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Marcor International v. Len Langevin [2001] GENDND 62 (12 January 2001)

National Arbitration Forum

The Complainant is Marcor International, Monte Carlo, MONACO ("Complainant") represented by Gregory J. Sater, Grace & Sater. The Respondent is Len Langevin, Shawnigan Lake, BC, VOR2W0 Canada ("Respondent").

The domain name at issue is "worldmusicawards.com" registered with Network Solutions.

The undersigned, Robert R. Merhige, Jr., is the panelist and certifies that I have acted independently and impartially and to the best of my knowledge, have no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 22, 2000; The Forum received a hard copy of the Complaint on December 26, 2000.

On December 29, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "worldmusicawards.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 22, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to postmaster@worldmusicawards.com by e-mail. The record reflects that Respondent on January 2, 2001, acknowledged, via e-mail, receipt of the Complaint and expressed no opposition to Complainantís prayer for relief, and the matter is now ripe for disposition.

On January 3, 2001, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed the undersigned as Panelist.

The subject of the instant proceeding is the common-law trademark and service mark WORLD MUSIC AWARDS (the "mark") and the domain name worldmusicawards.com ("the domain name"). The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant asserts that it has continuously used the mark aforementioned in goods and services in the music industry, including the production of an annual awards show which is broadcast around the world under the mark "WORLD MUSIC AWARDS." Complainant asserts that the Respondent has registered and used the domain name (which is identical to the mark) in bad faith, by displaying it on his web site with the mark and with a logo that is similar to Complainantís, to attract people and mislead them as to source, sponsorship, affiliation and endorsement, to the end that he, Respondent, might sell his album and hopefully be discovered by someone in the music industry, resulting in an enhancement to Respondentís anticipated career in the world of music.

B. Respondent

Respondent has asserted no denial of Complainantís allegation and asserts that he is willing to sign the necessary transfer documents to the end that registration of the domain name in issue is transferred to the Complainant.

In summary, Respondent does not dispute Complainantís claim to the domain name.

Complainantís assertions are undisputed and for the reasons which follow, Complainantís request for the transfer of the domain name shall be granted.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The domain name in issue registered by Respondent is unquestionably identical and/or confusingly similar to Complainantís common-law trademark and service mark, WORLD MUSIC AWARDS as well as the domain name in issue. See State Fair of Texas v. State Fair Guides, FA95066 (Nat. Arb. Forum July 25, 2000) (finding that Complainant has rights in the registered mark).

Rights or Legitimate Interests

Through its intensive, continuous, widespread and exclusive use of WORLD MUSIC AWARDS in commerce for more than (13) consecutive years, around the world, including the United States, Complainant has signaled to the public in general, and to members of the music industry in particular, that the term "WORLD MUSIC AWARDS" indicates a single source of goods and services. Complainant has acquired common-law trademark rights and having acquired the same for use in commerce, Respondent, as all other individuals, is obliged to respect Complainantís rights and accordingly, the undersigned finds that Respondent has no right, title or legitimate interest in the mark or domain name.

The Respondentís willingness to transfer the domain name indicates that he has no rights and legitimate interests in the domain name. In addition, the Respondent is not commonly known by the WORLD MUSIC AWARDS mark [Policy  4(c)(ii)] and is not using the domain name for a bona fide offering of goods and services where the Respondent is attempting to create a likelihood of confusion between the Respondentís web site and the Complainantís mark [Policy  4(c)(i)]. See North Coast Medical, Inc. v. Allegro Medical, FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert internet users to its web site). See also Taco Bell Corp. v. Tango Bella, D2000-1229 (WIPO Dec. 12, 2000) (transferring the domain name where Respondent agreed that it had no rights in the domain name).

Registration and Use in Bad Faith

Under  4(b)of the Policy, evidence of the Respondentís bad faith, registration and use includes:

The registration of a domain name encompasses an assertion that the registration "would not infringe upon or otherwise violate the rights of any third party." Under the circumstances existing, it is reasonable to conclude that any such representation by Respondent in the registering of the domain name in issue was false when made and in this instance constitutes bad faith.

The Respondentís registration and use of the domain name in issue coupled with his expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in Policy  4(b), and I so find.

For the reasons heretofore stated and pursuant to the authority vested in the undersigned, it is DIRECTED that the registration of the domain name "worldmusicawards.com" be forthwith transferred to the Complainant.

Robert R. Merhige, Jr.

U.S.D.J., Retired

Dated: January 12, 2001