Compact Disc
World, Inc. v. Artistic Visions, Inc.
Claim Number: FA0107000097855
PARTIES
The Complainant is Compact Disc World, Inc., South Plainfield, NJ, USA (“Complainant”) represented by Alan M. Sack, of Hoffmann & Baron, LLP. The Respondent is Artistic Visions, Inc., Campbell, CA, USA (“Respondent”) represented by Eliane Setton, of Gray Cary Ware & Freidenrich, LLP.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cdworld.com>, registered with Network Solutions, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 3, 2001; the Forum received a hard copy of the Complaint on July 5, 2001.
On July 6, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <cdworld.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 July 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 26, 2001 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@cdworld.com by e-mail.
A timely response was received and determined to be complete on July 26, 2001.
On August 1, 2001,
pursuant to Complainant’s request to have the dispute decided by a single-member
Panel, the Forum appointed Anne M. Wallace,
Q.C. was appointed as Panelist.
On August 1, 2001,
Complainant filed additional material in response to Respondent’s Response,
together with the required fee, and was received in a timely manner pursuant to
the Forum’s Supplemental Rule #7.
On August 2, 2001,
Respondent file additional material requesting an extension of time to file
additional evidence on the ground that the Complainant’s supplementary
submission contained new allegations of facts and legal arguments. This
submission did not comply with Supplemental Rule #7 either in terms of time of
filing or filing fee, but the Panel has nevertheless considered the submission.
The Panel carefully reviewed the submissions of both parties and found no new
allegations of fact or legal arguments that would warrant permitting the
Respondent to make additional submissions to those already made.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Compact Disc World, Inc., is the owner of a service mark for “retail store services in the field of compact discs, audio cassettes, records, audio components and accessories, compact disc video, laser disc and video tapes”. Complainant owns and operates ten retail stores in New Jersey and has used the mark continuously and without interruption in connection with marketing its services since as early as December 1986. The mark was registered in the United States Patent and Trademark Office on February 6, 1990. Complainant owns two other marks for Compact Disc World, registered February 6, 1990 and April 24, 1990 respectively. Complainant began using the its mark in connection with mail order business in 1993 and Internet business in 1998.
Complainant filed in evidence a series of eighteen communications from various parties to the Complainant, in all of which the Complainant is referred to as “CD World”. These documents were filed as evidence of that the public consider “CD World” and “Compact Disc World” to be one and the same.
On March 14, 1995, the Respondent applied for the mark “CD WORLD” for “computerized on-line services in the field of music, compact discs and audio cassettes featuring music, movies, music videos, digital video discs (DVD) players, and related accessories for the foregoing, namely, carrying and storage cases for the aforesaid goods, and headphones.” Respondent began to use that mark on December 31, 1994.
Complainant became aware that Respondent was using “CD World” in its Internet business in or about the month of October 1995. Complainant’s lawyers wrote a cease and desist letter to Respondent on October 18, 1995. Copies of the three aforementioned trademark registrations were enclosed. The said letter referred to the fact that Respondent was using “CD World” on the World Wide Web, and made it clear that Complainant objected to Respondent using the mark for sale of “compact discs, audio cassettes…”
Complainant opposed Respondent’s trademark application and was successful. On September 20, 2000, the United States Trademark Trial and Appeal Board (“TTAB”) issued a Summary Judgment dismissing Respondent’s application.
By letter of May 21, 2001 from its attorneys to Complainant’s attorneys, Respondent offered to sell the domain name to Complainant for $70,000. Respondent’s attorneys also advised Complainant that they had recommended to Respondent that Respondent contact approximately 60 other owners of less attractive domain names and offer the name for sale to them.
Complainant contends that the cdworld.com domain name is confusingly similar to its federally registered COMPACT DISC MARK because the term “CD” is a widespread abbreviation for compact discs. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) finding the domain name “ms-office-2000.com” to be confusingly similar to “Microsoft” even though the mark MICROSOFT is abbreviated.
Complainant further contends that the TTAB ruling favoring their COMPACT DISC WORLD mark over the Respondent’s attempt to register the CD WORLD mark is further evidence of confusing similarity. Complainant further shows evidence of confusing similarity through evidence that third parties regularly address correspondence to Compact Disc World as “CD World”.
Complainant contends that Respondent did not conduct a proper trademark search before making application of CD World trademark and before registering cdworld.com and using the domain name for its business. Complainant argues that these circumstances show that the Respondent never had any rights or legitimate interests in the domain name.
Lastly, Complainant argues that the fact Respondent has no rights or legitimate interests in the domain name, coupled with the fact Respondent is now offering the domain name for sale for $70,000, is evidence of bad faith within the meaning of the ICANN Policy.
B. Respondent
Respondent’s position is that the TTAB decision relied on by Complainant finds that the Respondent’s mark CD World, not the Respondent’s domain name cdworld.com, is confusingly similar to Complainant’s mark. Respondent further argues that Respondent registered and commenced use of the domain name and became commonly known by the domain name before any notice of dispute, and therefore enjoys legitimate interests in the domain name registration.
