WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Music U AG vs. J. Nauta
Case No D2000-1019
1. The Parties
Complainant is Music United AG, Magdeburger Strasse 13, 20457 Hamburg, Germany. It is represented in this case by Rechtsanwälte Dornheim, Geising, Dr Plantholz, Tesdorpfstrasse 17, D-20148 Hamburg, Germany
Respondent is J. Nauta, Petrusstraat 55, 4834 WR Breda, the Netherlands. Respondent is represented in this case by Wouters Advocaten & Notarissen/Andersen Legal, P.O. Box 75381, 1070 AJ Amsterdam, the Netherlands.
2. The Domain Name and Registrar
The domain name at issue is "musicu" and the Registrar is Network Solutions, Inc, Virginia, United States.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the Center) on August 11, 2000, by e-mail and on August 15, 2000, in hardcopy. On August 24, 2000, the Center acknowledged receipt of the Complaint and also requested clarification as to whether the domain name at issue was "musicu" and not "www.musicu", which was confirmed by Complainant the following day.
Having sent, on August 24, 2000, a Verification Request to Network Solutions, the Center received, on August 25, 2000, a Verification Response. In that Response it is indicated
that Network Solutions was in receipt of a copy of the Complaint;
that Network Solutions is the Registrar of the domain name at issue;
that the current registrant of the domain name is (MUSICUNITED-DOM) Petrusstraat 55, Breda, Brabant 4834 WR, the Netherlands;
that the domain name is "musicu";
that the Administrative Contact, Billing Contact is "Nauta.J (JNG196) "ovma@CASEMA.NET" with the same address as for the registrant;
that the Technical Contact, Zone Contact is "DNS-admin, FutureQuest (FD1304)dns-admin@FUTUREQUEST.NET, FutureQuest, Inc. PO Box 623127, Oviedo, FL32762-3127" with telephone and fax numbers also indicated;
that Network Solutions�5.0 Service Agreement is in effect; and.
that the domain name registration "musicu" is in "Active" status.
Having verified that the Complaint satisfied the formal requirements under the Policy and the Rules, the Center issued, on September 20, 2000, a Notification of Complaint and Commencement of Administrative Proceeding which was communicated to the Respondent, the Technical/Zone Contact and to "postmaster@musicu" and "Info@musicu" by post/courier with enclosures and by fax and e-mail without such enclosures. It was also copied to Complainant�s representative by e-mail and to ICANN and the Registrar.
On October 9, 2000, the Center received a Response of which the Center acknowledged receipt on October 12, 2000.
Having invited Mr. Henry Olsson to serve as a Sole Panelist in this case and having received Mr. Olsson�s Statement of Acceptance and Declaration of Impartiality, the Center issued, on November 6, 2000, a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr.Olsson was formally appointed as Sole Panelist. The Projected Decision Date was November 20, 2000.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
Music United AG is a joint-stock corporation whose place of incorporation is Hamburg, Germany, which is also its principal place of business.
In the Complaint, Complainant agrees, in accordance with Paragraph 3(b)(xiii) of the Rules to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer the domain name at issue to the jurisdiction of the courts where the Respondent is located (which according to Registrar's Whois database would be the courts of District Brabant, the Netherlands).
The Complainant also asserts that there are no other legal proceedings that have been commenced or terminated in connection with or relating to the domain name at issue.
5. Parties� Contentions
A. Complainant
Background.
Complainant states that it is registered in the register of companies of Hamburg with the company name "music u AG" under the number HRB 73401. To support this statement, Complainant has submitted a copy of this registration (stating i.a. that the activities of the company would include " die Entwicklung�� von Softwareprodukten, insbesondere mit kommerzieller Einbindung von internetbasierten Musik- und Entertainmentinhalten".
Complainant�s business is, according to the Complaint, to project and develop software products, which are commercially linked to internet-based music and other entertainment. For that purpose a search engine and a software platform are installed with the domain "music-u" which is already registered by Complainant. By using the search engine and this domain name Complainant offers, for instance, data bank services to customers who look for certain kinds of music, especially rare songs or recordings which can only be obtained in specialized shops.
