WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EMI Group plc v. E MI musicgroup
Case No. D2007-1202
1. The Parties
The Complainant is EMI Group plc, London, United Kingdom of Great Britain and Northern Ireland, represented by Frances Harding, United Kingdom of Great Britain and Northern Ireland.
The Respondent is E MI musicgroup, c/o Diego Ortiz, Buenos Aires, Argentina.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2007. On August 17, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 18, 2007, Go Daddy Software 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 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 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2007.
The Center appointed Hariram Jayaram as the sole panelist in this matter on October 8, 2007. 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
The Complainant is the largest independent music company in the world. It operates its business directly in 50 countries and has licensees in 20 countries. It employs more than 6,300 people. It is the owner of the trademark EMI which has been in use by the Complainant, its predecessors and subsidiaries since 1931. The EMI trademark is registered in numerous territories worldwide.
The Respondent is the Registrant of the disputed domain name .
5. Parties’ Contentions
A. Complainant
This Compliant is based on the following grounds:
The Complainant submits that it is made up of two divisions i.e. EMI Music, one of the top global recorded music companies and EMI Music Publishing, the world’s leading music publisher. Its divisions and subsidiaries are commonly referred to as EMI Music Group and a “google” search on the phrase “emi music group” produces 17,100 references to the Complainant and its subsidiaries. The trademark EMI has been used in relation to musical sound and visual recordings in all formats as well as music publishing services and recording studio services and generally in relation to its business activities. An advanced search on the music retail website with EMI as the record label discloses 42,243 references to the Complainant’s products. The Complainant has also a music publishing division through its website . It has registrations worldwide including United Kingdom and Argentina for the trademark EMI most of which are held by the Complainant’s wholly owned subsidiary EMI (IP) Limited.
The Respondent is using the domain name in relation to its website . The Complainant contends that the key element of the domain is EMI since the words “music” and “group” are descriptive. EMI is emphasized by its separation from the descriptive words. The domain name is identical or confusingly similar to the Complainant’s trademark. It has not authorized the Respondent to use its trademark. The Respondent has registered the domain name on May 2, 2007 and has since been using it in relation to the website . This is an advertising website offering sponsored links to other websites. The Respondent could have chosen any domain for use in relation to such a website but it chose because of the association which would inevitably be made with the Complainant and its business. Such an association is liable to increase the number of hits on the website and thereby generate increased revenue for the Respondent by virtue of people mistakenly believing the website to be one of the Complainant’s. The Respondent has listed the Registrant as E MI musicgroup. It is unclear what type of legal entity this is. The Complainant’s Argentinean attorneys have tried to contact the Respondent concerning its use of the domain name and the potentially infringing use of the name E MI musicgroup in relation to its business. Their letter was returned by the Post Office despite having delivered to the address provided in the Whois details.
The Complainant further contends that Respondent has registered the domain name with the clear intention of deriving profit from the association of the domain name with the Complainant. Even though the website offers “Related Searches” such as EMI Music, EMI Classics and EMI Publishing, none of these related searches provide any links to websites operated by the Complainant. The website includes a number of references to electro magnetic interference (E.M.I.) products. The words “music group” in the domain name means that most of the hits on the website will be derived from an association with the Complainant’s group of companies and this is the Respondent’s intention. The website also includes links to websites offering “music jobs”, “music publishing jobs” and “recording studios” which reinforce that association. The Complainant has not consented to the use of its trademark in this manner and has no control over the contents of the website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the domain name to be cancelled or transferred to it:
- The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
The Respondent has not filed a response. The Panel has to rely on the Complainant’s statements and documents and regard them as unchallenged evidence.
A. Identical or Confusingly Similar
The Complainant has registrations for the trademark EMI worldwide and has made long and substantial use of it. As registered by the Respondent the disputed domain name is . The only difference is the addition of the words “music group” in the disputed domain name. These are descriptive and generic words. In Sanofi-Aventis v. Direct Response Marketing aka DRM,WIPO Case No. D2005-0661 the panel held that the addition of generic and/or descriptive words to a trademark does not distinguish the disputed domain name from the trademark. The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark EMI. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent does not have any authorization from the Complainant to use the trademark EMI. It has an advertising website with links to other websites offering various goods and services. Its revenue increases with the number of hits on its website. Internet users will likely visit the website mistakenly believing it to be that of the Complainant on account of the use of the letters EMI which is the trademark of the Complainant. Revenue derived through this manner by the Respondent cannot be deemed to be legitimate. The use of the domain name cannot be regarded as non-commercial and fair use. The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, when a Respondent as registrant of a domain name attempts to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as source, sponsorship or affiliation, the domain name is deemed to be registered and used in bad faith. The unchallenged evidence shows that the Respondent is intentionally attempting to do just this by adopting the Complainant’s trademark EMI as an essential part of the disputed domain name and by its click-through method of advertising other websites selling various goods and services not connected with the Complainant. The Panel holds that there is bad faith on the part of the Respondent in registering and using the domain name. It finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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.
Hariram Jayaram
Sole Panelist
Dated: October 22, 2007
Full & Egal Universal Law Academy