Respondent registered the domain name on November 27, 1994. Respondent chose the name for its generic value and after conducting a search for trademarks and service marks identical to CD WORLD. Respondent went to the time and expense of setting up the cdworld.com site for online commerce in compact discs, videos and related products. Respondent carried on business in this manner for over six years.
Respondent further contends that the October 18, 1995 cease and desist letter from Complainant’s attorney did not even mention the domain name cdworld.com, but rather referred to Respondent’s use of the mark CD WORLD. Therefore, the Respondent argues, the Respondent could not have known that the domain name registration was in dispute simply because its trademark was in dispute.
Respondent argues that Complainant did not ask for transfer of the domain name until Respondent approached Complainant to see if Complainant was interested in buying the name. Respondent says that its longstanding use of the domain name and the goodwill associated with that use, have resulted in Respondent having legitimate interests in the domain name, and entitle Respondent to sell the domain name. Respondent says Complainant has filed this complaint to prevent Respondent from benefiting from the goodwill it created in its domain name through its extensive use of the domain name.
Respondent contends that it registered the domain name with the sole intent to conduct business under the name, and actually did so for several years. Had Respondent registered the domain name with the sole or primary intent to sell it to Complainant for an outrageous price, Respondent would not have spent significant amounts of money preparing to do business and certainly would not have conducted business under that name for six years.
Respondent was not aware of the existence of Complainant until it received the cease and desist letter and even then the domain name was not in dispute since Complainant never claimed they had any rights in the domain name until it filed the UDRP complaint. Respondent could not have registered the domain name with intent to divert traffic from Complainant’s site to Respondent’s site because Respondent was not aware that such business existed.
Lastly, Respondent contends that its $70,000 asking price today for the domain name is a reasonable one because the domain name is highly valuable.
FINDINGS
For reasons set out below, I have found that:
1. The domain name cdworld.com, is confusingly similar to the Complainant’s servicemark COMPACT DISC WORLD.
2. The Respondent has no rights or legitimate interests in the domain name; and
3. The domain name has been registered and is being used in bad faith.
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 Complainant has a valid mark that has been upheld by the TTAB as against the Respondent’s attempt to register the CD WORLD mark. Furthermore, the evidence establishes that third parties regularly refer to the Complainant as “CD World”. There is no question, and indeed, the Respondent does not seriously contest, that the domain name in question is confusingly similar to the Complainant’s mark. There is no question that an Internet user would assume that the domain name is somehow affiliated with the Complainant when in fact no such relationship exists. The Complainant succeeds on this element.
The Respondent registered the domain name in November 1994 and began using the domain name in December 1994, long after the Complainant had began using its mark (1986) and long after the Complainant’s first trademark registration was granted (February, 1990). Had the Respondent conducted a proper trademark search at the time, it is quite likely Complainant’s marks would have surfaced. The Respondent chose, however, to search only for identical marks leaving itself open to the very situation that transpired. Respondent cannot acquire rights or legitimate interests in a mark by willful blindness to the existence of the rights of others.
Immediately upon learning of the Respondent’s use of cdworld.com, the Complainant put the Respondent on actual notice of its registered trademarks. Contrary to Respondent’s contention, the October 18, 1995 cease and desist letter makes specific mention of Respondent’s use of CD World on the Internet. The Respondent, nevertheless, chose to continue to use the mark in its Internet business for a number of years and only stopped using the name after the TTAB decision in favor of the Complainant. I find, therefore, that the Respondent’s prior use of the domain name cdworld.com to sell goods competing with those of the Complainant was not a legitimate use and not a bona fide offering of goods. See for example The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000). The fact Respondent continued to use the name for six years could not have the effect of creating in the Respondent a right or legitimate interest that did not exist at the outset.
The Complainant succeeds on this element as well.
For purposes of this case, the most relevant paragraph of the definition of “bad faith” in the ICANN Policy is 4(b)(iv) as follows:
“Whether by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.”
Just as Respondent could not create rights or legitimate interests by turning a blind eye to the possibility of rights of others, neither can Respondent be found to act in good faith in these circumstances. Initially, Respondent registered the domain name having done a very narrow trademark search to determine if there was an identical mark in existence. No effort was made to determine if use of the disputed domain name might infringe the existing rights of others. Respondent, upon being notified of Complainant’s marks and having been asked to cease using the mark, ignored Complainant’s request and continued to use the mark in its business. The fact this continued for approximately six years until after the TTAB decision, does not assist Respondent, because nothing occurred during that time to create for the Respondent any rights or legitimate interests in the domain name. Respondent’s attempts now to sell the disputed name to Complainant and to threaten to advertise the name for sale to third parties, is merely evidence of continuing bad faith.
Complainant has established the third element of bad faith.
DECISION
Having found as I have, this case is determined in favour of Complainant, and, bad faith having been established, I order that the domain name “cdworld.com” be transferred to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: August 15, 2001
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page