DECISION

Atlantic Recording Corporation v. Atlantic Recording

Claim Number:  FA0409000323763

PARTIES

Complainant is Atlantic Recording Corporation (“Complainant”), represented by Andrew J. Wilson, of Alston & Bird, LLP, 1201 West Peachtree Street, Atlanta, GA 30309.  Respondent is Atlantic Recording (“Respondent”), 4580 Sunset Blvd, Suite 108, Hollywood, CA 90028.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <atlanticrecording.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 3, 2004; the Forum received a hard copy of the Complaint on September 7, 2004.

On September 7, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <atlanticrecording.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 September 10, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 30, 2004 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@atlanticrecording.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 7, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <atlanticrecording.com> domain name is confusingly similar to Complainant’s ATLANTIC mark.

2. Respondent does not have any rights or legitimate interests in the <atlanticrecording.com> domain name.

3. Respondent registered and used the <atlanticrecording.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Atlantic Recording Corporation, is a member of the Warner Music Group family of companies, one of the world’s foremost producers of pre-recorded music and entertainment media, including phonographic records, audio tapes, and compact discs.  Complainant’s catalog of pre-recorded media products focuses on rock and urban music featuring performances by popular artists including Brandy, Jewel, Kid Rock, Rush, Sean Paul and Tori Amos.  Pre-recorded media bearing the ATLANTIC mark are sold throughout the world in music stores, department stores, and record clubs, and are available online at some of the Internet’s largest merchants, including <amazon.com> and <buy.com>.

Complainant has operated under the ATLANTIC mark since as early as 1949.  Complainant owns trademark registrations with the United States Patent and Trademark Office for the ATLANTIC mark (Reg. No. 1,116,322, issued April 10, 1979 and Reg. No. 1,535,113, issued April 18, 1989) for use in connection with pre-recorded records and pre-recorded audio and visual tapes, cassettes, phonograph records, sound tapes and discs for entertainment purposes.  Additionally, Complainant owns more than 100 registrations for the ATLANTIC mark in various countries throughout the world. 

Respondent registered the <atlanticrecording.com> domain name on December 11, 2003.  Respondent is using the domain name to host a website that purported to be the website for Complainant.  Respondent’s website features Complainant’s ATLANTIC mark, images, information, and news stories relating to numerous modern recording artists.  Respondent’s website also features links to purchase recordings from most of these artists as well as links to these performers’ official websites.  Most importantly, all the artists featured on Respondent’s webpage appear on the record labels owned by Sony Music, one of Complainant’s primary competitors in the pre-recorded media market.  Additionally, the links appearing on Respondent’s webpage offering the sale of pre-recorded media direct Internet users to Sony’s official online store.  Moreover, the footer of Respondent’s home page erroneously states, “Atlantic Recording and Atlantic Records are registered trademarks of Sony Music Entertainment, Inc.”

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant established that it has rights in the ATLANTIC mark through registration with the USPTO and in various countries throughout the world, in addition to its continued use of the mark in commerce for the last fifty-five years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s domain name is confusingly similar to Complainant’s ATLANTIC mark because the domain name includes Complainant’s mark with the addition of the generic or descriptive term “recording,” which describes Complainant’s business.  The mere addition of a generic or descriptive term that describes Complainant’s business does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

The Panel finds that Complainant has fulfilled Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant alleges that Respondent has no rights or legitimate interests in the domain name that contains Complainant’s mark in its entirety.  Due to Respondent’s failure to respond to the Complainant, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name). 

Moreover, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <atlanticrecording.com> domain name to host a website that features Complainant’s ATLANTIC mark, images, information, and news stories relating to numerous modern recording artists.  All the artists featured on Respondent’s webpage appear on the record labels owned by Sony Music, one of Complainant’s primary competitors in the pre-recorded media market.  Respondent’s use of a domain name that is confusingly similar to Complainant’s ATLANTIC mark to redirect Internet users interested in Complainant’s products to a commercial website that offers related goods connected to Complainant’s competitor is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of a web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).

The Panel finds that Complainant has fulfilled Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered a domain name that contains in its entirety Complainant’s well-known mark for Respondent’s commercial gain. Respondent’s domain name diverts Internet users wishing to search under Complainant’s well-known mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark.  Specifically, Respondent’s website features Complainant’s ATLANTIC mark, images, information, and news stories relating to numerous modern recording artists.  Respondent’s website also features links for the sale of recordings from most of these artists as well as links to these performers’ official websites.  Moreover, the footer of Respondent’s home page erroneously states, “Atlantic Recording and Atlantic Records are registered trademarks of Sony Music Entertainment, Inc.”  Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

Furthermore, Respondent registered the domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that directly competed with Complainant.  Respondent is using the goodwill associated with the ATLANTIC mark to divert Internet users looking for Complainant’s business to Respondent’s website and other online locations operated by Complainant’s competitors.  Most importantly, all the artists featured on Respondent’s webpage appear on the record labels owned by Sony Music, one of Complainant’s primary competitors in the pre-recorded media market.  Additionally, the links appearing on Respondent’s webpage offering the sale of pre-recorded media direct Internet users to Sony’s official online store.  Finally, the footer of Respondent’s home page erroneously states, “Atlantic Recording and Atlantic Records are registered trademarks of Sony Music Entertainment, Inc.”  Respondent’s registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business

The Panel finds that Complainant has fulfilled Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <atlanticrecording.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  October 21, 2004

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