The Complainant is MAGIX Software GmbH of Berlin, Germany, internally represented.
The Respondent is The Music Connection of Reston, Virginia, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2015. On July 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2015 the Registrar 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 July 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2015.
The Center appointed Nick J. Gardner as the sole panelist in this matter on August 28, 2015. 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.
On September 14, 2015, the Panel issued a Procedural Order (the “Procedural Order”). The Procedural Order provided details of research the Panel had carried out and the results of that research and provided the parties an opportunity to submit further material relevant to those results. On September 22, 2015, the Complainant filed a Supplemental Filing (the “Supplemental Filing”) in accordance with the Procedural Order. No filing was made by the Respondent. The contents of the Procedural Order and the Supplemental Filing are discussed in section 5 below. 4. Factual Background
The Complainant is MAGIX Software GmbH, a German company.
The filed evidence establishes the following as the relevant factual background.
The Complainant is a developer and supplier of software particularly software used in the fields of multimedia and personal communication. The Complainant offers an assortment of software, mobile apps, online services and digital content for the design, editing, presentation, sharing, communication and archiving of videos and music. In its core markets Complainant has a leading market position, addressing the music and video hobbyist with a large portfolio of products, covering the beginner to professional level of user.
A software product called “Music Maker” is one of Complainant’s most successful and top-selling products. The Complainant describes it as a “digital audio stream workstation” or “DAW” which enables users to manipulate audio files on their computers via a user friendly interface. The first version of Music Maker was published in 1994. With more than a million copies sold, Music Maker has become one of the internationally most successful music editing programs. It has gathered more than 130 software awards. It has become well-known internationally in its field. Unlike other products at that time, "Music Maker" was not designed for professionals. As such, Music Maker from the outset attracted much interest throughout the software industry. It became one of the bestselling DAWs in the world. There have been various versions of “Music Maker” including mobile versions called “Music Maker Jam" provided by the Complainant through its affiliate MAGIX Audio GmbH via the Google Play Store, Windows Store and Apple App Store (print-outs attached as Annex 9 of the Complaint). To date, it has been downloaded over 10.5 million times, making it one of the most successful music creation apps. Currently Complainant promotes both Music Maker and Music Maker Jam via the domain name .
The Complainant is the owner of numerous trademark registrations for the words “Music Maker”. Its trademark registrations include for example German trademark MUSIC MAKER No. 39405728, filed on December 9, 1994. Its earliest US trademark appears to be US registration No. 75010354 which was applied for on October 25, 1995, published for opposition on July 15, 1997 and granted on October 7, 1997. That trademark claimed a first use in commerce date of June 4, 1995 ( note that this trademark is no longer active but the Complainant has other subsequent US registered marks such as US registration No. 78404236)
On November 11, 1996, the Respondent registered the Disputed Domain Name.
The Disputed Domain Name is at present used in relation to an automatically generated parking page where “click through” links to various other websites are provided. 5. Parties’ Contentions A. Complainant
The Complainant’s case can be summarised as follows.
a) The Disputed Domain Name is identical to the MUSIC MAKER trademark.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent uses the Disputed Domain Names in bad faith as the website to which the Disputed Domain Name resolves, make use of the Complainant’s Music Maker trademark in order to raise advertising revenue through the use of sponsored or click-through links. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Lack of Response
The Panel notes that no communication has been received from the Respondent. Before considering the substantive issues, it is necessary to consider whether the lack of Response prevents the Panel proceeding to resolve this dispute. Under the Rules, paragraph 2:
“Communications
(a) When forwarding a complaint, including any annexes, electronically to the Respondent, it shall be the Provider’s responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:
(i) sending Written Notice of the complaint to all postal-mail and facsimile addresses (A) shown in the domain name’s registration data in Registrar’s Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration’s billing contact; and
(ii) sending the complaint, including any annexes, in electronic form by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing contacts;
(B) postmaster@; and
(C) if the domain name (or ‘www.’ followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e- mail address shown or e-mail links on that web page; and
(iii) sending the complaint, including any annexes, to any e-mail address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other e-mail addresses provided to the Provider by Complainant under Paragraph 3(b)(v).
(b) Except as provided in Paragraph 2(a), any written communication to Complainant or Respondent provided for under these Rules shall be made electronically via the Internet (a record of its transmission being available), or by any reasonably requested preferred means stated by the Complainant or Respondent, respectively (see Paragraphs 3(b)(iii) and 5(b)(iii)).”
The Complaint was served by the Center via e-mail to the appropriate e-mail addresses as identified in the Complaint and as recorded in respect of the Respondent in the Registrar’s records. No Response was received to any of these. The Center also sought to serve the Written Notice of the Complaint by courier to the Respondent’s postal address. Although the address was genuine it was not possible to effect delivery to the appropriate recipient as no entity of that name was located at the address concerned.
In these circumstances the Panel is satisfied that the Center has complied with its obligation to employ “reasonably available means calculated to achieve actual notice to Respondent”. Under the Rules (paragraph 5(e)) “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”. The Panel concludes that there are no exceptional circumstances which prevent the Panel deciding the dispute. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g. Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). Substantive Issues
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the Disputed Domain Name;
iii. the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of numerous trademarks consisting of the words “Music Maker”. The Disputed Domain Name is identical to the MUSIC MAKER trademark. Hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
“i. before any notice to you 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 (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you 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.”
