WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Interstate Industries, Inc. v. S Pace Case No. D2008-1628 1. The Parties
Complainant is Interstate Industries, Inc., of Lovingston, Virginia, United States of America, represented by Gavin Law Offices, PLC, of Richmond, Virginia, United States of America.
Respondent is S Pace, of Flower Mound, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Department-of-Domains, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2008. On October 28, 2008, the Center transmitted by e-mail to Department-of-Domains, LLC (“Registrar”) a request for registrar verification in connection with the disputed domain name. On October 28, 2008, Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on October 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 20, 2008.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 27, 2008. 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
Complainant states that it does business as “Monroe Products,” which “is extremely well known in connection with the fields of consciousness exploration and personal growth and development.” Complainant states that it “offers cassette tapes and CD's for sale in the U.S. and internationally which feature its patented Hemi-Sync® binaural brain wave altering technology under both the HEMI-SYNC® and METAMUSIC® trademarks.” Complainant states, and provides evidence to support, that it is the owner of two federal trademark registrations in the United States for METAMUSIC: U.S. Reg. No. 1,408,298, for use in connection with “audio cassette tapes [and phonograph records] pertaining to human mental processes” (first used in commerce on May 15, 1983; registered on September 9, 1986); and U.S. Reg. No. 2,887,040 for use in connection with “PRERECORDED COMPACT DISCS FEATURING INSTRUCTIONS AND MATERIALS FOR MENTAL CONDITIONING AND RELAXATION TECHNIQUES” (first used in commerce on September 1, 1993; registered on September 21, 2004). Collectively, these registrations are referred to hereafter as the “METAMUSIC Trademark.”
The Disputed Domain Name was created on May 28, 2008. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights because “[t][he second level portion of Respondent's Domain Name consists of a coined word which is identical in spelling, pronunciation and appearance to the Complainant's federally registered trademark METAMUSIC.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “Respondent's website offered links to sites that advertised goods/services featuring binaural beat brain wave technology; one link even featured the ‘Monroe' family name, which is that of Complainant's founder”; and “[t]here is no evidence that Respondent has been commonly known as the Respondent's Domain Name.”
- The Disputed Domain Name has been registered and is being used in bad faith because “Respondent should have conducted a good faith search, using an internet search engine, such as Google or Yahoo!” and would have discovered Complainant and its trademark; and “[t]he subject web site exists primarily in reference to commerce in music, particularly significant in light of the goods and services offered by Complainant in” the METAMUSIC Trademark; B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the federal trademark registrations cited by Complainant, the Panel is satisfied that Complainant has rights in and to the trademark METAMUSIC.
As to whether the Disputed Domain Name is identical or confusingly similar to the METAMUSIC Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e.“metamusic”), as it is well-established that the top-level domain (i.e.,“.com”) should be disregarded for this purpose.
Given that the second-level domain of the Disputed Domain Name, “metamusic,” is identical to the METAMUSIC Trademark, it is obvious without the need for elaboration that Complainant has proven the first element of the Policy. See, e.g., Regan Campbell Ward-McCann v. Site Services International, Richard Sorensen,WIPO Case No. D2008-0386 (finding the domain name identical to the trademark RCW). B. Rights or Legitimate Interests
Complainant alleges, inter alia, that “Respondent's website offered links to sites that advertised goods/services featuring binaural beat brain wave technology; one link even featured the ‘Monroe' family name, which is that of Complainant's founder”; and “[t]here is no evidence that Respondent has been commonly known as the Respondent's Domain Name.”
Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1 (visited December 11, 2008).
Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
In this case, it appears as if Complainant is arguing that bad faith exists at least pursuant to paragraph 4(b)(iv) of the Policy because the website using the Disputed Domain Name has contained links apparently as part of a monetized parking program offering goods or services competitive with those offered by Complainant under the METAMUSIC Trademark. Numerous decisions under the Policy have found that such use of a domain name gives rise to bad faith under the Policy. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850 (“where the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).
Accordingly, the Panel is satisfied that Complainant has proven the third element 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 Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: December 11, 2008
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