If customers so want, Complainant also offers links to certain providers for downloading music data files or provides links to those who offer for instance CDs.
Complainant started his business at the beginning of 2000 and intends to develop it into a worldwide business in a near future.
Contentions
Complainant contends that Respondent is required to submit to a mandatory administrative proceeding because (a) the domain name is identical or at least confusingly similar to Complainant�s registered name in which he has a right as a "business signature" or a trade name; (b) Respondent has no rights or legitimate interests in respect of the domain name; and, (c) the domain name at issue was registered and is being used in bad faith.
To support these allegations, Complainant has developed his arguments mainly in the following way.
The domain name "musicu" is identical to the registered name of the Complainant. By using the domain name or refusing to transfer it to Complainant, Respondent violates the rights of Complainant to use its name in business.
The protection for the trade name "music u" not only allows Complainant to use that name in business, but also to prohibit others from using names or signatures, which are identical or alike. To support these statements Complainant has submitted a copy of its letterhead.
Complainant also contends that an application for registration of "music u" as a trademark has been filed. Complainant has submitted a copy of the acknowledgement of receipt ("Empfangsbescheinigung") of June 20, 2000 by Deutsches Patent- und Markenamt in Munich ("Aktenzeichen 300 40 747.5/42) indicating that the application was received on May 29, 2000.
According to Complainant, Respondent does not use the domain name at issue for any business; the domain name has been "parked" since April 6, 2000. The domain name at issue differs from the domain "music-u" only by the hyphen. Therefore, there is a risk that customers will confuse the domain names thereby causing Complainant economic losses and it is from this point of view without importance if the domain name is used in business or is simply parked.
From the pre-complaint communication it is, according to Complainant, clear that Respondent�s main intention is to sell the domain name and not to use it for his own business. Thus, on June 29, 2000, Complainant�s representative tried to serve a "declaration of forbearance and commitment" in hard copy to be signed by Respondent. The declaration was sent to the mail address indicated in the Whois database, but the delivery failed and the letter was sent back to Complainant. Then Complainant�s representative contacted Respondent by e-mail asking him to sign the declaration. Respondent refused to transfer the domain name at issue stating that he had his own intentions to set up a "music related internet site." To support these statements, Complainant has submitted copies of a DHS "Shipment Airwaybill" and of letters and e-mails relating to these contentions..
Complainant then offered Respondent the amount of EUR 2000 for agreeing to transfer the domain name at issue to Complainant, as shown in a copy of the offer submitted by Complainant. Respondent rejected, according to an e-mail (a copy of which is submitted in the case) the offer and requested the amount of EUR 20000. Complainant did not want to accept that offer.
Complainant considers that Respondent�s declared intention to set up a music related Internet site is not convincing. The domain name at issue was registered on November 20, 1999, but now, ten months later, the domain name is still not being used. According to Complainant, Respondent registered the domain name at issue primarily for the purpose of selling it. This was shown by his demand of EUR20000 to transfer it.
Complainant also contends that the contact details in the Registrar�s Whois database are not correct and have not been corrected. Complainant contends that "Respondent intended to avoid (international) legal proceedings which are not viable by electronic communication."
In summary, according to Complainant, by keeping the domain name registered only for the purpose of selling it, Respondent is violating Complainant�s rights and those circumstances are to be considered as using the domain name in bad faith within the meaning of Paragraph 4 of the Policy.
Complainant states that Respondent has no right to block the domain name at issue anyway, even if he had concrete plans to start an internet business using that domain name in the future; the right of Complainant to use his own name and "business signature" cannot be affected by any general interest to set up an Internet site which was somehow music-related. Respondent�s offer to sell the domain name for EUR 20000 and his assertion of having his own plans for using the domain name can, according to Complainant, be considered to have been made only for his defence.
