Multitracks.com, LLC v. George George / George
Claim Number: FA2211002020063
Complainant is Multitracks.com, LLC (“Complainant”), represented by Alison Frey of Dickinson Wright PLLC, US. Respondent is George George / George (“Respondent”), represented by Keane Barger of LOEB & LOEB LLP, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <multitrack.com>, registered with GoDaddy.com, LLC.
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.
Aaron B. Newell, ESQ as Panelist.
Complainant submitted a Complaint to Forum electronically on November 13, 2022; Forum received payment on November 14, 2022.
On November 14, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <multitrack.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 21, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on November 21, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 16, 2022.
On December 22, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Aaron B. Newell as Panelist.
Additional Submissions were received as follows:
i) December 22, 2022 Complainant filed an unsolicited supplemental submission with evidence in reply to the Response;
ii) December 27, 2022 Respondent filed an unsolicited reply to Complainant’s December 22, 2022 submission;
iii) on review of the parties’ submissions, on January 3, 2023 Panel issued a procedural order seeking further evidence and comments from both parties. Specifically, the Panel requested that the Complainant provide further evidence in support of its claim to secondary meaning and/or acquired distinctiveness in the trademarks on which it relies in support of its Complaint. The Panel then invited the Respondent to reply to any response filed by Complainant.
iv) Complainant responded to the procedural order with a submission on January 18, 2023;
v) on January 31, 2023 Respondent replied to Complainant’s submission.
The Panel accepts into the record all supplemental filings by the parties, including the parties’ unsolicited submissions.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant asserts that:
i) it has unregistered rights in the names MULTITRACKS and/or MULTITRACKS.COM and/or rights in the name MULTITRACKS by virtue of US trademark registration no 4872184 MULTITRACKS CLOUD, which is registered on the supplemental register;
ii) it uses the aforesaid names and, primarily, MULTITRACKS.COM in connection with a business offering digital music resources for musicians in worship services, including backing tracks for performances and recordings;
iii) it is a pioneer in its field and has built up this business to become the market leader in this particular area;
iv) Respondent is a competing business and has been aware of Complainant and its use of the name MULTITRACKS for years prior to its registration of the domain name;
v) Respondent is not authorized or licensed to use Complainant’s MULTITRACKS name, or variations thereof;
vi) Respondent has used the domain name to redirect web traffic to a website that it owns and that offers services that are related to Complainant’s field of business and/or that compete with Complainant;
vii) Respondent’s intention is to use the domain name to disrupt the Complainant’s business and/or damage its MULTITRACKS brand;
viii) Respondent is therefore using a domain name that is similar to a name in which Complainant has rights, has no legitimate interest in that domain name and has registered and used it in bad faith, meriting transfer of the domain name to Complainant pursuant to the Policy.
B. Respondent asserts that:
i) MULTITRACKS is a descriptive and/or generic name. Specifically:
Multitracks are the individual audio parts that are recorded separately for audio production. … Often, each track is a different instrument—a separate track for keyboard, drums, guitars, bass, etc. Multitracks are useful for worship music in numerous ways. For example, a musician is able to practice and learn the part for his or her individual instrument by listening to one track. Or, if a bass player is sick, a band can play the bass part for a particular song while the other band members play their instruments.
ii) Complainant has not established that it has any rights in this name. The bar is high to establish rights in a generic or otherwise non-distinctive term. Registration of a mark on the supplemental register does not satisfy the requirement;
iii) the descriptive nature of the term MULTITRACK is a legitimate basis for Respondent’s registration of the domain name, including because Respondent has used the domain name to provide information about multitracks and sell multitracks to consumers;
iv) the Complainant has no rights in the claimed trademarks and therefore Respondent could not have acted in bad faith;
v) Complainant itself has acted in bad faith by attempting to corner the market and monopolise the “generic term” “multitrack”.
Note that despite the above assertions, and v) in particular, Respondent does not allege reverse domain name hijacking. Panel will therefore not consider reverse domain name hijacking as part of its decision.
As a preliminary point, Panel should note that by reference to the Whois record for the domain name, the nominal Respondent is “George George / George”, which is not the name of any person or entity otherwise relevant to these proceedings.
Respondent’s counsel confirms that “George George / George” is a reference to George Ross, president of Christian Copyright International Licensing (“CCLI”).
