WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rhino Entertainment Company v. DomainS, Inc.
Case No.�D2006-0968
1. The Parties
The Complainant is Rhino Entertainment Company, of California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is DomainS, Inc., of California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�”Center”) on August�2,�2006. On August�4,�2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August�7,�2006, Network Solutions, LLC 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 August�15,�2006. In�accordance with the Rules, paragraph�5(a), the due date for Response was September�4,�2006. When notified of the pending case, the Respondent was advised of the consequences of failing to respond. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on September�8,�2006, and again advised of the consequences of such a default.
The Center appointed John�E.�Kidd as the Sole Panelist in this matter on October�4,�2006. 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.
Having reviewed the communication records, the Panel finds that the Center has discharged its responsibilities under paragraph�2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent. In the view of the Panel, the proper procedures have been followed and it may issue its decision based upon the documents submitted in accordance with the Policy, the Rules and the Supplemental Rules without the benefit of a response from the Respondent.
The supplement brief filed by Complainant is not authorized by the Rules; and was not considered by the Panel.
4. Factual Background
The Complainant is Rhino Entertainment Company (“Rhino” or “Complainant”), a Warner Music Group Company and a licensee of Barry Gibb, Robin Gibb, and the Estate of Maurice Gibb, the owners of the BEE GEES trademark (collectively, the “Owners”). The Complainant, is the exclusive licensee of Owners with respect to all existing audio and audio-visual recordings embodying the performances of the recording group “The�Bee�Gees” (the “Bee Gees Catalog Recordings”), has been expressly authorized by the Owners - the two surviving members of the BEE GEES musical group and the estate of the third founding member - to file this Complaint to recover the Domain Name from Registrant, for use in connection with the Complainant’s exploitation of the Bee�Gees Catalog Recordings.
The Bee Gees are an international famous musical group and since 1960s, have released over twenty albums and the Complainant states have sold over 120 million copies worldwide. They started recording hit records in late 1960s. From 1978 to 1979, the Bee Gees released six straight number one hits, including the disco hit “Stayin-Alive” from the movie Saturday Night. During one week on the American Billboard charts, songs written by the Bee Gees occupied five of the top ten spots. Over the course of their career, the Bee Gees have released twelve hits that went to number one on the U.S. and U.K. charts. They were inducted into the Rock & Roll Hall of Fame in 1997, and the two surviving Owners have continued to perform live under the Bee Gee name and mark. The Bee Gees’ musical recordings also continue to be sold to this day under the BEE GEES mark.
Around the world, the Owners have extensively used and are commonly referred to by the trade and consumers by the name and mark BEE GEES. Both the BEE GEES mark first registered in 1980 and the BEE GEES FAN CLUB mark registered in 2003 are registered to the Owners in the United States Patent and Trademark Office for a number of goods and services, including “entertainment services rendered by vocal and instrumental group”, “phonograph records [and] compact discs”, “providing a website featuring fan club information about a musical group”, and “online newsletters and magazines about a musical group”.
The Respondent, the domain name holder of the domain name in dispute first registered the domain name in dispute on November�18,�2003 and on May�1,�2006, the Respondent, by email offered to sell the domain name in dispute for two hundred fifty thousand dollars ($250,000.00).
The Complainant counter-offered one thousand five hundred dollars ($1,500.00) to cover the Respondent’s registration and any other reasonable out—of-pocket expenses. The Respondent replied, by email: “[s]orry, not interested in selling price.”
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain name in dispute is likely to confuse consumers and cause them to mistakenly believe that the domain name is associated with the Owners. More specifically, the Complainant submits that:
(a) Respondent has reserved the Domain Name, which name is confusingly similar to Complainant’s famous mark and trade name BEE GEES (“Complainant’s�Mark”);
(b) Respondent can document no rights or legitimate interest in the Domain Name; and
(c) The Domain Name has been registered and is being used in bad faith; and
(d) Through significant expenditures of time, money and effort, the BEE GEES name and marks have come to represent an enormous goodwill, and Complainant, in addition to being specifically commissioned by Owners to recover the BEE GEES-inclusive domain name, has a significant stake in the protection of that goodwill as an exclusive licensee and distributor of the Bee Gees Catalog Recordings.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In light of the Respondent’s failure to submit a response, the Panel, pursuant to the rules, may draw such inferences, including adverse inferences, as it considers appropriate. See William H. Cosby, Jr. v. Sterling Davenport, WIPO Case No.�D2005-0756 and Charles Jourdan Holdings AG v. AAIM, WIPO Case No.�D2000-0403.