Remedies requested
In accordance with Paragraph 4(i) of the Policy, Complainant requests that Panel issue a decision to the effect that the domain name be transferred to Complainant.
B. Respondent
General
In his Response, Respondent first requests the Panel to deny the remedies requested by Complainant and asks the Panel to make a finding of "reverse domain name hijacking." Respondent then specifically responds to and elaborates on the statements by Complainant concerning (a) Respondent�s legitimate interests in the domain name; and, (b) bad faith.
Response
As regards Respondent�s legitimate interests in the domain name at issue, Respondent states that he registered it on November 20, 1999, with the intention of creating a music-related website.
Respondent had no prior knowledge of Complainant and its business. In fact, Complainant did not even exist at the time Respondent registered the domain name. Complainant registered the domain name "music-u" on January 27, 2000. To support these statements, Respondent has submitted extracts from the Whois database. Furthermore, Complainant applied for registration of the trademark "music u" with the German Trademark Office on May 29, 2000, as shown in an acknowledgement of receipt submitted by Respondent, and Complainant was not registered with the German Chamber of Commerce until June 19, 2000, as shown in an extract from Handelsregister Amtsgericht Hamburg. From these circumstances it is, according to Respondent, clear that he could not have had any knowledge of Complainant or his business at the time of the registration of the disputed domain name.
Respondent�s intention is to unite several music-related sites under the domain name "musicu" to offer services such as lyrics and other music-related websites. Because of this intention to "unite" such sites, it is, according to Respondent, obviously logical to choose the domain name "musicu". An interim website, with logo, was in fact active under the domain name at issue until April 2000, as shown in a hard copy of part of the content of that site submitted by Respondent. That interim website was hosted by WebHosting.Com as from November 19, 1999; Respondent has submitted a copy of an e-mail from the web host confirming the hosting of that website. Respondent registered his business under the name "Intense Media" with the Trade Register of the Dutch Chamber of Commerce on March 1, 2000, as shown in an extract from that Register. According to the registration, the activities of the business were, among other matters, also to provide internet-related services.
Respondent was not aware of the existence of Complainant or of any conflict or potential conflict with respect to the domain name at issue until Complainant notified Respondent by an e-mail around June 29, 2000. Therefore, Respondent has been using the disputed domain name in connection with a bona fide offering of goods or services before any notice or potential dispute.
Furthermore, Respondent contends that he decided to park the website in April 2000 due to, among other things, the fact that there were defaults of the web host in hosting the interim website. The website is still "parked" because Respondent has until now been busy with finalizing his activities relating to another very successful music-related web page. Respondent now intends to fully concentrate on further development of the music-related web page under the disputed domain name. Also, as Respondent has no staff he did not have sufficient time available to fully focus on the activities required to fully maintain and further develop the site under the disputed domain name.
Respondent further contends that Complainant registered its domain name "music-u" after Respondent registered the disputed domain name and that up till now, Respondent has not received any inquiries regarding the now-disputed domain name. Because of these circumstances, Complainant is itself responsible for the risk of customers confusing the domain names. Respondent is also concerned about confusion between the two domain names, as Complainant�s domain name is identical or at least confusingly similar to the disputed domain name. Therefore, a considerable risk exists that the relevant Internet audience looking for Respondent�s website will be directed to Complainant�s site. For this reason a finding of "reverse domain name hijacking" is requested (as further discussed below).
Taking all these circumstances into account Respondent considers that Respondent has a legitimate interest in the domain name, as Respondent has used, or has at least made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Respondent is now fully concentrating on making the "musicu" web site operational.
As regards bad faith, Respondent first contends that he was not aware of any potential conflict with the disputed domain name until the notification by Complainant around June 29, 2000. Respondent responded to the notification by stating that he was not willing to transfer the domain name and that he intended to develop his own music-related web page under the disputed domain name. Until this point in time Respondent did not know about any company named Music United AG.