Respondent’s counsel refers to Mr. Ross as “a/k/a CCLI”, refers to CCLI as the Respondent, and attributes the acts of Mr. Ross to CCLI.
Panel proceeds on the basis that insofar as “George George / George” is the nominal Respondent, this means George Ross, who acts for and on behalf of CCLI, and that the conduct of Mr. Ross is attributable to CCLI, which is considered the Respondent in the case, consistent with the approach taken by Respondent’s counsel.
In terms of findings of fact, Panel finds that:
i) Complainant has for many years used the names MULTITRACKS and MULTITRACKS.COM in respect of a varied music-related business providing instrumental music files and related services for worship music artists.
ii) Complainant’s only registered rights in or for a sign that contains the word MULTITRACK or similar are a single United States trademark registration for MULTITRACKS CLOUD on the supplemental register.
iii) Respondent and Complainant are competing businesses.
iv) Respondent has used the domain name to redirect traffic to loopcommunity.com, where Respondent offers goods and services in direct competition with Complainant.
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."
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.
Under Policy 4(a)(i) Complainant has asserted two key categories of rights:
i) a United States trademark registration for MULTITRACKS CLOUD on the supplemental register (“the Registration”); and
ii) common law rights and goodwill in MULTITRACKS, including as MULTITRACKS CLOUD and MULTITRACKS STREAMING, and in the domain name MULTRACKS.COM.
Panel notes that complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights.
Similarly, reliance on unregistered rights based on goodwill and reputation requires that Complainant show that its mark has become a distinctive identifier which consumers associate with its goods and/or services.
With that said, even if goodwill, reputation and/or secondary meaning exists only in a particular geographical area or market niche this does not preclude a complainant from establishing trademark rights (and as a result, standing) under the UDRP.
In the present case, Complainant essentially asserts rights in the name MULTITRACKS and submits that MULTITRACKS (including as used in Complainant’s domain name MULTITRACKS.COM) and MULTITRACK.COM are confusingly similar.
Respondent by contrast takes the position that the term MULTITRACKS is a “generic, non-protectable” term. It notes that:
The term “multitrack” means “using more than one audio track.” See
multitrack, MERRIAM-WEBSTER DICTIONARY, https://www.merriam-webster.com/dictionary/multitrack (last accessed Dec. 12, 2022); see also multitrack, CAMBRIDGE DICTIONARY,
https://dictionary.cambridge.org/dictionary/english/multitrack (last accessed Dec. 12, 2022) (“involving the mixing of several separately recorded tracks (= pieces of music or sound), or made using this method”); multitrack, LAW INSIDER, https://www.lawinsider.com/dictionary/multitrack
(last accessed Dec. 12, 2022); (Resp. Annex D (collecting dictionary definitions).) Thus, “multitracks” is simply the common name for the class of products at issue.
The definition of “multitracks” is consistent with public usage, including usage specifically within the music worship licensing market at issue here. The term “multitracks” is commonly understood by the public to refer to audio files containing individual parts or stems. (See Resp. Annex C
(collecting articles and public sources describing history and nature of multitracks).) The public uses the term multitracks as the common name of the type of audio file in which Complainant claims to have rights. (Id.) Indeed, the term “multitrack” is used to describe the hardware that
musicians use to record and mix audio stems. (Resp. Annex E (collecting screenshots of multitrack hardware sellers).
Respondent does not assert that Complainant uses “multitrack” for hardware. Rather, Respondent asserts that Complainant offers “multitracks”, i.e. audio music files in which individual elements of a composition (different instruments, different vocal parts) can be isolated. Respondent submits a number of examples of third parties in the field of worship music using the term “multitracks” in this sense.
Respondent’s key argument here is that Complainant cannot claim rights in “multitracks” because the bar is too high due to the generic nature of the name.
