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Generic Top Level Domain Name (gTLD) Decisions |
Korg, U.S.A., Inc. and Korg Europe
Limited v. Dirk Dutton d/b/a Sunset Strip Broadcasting Company LLC
Claim Number: FA0111000102490
PARTIES
Complainant is Korg, U.S.A., Inc. and Korg
Europe Limited, Melville, NY (“Complainant”) represented by Nancy
Rubner-Frandsen, of Drinker, Biddle & Reath, LLP. Respondent is Dirk Dutton d/b/a Sunset
Strip Broadcasting Company LLC, North Hollywood, CA (“Respondent”)
represented by Stephen H. Sturgeon, of Law Offices of Stephen H.
Sturgeon & Associates, PC.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <voxamp.com>,
<voxamps.com>, <voxamplifiers.com>,
<vintagevoxamps.com>, and <vintagevoxamplifiers.com>,
registered with Register.com.
PANEL
The undersigned certifies that he has acted
independently and impartially and to the best of his knowledge, has no known
conflict
in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (“the Forum”) electronically on November 20, 2001; the Forum
received
a hard copy of the Complaint on November 26, 2001.
On November 21, 2001, Register.com confirmed by e-mail
to the Forum that the domain names <voxamp.com>, <voxamps.com>
<voxamplifiers.com>, <vintagevoxamps.com>,
<vintagevoxamplifiers.com> are registered with Register.com and that
the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the
Register.com registration agreement and has thereby agreed to resolve
domain-name
disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 27, 2001, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of December 17, 2001 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 Respondent’s registration as
technical, administrative and billing
contacts, and to postmaster@voxamp.com,
postmaster@voxamps.com,postmaster@voxamplifiers.com,postmaster@vintagevoxamps.com,
and postmaster@vintagevoxamplifiers.com
by e-mail.
The Response deadline was extended to January 7, 2002
at the Respondent’s request.
A Response was received and determined to be complete
on January 8, 2002. The Response was
not timely filed.
Complainant’s Additional Response was received on
January 14, 2002. The Additional Response was timely filed.
Respondent’s Additional Response was received on
January 24, 2002. The Additional
Response was not timely filed.
On February 7, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the Forum appointed
Honorable
Paul A. Dorf (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that the Respondent used the
“Vox” trademark unlawfully, by registration of the domain names at issue in
bad
faith. The Complaint also contends that
the domain names at issue are identical or confusingly similar to its famous mark,
and that the Respondent
has no rights or legitimate interests in the domain
names.
B. Respondent
The Respondent
contends that the Complainant did not sustain the burden of proof as to the
allegations of the domain names being identical
or confusingly similar to
Complainant’s famous mark, that the Respondent has no rights or legitimate
interests in the domain name,
or that the domain names were registered in bad
faith.
C. Additional Submissions
The Complainant filed an Additional Response raising
the following contentions as to the untimely filing of the response: that the Respondent failed to establish the
existence of exceptional circumstances, that the Complainant would be
prejudiced by the
late Response, that the Respondent’s communication dated
December 17, 2001 was not a Response as it was never forwarded to the
Complainant. The Complainant also
reinforces its position as to the confusing similarity of the domain names to
the Complainant’s famous mark,
and presents rebuttal arguments to Respondent’s
claim that the domain names are used as a fan site, and that the disclaimer on
one
of the websites negates the likelihood of confusion. The Complainant also contends that the
Respondent has not offered any evidence to rebut the allegations of bad faith.
The Respondent filed an additional submission to
request two procedural determinations, as follows: whether Respondent is to be
deprived
of its right to have this dispute heard by a three-member Panel and
whether the Panel will consider the Response to Complainant’s
Supplemental
Statement of January 14, 2002. The
Respondent also includes a request to Panelists for consideration of said
additional submission.
FINDINGS
1. Timely
Filing of Response, Request for Three Member Panel,
and Additional Submission
On December 14, 2001, Respondent requested an
extension of twenty (20) days to file its Response. On December 17, 2001, The Forum granted an extension until
January 7, 2002 to file the Response, representing the maximum extension
provided by Supplemental Rule 6(a)(iv), absence the existence of exceptional
circumstances.
On January 8, 2002, Respondent advised The Forum that
several difficulties had delayed the submission of the Response, and that the
Response would be forthcoming in several hours. The Response was delivered to The Forum at 5:03 P.M. On January 9, 2002, The Forum advised both
the Complainant and Respondent that as the Respondent had been granted an
extension to
January 7, 2002, the Response did not comply with the established
time periods, and that the request for a three-member Panel could
not be
honored. The Forum advised the parties
that the case would be forwarded to a single member Panel.
As this Panel cannot find exceptional circumstances
in any of the Respondent’s reasons for the untimely filing, The Forum’s decision
regarding the untimely filing of the Response and
request for a three-member
panel is upheld.
The Respondent’s Additional Response also was not
timely filed. Again, this Panel finds
no exceptional circumstances to allow the untimely filing.
Even though the Respondent’s Response and Additional
Response were not timely filed, in an effort to exercise judicial discretion
,
this Panel reviewed both documents as if in fact they had been timely
filed.
2.
Domain Name Complaint
The Complainant is the owner and exclusive U.S.
licensee of the Vox trademark for use in connection with musical instruments
and musical
equipment. Their most
significant use of the trademark has been for guitar amplifiers and guitar effect
pedals.
The development of what ultimately was to become the
first Vox amplifier began in 1957, and
the first one was produced in January, 1958.
