P. O. Box 50191
Minneapolis, Minnesota 55405 USA
DOMAIN NAME DISPUTE ADMINISTRATIVE DECISION
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Slep-Tone Entertainment Corporation d/b/a Sound Choice Accompaniment
Tracks
14100 South Lakes Drive
Charlotte, NC 28273
Complainant,
vs.
Sound Choice
P.O. Box 1969
Cathedral Station
New York, NY 10025
Respondent.
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DECISION
Forum File No.: FA0002000093631
|
The above entitled matter came on for an administrative
hearing on April 10, 2000 before the undersigned Arbitrator on
the Complaint
of Slep-Tone Entertainment Corporation d/b/a Sound Choice Accompaniment
Tracks ("Complainant")
represented by Christopher C. Dremann, 10925
David Taylor Drive, Suite 100, Charlotte, NC 28262 (email: cdremann@onlinepatents.com)
against Sound Choice (Respondent). Upon the written submitted record,
including the Complaint, the Response
to the Complaint, Complainant’s
additional Response and Respondent’s additional Response, I hereby
render the following decision:
PROCEDURAL FINDINGS
Domain Name: SOUNDCHOICE.NET
Domain Name Registrar: Network Solutions, Inc.
505 Huntmar Park Drive
Herndon, VA 20170-5139
Domain Name Registrant: Sound Choice
P.O. Box 1969
Cathedral Station
New York, New York 10025 USA
Date of Domain Name Registration: January 13, 1998
Date Complaint Filed: February 8, 2000
Date Answer Filed: March 13, 2000
After reviewing the Complaint and determining it to be
in administrative compliance, the National Arbitration Forum (the
"Forum")
forwarded the Complaint to Respondent in compliance with Rule 2(a) and
the administrative proceeding
was commenced pursuant to Rule 4(c) in
compliance with Rule 4(d). The Forum immediately notified Network Solutions,
Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS ("ICANN")
and the Respondent that the administrative
proceeding had commenced.
Respondent submitted a Response to the Forum within twenty (20) days
pursuant to
Rule 5(a). The Complaint, the Response and the Additional
Responses of the parties were docketed and forwarded to the
undersigned
Arbitrator for decision.
On January 13, 1998, Respondent registered the domain
name SOUNDCHOICE.NET with the domain name registrar Network Solutions,
Inc., the entity that is the registrar of the domain name. Network Solutions,
Inc. verified that Respondent
is the registrant for the domain name
SOUNDCHOICE.NET and that by registering its domain name with Network
Solutions, Inc., Respondent agreed to resolve any disputes regarding
its domain name through ICANN’s rules for Uniform
Domain Name Dispute
Resolution policy. Neither the Complainant nor the Respondent contest
the jurisdiction
of the Forum or the undersigned Arbitrator to resolve
this controversy.
FINDINGS OF FACT
- Complainant is the owner of U.S. Trademark Registration No.
1,923,448 for the trademark Sound Choice in International
Class
9 for pre-recorded audio cassette tapes and compact discs containing
musical compositions
and compact discs containing video related
to musical compositions. Complainant is also the owner of U.S.
Trademark Registration No. 2,026,912 for the trademark Sound Choice
in International Class 16 for printed
publications namely catalogs
pertaining to audio recordings. Finally, Complainant is also the
owner
of European Community Trademark Registration No. 000115287
for the trademark Sound Choice in international class
9 for pre-recorded
musical compositions and pre-recorded video related to musical
compositions,
in International Class 16 for printed publications
pertaining pre-recorded musical compositions and pre-recorded
video related to musical compositions, and in International Class
41 for sound recordings pertaining
to pre-recorded musical compositions
and pre-recorded video related to musical compositions. Complainant
has been using the mark Sound Choice on or in connection with
the goods and services in the music industry
since at least as
early as 1986 and has owned the U.S. Trademark Registration for
the mark since
1989.
- Respondent’s domain name SOUNDCHOICE.NET is almost identical
to Complainant’s registered trademarks. Complainant
also
registered the mark SOUNDCHOICE as the second level domain in
its own domain name SOUNDCHOICE.COM.
- Because Respondent’s second level domain name is almost
identical to Complainant’s trademark internet users
and consumers
are likely to be confused into believing there is some affiliation,
connection, sponsorship,
approval or association between Respondent
and Complainant, when in fact, no such affiliation or association
exists. The likelihood of confusion is further increased by the
fact that Complainant and Respondent
operate within the same industry.
Complainant arranges previously recorded musical compositions
and records and records the new arrangements in Karaoke format.
Complainant also manufactures and distributes audio
cassettes
and compact discs containing the musical compositions and compact
discs containing the
video related to the musical compositions
for sale to others.
- Sound Choice is the service mark for the various professional
service activities performed by Jeffrey Bernstein of
Respondent.
