WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UMG Recordings, Inc. v. Brenda Michelson
Case No. D2003-0369
1. The Parties
The Complainant is UMG Recordings, Inc., Universal City, California, of the United States of America, represented by Seyfarth Shaw of the United States of America.
The Respondent is Brenda Michelson, Sherman Oaks, California, of the United States of America.
2. The Domain Name and Registrar
The disputed domain name, , is registered with R.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 14, 2003. On May 14, 2003, the Center transmitted by email to R a request for registrar verification in connection with the domain name(s) at issue. On May 15, 2003, R transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 21, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 12, 2003.
The Center appointed David W. Quinto as the sole panelist in this matter on June 19, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
4.1 The David Geffen Company registered the GEFFEN RECORDS and design mark with the United States Patent and Trademark Office in 1984 in International Class 9, for "phonograph records and pre-recorded audiotapes and cassettes." In 1997, what appears to be a successor-in-interest, Geffen Records, Inc., registered the GEFFEN and design mark with the United States Patent and Trademark Office in International Class 9, for "pre-recorded phonograph records, pre-recorded audio cassette tapes, and compact discs, pre-recorded audio-visual records in analog disc and digital disc configurations, and analog magnetic tape and digital magnetic tape configurations, all containing music." In 1997, Geffen Records, Inc. also registered the word mark GEFFEN with the United States Patent and Trademark Office in International Class 9 for the same purpose. In 1999, it also registered the word mark DGC GEFFEN RECORDS, INC. and a DGC GEFFEN RECORDS, INC. stylized mark with the United States Patent and Trademark Office in International Class 9 for goods having the same description as the other "GEFFEN" marks. Complainant provided a schedule showing foreign registrations of GEFFEN, GEFFEN RECORDS and design, and GEFFEN and design in 33 countries between 1980 and 1995. Complainant alleges that in October 1999, Geffen Records, Inc. merged with Complainant UMG Recordings Inc. and assigned all right, title and interest in and to the foregoing marks to Complainant.
4.2 Complainant and its predecessors-in-interest have used certain of the marks described above in connection with musical sound recordings and related services and goods since at least as early as 1980. Those marks are now well-known to persons familiar with the music industry in the United States. Complainant and its predecessors-in-interest have maintained places of business in Los Angeles, California since 1980. Geffen Records, Inc. was headquartered in Los Angeles, California.
4.3 Complainant contends that Respondent is a singer and songwriter who released an album entitled "Love Is All Around" on the Prelude Music label in 1999 under the name "Brenda Durmann." When Respondent registered the domain name on April 11, 2000, she listed an address in "Sherman Oaks," California. The Registrar Verification reflects that Respondent now lists a different address in "Sherman Oaks," California. Sherman Oaks is not a political entity. Rather, it is a neighborhood of Los Angeles, California. Complainant maintains a place of business in "Universal City," California. Universal City is also not a distinct political entity but is, rather, an area within Los Angeles, California.
4.4 Complainant alleges that since April 11, 2000, the domain name at issue has resolved to a "default 'Under Construction'-type site." Complainant further alleges that at various times, beginning in April 2001, it has advised Respondent in writing of its rights in its marks and further asked that Respondent "abandon the domain name registration or relinquish it to Geffen as its rightful owner." Complainant confirmed Respondent's receipt of its written communications but Respondent has never replied to any of those communications. However, since Complainant first placed Respondent on actual notice of its rights in its marks, Respondent has renewed her registration.
