Complainant is UMG Recordings, Inc. of Santa Monica, California, United States of America, represented by Loeb & Loeb, LLP, United States of America.
Respondent is Domain Admin of Irvine, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2011. On March 25, 2011, the Center transmitted by e-mail to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 25, 2011, GoD, Inc.. transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on April 20, 2011.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 28, 2011. 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 is a market leader in the classical music market. Complainant’s Decca Label Group is comprised of two divisions, Universal Musical Classical and Decca Label Group, and is home to artists such as Clay Aiken, Andrea Bocelli, Elton John, Boyz II Men, Paula Cole, Renee Fleming, and Sting. Complainant holds various United States trademark registrations featuring the mark DECCA, including some which predate the Domain Name’s registration by years. The mark DECCA, for “tape cartridges, recorded and prerecorded cassettes,” was registered in 1971. Complainant also alleges, and it is undisputed, that it has used the mark DECCA RECORDS in commerce since 1942 in connection with musical sound recordings.
Respondent registered the Domain Name on August 15, 2002. Currently, there is no active website accessible via the Domain Name. In the past, however, the Domain Name resolved to a portal site with click-through advertising. Complainant alleges, and it is not disputed, that Respondent derived commercial gain through such click-through links.
On October 21, 2010, Complainant e-mailed a letter to Respondent asking that Respondent cease and desist any use of Complainant’s DECCA marks and relinquish the Domain Name. On November 1, 2010, Respondent sent an e-mail to Complainant denying any infringement and asserting that the Domain Name had been obtained by Respondent “for our navigation/directory project.” Respondent offered to sell the Domain Name for USD 7,500. Complainant responded that day with an e-mail asking for clarification about the “navigation/directory project.” On November 3, 2010, Respondent sent a final e-mail declining to elaborate on the “navigation/directory project” except to assert that it was totally unrelated to music and hence non-infringing. 5. Parties’ Contentions A. Complainant
Complainant’s salient factual assertions are set forth above. Complainant asserts that it has satisfied the three elements of the Policy and is entitled to a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There is no question that Complainant has rights in the registered mark DECCA. Because records, i.e., musical recordings, is Complainant’s business, the Panel finds that the addition of the word “records” to the DECCA mark in the Domain Name reinforces the confusing similarity between the mark and the Domain Name. Alternatively, the Panel finds that Complainant’s DECCA RECORDS mark (which was unregistered but long used in commerce prior to the Domain Name registration) is identical to the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as he does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174 (April 22, 2003), correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not attempt to rebut any of Complainant’s assertions.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith” :
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent is in “bad faith” under both paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
As respects paragraph 4(b)(i), the Panel concludes that Respondent sought to turn a substantial profit from the offer to transfer the Domain Name to Complainant for USD 7,500.
As respects paragraph 4(b)(iv), the Panel concludes that Respondent had Complainant’s DECCA mark in mind when registering the Domain Name. This conclusion is reached because the Domain Name not only includes the mark DECCA but also includes the descriptive word “records” – a term that evokes Complainant’s very product offerings under the mark. Further, Complainant has alleged, and Respondent has not denied, that Respondent profited from the click-through advertising links formerly posted at the site to which the Domain Name resolves, and hence Respondent has intentionally sought to attract, for commercial gain, Internet users to Respondent’s site by creating a likelihood of confusion between the DECCA mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 7. Decision
For 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.
Robert A. Badgley
Sole Panelist
Dated: May 11, 2011
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