It was Complainant who, in an e-mail sent on June 28, 2000, first offered to buy the disputed domain name, for EUR 2000. Respondent made a counter-offer of EUR 20000 in order to establish a dialogue with Complainant; the offer was not intended to be a final one but made more in order to ascertain Complainant�s real commercial interest. Respondent would seek an amount which would be sufficient to replace the disputed domain name with one of the same quality and potential. To support these statements Respondent has submitted a copy of Respondent�s response e-mail. In Respondent�s view, it is fully legitimate to try to reach a settlement in order to prevent legal proceedings and this will not prejudice Respondent�s right to claim any legal or other right in respect of the disputed domain name.
Finally, as regards this part of the Response, Respondent reiterates that it did not acquire the domain name at issue primarily to sell it but rather to re-start the music-related Internet site, which had been active until April 2000 and has made considerable preparations to do so.
As regards the allegation that Respondent provided incorrect contact details, Respondent contends that the contact details shown in Network Solution�s database are correct. Complainant�s communication of June 29, 2000 was delivered to Respondent�s address while Respondent was abroad and the notice requesting him to pick up the mail was unintentionally misplaced.
Furthermore, Respondent emphasizes that Complainant acquired his domain name much later than Respondent acquired his rights in his domain name. Respondent received his registration on a "first come first served" principle, has shown a legitimate interest in the domain name and did clearly not register it in order to disrupt Complainant�s business. According to Respondent, Complainant had the opportunity at the very beginning to choose another trade name when it realised that the disputed domain name had already been registered and thus the danger of confusion existed.
Therefore, Complainant�s registration and use of the domain name "music-u" should be considered as a registration and use in bad faith.
Respondent has not engaged in a pattern of registering domain names in order to prevent the owner of a trademark or a service mark from reflecting the mark in a domain name, and in this particular case Complainant had not yet registered "music u" as a trademark when Respondent registered the disputed domain name. For the same reasons, Respondent also did not use the domain name to intentionally attract, for commercial gains, Internet users to his website by creating a likelihood of confusion with Complainant�s mark.
Counterclaim
Respondent requests the Panel to make finding of "reverse domain name hijacking of "music-u" As a basis for this request, Respondent alleges that Complainant registered and used that domain name in bad faith. Respondent registered the disputed domain name on November 20, 1999 without any prior knowledge of the existence of Complainant or its business. Complainant registered its domain name on January 27, 2000, when Respondent�s interim website was active. It is, according to Respondent, likely that Complainant encountered Respondent�s earlier registration, but nevertheless proceeded with the registration of the domain name "music-u" which is confusingly similar to the disputed domain name. In doing so, Complainant took the risk of disrupting Respondent�s business now and in the future. In Respondent�s view, Complainant brought the dispute before the Panel in bad faith. No serious attempts were made to settle the matter in a friendly manner. Respondent considers that Complainant registered its domain name in bad faith and now wishes to "hijack" Respondent�s domain name.
6. Discussions and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Applied to this case, paragraph 4(a) of the Policy directs that Complainant must prove each of the following
a) that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights
b) that Respondent has no rights or legitimate interests in the domain name, and
c) that the domain name has been registered and is being used in bad faith.
In the following parts of the decision, the Panel discusses each of those elements and also Respondent�s request for a finding against Complainant.
a) Identity or Confusing Similarity.
First, the Panel notes that Paragraph 4 (a)(i) of the Policy applies only to cases of identicalness or confusing similarity between, on the one hand, a domain name (Respondent�s) and, on the other hand, a trademark or a service mark in which Complainant has rights. The Panel has consequently no competence to consider conflicts between two domain names or between a domain name and a trade name (for instance, the name of a firm, an establishment or a business if this is not also a trademark/service mark), but only relations between a domain name and a trademark/service mark.
The domain name at issue is "musicu"
Complainant has contended that it has applied for registration of "music u" as a trademark and has submitted evidence in this respect. The Panel concludes that per se that trademark would be confusingly similar to the domain name at issue.