5. Parties' Contentions
A. Complainant
5.1 Not surprisingly, Complainant contends that Respondent's domain name, which is identical to one of Complainant's registered marks and which incorporates the dominant portion of other registered marks owned by Complainant, is "confusingly similar" to Complainant's registered marks. Further, Complainant contends that Respondent, who has evidently never conducted business as, or been known as, "Geffen Records," has no rights or legitimate interest in the domain name at issue. Finally, Complainant contends that Respondent had constructive knowledge of Complainant's marks by virtue of their registration in the United States Patent and Trademark Office years before Respondent registered her domain name. Complainant further suggests that because its predecessor-in-interest and its marks were well-known to the persons familiar with the music industry, and both Complainant's predecessor-in-interest and Respondent were employed in the music industry in the same city, Respondent likely had actual knowledge of Complainant's marks before she registered the domain name at issue. Complainant also contends that Respondent clearly had actual notice of Complainant's marks when she renewed her domain name registration because she had received one or more letters from Complainant identifying those marks and explaining Complainant's rights in them. Plaintiff contends that Respondent's knowledge of Complainant's marks, coupled with Respondent's failure to construct any site for over three years, constitutes bad faith under paragraphs 4(b)(i) and (iii) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
6.1 The Panel finds that Complainant has satisfied both elements of the requirement that the Respondent's domain name be identical or confusingly similar to a marking in which it has rights. It has registered GEFFEN or GEFFEN RECORDS as word or word and design marks in the United States and 33 other countries. Respondent's domain name is identical to some of Complainant's marks and incorporates the dominant portion of others. Complainant has therefore demonstrated that Respondent's domain name is identical or confusingly similar to marks in which it has rights.
B. Rights or Legitimate Interests
6.2 Paragraph 4(c) of the Policy provides that a Respondent may demonstrate rights or legitimate interests in a domain name in, without limitation, the following three ways. First, a respondent may prove that before notice of the dispute, the respondent used or prepared to use the domain name or name corresponding to the domain name in connection with the bona fide offering of goods or services. Second, a respondent may show that it has been known by the domain name, even if it has acquired no trademark rights in it. Third, a respondent may show that it is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue.
6.3 Here, the sole evidence is that Respondent has never used, or prepared to use, the domain name at issue or name corresponding to the domain name in connection with any offering of goods of services. Respondent has been on notice of the dispute at least since April 25, 2001, when Complainant's parent company had a courier deliver a demand letter to her residence. Further, there is also no evidence that Respondent has ever been known by the domain name. Although Paragraph 4(a) of the Policy seemingly places the burden on Complainant to prove that Respondent lacks rights or legitimate interests in the domain name, most panels have agreed that a Respondent should not gain an advantage by defaulting. Accordingly, the Panel is entitled to assume the truth of the Complainant's allegations. See Benchmark Staffing, Inc. v. Parker, WIPO Case No. D2002-0226 (May 30, 2002). Accordingly, the Panel concludes that Respondent does not satisfy either of the first two non-exclusive circumstances that could demonstrate rights or legitimate interest in the domain name. Inasmuch as Respondent is not making any active use of the domain name, the third non-exclusive circumstance is not demonstrated, either. Accordingly, the Panel concludes that Complainant has shown that Respondent lacks rights or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
6.4 Paragraph 4(b) of the Policy provides that four non-exclusive circumstances may evidence registration and use of the domain name in bad faith. Complainant argues that two of them are satisfied here. First, Complainant urges that bad faith should be found pursuant to paragraph 4(b)(i) of the Policy. To find bad faith thereunder, the Panel would have to find that Respondent "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 the complainant, for valuable consideration" in excess of Respondent's out-of-pocket costs. Complainant has not adduced any evidence that Respondent has ever sought to transfer the domain name to any other party at any price. Accordingly, the Panel does not find that Complainant has demonstrated registration and use in bad faith in violation of paragraph 4(b)(i) of the Policy.
6.5 Second, Complainant urges that bad faith be found pursuant to paragraph 4(b)(iii) of the Policy. That paragraph requires that a respondent have "registered the domain name primarily for the purpose of disrupting the business of a competitor." Here, given the Respondent's lack of any conceivable right or interest in the domain name, Respondent's failure to make any active use of the domain name, and the close similarity between the domain name and many of Complainant's marks, the Panel is prepared to infer that Respondent has registered and maintained the domain name for the purpose of disrupting Complainant's business. However, it does not appear that Complainant and Respondent are competitors. Accordingly, the Panel does not find that Complainant has demonstrated registration and use in bad faith pursuant to paragraph 4(b)(iii) of the Policy, either.