Paragraph�4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that a domain name in dispute should be transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
(ii) the Respondent has no rights or legitimate interest with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is substantially identical to the Complainant’s Mark -� merely dropping an “s” or singularizing the Mark - and, as such, is confusingly similar to the Complainant’s Mark. As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. T, Inc v. Daniel Deamone, WIPO Case No.�D2001-1066. Specifically, where a domain name is in fact identical to [a complainant’s registered] mark, but for the addition of the top level domain designation “.com”, the addition of the top level designation is insufficient to distinguish the domain name from a complainant’s mark. Valeant Pharmaceuticals International and Valeant Canada Limited v. Johnny Carpela, WIPO Case No.�D2005-0786. Furthermore, it is well settled that the addition of a single letter pluralizing a complainant’s trademark does not create sufficient differences to avoid a likelihood of confusion, and, similarly, removing a letter to singularize a trademark does not sufficiently avoid confusion either. Alaska Stock LLC v. Darin Yates Studios/Darin Yates, WIPO Case No.�D2004-0858.
B. Rights or Legitimate Interests
The Respondent cannot demonstrate or establish any legitimate interests in the Domain Name. The Respondent registered the Domain Name long after the Owners had established rights in the BEE GEES marks through extensive use. See Fiber-Shield Industries, Inc. v. Fiber Shield LTE, NAF 1000092054. Where, as here, the Complainant’s Mark is widely known and has no other meaning, there can be no legitimate use by the Respondent. Guerlain S.A. v. Peikang, WIPO Case No.�D2000-0055. See also Veuve Clicquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co., WIPO Case No.�D2000-0163, at Section�6 (bad�faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Furthermore, there exists no relationship between the Respondent and the Complainant (or�the�Owners) that would give rise to any license, permission, or authorization by which the Respondent could own or use the Domain Name, which is substantially identical to the Complainant’s Mark. The Respondent is not commonly known by the Domain Name and is not making legitimate non-commercial or fair use of the Domain Name. The Respondent appears to have acquired and is using the Domain Name solely for commercial gain. Upon information and belief, the Respondent derives a financial benefit from web traffic diverted through the Domain Name. Almost three years after registering the Domain Name, the website associated with the Domain Name is nothing more than a “bare�bones” formulaic page of web links.
At the bottom of the registrant’s website is the statement “This Domain May Be For Sale”, followed by a link to “domains”. The website at “domains” offers interested buyers a box in which to submit a request to purchase domain names. Thus, since 2003, the Respondent appears to have made no use of the domain name in dispute other than to park it and gain commercially from web traffic.
Moreover, the website at the Domain Name offers “Sponsored Results” which indicates that “Respondent receives compensation for the listings and links that it includes in it search results and/or for hits on the sites Respondent references”. Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No.�D2004-0911. Combined with the facts that the BEE�GEES name and mark is famous and that the Respondent has no rights in it, this shows that the Respondent registered the Domain Name incorporating the Complainant’s Mark solely to profit from the traffic generated by the fame of the mark, and not for any legitimate noncommercial or fair use purpose. See, e.g., Chinmoy Kumar Ghose v. ICDS and Maria Sliwa, WIPO Case No.�D2003-0248 (it could never be a legitimate or fair use to select a domain name which is confusingly similar to another person’s trade or service mark, with a view to misleadingly attracting visitors to a website linked to that domain name); Madonna Ciccone, p/k/a Madonn v. Dan Parisi and “M”, WIPO Case No.�D2000-0847 (“[u]se which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services”).
C. Registered and Used in Bad Faith
As shown above, the Respondent registered a domain name incorporating the Complainant’s Mark, despite having no connection to the Complainant, or the Owners of their music. This alone is powerful evidence of the Respondent’s bad faith. Veuve Clicquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co., WIPO Case No.�D2000-0163 (Respondent’s Domain Name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”); see also Cellular One Group v. Paul Brien, WIPO Case No.�D2000-0028. But there is much more: as shown below, the bad faith registration and use by the Respondent, a serial domain name abuser, is confirmed by the fact that the Respondent has sought to profit unfairly from registration of the domain name , both by demanding an exorbitant payment from the Complainant for the name, and by securing revenue through the passive use of the domain name for a number of years. The Respondent’s bad faith is also confirmed by a previous UDRP decision against Respondent and a pattern of improper registration and use of domain names incorporating famous marks of others.
