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eMusic.com, Inc. v. Mp3DownLoadCity [2005] GENDND 272 (1 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

eMusic.com, Inc. v. Mp3DownLoadCity

Case No. D2004-0967

1. The Parties

The Complainant is eMusic.com, Inc., New York, New York, United States of America, represented by Stephen H. Block, United States of America.

The Respondent is Mp3DownLoadCity, Beverly Hills, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <emusicmp3.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2004. On November 16, 2004, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2004. The Respondent sent an email response on November 22, 2004, stating that the disputed domain name “will be removed”. Complainant agreed to suspend the proceedings to facilitate transfer of the domain name. However, the Respondent did not arrange for transfer. Complainant reinstated the proceeding on January 21, 2005. Respondent replied by stating, “I gave you the domain name now wha do you want”? (Respondent later filed an electronic response on January 25, 2005).

The Center appointed Mark Partridge as the sole panelist in this matter on February 9, 2005. 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.

4. Factual Background

The Complainant, eMusic.com, Inc., is an independently owned website offering music downloads through a subscription service. Complainant registered the EMUSIC trademark with the United States Patent and Trademark Office (USPTO) on February 11, 1997 under Registration No. 2,036,441. The mark was registered in connection with the sale of sound recordings through computer communications.

Complainant also owns the domain name registration for <emusic.com>. EMUSIC has been in use on this site in connection with the sale of sound recordings since June 1999.

The Respondent, Mp3DownLoadCity, registered <emusicmp3.com> on April 20, 2004. While “www.emusicmp3.com” is currently not redirected to an active site, Complainant contends that Respondent’s website sells subscriptions to download music in the same manner as Complainant’s site.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that Respondent’s domain name, <emusicmp3.com>, is confusingly similar to Complainant’s registered mark EMUSIC. Complainant contends that, based upon the similarity between Respondent’s domain name and Complainant’s mark, Internet consumers are likely to be confused into believing there exists some affiliation, connection, approval or association between Respondent and Complainant.

Lack of Legitimate Rights or Interests

Complainant asserts it has not licensed or otherwise permitted Respondent to use its mark or to apply for or use any domain name incorporation its mark.

Registered and Used in Bad Faith

Complainant contends that bad faith can be presumed based upon the fame of Complainant’s mark in the Internet music space and that Respondent was aware of or should have been aware of Complainant’s use. Complainant also contends that any trademark search would have revealed Complainant’s registration and use.

Complainant further contends that Respondent is using the domain name to intentionally attract Internet users for commercial gain. Complainant asserts Respondent is using the domain name to steer traffic away from Complainant’s website and redirect uses to Respondent’s website.

B. Respondent

The Respondent did not respond to the substance of the Complainant’s contentions, but instead acknowledged its consent to the transfer of the domain name as shown more fully below.

6. Discussion and Findings

Several prior decisions have involved proceedings in which the Respondent has consented to transfer. See Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398; Lonely Planet Publications Pty Ltd. v. Hoang Anh Minh and cicvn.com, WIPO Case No. D2003-0355.

Both of these cases conclude that the requirements of Paragraph 4(a) of the Policy are fullfilled when the Respondent consents to transfer.

Here, Respondent has submitted email responses indicating that it agrees to capitulate on Complainant’s claim. It has responded as follows:

“The domain name I own www.emusicmp3.com will be removed. I will remove it within 3 – 5 business days.” (November 22, 2004).

“What info do I use to transfer the domain name?” (January 25, 2005).

“I gave you the domain name now wha [sic] do you want?” (January 25, 2005).

Therefore, following the lead of the cases Desotec and Lonely Planet cited above, the Panel concludes that the requirements of Paragraph 4(a) are satisfied.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <emusicmp3.com> be transferred to the Complainant.

Mark Partridge
Sole Panelist

Date: March 1, 2005