The Complainant’s MUSIC MAKER trademark comprises two ordinary English words, namely “music” and “maker” which are readily and naturally associated with each other given that common English usage is to use the verb “to make” in relation to the creation of music, thus “music maker” being a natural reference to a person or device which creates music. There is no doubt that the Complainant’s evidence confirms that as at today’s date its Music Maker product is extremely successful and widely known, such that a reasonable inference could be drawn that any person registering a domain name including those words today did so with knowledge of the Complainant and/or its Music Maker products. The position is however far less clear in November 1996 when the Respondent registered the Domain Name. The filed evidence establishes that the Complainant, based in Germany, had launched its Music Maker product in 1994 and by November 1996 had applied for (but not had published) its first US trademark for that term. No details are apparent in the evidence as to the size of the Complainant’s Music Maker sales prior to November 1996 or what, if any, reputation it was likely to have had in the US (where the Respondent is based) as at that date. Furthermore given the lack of any Response no information (beyond the current content of the website linked to the Disputed Domain Name) was available to assist the Panel in assessing whether or not the Respondent had any legitimate interest in the Disputed Domain Name. Given this background, the Panel carried out limited factual research (in accordance with the position noted in paragraph 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Details of that research as detailed in the Procedural Order which provided as follows:
“The Panel has reviewed the case file. The Panel notes as follows:
i. No Response has been filed in this case and no acknowledgment has been received from the Respondent, despite the utilization of all available contact details in accordance with paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (UDRP).
ii. It is nevertheless for the Complainant to prove each element of its case (UDRP, paragraph 4(a)).
iii. The domain name (the ‘Disputed Domain Name’) was registered on November 11, 1996.
iv. The present use of the Disputed Domain Name is for an automatically generated ‘parking page’.
v. Complainant’s use of the name ‘Music Maker’ to describe its software product commenced in 1994.
vi. Complainant’s earliest US trade mark registration for the term ‘Music Maker’ (the Respondent being based in the US) was published for opposition in 1997.
vii. The words ‘music’ and ‘maker’ are ordinary English words which the Panel considers could have been independently derived by the Respondent as words to conjoin and use in the Disputed Domain Name.
viii. There is very limited evidence in the case file as to the extent of the Complaint’s use of the term ‘Music Maker’ prior to November 11, 1996, and in particular no evidence as to its use in the US, to assist the Panel in its assessment of the bad faith (if any) of the Respondent at the time of the registration of the Disputed Domain Name.
3. Panel Research
Having regard to the above background and in accordance with the position noted in paragraph 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (‘WIPO Overview 2.0’) the Panel has performed limited factual research to assist it in determining whether or not the Respondent’s registration of the Disputed Domain Name was made in bad faith. The details and results of that research are as follows:
a) a Google search for the words ‘Pierre Tager’, who is listed as the ‘tech name’ on the whois search for the Disputed Domain Name. That research identified a Linkedin profile for an individual of that name which contains (amongst other items) the following entry which appears to relate the Respondent:
‘VP, Engineering & co-founder
M
November 1997 – July 2001 (3 years 9 months)
M, based in Reston VA with 50 employees, was the #1 Internet shop for custom music CDs and Digital Downloads in 2000. Web site traffic: 600K visitors and over 3M page views per month. Revenue of $8M in 2000.
Responsibilities and major accomplishments since joining the initial core team (reporting to the CEO):
Definition and implementation of the web site strategy and associated front/back-end infrastructure to sell Custom CDs and Digital Downloads. Management and recruitment of the technical team including customer service activities. Upon joining, brought on board venture capital for $1.5M expandable to $4.5M.’
b) a search of the ‘wayback machine’ provides historical ‘snapshots’ which appear to show a commercial website located at ‘www.’ offering a service enabling customers to choose music tracks by commercial artists and ‘assemble’ their own custom cd, such website appearing to have been active from at least 1998 to 2000.
4. Order
In accordance with the general powers of the Panel as provided at paragraph 10 of the UDRP Rules and the procedure identified at paragraph 4.5 of WIPO Overview 2.0, the Panel hereby notifies the Complainant of the above research which it intends to reference in the course of its Decision and allows the Complainant until Monday, September 21, 2015 to lodge any further submissions it may wish to make in relation to this research or the background identified above, such submissions not to exceed 1,500 words in length. In accordance with the Rules, the Respondent shall have an opportunity to file any submissions it may choose to make regarding these matters until Thursday, September 24, 2015, such submissions not to exceed 1,500 words in length. The Panel’s decision due date is extended until Thursday, October 1, 2015.”
In response to this Order the Complainant’s Supplemental Statement provided as follows:
“We refer to the Panel’s Procedural Order No. 1 in the administrative proceeding named above and respectfully submit the following:
1. The Complainant started using the trademark ‘Music Maker’ in the U.S. in 1994. It registered the domain in June 1996, see printout from the Whois-database attached as Annex 11. As Annex 11 we attach further evidence in the nature of snapshots of the website for the relevant period, derived from www.archive.orq, and an excerpt from the U.S. based SPIN Magazine (November 1997, page 117) which includes an advertisement for Music Maker 3.0, the third release of Complainant’s music editing software.