6.6 Nevertheless, it is still possible to conclude that Respondent has registered and maintained the domain name in bad faith. See Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (March 16, 2000). As noted above, the four "circumstances" enumerated in paragraph 4(b) of the Policy as evidencing bad faith registration and use are nonexclusive. Respondent has registered, but made no active use of, one of Complainant's marks. In other words, Respondent has engaged in the most elemental form of "cybersquatting." Various panels have held that when a mark is registered in the respondent's country of residence, constructive knowledge of the registration may be imputed to the respondent and bad faith may be inferred from the respondent's registration of the mark as a domain name. See Cellular One Group v. Brien, WIPO Case No. D2000-0028 (March 10, 2000); Finter Bank Zurich v. Olivieri, WIPO Case No. D2000-0091 (March 23, 2003). Further, Complainant has shown that Respondent very likely had actual knowledge of Complainant's marks prior to her registration of the domain name at issue. In such circumstance, a panel may infer notice and bad faith. See Parfums Christian Dior v. Quintas, WIPO Case No. D2000-0226 (May 17, 2000); TRW v. Autoscan Inc., WIPO Case No. D2000-0156 (April 24, 2000); Scania CV AB v Westlye, WIPO Case No. D2000-0169 (May 16, 2000); and Charles Jourdan Holdings AG v. AAIM, WIPO Case No. D2000-0403 (June 27, 2000).
6.7 One of the earliest, and now the most widely cited, decisions under the Policy, Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), held that under some circumstances, the passive holding of a domain name could constitute a bad-faith use. As here, the respondent in that case defaulted. However, the Telstra panel concluded that the respondent was surely aware of the complainant's mark. Further, the panel could not conceive of any good-faith use of the domain name. Thus, any active use would necessarily have been in bad faith. Other panels have inferred that if a respondent had a good-faith reason for using a domain name, the respondent would put the domain name to active use. Absent a good-faith purpose, they have reasoned that the respondent's purpose must necessarily be improper. See, e.g., Phat Fashions, L.L.C. v. Kruger, NAF Case No. FA0012000096193 (December 29, 2000). See also Stam v. Cohen, WIPO Case No. D2000-1061 (November 4, 2000); Cellular One Group v. Brien, WIPO Case No. D2000-0028 (March 10, 2000); Easyjet Airline Co. v. Steggles, WIPO Case No. D2000-0024 (March 17, 2000); Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (March 16, 2000); and Sanrio Co. v. DLI, WIPO Case No. D2000-0159 (April 20, 2000).
6.8 Several panels have concluded that when the complainant and the respondent are from the same country, a panel may apply that country's laws to their dispute. See World Wrestling Federation Entertainment, Inc. v. Bosman, WIPO Case No. D1999-0001 (January 14, 2000); Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010 (May 7, 2000); J. Crew International v. C, WIPO Case No. D2000-0054 (April 20, 2000); Reef Industries, Inc. v. Moose Lake Products Co., WIPO Case No. D2000-0041 (March 20, 2000); Which? Limited v. Halliday, WIPO Case No. D2000-0019 (March 27, 2000); and Lloyds TSB Bank Plc v. Brittain, WIPO Case No. D2000-0231 (June 6, 2000). United States courts have ruled that the "holder of a domain name should give up that domain name when it is 'an intuitive domain name' that belongs to another." Virtual Works, Inc. v. Network Solutions, Inc., 106 F. Supp. 2d 845, 848 (E.D. Va. 2000), aff'd sub nom. Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264 (4th Cir. 2001). Other courts have used the finding that a domain name intuitively belongs to the adverse party as a factor supporting a finding of bad faith. See Zipee Corp. v. United States Postal Service, 140 F. Supp. 2d 1084, 1087 (D. Or. 2000).
6.9 Although Respondent's actions in registering and maintaining the domain name at issue did not clearly fall under any of the circumstances enumerated in paragraph 4(b) of the Policy, it is nonetheless clear that Respondent has registered and used the domain name at issue in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to Complainant.
David W. Quinto
Sole Panelist
Dated: June 26, 2003
Full & Egal Universal Law Academy