Complainant’s primary argument is that through its use of the name it has acquired secondary meaning. In support, Complainant:
i) provides evidence of use of the name as a trademark since 2012, including at the domain name multitracks.com;
ii) describes its business as more than simply providing “multitracks”. Rather it describes itself as follows:
[a] digital resource for worship teams for their rehearsal and performance needs. Complainant was founded in 2006 as a
technology and licensing platform, pioneering a way to provide worship leaders with original artist master tracks for live performance use in worship services. It has since expanded to provide teams around the world with access to innovative, proprietary software and digital resources. Complainant has partnered with thousands of song and master owners to create a direct pathway to worship teams so they may benefit from
these resources to prepare songs for Sunday morning;
iii) gives evidence that as at the end of 2020 there were over 320,000 registered user accounts for its services;
iv) provides significant evidence of advertising and marketing in music and specifically worship music industry publications, all in respect of its use of “MultiTracks”;
v) demonstrates that it advertises its MultiTracks name and business at the Dove Awards, which is referred to frequently as “the Grammys of the Christian music industry”;
vi) provides published interviews with its founder Philip Edwards from industry magazines (in one, dated 2013, MultiTracks.com is highlighted as one of twelve key technological innovations for worship leaders);
vii) provides links to YouTube videos of “MultiTracks Sessions” where artists perform live at the MultiTracks.com studio in Austin, Texas, some videos demonstrating view counts of 19,000 and 35,000;
viii) provides a statement of truth from Timothy Whincop, the General Counsel of Christian Music record label Hillsong, in which Mr. Whincop states:
Record labels and artists all recognize that the MULITITRACKS.COM trademark is associated with Multitracks, LLC and represents the premium platform for worship music resources
In the interests of ascribing an appropriate amount of weight to this statement, the Panel researched Hillsong and found that while it has been subject to some negative media attention, within the music industry specifically it has been described as one of Australia’s biggest musical exports, and in a 2020 article by Rolling Stone magazine, a “hit-making music machine”;
ix) demonstrates instances where Respondent’s Loopcommunity business (https://loopcommunity.com/, to which the multitrack.com domain name redirected until the Complainant objected to this), is advertised alongside Complainant’s Multitracks.com name, and one article (published 2018) where the products of the two businesses are compared in order to determine “which [of the two] is best for your worship ministry?”;
x) provides various other examples of a material online presence as well as advertising, marketing and media coverage, primarily all within the worship music or worship leader services industry.
In response to the Complainant’s evidence relating to secondary meaning, Respondent provides further examples described as generic use of the name “multitracks”, including:
i) multitrackstudio.com – this refers to audio recording software, however it does not directly relate to the worship community or industry, and – notably – reviews that appear on the website demonstrate consumers that understand that this is the name of the business and not simply a description of the product;
ii) multitracksforworship.com – this is a website offering audio files for the worship community, but the website consistently uses the Complainant’s “MultiTracks” stylized spelling which, based on the evidence provided by both parties, appears to be unique to or at least largely indicative of the Complainant, and in turn suggests a recognition of the Complainant’s business;
iii) multitrack-films.com – this demonstrates use of Multi-Track by a video production company. The primary intention appear to be for Multi-Track to be used as the company’s trade mark, and apparently intended to be a reference to the company offering “multiple” different media-related services;
iv) multitrackfellowship.wordpress.com – this is a reference to a fellowship used to support entry-level audio production staff. It is not directly descriptive or generic.
Based on the evidence submitted by both parties, the Panel finds that within the niche market of services for Christian worship leaders or, more specifically, services for providing backing music for Christian worship leaders, the Complainant is recognised as a market-leading business. It has been trading under the MultiTracks.com name for approximately a decade, during which time it has consistently advertised and marketed its business in relevant media, appears to have gained a material degree of recognition under the MultiTracks name (including the MultiTracks.com domain name) such that competing use of the identical or near-identical name as a trademark or other indicator of origin could confuse, mislead and/or deceive consumers that the respective business are the same or are somehow commercially connected.
Accordingly, while the scope of Complainant’s goodwill and reputation may be limited to a niche market, it does appear to subsist within that niche market, despite any descriptive or generic connotation of the term “multitracks”. Panel here notes that Complainant’s business is not simply limited to the sale of audio files. Complainant appears to have built a community of consumers who would recognize it also for various software products (which relate to production and editing), charts and other music-related services such as provision of concert videos. Not all of these services are equally described as “multitracks”, but they are all recognizable as being offered by the Complainant under its MultiTracks name.
Panel therefore finds that Complainant has rights in the name MULTITRACKS, including as MULTITRACKS.COM. These rights may be limited and/or may subsist in a niche market, but Complainant is one of the key players within this market, and has been recognized within this market as MultiTracks and/or MultiTracks.com for a significant period of time.
