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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Native Instruments GmbH v. Jeremy Williams

Case No. D2007-0973

 

1. The Parties

The Complainant is Native Instruments GmbH, Berlin, of Germany.

The Respondent is Jeremy Williams, Washington, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <traktorscratch.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2007. On July 5, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 5, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent (Jeremy Williams) is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 10, 2007. The Center verified that the Complaint together with the amendment to the Complaint (together referred to in this decision as “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 July 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2007. The Response was filed with the Center on August 2, 2007.

The Center appointed James A. Barker as the sole panelist in this matter on August 7, 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 following facts, summarized separately from the Complaint and the Response, are not contested.

The Complainant produces software and “computer-based audio production technology” and has offices in Berlin and Los Angeles. The Complainant states that its “mission is to develop outstanding tools for musicians, producers, sound designers and DJs of all styles and genres[…] TRAKTOR SCRATCH is a new profession DJ system designed to be the ultimate computer-based DJing solution for digital music files.” The Complainant’s TRAKTOR SCRATCH system is a combination of hardware and software. The Complainant announced the development of this system by a press release on January 18, 2007, a copy of which was attached to the Complaint.

The Complainant is the owner of German-registered marks for TRAKTOR (registered on March 8, 2001) and TRAKTOR SCRATCH (registered on January 11, 2007).

The Complainant owns the domain name <traktor-scratch.com>, which reverts to the Complainant’s main website at “www.native-instruments.com”.

The disputed domain name has a “creation date” (in the WhoIs record) of January 18, 2007.

At the date of this decision, the disputed domain name reverted to a page on the Complainant’s own website, being a user forum titled “Native Instruments Community”.

 

5. Parties’ Contentions

A. Complainant

The Complainant claims that it is beyond dispute that the disputed domain name is identical to its registered TRAKTOR SCRATCH mark.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not licensed or otherwise permitted by the Complainant to use a domain name incorporating its mark. The Respondent has not used the disputed domain name in connection with an online commercial or non-commercial activity.

The Complainant also claims that the disputed domain name has been registered and used in bad faith. The Respondent contacted the Complainant by email with an offer to sell the disputed domain name. The Respondent refused the Complainant’s offer of $250, and stated that he monitors domain name prices very carefully. It is evident that the Respondent knew or should have known of the Complainant’s trademark and services at the time he registered the disputed domain name. Further, the Respondent took steps to conceal his true identity by first registering the disputed domain name through Domains by Proxy, Inc.

B. Respondent

The Respondent does not deny that the disputed domain name is at least confusingly similar or identical to the Complainant’s mark. However, the Respondent claims that the Complainant is the owner of a number of domain names, all of which include a hyphen (such as <traktor-scratch.com>). As such, the Respondent states that “traktor-scratch is a better representation of the [Complainant and its] mark and product than traktorscratch.com”.

The Respondent claims that he has a legitimate interest in the disputed domain name. This is on the basis that he is in the process of creating a website called “DJ Earth”, the domain name for which (<djearth.com>) was purchased in 2005. The purpose of that website is to be “The Largest International DJ Equipment, Information and User Web Site”. The Respondent claims that he is the owner of over 80 domain names associated with DJ Earth, of which the disputed domain names is one, and that “These domains represent most of the major manufacturers of DJ equipment”. The Respondent claims that he has received permission from other makers of audio equipment to use their company logos and pictures to create unofficial websites promoting those companies products.

The Respondent claims that all of the domain names he has registered in association with “DJ Earth” will be “released all at one time (to be determined) in 2008”. In the meantime, he has directed those domain names to the relevant source for that product or company.

In relation to whether he has registered and used the disputed domain name in bad faith, the Respondent claims that it is misleading for the Complainant to suggest that he first contacted the Complainant about the sale of the disputed domain name. The first such contact was made by the Complainant, not the Respondent. The Respondent claimed that he works hard researching and acquiring domain names best associated with current DJ products, and planning high quality sites for them, so as to better promote those products. As such, the Respondent did not regard the Complainant’s offer of $250 for the disputed domain name as reasonable.

 

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the disputed domain name was registered in bad faith and is being used in bad faith.

