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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Twenty Ones Incorporated NY Corp. v. MP3 Zone

Case No. D2006-1553

 

1. The Parties

The Complainant is Twenty Ones Incorporated NY Corp., New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC.

The Respondent is MP3 Zone, Calgary, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <4040club.com> is registered with eNom, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2006. On December 10, 2006, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On December 14, 2006, eNom, Inc. 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 December 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2007.

The Center appointed David J.A. Cairns as the sole panelist in this matter on January 29, 2007. 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 operates two sports bar/lounge/restaurant facilities under the name THE 40/40 CLUB, one in New York City and the other in Atlantic City, New Jersey.

The Complainant is the owner of the following trademarks registered with the United States Patent and Trademark Office: (i) registration No.є 2,940,829 for 4040 CLUB, registered on April 12, 2005, and based on a first use in commerce of June 18, 2003; and (ii) registration No. 3,157,149 for 40/40, registered on October 17, 2006, and also based on a first use in commerce of June 18, 2003. The registrations are for both trademarks and service marks in respect of shirts, hats, jackets, cigars, restaurant and bar services and catering.

The Respondent, Zone MP3, with address in Calgary, Canada, registered the disputed domain name on April 20, 2004.

The Respondent is using the <4040club.com> domain name to offer links to a wide range of goods and services.

 

5. Parties’ Contentions

A. Complainant

The Complainant states that it has been doing business since June 2003, long prior to the date on which the Respondent registered the disputed domain name. It alleges that the success of its clubs, the association between the clubs and numerous famous celebrities and sports figures, and extensive media coverage have generated a high degree of consumer recognition of the 4040 CLUB name and trademark.

The Complainant contends that the domain name <4040club.com> is confusingly similar to the Complainant’s 4040 CLUB mark because it incorporates the mark in its entirety. It further states that the generic top level domain name indicator “.com” cannot be taken into consideration when judging confusing similarity.

According to the Complainant, the Respondent cannot demonstrate or establish any legitimate interest in the domain name since there is no relationship between both parties that would give rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating Complainant’s 4040CLUB mark. The Complainant further states that the domain name is not a nickname of the Respondent, nor can the Respondent show any use of the domain name in connection with a bona fide offering of goods and services.

The Complainant states that the Respondent’s choice of the domain name clearly reflects an intention to target the Complainant and its customers, given the considerable goodwill enjoyed by the Complainant’s marks and clubs associated to them. Further, the Complainant argues that the Respondent is using the disputed domain name as a general search engine for a wide array of goods and services, including nightclubs that compete directly with the Complainant’s clubs, as well as pornographic websites.

The Complainant contends that the Respondent has registered the domain name primarily to trade off the Complainant’s reputation and divert Internet users who are otherwise searching for the Complainant in order to bring those users to its own website for commercial benefit. The Respondent is obtaining “click-through” revenue from the domain name and this exploitation of the Complainant’s goodwill for financial gain by creating confusion further establishes the Respondent’s bad faith.

Finally, the Complainant alleges that the Respondent Zone MP3 is an alter ego of MP3 Zone. It states that the Respondent has been operating as either Zone MP3 or MP3 Zone, registering over 1200 domain names that closely resemble well-known trademarks, the names of well-known businesses or the domain names used by those businesses. The Respondent has engaged in a pattern of conduct to register domain names such as the disputed domain name for the purposes of preventing the owners of trademarks from reflecting their marks in corresponding domain names, and intentionally attracting, for commercial gain, Internet users to its website and other on-line locations by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.

The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has registered and owns the 4040 CLUB and the 40/40 trademarks.