Since the relevant period dates back almost 20 years, Complainant is unable to provide more detailed evidence on its use of the name ‘Music Maker’.
2. The disputed Domain Name was registered in November 1996. Both the Linkedin entry of Mr. Tager and the snapshots derived from www.archive.orq show use of the name/domain name between 1998 and 2001. Even if this constituted good faith use, it would not affect the finding if the Respondent registered the Domain Name in 1996. Besides, the Respondent is currently using the Domain Name for a link connection that references products of the Complainant’s core competitors. As Sec. B. 12.5 of the Complaint, this constitutes bad faith use.
We therefore hold that the disputed Domain Name was registered and used in bad faith.”
The result of the Panel’s enquiries (as set out in the Procedural Order above) appears to establish that the Disputed Domain Name was used between 1998 and 2000 or 2001 for a commercial website which offered customers the facility to “assemble” a CD themselves which was then “burned” and sent to them. Whilst nowadays that is the type of facility that any reasonably technical home user can carry out on standard computer equipment that would not have been so in 1998. The Panel sees no reason to doubt the service was a bona fide offering. The name “music maker” seems to the Panel to be a choice that could readily have been arrived at by the owner/operator of that site completely independently of any knowledge of the Complainant and its products. Nothing in the Complainant’s Supplemental Statement leads the Panel to any alternative explanation of events and in particular the Complainant has not filed evidence that the size of its then business was such as to raise a presumption that the Respondent knew of the Complainant at the time it registered the Disputed Domain Name, or even if it did, that such knowledge should have given it reason to suppose it was not entitled to register a domain name involving a combination of the words “music” and “maker”. Although by this date the Complainant had applied for a US trademark that application had not proceeded to grant, nor had it been published. In those circumstances the Panel is unable to infer that the Respondent should have been on notice (either actual or imputed) of any rights that would prevent it adopting the words “music” and “maker” for its intended venture. The Panel accepts the Complainant’s point that this all happened a long time ago and that it may be difficult for the Complainant now to provide further evidence which would advance its case more positively – that however seems to be the Panel to be a direct consequence of the Complainant leaving it until now to file this Complaint. The Complainant has not said when it first became aware of the Disputed Domain Name but it seems inconceivable that it has not known of it for many years.
Based on the evidence, the Panel would be inclined to make a finding that the Complainant has failed to establish, on a balance of probabilities, that the Respondent has no rights or legitimate interests in the Disputed Domain Name. However, in light of the Panel’s finding under the third element of the Policy it is unnecessary to make a final determination on this issue. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating that registration and use may be in bad faith, as follows:
“ (i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel declines to find that any of these apply in present circumstances. As described in above, it seems likely to the Panel that the Respondent chose the name as a combination of ordinary English words which were suitable for the commercial service it intended to develop, and which it did then develop and operate, namely a facility allowing customers to choose tracks from different artists and thereby assemble their own CD. Applying a balance of probabilities test there is insufficient evidence before the Panel to suggest any alternative motivation which would support a finding that the Respondent registered the disputed domain name in bad faith.
The Complainant has also alleged that the Respondent’s current use of the Disputed Domain Name, for a “parking page” with click through links, amounts to use in bad faith. The Panel disagrees. There is no doubt that the use of parking pages may in certain circumstances support a finding of bad faith, particularly where such use involves a deliberate capitalization of the value of the Complainant’s trademark (see WIPO Overview 2.0, paragraph 2.6). In the present case however it would appear that the Respondent’s original legitimate business came to an end - probably in around 2001. That is perhaps not surprising as developing home technology options may well have overtaken that particular business. The Respondent it would appear has nevertheless retained the Disputed Domain Name. The website currently associated with the Domain Name is clearly automatically generated by the Registrar – it contains a prominent link stating “why am I seeing this under construction page”. If clicked that triggers a notice which states:
“This ‘Under Construction’ page is an automatically generated placeholder Web page for a domain that is not yet attached to an active Web site. This page replaces the ‘Not Found’ error pages and notifies visitors that a Web site is coming soon”.
The other links that appear on the webpage are no doubt automatically generated by the Registrar’s software and will likely vary from time to time, their precise content being determined by various factors, including in all probability the nature and lexicological significance of the Disputed Domain Name itself. Given the Disputed Domain Name comprises two ordinary English words conjoined together it is not surprising that links to other sites which are of relevance to the same words are generated (including links to the Complainant’s own Music Maker product). All of this is in the opinion of the Panel is consistent with the Respondent simply wishing to retain the Disputed Domain Name, after its business came to an end, but not seeking to capitalize on any association the Disputed Domain Name may now have with the Complainant’s Music Maker product. In the view of the Panel (again on a balance of probabilities test) this does not amount to use in bad faith.
Accordingly the Panel finds that the Complainant has failed to establish the third element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Sole Panelist
Date: October 1, 2015
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