The Complainant is WIDEawake Entertainment Group, Inc. of Toronto, Ontario, Canada, represented by Taylor Mitsopulos Klein Oballa, Canada.
The Respondent is iShineMedia of Mississauga, Ontario, Canada. 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 October 28, 2010. On October 29, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On the same day, 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.
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 the Respondent of the Complaint, and the proceedings commenced on November 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2010.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on December 7, 2010. 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 owns and operates a record label business under the name Death Row Records. The Complainant and its predecessor in title, have used the name Death Row Records in connection with a record label business featuring musical sound recordings, phonograph records, pre-recorded compact discs, and downloadable music recordings, in the field of hip hop and rap music, since 1991.
The Complainant, at the time the Complaint was filed, owned a United Kingdom of Great Britain and Northern Ireland Trademark Registration for DEATH ROW RECORDS (Registration No. E8870297) and had filed numerous applications to register the DEATH ROW RECORDS trademark in the United States of America and Canada. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant owns the trademark DEATH ROW RECORDS. The Respondent has registered the disputed domain name which is identical to the Complainant’s registered trademark. Rights or Legitimate Interests
The Complainant submits that the Respondent is not commonly known by the words “Death Row Records”. The Complainant further submits that the Respondent is not making a bona fide use of the disputed domain name, and has used the disputed domain name in connection with a website which provided unauthorized and unreleased bootleg material featuring hip-hop music, including material which featured music from artists which was owned by the Complainant. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent is using the confusingly similar domain name in association with the operation of a website which provided unauthorized bootleg material for purposes of monetary gain, and for the intentional purpose of attracting Internet users seeking the Complainant’s website to the Respondent’s website; and (ii) the Respondent is thereby preventing the registered trademark owner from obtaining and using the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights in the mark DEATH ROW RECORDS by virtue of United Kingdom Trademark Registration No. E8870297. Further, the Panel notes that at the time the Decision was prepared, the Complainant’s United States trademark applications for DEATH ROW RECORDS & Design and DEATH ROW RECORDS (showing a first use in commerce date of 1991) have actually issued as Registration No. 3884857 and Registration No. 3884831. A number of other United States applications for DEATH ROW RECORDS and DEATH ROW RECORDS & Design have been allowed.
The Panel further finds that the disputed domain name is identical to the Complainant’s registered trademark DEATH ROW RECORDS, except for the addition of the “.com” designation. The addition of a “.com” designation or other type of designation does not serve to distinguish a domain name from a registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel notes that the Respondent did not file any response to the Complaint and accordingly did not contest any of the facts stated in the Complaint. The Panel is therefore prepared to accept the Complainant’s contention that its Death Row Records’ business began operating in 1991, and has secured a significant reputation in the field of hip hop and rap music since that time.
Therefore, the Panel is prepared to infer that the Respondent knew of the Complainant’s business and was aware of the Complainant’s rights in the mark DEATH ROW RECORDS when the Respondent registered the disputed domain name in 1999.
The Panel finds no evidence that the Respondent is commonly known by the name “Death Row Records”, or has any other form of legitimate interest in the name.
The Complainant has therefore satisfied the requirements under paragraph 4(b) of the Policy. C. Registered and Used in Bad Faith
The Panel, upon review of the evidence filed in the Complaint, and taking into consideration that the Respondent did not file any response contesting the facts contained therein, finds that the Respondent registered and has used the disputed domain name in bad faith.
The Panel is prepared to find that the Respondent was aware of the Complainant’s trademark rights when it registered a confusingly similar domain name, and when it began operating a website in connection with that confusingly similar domain name which offered unauthorized, unreleased music recordings for the purpose of monetary gain. The music recordings previously offered for sale by the Respondent were directly competitive with the wares offered by the Complainant, and were in fact unauthorized bootleg recordings. The unlawful nature of the Respondent’s business, which was a transparent attempt to trade on the Complainant’s reputation, clearly supports the finding of bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(c) under 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 disputed domain name be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Dated: December 14, 2010
Full & Egal Universal Law Academy