In determining whether a disputed domain name is identical or confusingly similar to the Complainant’s trademark the relevant comparison involves the second-level portion of the domain name only (here, 4040club). Clearly a trademark does not usually include a URL prefix (here, www.), or a top-level domain name suffix (here, ‘.com’) that are functional elements of a domain name, and the comparison required for the first element of the Policy must exclude these elements. These elements are incapable of performing any distinctive function, and it is well-established that they should not be considered in making this determination (see Indofil Chemicals Company v. Amar Vakil, WIPO Case No. D2006-0792, D. Ronaldo de Assis Moreira v. Eladio Garcнa Quintas WIPO Case No. D2006-0524 and LDLC.COM v. LaPorte Holdings, WIPO Case No. D2005-0687). Further, a domain name cannot contain separate words, which must of necessity be compressed to a single word or be joined by hyphen or hyphens. Accordingly, there is no significance in the fact that the Complainant’s trademark comprises two words that are compressed together in the disputed domain name.

On this basis, the Panel finds that the disputed domain name is identical with the Complainant’s trademark 4040 CLUB. Accordingly, the first element required by the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent owns or has contractual rights in any registration of a 4040 CLUB trademark; (ii) the Respondent is not authorised or licensed by the Complainant to use the 4040 CLUB trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; and (iv) the Respondent is using the disputed domain name to generate revenue through sponsored links, including links to nightclubs in New York.

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence before the Panel of the existence of any of these circumstances in the present case. In relation to paragraph 4(c)(i) and (iii) the Panel finds that the Respondent’s use of the disputed domain name is for commercial gain through the generation of ‘click through’ revenue, and also that the use of the disputed domain name to attract Internet traffic to a website by deception (that is, by suggesting the website relates in some manner to the 4040 CLUB trademark) is not a use in connection with a bona fide offering of goods or services.

Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have acquired rights or legitimate interests in respect of the domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.

In particular, paragraph 4(b)(iv) states that if the Panel finds that the Respondent has used the domain name to intentionally attempt 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 to the source, sponsorship, affiliation or endorsement of its website, it should be taken as evidence of the registration and use of the domain name in bad faith.

The Panel is satisfied that the disputed domain name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv). The Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the nature of the links offered on its website, which can be presumed to generate ‘click through’ revenue (see Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; Patricia Ann Romance Peterson, Romance Productions Ltd. v. Network Operations Center/Alberta Hot Rods WIPO Case No. D2006-1431). The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is identical to the Complainant’s 4040 CLUB mark.

The Panel is also satisfied that the Respondent has engaged in a pattern of registering domain names that are identical or similar to well-known trademarks or business names. This pattern of conduct, and the fact that the Respondent’s website at the disputed domain name includes links to sites relating to competitors of the Complainant, are further evidence of registration and use in bad faith.

As a result, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.

 

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, <4040club.com> be transferred to the Complainant.

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David J.A. Cairns
Sole Panelist

Dated: February 12, 2007

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ADDENDUM TO ADMINISTRATIVE PANEL DECISION

This is an Addendum to the Administrative Panel Decision (“Decision”) dated February 12, 2007 with regard to the domain name <4040club.com>.

Further Procedural History

On March 17, 2007, the Respondent contacted the WIPO Arbitration and Mediation Center (“Center”) by email stating that he had not received a copy of the Complaint and thus had not had an opportunity to respond. The Center subsequently verified that it had correctly sent a hardcopy of the Complaint to the Respondent by courier in accordance with the listed Whois data. This copy was subsequently returned, apparently due to the Whois address (which address the Registrar had confirmed in response to the Center’s request) being incorrect. The Center also ascertained that the registrant email address provided in the Complaint and included in the notification differed from that provided in the Whois, in that it included the number “1” in place of what turned out to be a letter “l”. In order to confirm that he has had an opportunity to present his views on the dispute the Center then contacted the Respondent, who in an email dated March 28, 2007, provided comments indicating that these should be considered as his Response.

The Center advised the Panel of the above, and forwarded the relevant documentation to it for consideration.

In the interests of procedural fairness, the Panel has given full consideration to the Response and now issues the present Addendum to the Decision.