Due to the clean guitar sound produced by the amplifiers, Vox amplifiers
were being used by various artists, including The Beatles. The classic sound that these amplifiers
produce make them the preferred by recording artists throughout the world.
The Complainant currently owns two United States
trademark registrations for the Vox mark, one for use in connection with
guitars,
guitar accessories and guitar amplifiers, and one for use in
connection with electric organs and auxiliary amplification devices. Since they were placed into use, the marks
have become legendary in the industry and an invaluable asset to the
Complainant.
The Respondent operates what is described as a
multimedia/Internet/info services business, per its Limited Liability Company
Articles
of Organization filed with the State of California, Secretary of
State.
The Respondent states that he has a hobbyist interest
in vintage amplifiers and wanted to provide easy access to Internet sites for
fans and enthusiasts of vintage amplifiers, without any commercial intent or
purpose. The Respondent also declares
that the ownership of the domain names at issue is separate from his business
activities.
DISCUSSION
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 Complainant is the registered owner of the famous
VOX trademarks. The domain names at
issue pair the Complainant’s marks with the addition of a generic descriptive
term, and the .com suffix . In
this case, by coupling the trademark with the descriptive term causes more
confusion as the descriptive terms also describe the
Complainant’s product for
which the trademark is held, and for which the Complainant is famous. See Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the
Complainant combined with a
generic word or term); see also Christie’s Inc. v. Tiffany’s Jewelry
Auction Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain
name <christiesauction.com> is
confusingly similar to the Complainant's mark since it merely adds the word
auction used in its generic
sense); see also Parfums Christian Dior
v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four
domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were
confusingly similar to the trademark).
Also, a typical Internet user may easily mistake any
website associated with the domain names at issue as being affiliated with,
sponsored
by or owned by Complainant.
Rights or Legitimate Interests
The Respondent’s use of the domain names at issue are
not in connection with a bona fide offer of goods and services Policy ¶
4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). The <voxamp.com> and <voxamplifiers.com>
domain names do not resolve to active websites and the <voxamps.com>
websites offers no goods or services of any kind. See Chi-Chi’s Inc. v. Restaurant Commentary, D2000-0321
(WIPO July 13, 2000) (finding that Respondent had no rights or legitimate
interest in the domain name even though Respondent
stated that it intended to
use the domain name for “public comment” on the Internet); see also State
Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27,
2000) (finding that “unauthorized providing of information and services under a
mark owned by
a third party cannot be said to be the bona fide offering of
goods or services”).
The Respondent has not provided any evidence that
would demonstrate rights or legitimate interests in the domain names at issue. See
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that under certain circumstances the mere assertion by the
Complainant that the Respondent
has no right or legitimate interest is
sufficient to shift the burden of proof to the Respondent to demonstrate that
such a right
or legitimate interest does exist).
Further, the Complainant has not licensed or otherwise
authorized Respondent to use the VOX marks.
It appears from the evidence presented that the Respondent is commonly
known by Dirk Dutton and possibly Sunset Strip Broadcasting
Company LLC or
Dutton Books, but is definitely not commonly known by any of the domain names
or any name incorporating the famous
VOX mark.
See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
Registration and Use in Bad Faith
On March 17, 2000, the Complainant sent Respondent a
cease and desist letter, offering to reimburse Respondent for out of pockets
costs related to the registration of the domain names at issue. The Respondent’s reply, through counsel,
that the Respondent would license for no fee, a website to Complainant in
consideration for
Respondent being paid a fee to act as the official historian
and web-consultant for Complainant’s product line. See Metallica v. Schnieder, FA 95636 (Nat. Arb. Forum Oct.
18, 2000) (finding bad faith based on Policy ¶ 4(b)(i) where the Respondent
offered to transfer the
domain name in return for non monetary consideration
(i.e., if the Complainant met with the Respondent, called two of his friends,
and granted the Respondent on interview)); see also American
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb.
Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even
if no certain price is demanded,
are evidence of bad faith”); see also Gutterbolt,
Inc. v. NYI Bldg. Prod. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000)
(finding that the demanded consideration does not have to be monetary in
nature, but can
be anything of value that exceeds the amount spent in
registering and maintaining the domain name).
From the evidence presented, it would also appear that
the Respondent is using Complainant’s marks to confuse Internet users and
divert
them to his websites. Policy ¶
4(b)(iv). See State Farm Mut.
Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000)
(finding that the Respondent registered the domain name
<statefarmnews.com> in bad
faith because Respondent intends to use
Complainant’s marks to attract the public to the web site without permission
from Complainant);
see also Anne of Green Gable Licensing Auth., Inc. v.
Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith where
Respondent used the domain name <anneofgreengables.com> to link
users to
a website that contains information about the Anne of Green Gables literary
works, motion pictures and the author, L. M.
Montgomery, where a visitor to the
website may believe that the owner of the mark ANNE OF GREEN GABLES is
affiliated with or has
sponsored or endorsed Respondent's web site).
As to Respondent’s request for a three-member panel,
the original decision of The Forum denying this request is upheld by this
Panel.
As all three elements required by the ICANN Policy
Rule 4(a) have been satisfied, it is the decision of this Panel that the
requested
relief be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the
domain names <voxamp.com>, <voxamps.com>,
<voxamplifiers.com>, <vintagevoxamps.com> and
<vintagevoxamplifiers.com> be transferred from the Respondent to the
Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: February 25, 2002
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