eMusic.com Inc. v. Olivier Azoulay
Claim Number: FA0512000612819
PARTIES
Complainant is eMusic.com Inc. (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas,
New York, NY 10036-6799. Respondent is Olivier Azoulay (“Respondent”),
represented by Nick Bouzouita, of Doyon Izzi Nivoix 6455, Jean-Talon East, suite 501, Montreal, PQ
H1S 3E8, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <www-emusic.com> and <www-e-music.com>, registered with Go Daddy Software, Inc.
PANEL
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 21, 2005; the National Arbitration Forum received a
hard copy of the Complaint on January 3, 2006.
On December 22, 2005, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <www-emusic.com>
domain name is registered with Go Daddy Software, Inc. and that the
Respondent is the current registrant of the name. On January 3, 2006, Go Daddy Software, Inc. confirmed by e-mail
to the National Arbitration Forum that the <www-e-music.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 January 10, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 30, 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@www-emusic.com and
postmaster@www-e-music.com by e-mail.
A Response was received on January 30, 2006. The Response was received in electronic form only and thus, the
Forum does not consider the Response to be in compliance with ICANN Rule #
5(a).
An Additional Submission was received from Complainant on February 3,
2006, comprised of responses to arguments in the Response.
Under the circumstances, the Panel determines that in the interest of
fairness it is appropriate to consider the Response notwithstanding its
procedural deficiency. The Panel
considers Complainant’s proposed Additional Submission to the extent that it
addresses matters that could not reasonably have been anticipated when the
Complaint was submitted.
On February 6, 2006, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant operates an online music store, EMUSIC, with over 120,000
subscribers. Complainant is the owner
of various trademark registrations for its EMUSIC mark in the United States,
Canada, and other countries.
Complainant alleges that Respondent’s domain names <www-emusic.com>
and <www-e-music.com> are confusingly similar to Complainant’s
domain name, <emusic.com> (rendered as <emusic.com> in the URL for
Complainant’s website), and to Complainant’s EMUSIC mark.
Complainant
further alleges that Respondent uses the domain names for a website that
promotes peer-to-peer music services that violate United States copyright laws,
and that competes directly with Complainant’s established business. Complainant contends that these illegal and
infringing uses cannot give rise to rights or legitimate interests in the
disputed domain names, and that such deliberately misleading use of the domain
names constitutes bad faith.
B. Respondent
Respondent denies any confusion among Internet users. Respondent’s web pages explicitly disclaim
any affiliation with competitors. The
peer-to-peer networks that Respondent promotes “may or may not sell music sold
by Complainant,” and also provide access to materials other than music.
Respondent further claims to have a legitimate interest in the disputed
domain names arising from Respondent’s commercial activities, and denies having
acted in bad faith. In particular,
Respondent denies any knowledge of illegal activities performed using
peer-to-peer networks, and notes that at least some of the uses of these
networks are lawful.
C. Additional Submission
In its Additional Submission, Complainant reiterates the arguments in
its Complaint and responds to various arguments put forth in the Response. In particular, Complainant denies that the
disclaimer is sufficient to avoid confusion, and provides evidence attesting to
actual confusion among Internet users.
FINDINGS
The Panel finds that the disputed domain
names are identical to Complainant’s EMUSIC mark, that Respondent lacks rights
or legitimate interests in the disputed domain names, and Respondent registered
and is using the disputed domain names 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 disputed domain names differ from
Complainant’s EMUSIC mark only in the addition of the generic prefix “www‑”
and the generic top-level domain suffix “.com,” and, in one instance, the
insertion of a hyphen between “e” and “music.”
These differences are inconsequential; the disputed domain names are
clearly confusingly similar to Complainant’s mark.
Respondent’s business consists of promoting
the use of peer-to-peer file sharing networks.
The Panel assumes, for purposes of this matter, that this business is
legal, at least in substantial part.
However, Respondent’s use of the disputed domain names—domain names that
are confusingly similar to Complainant’s established mark and identical but for
minor variations in punctuation to Complainant’s URL—unquestionably infringes
upon Complainant’s trademark rights.
The Panel notes that Respondent has neither disputed Complainant’s
rights to the EMUSIC mark nor contended that Respondent is using EMUSIC in a
generic or descriptive sense. The Panel
therefore concludes that Respondent’s infringing use of the disputed domain
names does not give rise to rights or legitimate interests.
The Panel believes it reasonable to infer
that Respondent selected the disputed domain names because of their confusing
similarity to Complainant’s URL, <emusic.com>, and that Respondent is
using the disputed domain names for a business that exists solely to trade upon
this confusion. The Panel therefore
concludes that the disputed domain names were registered and are being used 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 <www-emusic.com>
and <www-e-music.com> domain names be TRANSFERRED from
Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 16, 2006
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