Response

The Response may be summarized as follows:

The disputed domain name is stated to have been obtained as a result of it having been “dropped”. The first registration date by the original owner is stated to be in 2001. The Respondent points to a “Wayback” search on “www.archive.org” which he states shows use of the domain name in June of 2001. As to his own registration of the domain name, the Respondent states that he “won” the domain name in April 20, 2004, after which he used the traffic for a “music affiliate site” until March 2005, before moving it to a “Sedo” parking program. The Respondent points to the above archive search as support for his contention that only “abstinence” related keywords (these presumably corresponding to prior use of the domain name by its former registrant) appear on the domain name. The Respondent points also to the evidence provided by the Complainant, which he states only shows captured pictures of the landing page from the past month, which he considers to be “very suspicious”.

The Respondent further contends that he never ran “clubbing” or “gambling” keywords on the Sedo landing page, and surmises that the Complainant may have been typing in “gambling” on the “Sedo” search facility so as to optimize keyword search results. The Respondent states that he received weekly offers of “$60.00” for the domain via Sedo for months, which he claims to have “countered at some crazy price like $100,000 to shut this person up”.

The Respondent further states that traffic to the Sedo landing page was “left over abstinence-related traffic”, and that if it was “gambling” traffic, it would have “self optimized”, which he (the Respondent) would have noticed, in which case he would have changed the keyword, thereby making “a hell of a lot more money…perhaps up to $20.00 per click.” By contrast, the Respondent states that his keywords were generating mere “pennies per click”. The Respondent concludes by stating that it was only the last month or two in which he noticed the appearance of new “gambling” keywords, again surmising that these may have been a result of the Complainant typing in these words in an attempt to “optimize the landing page keywords”.

Further Discussion and Findings

The Panel notes the importance that both parties have a fair opportunity to present their case and to have their reasons evaluated. The determination to issue this Addendum reflects this concern. The Panel has given careful consideration to the Response, and in the interests of fairness has given the Respondent the benefit of the doubt in relation to reasonable statements of fact, notwithstanding that they may be unsupported by evidence or formal certification. Having done so, the Panel’s view on the outcome of the Decision as previously notified remains unchanged, for the reasons set out below.

The domain name is identical to the Complainant’s registered trademark. The fact that a previous registrant appears to have had a legitimate interest based on registration before the Complainant’s trademark rights arose is not relevant here. The Complainant’s trademark is based on first use in commerce in June 2003, and the Respondent by his own admission acquired the domain name in April 2004. The fact that the trademark may not have been registered at the time of its first use in commerce is not, as the Respondent appears to imply, a determinative factor in this regard. It is well established that rights of an unregistered nature may provide a basis for a finding in a complainant’s favor where there is (as here) evidence that such name had acquired the requisite secondary meaning. The Panel has noted the Respondent’s contention with regard to the original purpose of the website developed by a previous registrant. However, the Respondent in the present case cannot ‘inherit’ a legitimate interest from a previous registrant who has allowed the domain to expire, at least where (as here) he does not maintain the character of the original website. It has been found in numerous prior decisions that ‘registration’ of a domain name by a respondent for the purpose of the Policy includes acquisition.

The Respondent does not deny that he knew of the Complainant’s trademark when he registered the disputed domain name (and he does not explain why he back-ordered this particular name). The Respondent presents himself as a domain trader, and is intentionally using the domain name for commercial gain through a click-through revenue arrangement. In the present circumstances, this constitutes bad faith under paragraph 4(b)(iv) of the Policy. The Respondent appears to believe that if there are no gambling links on his site this somehow mitigates bad faith. It has been well established by previous panels that commercial use is sufficient provided it falls within the circumstances described in the aforementioned paragraph of the Policy, which in the Panel’s view is clearly the case here.

Decision

The Panelist accordingly reaffirms the Decision in favor of the Complainant and reaffirms the transfer finding in said Decision.

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David J.A. Cairns
Sole Panelist

Dated: March 30, 2007