Respondent’s $250,000 Demand
The Panel finds that the Respondent did not register the Domain Name is dispute for a legitimate purpose, but in order to sell it, at an extortionate price. See Policy par�4(b)(i). The Panel finds that the Respondent’s request for an astronomical sales price constitutes evidence that the Respondent purchased the name primarily for the purpose of selling it to the Complainant, in violation of paragraph�4(b)(i) of the Policy. See, e.g., Scania CV AB v. Hong, Hee Dong, WIPO Case No.�D2004-0340.
Respondent’s Passive Use and Parking of the Domain Name
In addition to this direct evidence of the Respondent’s intent to unfairly profit from selling the domain name the Panel finds that the Respondent’s bad faith is also shown by its use of the Domain Name or lack thereof. The Respondent has placed no content on the site at “www.” that relates to the band or has been created by the Respondent. Rather, the Respondent has included superficial links to a handful of third parties’ sites ostensibly related to the Bee Gees - to generate traffic and to create a ruse of purported legitimate use of the Domain Name - as well as links to other parties’ commercial sites that do not even purport to relate to the Bee Gees but apparently create revenue for the Respondent. Other than the passive revenue-—per-click profit that the Respondent may make off of the Domain Name, the Panel is unaware of any other use of the Domain Name since it was registered three years ago. As prior WIPO UDRP panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No.�D2000-0400. As the panelist observed in a prior proceeding against Respondent, Respondent’s passive holding of domain names suggests that it registered the domain names for the purpose of selling them to Complainant for profit. Florists’ Transworld Delivery, Inc. v. DomainS a/k/a Domain Source, Inc., NAF�Case�No.�0203000105882 (May�1,�2005).
Moreover, the parking of such domain names to obtain revenue through web traffic and sponsored results - another source of enrichment to the Respondent - has been held repeatedly to constitute bad faith. See e.g., Hilton Group plc v. Forum LLC, WIPO Case No.�D2005-0244 (use of domain name to attract users for commercial gain is evidence of bad faith); Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No.�D2004-0911 (use of domain name to provide sponsored results falls squarely within the terms of paragraph�4(b)(iv) of the Policy).
Respondent’s Pattern of Improper Registration and Use of Domain Names
Furthermore, the Respondent’s bad faith is shown by a pattern of registered domain names that incorporate well-known trademarks of others - a fact that WIPO UDRP panels have consistently held to constitute evidence of bad faith. See e.g., Valeant Pharmaceuticals International and Valeant Canada Limited v. Johnny Carpela, WIPO Case No.�D2005-0786; Alloy Rods Global, Inc. v. Nancy Williams, WIPO Case No.�D2000-1392. In fact, in a previous proceeding against Respondent, filed by the owners of the famous FTD florists’ mark, Respondent was held to have registered and used in bad faith two different domain names incorporating the FTD mark, and , and both domain names were ordered to be transferred to the Complainant. Florists’ Transworld Delivery, Inc. v. DomainS a/k/a Domain Source, Inc., NAF�Case�No.�0203000105882 (May�1,�2005).
The Respondent has also registered numerous other domain names that incorporate well-known trademarks (or misspellings thereof) owned by others. For example, the Respondent has registered the domain names (incorporating�the name and registered mark of the widely known business magazine Business Week), (a misspelling of the name and mark of the famous fashion designer Marc Jacobs), (a misspelling of the name of the famous rock music musician Neil Young), (a misspelling of NASDAQ, the registered trademark of the technology-centered stock market exchange), and (a misspelled portion of PEET’S COFFEE + TEA, the name and registered trademark of a well-known U.S. coffee chain), among others. See�e.g.,�B, Inc v. Cost Net Domain Manager, WIPO Case No.�D2001-0970 (acquisitions of misspelling of a trademark shows bad faith).
The websites located at the URL’s corresponding to these additional domain names provide further evidence of the Respondent’s bad faith. Specifically, they confirm that the Respondent’s registration and use of the Domain Name is part of a pattern of similar activity; use of another party’s trademark (or misspelling thereof) in the domain name, a site that is parked with “domains”, and a handful of links to third party websites that purport to relate to the subject matter of the domain name, in addition to links that are plainly unrelated and solely present to create traffic and revenue for the Respondent.
The Panel finds that the facts provided above make clear that the Respondent, in violation of the Policy, is intentionally taking advantage of the fame and goodwill associated with the Complainant’s mark in bad faith to attract Internet users to the Respondent’s website for commercial gain.
Based on all of the above, the Panel finds that the Complainant has met the requirements of the Policy by demonstrating not only its own legitimate interest in the Complainant’s Mark, but also that the Respondent’s sole interest in the Domain Name incorporating the Complainant’s Mark is to unlawfully profit from it.
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 the Complainant.
John E. Kidd
Sole Panelist
Dated: October�18,�2006
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