search and navigation business and services. There is no relation between Respondent and any aspect of the music industry. Consequently, there is no legitimate purpose for Respondent to register and use the name of Complainant’s magazine as the disputed domain name.
Respondent registered Complainant’s federal trademark and service mark as a domain name and linked the web site to music sites including those offering Complainant’s music magazine and merchandise for the purpose of (i) interfering with Complainant’s business, (ii) misleadingly diverting consumers seeking Complainant’s <hittinthenote.com> web site to Respondent’s <hittingthenote.com> web site for commercial gain, and (iii) confusing consumers as to the source, sponsorship, or affiliation of Respondent’s <hittingthenote.com> web sites.
B. Respondent
Respondent does not dispute Complainant’s contentions with regard to Policy ¶ 4(a)(i).
Respondent has legitimate rights to <hittingthenote.com> as the phrase “hitting the note” is a commonly used phrase in the English language. Respondent contends that its <hittingthenote.com> domain name is a phrase comprised entirely of generic terms. Moreover, Respondent contends that the use of a domain name made up of generic terms for the purpose of operating a links website is a legitimate use of the disputed domain name.
FINDINGS
On November 26, 2002, the United States Trademark Office granted Complainant a federal trademark and service mark registration for HITTIN’ THE NOTE in connection with music-related goods and services, including as provided online (U.S. Reg. No. 2,653,872).
Over the past 15 years, since at least as early as June 1992, Complainant, including through its predecessors, has continuously used the phrase HITTIN’ THE NOTE as the name of its music publication. The publication began as a small, few-page, undersized, paper-covered pamphlet or newsletter reporting on the world-famous, Grammy Award winning, Rock & Roll Hall of Fame member, Southern Rock band, known as the Allman Brothers Band.
Over the years, the publication
became a high-end magazine covering a substantial variety of music and numerous
bands and musicians, and also offering for sale related music merchandise. While broadening the scope of its music
subject matter significantly, the magazine has maintained as its core articles,
interviews, and reviews of concerts, recordings, and books, as well as concert
tour information and related merchandise, concerning the Allman Brothers
Band. Complainant’s HITTIN’ THE NOTE magazine
has been widely advertised and promoted throughout the
Since May 1999, Complainant has also offered its music-related publications and merchandise online under the designation HITTIN’ THE NOTE through Complainant’s popular web site located at <hittinthenote.com> registered on January 19, 1999. For the last year alone, Complainant’s sales of its magazine and related music merchandise under the HITTIN’ THE NOTE mark were approximately $1.2 million.
Respondent, NCS, founded in 2004, is a wholly owned subsidiary of The
Vendor Group, a “leading, online media and marketing company,” and an affiliate
of New.net, an established “developer of Internet search services, products and
domain registry solutions.” NCS offers
what it describes as “fully managed and customized domain navigation solutions
to registrars, registrants and domain name resellers.” NCS is involved in servicing Internet
businesses and more particularly in the business of domain name registration.
On or about July 29, 2004, over 12 years after Complainant commenced use of its HITTIN’ THE NOTE mark, and over 4 ½ years after Complainant registered its <hittinthenote.com> domain name, NCS registered the domain name <hittingthenote.com>.
Respondent has changed its web site located at the disputed domain name several times. The first iteration brought the user to “The Premier Real Estate Source” with links to sites regarding such things as “Buy Property,” “Moving,” “Insurance,” and “Home Improvement.” A subsequent iteration of <hittingthenote.com> identified on its home page several “Popular Links,” the very first one entitled “Hittin the Note,” which brought the user to Amazon’s web pages offering various Allman Brothers’ recordings, including the HITTIN’ THE NOTE CD, as well as numerous music reviews. The current iteration of <hittingthenote.com> brings the user to <rockmusic.us> which itself links to a variety of music-related websites, including a subject expressly called “Hittin the Note.”
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.
Complainant has established rights in the HITTIN’ THE NOTE mark through registration of the mark with the USPTO. See 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.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <hittingthenote.com> domain name is confusingly similar to
Complainant’s mark. Respondent’s
disputed domain name contains the dominant features of Complainant’s HITTIN’
THE NOTE mark but omits the spaces between the terms in the mark as well as
replacing the apostrophe in Complainant’s mark with a letter “g.” These distinctions fail to differentiate
Respondent’s <hittingthenote.com> domain name from Complainant’s
mark for purposes of Policy ¶ 4(a)(i). See
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Because the Panel bases its Decision on Complainant’s failure to prove
the third element, it is unnecessary to address the second element.
Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). Respondent says that it was unaware of the trademark when it registered the domain name. The phrase "hitting the note" is a common phrase comprised of generic terms. The Panel finds that Respondent registered the <hittingthenote.com> domain name based on the dictionary meaning of the phrase “hitting the note” and not to take advantage of Complainant’s mark. See New Pig Corp. v. Dicker, FA843597 (Nat. Arb. Forum, January 29, 2007) (finding that “Respondent registered the <pig.com> domain name based on the dictionary meaning of the term ‘pig’ and not to take advantage of Complainant’s generic mark”); see also CNR Music B.V. v. High Performance Networks, Inc., D2005-1116 (WIPO Jan. 23, 2006) (“The registration of the domain name appears to have been aimed at exploiting the ability of the word itself to attract Internet users, and not aimed at taking advantage of the Complainant’s reputation or trademark.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum Jul. 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
The Panel finds that the third element of bad faith registration and use
has not been satisfied.
DECISION
Complainant having failed to establish the third element required under the ICANN Policy, the Panel orders that relief shall be DENIED.
Honorable Charles K.
McCotter, Jr. (Ret.), Chair
Joel M. Grossman, Panelist
David E. Sorkin, Panelist
Dated: May 2, 2007
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