Mr. Bernstein is a noted music producer and mixer. Respondent
provides recording studio
services, vocal training and performance
enhancement and counseling services to performing artists. These
services are classified as Class 41 services by the Trademark
Acceptable Identification of Goods And
Services Manual. Mr. Bernstein
d/b/a Sound Choice has been providing these services to professional
artists since 1986. Mr. Bernstein registered with Network Solutions,
Inc., the domain name SOUNDCHOICE.NET
in 1998 to facilitate his
music production business on the internet.
- Both Complainant and Respondent use the internet to advertise
and promote their business activities. Complainant
markets and
sells its audio cassettes and compact discs on its website as
SOUNDCHOICE.COM. Sales
generated by the website represent a significant
and growing portion of Complainant’s revenues. Respondent
also promotes and advertises its services on the website.
- Although the Complainant and Respondent do not directly compete,
both parties are using the internet to market their
business activities.
As a result, internet users may be confused into believing that
there is some
affiliation in connection with sponsorship, approval
or association between Complainant and Respondent, when in
fact,
none exists.
- Even though Respondent contends that its domain name is not
confusingly similar to Complainant’s trademark,
as an accommodation
to Complainant, Respondent has amended his website to disclaim
any relationship
with Respondent. According to Respondent, should
any customer of Complainant reach Respondent’s website by
mistake, the customer is immediately redirected to Complainant’s
Karaoke website by a banner
that reads "This site is in no way
affiliated with Sound Choice, the quality leader in Karaoke.
If you are interested in Sound Choice, please go to soundchoice.com".
Respondent contends that
as a result the two names will not confuse
the party’s patron.
- Respondent has been registered as a publishing member of the
American Society of Authors, Composers and Publishers
since December
2, 1988 and has been granted a New York Business Certificate under
the "Sound Choice"
on December 7, 1988. Respondent has been commonly
known by its domain name and has gained credibility as the producer
of Cher and other world class recording artists and has provided
services to all of the major and
top independent record companies.
Respondent therefore has demonstrated its right and legitimate
interests in the domain name SOUNDCHOICE.NET.
- There is no evidence that Respondent acquired the disputed domain
name SOUNDCHOICE.NET for the purpose of selling
it to Complainant.
To the contrary, Respondent has been successfully providing services
using the
name Sound Choice for many years. Moreover, there is
no evidence that Respondent registered the domain name in order
to prevent Complainant from reflecting the mark in a corresponding
domain name, nor has it been
shown that Respondent had registered
the domain name primarily for the purpose of disrupting the business
of a competitor or attracting its customers.
- While Complainant registered its domain name SOUNDCHOICE.COM
on September 19, 1995 before Respondent registered its
domain
name SOUNDCHOICE.NET on January 13, 1998, there is no evidence
that Respondent registered
or acquired the domain name SOUNDCHOICE.NET
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 the documented out-of-pocket
costs directly related to the domain name. Moreover, there is
no evidence that Respondent registered the
domain name SOUNDCHOICE.NET
in order to prevent Complainant, the owner of the trademark or
service
mark, from reflecting the market in the corresponding
domain name or primarily for the purpose of disrupting Complainant’s
business. Finally, there is no evidence that Respondent intentionally
attempted to attract for
commercial gain internet users to its
website or other on-line location by creating a likelihood of
confusion with the Complainant’s mark as the source, sponsorship,
affiliation or endorsement of Respondent’s
website or location
or a product of service on Respondent’s website or location.
On the contrary,
with the inclusion of a banner referred to above,
such clearly was not Respondent's intent.
Complainant requests that the domain name SOUNDCHOICE.NET
be transferred to it.
CONCLUSION
The undersigned certifies that he has acted independently
and has no known conflict of interest to serve as the Arbitrator
in
this proceeding. Having been duly selected and being impartial and neutral,
the undersigned makes the following
findings and conclusions:
1.The domain name SOUNDCHOICE.NET registered by Respondent
on January 13, 1998 is identical or confusingly similar to the
domain
name SOUNDCHOICE.COM registered by Complainant on September 19, 1995,
in which Complainant has rights.
2.The Respondent has substantial rights and legitimate
interests in respect to the domain name SOUNDCHOICE.NET.
3.The Respondent has not registered or used the domain
name SOUNDCHOICE.NET in bad faith.
DECISION
Based upon the above findings and conclusions and pursuant
to the Rules of the Uniform Domain Name Dispute Resolution Policy
and
the National Arbitration Forum Supplemental Rules of ICANN’s Uniform
Domain Resolution Policy, I hereby
Order that the domain name SOUNDCHOICE.NET
registered by Respondent Sound Choice not be transferred to Complainant
Slep-Tone Entertainment Corporation d/b/a Sound Choice Accompaniment
Tracks.
Herman D. Michels
Arbitrator
Dated: April 10, 2000