As then regards the question whether Complainant has rights in that trademark, Complainant has submitted evidence that it has registered "music u AG" in the Register of Companies of Hamburg and thus started to use that name as a "business identifier" No circumstances have been submitted in the case to suggest that the company name is actually also a trademark or service mark even if it seems to have been used to identify Complainant�s activities and thus, at least partially, fulfils the functions of a trademark. Obviously, the company name had not at this point been registered as a trademark. There is not sufficient evidence available to the Panel to consider whether a trademark right may have been acquired through the use of the company name for the purpose of identifying Complainant�s goods or services. Because the situation in this respect is unclear, the Panel proceeds to examine the other elements mentioned in Paragraph 4(a) of the Policy.
b) Rights or Legitimate Interests
As referred to above, Respondent has mentioned a number of elements to support the contention that he has a legitimate interest in his domain name. Thus, Respondent registered the domain name at issue on November 20, 1999, and an interim website, with logo, seems to have been active under the domain name until some time in April 2000.
The Panel considers that those elements and other evidence available in the case sufficiently establish that Respondent has, in fact, a legitimate interest in respect of his domain name.
c) Registration and Use in Bad Faith
In this respect, Complainant has contended that, in view of the circumstances, Respondent�s main intention is to sell the domain name and not to use it for its own business and that also other evidence as mentioned in Paragraph 4(b) of the Policy suggests registration and use in bad faith. Respondent has replied to those contentions and provided evidence supporting those replies.
In view of the circumstances, the Panel comes to the conclusion that registration and use in bad faith of the domain name has not been sufficiently established.
a) Conclusion as regards the Complaint
According to Paragraph 4(a) of the Policy Complainant must prove each of the three elements set out in that Paragraph in order to obtain a remedy as set out in Paragraph 4(i). On the basis of the considerations indicated under (a) to (c) above, the Panel concludes that Complainant has not sufficiently established all the elements mentioned. Consequently, Complainant�s request for transfer of the domain name at issue shall be rejected.
b) Respondent�s Request for a Finding of "Reverse Domain Name Hijacking"
Respondent has requested the Panel to issue a finding to the effect that Complainant registered its domain name in bad faith and now wishes to "hijack" Respondent�s domain name.
According to Paragraph 4(i) of the Policy, the remedies available to Complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of the domain name at issue or the transfer of the domain name registration to Complainant. From Paragraph 5, it follows that "All other disputes between you (Respondent") and any other party than us regarding your (Respondent�s) domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available."
Thus, the strictly formalised administrative proceeding before a Panel according to the Policy is limited to the relations between a complaining party and a responding party and the only remedies available relate to whether Complainant�s Complaint shall be rejected or approved with the specific remedies mentioned in Paragraph 4(i). In the view of this Panel, a Panel cannot, in the same case, consider counterclaims by Respondent for specific remedies against Complainant other than finding that the Complaint was brought in bad faith pursuant to Rules, Paragraph 15(e). Any counterclaims brought forth by Respondent relating to domain names registered by Complainant can, according to this Panel, be done only in another Panel proceeding where Respondent acts as Complainant.
Paragraph 1 of the Rules defines reverse domain name highjacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Reverse domain name highjacking deals only with the disputed domain name and not with other domain names owned by either party. In this case, in requesting for "the finding of reverse domain name highjacking of music-u" (a domain name currently registered by the Complainant), Respondent seems to have somewhat misconstrued the concept of reverse domain name highjacking under paragraph 15(e) of the Rules, and Complainant has not been in a position to argue his case in this respect.
Therefore, Respondent�s claim for a "finding of reverse domain name hijacking of music-u" shall be rejected.
7. Decision
On the basis of the foregoing considerations the Administrative Panel
1) rejects Complainant�s request for transfer of the domain name "musicu", and
2) rejects Respondent�s request for a finding of "reverse domain name highjacking of music-u"
Henry Olsson
Sole Panelist
Dated: November 7, 2000
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