Complainant is Floyd D. Rose of Bellevue, Washington, United States of America (“U.S.A.”), represented by Lerner, David, Littenberg, Krumholz & Mentlik LLP., U.S.A.
Respondent is Adam Reiver of Newtown, Pennsylvania, U.S.A., represented by Millen, White, Zelano & Branigan, P.C., USA. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom, Inc. of Kirkland, Washington, U.S.A (the “Registrar”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2013. On February 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the February 28, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which matched the named Respondent and contact information in the Complaint.
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 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2013. The Response was filed with the center on March 22, 2013 and Respondent elected to have this dispute decided by a three-member Administrative Panel (the “Panel”).
The duly appointed members of the Panel include W. Scott Blackmer, Frank L. Politano, and Maxim H. Waldbaum (presiding) on April 23, 2013. 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 Disputed Domain Name is registered with eNom,Inc. on January 5, 2008. The registration expires on January 5, 2014.
Complainant has the following United States trademark registrations:
FLOYD ROSE, Registration Number 1,292,157, registered on August 28, 1984
FLOYD ROSE, Registration Number 1,925,371, registered on October 10, 1995
THE FLOYD, Registration Number 2,609,770, registered on August 20, 2002. 5. Parties’ Contentions A. Complainant
Complainant alleges that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant, an individual inventor and entrepreneur in the Seattle area, holds United States trademark registrations for standard-character marks based on his personal name, including FLOYD ROSE and THE FLOYD, which are used in connection with the electric guitar accessories that he designs. These marks are used for: string tuning and tremolo apparatus for guitars and other stringed instruments, and musical instruments and musical instrument accessories, namely guitar stands, guitar hardware, instrument cases, guitar strings, tremolos, pick-up stands, sustainers, tuners, and guitar picks, for a well-known music industry brand in the United States.
Complainant alleges that Respondent is neither affiliated with Complainant nor licensed to use Complainant’s trademarks.
Complainant alleges that Respondent is using Complainant’s trademark for illegal solicitation and to gain an illicit profit based on the likelihood of confusion with Complainant’s trademark which creates the likelihood that customers will believe that Complainant is the owner and operator of the Disputed Domain Name. Complainant alleges that the fact that an internet search for “Floyd Rose” returns the Disputed Domain Name high on the list of results is evidence of the likelihood of confusion. The Disputed Domain Name deliberately refers to Complainant’s marks and offers for sale instructional videos on how a musician can modify or “upgrade” their FLOYD ROSE products, including the world-famous tremolo bridge. Complainant alleges that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant alleges that, for these reasons, Respondent’s registration and use of the Disputed Domain Name is in bad faith. B. Respondent
Respondent is an individual residing in Pennsylvania. Respondent uses the Domain Name for a website on which it sells instructional videos and devices that allow musicians to modify or “upgrade” their FLOYD ROSE products, prominently the tremolo bridge. Respondent alleges that the Disputed Domain Name is not identical or confusingly similar to Complainant’s marks because of the use of the word “upgrades” and that the addition of this term makes the Disputed Domain Name “a name which can have nothing whatever to do with Complainant.”
Respondent alleges that it has rights to, and legitimate interests in, the Disputed Domain Name because it is making a bona fide offering of goods and services based on Complainant’s products and that use of Complainant’s registered marks in this way is a nominative, fair use. Respondent alleges that, for these reasons, Respondent’s use of the Disputed Domain Name is not in bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s trademarks FLOYD ROSE and THE FLOYD. The addition of the generic term “upgrades” does not sufficiently distinguish the domain name from Complainant’s registered trademarks so as to avoid confusion for purposes of the Policy. The Disputed Domain Name contains the entirety of Complainant’s FLOYD ROSE trademark and the dominant portion of its THE FLOYD trademark. The generic top level domain “.com” may be disregarded and does not serve to distinguish the Disputed Domain Name from Complainant’s marks here. B. Rights or Legitimate Interests
Complainant has presented evidence of its rights in the trademarks FLOYD ROSE and THE FLOYD, referencing three separate trademark registrations in the United States.
Complainant alleges, and Respondent has not disputed, that Respondent is not affiliated with Complainant nor is Respondent licensed to use Complainant’s trademarks.
Respondent alleges that Respondent’s use of Complainant’s trademarks is nominative, fair use and references the standard in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Panel finds that Respondent meets some, but not all, of the requirements set forth in Oki Data Americas, Inc. v. ASD, Inc. supra. Namely, the Panel finds that:
- the Respondent is actually offering the goods or services at the Disputed Domain Name;
- the Respondent uses the website at the Disputed Domain Name to sell goods and services related to the products marked with the Complainant’s trademark – but the Respondent’s website also sells numerous other products, including competing products such as “Les Paul Ti Saddles” and parts for “licensed Jackson bridges”;
- the Respondent accurately discloses the lack of relationship with the trademark owner;
- the Respondent registered only one domain name using Complainant’s mark, with an additional relevant term that helps identifying the particular services offered, and is not trying to “corner the market” in relevant domain names.
The Panel finds that Respondent does not have a right to use of Complainant’s trademarks either as nominative fair use or otherwise. Any claim of nominative fair use is negated by Respondent’s use of the Disputed Domain Name for a website that sells not only goods or services related to Complainant’s branded goods but also products that compete with those offered or licensed by Complainant. C. Registered and Used in Bad Faith
Complainant’s allegations that Respondent is using Complainant’s trademark for illegal solicitation and to gain an illicit profit based on the likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name are supported by evidence presented to the Panel including screen shots of the website associated with the Disputed Domain Name.
Complainant’s Annex 9 to the Complaint, a screen shot of the Respondent’s website associated with the Disputed Domain Name, shows how Respondent has used the Disputed Domain Name to solicit purchases of Respondent’s videos concerning “Floyd Rose bridges…setups and upgrades.” The record shows that Respondent was plainly aware of Complainant’s marks but did not clearly disclaim affiliation with Complainant until contacted by Complainant’s counsel. Moreover, Respondent has used the Disputed Domain Name, incorporating Complainant’s marks, for a website that also sells advice and components related to Complainant’s competitors’ products. This is not a nominative fair use of Complainant’s marks, as discussed above, and it reflects bad faith in engendering at least initial confusion for commercial gain.
Based on the foregoing, the Panel finds that the use of the Disputed Domain Name is in bad faith. 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 Disputed Domain Name be transferred to the Complainant.
Maxim H. Waldbaum
Presiding Panelist
W. Scott Blackmer
Panelist
Frank L. Politano
Panelist
Date: May 15, 2013
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