The Complainant must prove each of these three elements, which are discussed in turn below.

A. Identical or Confusingly Similar

There is no dispute that the disputed domain name is identical to the Complainant’s registered mark TRAKTOR SCRATCH, and the Panel accordingly makes such a finding.

The Respondent’s additional arguments in this respect are not relevant. The Respondent claims that a domain name (<traktor-scratch.com>), which is unrelated to these proceedings, and which the Complainant already owns, is a “better representation” of the Complainant.

But such a subjective judgement is not relevant. A complainant establishes paragraph 4(a)(i) of the Policy if it demonstrates that the disputed domain name is identical or confusingly similar to a mark in which it has rights. The Complainant has established this – which is not in any case contested. Once the Complainant establishes this, that is the end of the matter.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved, are taken to be evidence of a respondent’s rights or legitimate interests. These are that:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 4(c)(ii) clearly does not apply in this case. There is no dispute that the Respondent is not commonly known by the disputed domain name, for the purpose of paragraph 4(c)(ii).

Paragraph 4(c)(iii) also may not apply. That paragraph relevantly provides that a respondent may demonstrate a right or legitimate interest in a domain name if the respondent provides evidence that it is “making a legitimate noncommercial or fair use of the domain name” (emphasis added). The Respondent indicates that his use of the disputed domain name is not for commercial gain. However, the Respondent also indicates that his website is in the process of being developed. The disputed domain name does not appear to be actively used by the Respondent. As such, it is not clear that the Respondent could demonstrate that he was, at the time of this dispute, actively “making” (as opposed to making demonstrable preparations to use) a noncommercial or fair use of the disputed domain name.

The Panel also finds that paragraph 4(c)(i) does not apply. This is not because the Respondent claims an intention to offer a noncommercial service (of providing information to the public about DJ equipment). As noted by previous panels, paragraph 4(c)(i) may apply to both commercial and noncommercial offerings, or demonstrable preparations to offer, goods or services. (See 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001. As noted in that case, a noncommercial offering of information to the public may be a relevant offering of “services”.) The implication of this approach is that, where a respondent provides noncommercial information, such conduct may often fall under both paragraph 4(c)(i) as well as paragraph 4(c)(iii). However, the Policy does not require conduct to exclusively fall under one paragraph or the other. Conduct will frequently be capable of being categorized in more than one way, under either paragraph 4(c) (as well as 4(b)) of the Policy.

The Respondent has provided some, although not substantial, evidence of preparations to use the disputed domain name in connection with a website. But, for paragraph 4(c)(i) to apply, such a use would also need to be “bona fide” within the meaning of that paragraph. A use that is “bona fide” is one that is, put alternatively, “made in good faith”. (See e.g. InfoSpace, Inc. v. Michael Lemieux, WIPO Case No. 2000-1476.)

A use will not be bona fide, or in good faith, where it “intentionally trades on the fame of [the Complainant]” (emphasis added: see, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847). However, in this case the Respondent is not “trading” and claims no intent to do so. Rather, the Respondent claims that his intent is to use the disputed domain name in connection with a non-commercial website, providing information about DJ equipment.

The Respondent’s conduct does not fall neatly within types of conduct that have, in certain circumstances, being considered by panels to be bona fide and non-commercial. Those uses include the registration of a domain name in connection with a criticism or fan website (for cases in these respects, see items 2.4 and 2.5, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.)

While most cases involving criticism or fan websites relate to websites that are either critical (in the sense of expressing disapproval) or approving respectively of a complainant, the nature of such websites is not far removed from the Respondent’s claimed intended use in this case. Fundamentally, many criticism and fan websites are directed at providing information (at least, material that may be regarded by a respondent as information).

In relation to criticism websites, some panels have found that the right to express views or exercise free speech do not entitle a respondent to represent that he is the complainant, by incorporating a complainant’s trademark in a domain name and, thereby, creating a likelihood of misleadingly diverting Internet users. (See e.g. Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776. While panels have expressed contrary views, this Panel notes that these have more often been expressed by US panelists: See item 2.4, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.) Panels have taken similar views in relation to fan websites. (See ‘View 2’ – which this Panel supports – item 2.5, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.)