Panel further finds that, accordingly, the domain name multitrack.com is confusingly similar to a trademark or service mark in which Complainant has rights. While even slight differences between arguably-generic or descriptive signs can be sufficient for the signs to be distinguished, in the present case Respondent’s domain name:
i) in respect of MULTITRACKS, differs only by omission of the letter ‘s’ at the end of the word MULTITRACK and the addition of the “.com” extension which, in the circumstances, is to be discounted in the comparison;
ii) in respect of MULTITRACKS.COM, differs only by way of a single letter that may not be perceived by all consumers using the respective domain names, or that might easily be omitted when typing the domain name into a browser, and does nothing to otherwise differentiate itself from Complainant’s rights.
Panel accordingly finds that Complainant has satisfied the requirement under Policy 4(a)(i).
Generally, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the potentially-difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
Complainant demonstrates, and Respondent confirms, that Respondent has used the domain name (which Panel finds is confusingly similar to a name in which Complainant has rights) to redirect internet traffic to Respondent’s domain name loopcommunity.com, where Respondent offers products and services in competition with those of Complainant. Panel finds that this shifts the burden to Respondent to demonstrate its rights and/or legitimate interest in the domain name.
Respondent’s justification for its use and registration of the domain name can be distilled as follows:
… “multitrack” is merely a generic, dictionary term used to describe certain products that CCLI offers. CCLI has a legitimate interest in the domain name multitrack.com because it has used the domain name to provide information about multitracks and sell multitracks to consumers.
First, Panel does not accept that Respondent’s use of the domain name has primarily been informative. Panel therefore cannot conclude that Respondent was, for example, making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Rather, Respondent’s conduct was distinctly commercial, as until Complainant requested that Respondent cease, Respondent used the domain name to redirect internet traffic to loopcommunity.com, at which it offers goods and services that compete directly with those of the Complainant. Indeed, Respondent confirms this in its submissions, but appears to assert that this is justifiable because at loopcommunity.com it sells “multitracks”.
The key question then becomes whether Respondent’s use of the domain name was in connection with a bona fide offering of goods or services?
Respondent relies heavily on the generic or dictionary meaning of “multitrack” to support its position that has a legitimate interest in the domain name.
In that regard, the WIPO Jurisprudential Overview 3.0 states as follows:
In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.
In this connection, Panel notes that Respondent’s own website infrequently uses the term “multitrack” and primarily does so in an adjectival sense when describing a “multitrack playback app”.
Consistent with this, the dictionary resources at www.merriam-webster.com, dictionary.com and https://dictionary.cambridge.org/ all refer to “multitrack” as an adjective.
It is possible that “multitrack” could be interpreted as a verb. In turn, Respondent could in theory argue that its intention with multitrack.com is to communicate that it “multitracks” or is a resource for “multitracking”. However Respondent does not describe itself as offering “to multitrack” anything.
“Multitrack” could also be the singular version of “multitracks”, however there is no evidence that it is used in this way by Respondent. Aside from the limited adjectival example above, Respondent does not appear to use the term “multitrack” (in a descriptive, trademark or other sense) and does not appear to use it interchangeably with or to mean the same thing as “multitracks”.
Put more simply: Respondent bases its claim to a legitimate interest on the domain name being used for a meaning that, according to the evidence, it does not obviously have.
If Panel is wrong about this, Panel also finds that, generally, while Respondent asserts that it registered the domain name to provide information about and to sell multitracks, this is, on balance of probabilities, not likely to be its primary reason for its registration of the domain name.
Ultimately, the facts do not demonstrate that, at any time up to the registration of the domain name, loopcommunity.com relied on the term “multitrack” as a descriptor of or reference to its business. There is no explanation as to why, shortly after CCLI’s acquisition of loopcommunity.com, it decided that the domain name “multitrack.com” should be registered and redirected to loopcommuity.com in order better promote “multitracks” offered by loopcommunity.com. There is no evidence of a marketing strategy around the domain name, no evidence of a need or obvious benefit that could be derived from an extra resource used to “provide information about” and/or “sell” multitracks, and no explanation as to why or how this would be accomplished by redirecting the domain name to loopcommunity.com. The Panel considers that, on balance of probabilities, the primary intention of the Respondent was to drive traffic to loopcommunity.com, not for the domain name to be its own resource for multitracks.
