WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wherehouse Entertainment, Inc. V. Datasphere
Case No. D2001-0048
1. The Parties
The Complainant in this administrative proceeding is Wherehouse Entertainment, Inc., a Delaware Corporation, with a principal place of business at 19701 Hamilton Avenue, Torrance, California 90502-1334, U.S.A. According to Network Solutions� who-is database, the Respondent in this administrative proceeding is Datasphere, with an address of 4067 Beltway, Unite 126, Addison, Texas 75001, U.S.A.
2. The Domain Name(s) and Registrar(s)
This dispute concerns the domain name (the "Domain Name"). The registrar with whom the Domain Name is registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, U.S.A. (the "Registrar"). The Panel finds that the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") is the Policy applicable to this dispute.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 10, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated January 15, 2001. The Complaint was amended on February 7, 2001.
A Formal Requirements Compliance Checklist (the "Checklist") was completed by the assigned WIPO Center Case Administrator on February 13, 2001. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy (the "WIPO Supplemental Rules"). According to the Checklist, the required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on February 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of March 4, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail, by facsimile and by express courier. Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On March 7, 2001, having received no Response from the Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default.
Having received Thomas D. Halket�s Statement of Acceptance and Declaration of Impartiality and Independence, on March 26, 2001, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision date was set for April 8, 2001. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
4. Factual Background
The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint and have not been disputed by the Respondent.
Complainant uses the word WHEREHOUSE (as opposed to the dictionary spelling, warehouse) and has registered numerous trademarks incorporating this spelling. Complainant�s first trademark, THE WHEREHOUSE, was first used in 1970 and has been in continuous use since then.
Complainant�s WHEREHOUSE MUSIC service mark is used in connection with on-line and in-store retail services featuring audio and video recordings, multimedia products, boxed games and computer software. The store offers club membership services, providing access to promotions, contests and discounts on merchandise.
According to Complainant�s trademark registration application, the WHEREHOUSE MUSIC service mark was first used on April 15, 1999. The WHEREHOUSE MUSIC service mark application was filed on November 29, 1999 and is pending. The WHEREHOUSE MUSIC intent to use application was filed February 10, 1999 and published on February 22, 2000.
According to the Complaint, but not independently verified by the Panel, Respondent has used at least part of the Domain Name in connection with a website that suggests affiliation with the media industry. There is no evidence that Respondent is or has used the Domain Name, which it registered in April of 1999. It is unclear whether that registration predated the Complainant�s registration of its analogous service mark, or the "intent to use" application.
On October 27, 1999, counsel for Complainant corresponded with Respondent, advising that Complainant believed that Respondent had violated the WHEREHOUSE MUSIC service mark. Complainant requested that Respondent execute a Name Change Agreement transferring the Domain Name to Complainant. Counsel for Respondent corresponded with Complainant on December 22, 1999 offering to transfer the Domain Name to Complainant for $15,000 if payment was received within 15 days, or $25,000 if payment was received after 15 days from the date of that letter.
5. Parties� Contentions
A. Complainant
Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the service mark and trademark registered and used by Complainant, that the Respondent has no rights or legitimate interests in respect to the domain name at issue, and that the Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." Since both parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: "(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith."
The Domain Name violates Paragraph 4(a)(i) of the Policy in that it is identical or confusingly similar to the service mark in which the Complainant has rights. It is a close question as to whether the Complainant�s rights in WHEREHOUSE MUSIC (as opposed to WHEREHOUSE) predate the registration of the Domain Name by Respondent. However, given that the use of the mark WHEREHOUSE clearly predates Respondent�s use, Respondent has not contested the Complaint and Respondent has been represented by counsel in its dealings with Complainant, the Panel is inclined to take Complainant�s allegations at face value.
The Domain Name also violates Paragraph 4(a)(ii) of the Policy in that (i) Respondent has not received any permission or consent to use the service mark from Complainant; (ii) other than the registration of the Domain Name, Respondent has not used the Domain Name in any site or business; and (iii) Respondent is not (either as an individual, business or other organization) commonly known by the name WHEREHOUSE MUSIC.
Paragraph 4(b) of the Policy provides guidance on Paragraph 4(a)(iii) of the Policy. It provides:
"b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a), 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:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(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."
Again, while the facts are not entirely clear that Paragraph 4(b)(i) has been violated by Respondent, given the circumstances cited above with respect to Paragraph 4(a)(i), the Panel is inclined to agree with Complainant that the Domain Name violated paragraph 4(a)(iii) by virtue of Respondent�s attempt to sell the Domain Name to Complainant. The Panel therefore concludes that the Domain Name violates Paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that Respondent�s ownership of the Domain Name violates Paragraph 4(a) of the Policy.
7. Decision
For all of the foregoing reasons, the Panel decides that the Domain Name registered by Respondent is identical or confusingly similar to the service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent�s Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(a) of the Policy, the Panel requires that the registration of the Domain Name be transferred to the Complainant.
Thomas D. Halket
Solo Panelist
Dated: April 6, 2001
Full & Egal Universal Law Academy