For similar reasons, the Panel finds that the Respondent’s use was not relevantly bona fide for the purpose of paragraph 4(c)(i) of the Policy. While the Respondent may wish to provide information about the Complainant’s products (as well as those of its competitors) for a noncommercial purpose, this does not, by itself, give the Respondent a right to appropriate the Complainant’s trademark in a domain name. The Complainant’s trademark appears to be distinctively associated with it, and was apparently selected by the Respondent for this reason. There is no necessity for the Respondent to have registered the disputed domain name for his purpose. To the contrary, the Respondent provides evidence that he had registered a large number of domain names in connection with his proposed website, before registering the disputed domain name. And the fact that the registration of the disputed domain name may enable the Respondent to more effectively achieve his aim, as noted by the Panel in Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776, is “neither here nor there”.

It appears that the Respondent’s intention was to deliberately select a domain name connected with the Complainant which would, because of that connection, have more value for his purpose. The Respondent admits as much in an attachment to the Complaint, in which he indicates that “when searching for a product online, a web site that contains the model number of that product in the domain name or URL (Uniform Resource Locator) should usually be at or near the top of the results…Following this theory, by purchasing individual domain names for the majority of popular DJ products…makes for very active and popular websites promoting DJs..”.

It is clear, and the Respondent does not deny, that he was aware of the Complainant when he registered the disputed domain name. It is also not in dispute that the Respondent had no relevant licence from the Complainant. In his defence, the Respondent claims to have obtained such licences from other organizations in connection with his planned website. However, and seemingly inconsistently, there is no evidence that such a license or permission was sought or obtained from the Complainant.

The Panel notes that, at the date of this decision, the disputed domain name reverted to the Complainant’s own website. As such, it is evident that the Respondent has not used the disputed domain name to falsely represent himself as the Complainant, by diverting the disputed domain name to a website that is not the Complainant’s (which is conduct that has gone towards a finding of bad faith in other cases: see e.g . Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.) But this does not matter. Paragraph 4(c)(i) clearly contemplates that “demonstrable preparations to use” a domain name may be bona fide. By the same token, demonstrable preparations to use a domain name for a purpose that is not bona fide may be evidence that the Respondent lacks a sufficient right or legitimate interest.

For these reasons, the Panel finds that the Respondent does not have a right or legitimate interest in the disputed domain name.

C. Registered and Used in Bad Faith

For similar reasons, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith for the purpose of paragraph 4(a)(iii) of the Policy.

Central to the question of “bad faith” is whether the Respondent knew of the Complainant and its TRAKTOR SCRATCH mark when he registered the disputed domain name. For the reasons outlined above, it is clear that the Respondent had actual knowledge of the Complainant and its mark. The evidence outlined above suggests that the Respondent registered the disputed domain name because of the connection of that mark with the Complainant, and to generate more traffic to his proposed website than would otherwise occur.

Further, there is evidence that the Respondent registered the disputed domain name on the same day that the Complainant publicly announced the release of its ‘Traktor Scratch’ DJ system. Circumstantially, this provides further indication that the Respondent’s registration of the disputed domain name was opportunistic.

For completeness, the Panel notes that it does not make a finding about the Complainant’s suggestion that the Respondent offered the disputed domain name for sale. (The Complainant’s implication seems to be that this is bad faith for the purpose of paragraph 4(b)(i) of the Policy. Paragraph 4(b)(i) provides that there is evidence of bad faith in circumstances where a respondent registers a domain name for the purpose of selling it to the complainant, in excess of the respondent’s out of pocket costs.) While the Complainant submits that it was contacted by the Respondent, the evidence instead suggests that it was the other way around. While it might be argued that the Respondent registered the disputed domain name on the expectation that he would be approached by the Complainant, there is no evidence of this, either in the surrounding circumstances nor in the Respondent’s reply to this offer.

Based on the foregoing, the Panel finds that the disputed domain name was registered and used 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, <traktorscratch.com> be transferred to the Complainant.

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James A. Barker
Sole Panelist

Dated: August 21, 2007