Accordingly, Panel finds it more plausible that the domain name was registered as a reference to the Complainant, i.e. to trade off third-party trademark rights, which the Respondent did by way of its redirection.
This conduct de-legitimizes any interest that Respondent claims it may have in the domain name as being used legitimately in connection with a bona fide offering of goods and/or services.
In the circumstances, and having considered the Respondent’s arguments and conduct, the dictionary meanings of “multitrack”, and the marketplace evidence submitted by both parties, the domain name makes more sense as a typo-variant of Complainant’s trademark than it does a bona fide descriptor of Respondent’s business.
Respondent’s arguments as to legitimate interest therefore do not appear to the Panel to be credible or well-founded. Respondent has not rebutted the presumption raised by Complainant. The Complainant therefore succeeds under Policy 4(a)(ii).
The Panel has found that Respondent does not have a legitimate interest in the domain name, and that the domain name is confusingly similar to names in which the Complainant has rights. The final question is whether Respondent has used and registered the domain name in bad faith.
Respondent’s history as a business dates back to around 1985. Since that time Respondent has grown a business offering copyright licenses that, in its own words, “facilitate worship across the United States”, offering licenses “for various uses of different types of works to churches, e.g., worship songs for congregational singing, streaming or podcast recordings of worship music, and licenses to use movie clips in church”.
In 2020, growing its business, Respondent acquired Omnisonic Media Group LLC d/b/a Loop Community, a direct competitor of the Complainant.
Loop Community had for years before this offered and promoted its products and services at the domain name loopcommunity.com.
Loop Community and the Complainant had been competitors for years before Respondent’s acquisition. Panel again notes, for example, the 2018 article mentioned above comparing the benefits of the parties’ respective competing products.
Shortly after acquiring Loop Community the Respondent used a domain name broker service to acquire the domain name multitrack.com in 2021. Respondent was almost certainly aware of Complainant at that time given both parties’ involvement in the worship music industry. Respondent is not a naďve business and it is unlikely that it would not have been aware of the marketplace for the parties’ services prior to acquiring Loop Community. Notably, Respondent’s own evidence confirms that by 2022 Respondent’s president George Ross had known Complainant’s Director of Global Licensing and Partnerships, Steve McPherson, “for several years”.
Once it acquired the domain name, Respondent then redirected traffic from multitrack.com to loopcommunity.com.
Respondent argues that its registration was justified in order to secure a domain name by which it could provide information about and sell “multitracks”. As noted above, Panel does not find this to be credible. Panel has concluded that Respondent’s primary motivation for acquiring the domain name was to use a name similar to that of a key competitor in order to drive traffic to its recently-acquired Loop Community business.
In this regard, it should be noted that by this time loopcommunity.com already enjoyed its own reputation in the field of music support for worship leaders. Respondent was already “selling” and “providing information” at loopcommunity.com. In the circumstances, and again noting that the parties were competitors, Panel does not find it convincing that Respondent would acquire from a broker (presumably for cost above and beyond standard registration fees) a domain name that is nearly identical to the name of one of its best-known competitors, for the primary purpose of using it as an informational and sales resource.
It should be mentioned that once Complainant objected to Respondent’s use of the domain name to redirect traffic to loopcommunity.com, Respondent changed the redirection to worshipfuel.com, a blog site managed by Respondent and to which Loop Community contributes.
Respondent describes this decision as “a friendly gesture” given the pre-existing relationship of several years between Respondent’s director George Ross and Complainant’s Steve McPherson.
Regardless of how described by the Respondent, the removal of the redirection away from loopcommunity.com does not cure Respondent’s prior conduct for the purposes of the assessment under Policy 4(a)(iii).
Panel accordingly finds that Respondent acquired the domain name primarily in order to redirect website traffic from multitrack.com to loopcommunity.com. This traffic would be likely to include consumers seeking Complainant’s business. Respondent’s conduct is both an act of typosquatting and indicative of the following two examples of bad faith use and registration set out under Policy 4.b.:
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
The Complainant therefore succeeds under Policy 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <multitrack.com> domain name be TRANSFERRED from Respondent to Complainant.
Aaron B. Newell, Panelist
Dated: February 19, 2023
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