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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EMI Group Limited v. John Smith, Whois Protection Service LLC

Case No. D2007-1798

1. The Parties

The Complainant is EMI Group Limited, of London, United Kingdom of Great Britain and Northern Ireland, represented by Frances Harding, United Kingdom of Great Britain and Northern Ireland.

The Respondent is John Smith, Whois Protection Service LLC, of Grand Cayman, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <wwwemigroup.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

3. Procedural History

The Complaint naming as Respondent “Whois Protection Service LLC” was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2007. On December 6, 2007, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On December 7, 2007, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response stating that “John Smith” is listed as the registrant and providing the contact details. The Complainant had filed an amendment to the Complaint on December 6, 2007 naming the Respondent as “John Smith, Whois Protection Service LLC”. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements. 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 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2008.

The Center appointed Adam Samuel as the sole panelist in this matter on January 15, 2008. 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 has two registered trademarks in the UK for the name “Thorn EMI” dated October 1, 1986. Its wholly owned subsidiary EMI (IP) Limited has registered trademarks for the name “EMI” in a large number of different countries that pre-date significantly the initial registration of the domain name in 2007.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s arguments. These are not necessarily accepted by the Panel.

The Complainant is the largest independent music company in the world. It comprises two divisions: on the top global recorded music companies and the world’s leading music publisher. The Complainant, its divisions and subsidiaries are commonly referred to as EMI Group and a google search on the phrase “emi group” produces 2,860,000 references, many of which relate to the Complainant and its subsidiaries. The Complainant owns the trademark EMI which has been used by the Complainant, its predecessors and subsidiaries since 1931. It has been used generally in relation to the Complainant’s business activities. The trademark has been registered in numerous territories worldwide, mostly held by the Complainant’s wholly owned subsidiary EMI (IP) Limited. The Complainant’s wholly owned subsidiary is the Registrant of the domain name <emigroup.com>.

The key element of the domain is EMI as “www” designates the worldwide web and the word “group” is descriptive. It is therefore submitted that the domain name is identical or confusingly similar to the Complainant’s trademark EMI.

The Complainant has not authorized the Respondent to use its trademark. Li Chow registered the domain name with the Registrar domaincontender.com on April 17, 2007. Between November 26 and December 2, 2007, the domain name was transferred to the Respondent with the Registrar, Joker.com. Before and after the transfer, the domain has been used in relation to the website “www.wwwemigroup.com”. This is an advertising website offering sponsored links to other websites. The Respondent is using the disputed domain name because of the association that would inevitably be made with the Complainant and the Complainant’s business. Such an association is liable to increase the number of hits on the website and thereby generate increased revenue for the Respondent by virtue of people mistakenly believing the website to be one of the Complainant’s or associated with the Complainant.

The Respondent has registered the domain name with the clear intention of deriving profit from the association of the domain name with the Complainant. The association is perpetuated by the fact that there are many music references on the website including “rock” “MP3”, “CD”, Music publishing”, “Music” and “record company”. The website also refers to Robbie Williams, a well known artist signed to the Complainant. The Respondent could have chosen any domain for use in relation to such a website but chose instead the domain name in issue because of the association that would inevitably be made between the resulting website and the Complainant and its business.

B. Respondent

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

6. Discussion and Findings

Under the Policy, the Complainant must prove that

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

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

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first issue is whether the Complainant has rights in the trademark EMI. Its wholly owned subsidiary has registered trademarks for the mark EMI in a number of countries. On the UK registration, the Complainant is marked as the agent and address for service. The Complainant has two registered trademarks in the UK for the name Thorn EMI which reflects a former name of the company.

It would have been preferable if the subsidiary had been the Complainant in this case. However, in Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796, the Panel found in favour of the Complainant on very similar facts. It summed up the majority position in WIPO Domain Name cases as follows:

“Paragraph 4(a)(i) of the Policy requires, as one element to be proved, that the domain name be identical or confusingly similar to a trademark or service mark in which Complainant has rights. These words do not require that Complainant be the owner of the mark and would include, for example, a licensee of the mark. It has been accepted in several decisions that a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark. See, for example, Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 where Complainant’s grandparent corporation had a long established United States trademark registration for the mark for vacuum cleaners. The decision reads in part:

“The Panel finds that Complainant, through its affiliation with its grandparent corporation which owns the trade-mark registration, has rights in and duties concerning the mark MIELE.”

The Policy does not require that Complainant have exclusive rights in the trade-mark or service mark - see Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993 in which the Panel stated:

“It is also abundantly clear from the evidence filed by Respondent that there are literally dozens of other entities trading under and by reference to precisely the same name…In this Panel’s view the test under paragraph 4(a)(i) of the Policy, which makes no mention of ‘exclusive rights’ is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that Complainant has a bona fide basis for making the Complaint in the first place.”

Televisa, S.A. de C.V. and Estrategia Televisa, S.A. de C.V. each have the necessary interest, that is rights in the service marks in question, to file this Complaint. However, the Complaint is stated to be filed by the international group of companies headed by Grupo Televisa, S.A. and including the other companies registrants of the service marks in question, which are said to be wholly owned subsidiaries of Grupo Televisa, S.A. Although no documentary evidence was produced with regard to the parent subsidiary relationship, the Panel accepts this statement which is certified in the Complaint to be accurate.

The Panel concludes that Grupo Televisa, S.A. has rights in the service marks in question which are registered by its wholly owned subsidiaries.”

However, in an earlier decision, NBA Properties, Inc. v. Adirondack Software Corporation, WIPO Case No. D2000-1211, the Panel said:

“The record fails to make clear what rights in the trademark Complainant claims to have. The rights of a licensee are contract rights with respect to, not in, the licensed marks. So it is also in the case of a licensing and merchandising agent.

“There may well be circumstances in which the contract rights possessed by an exclusive licensee vest in him substantially all the powers of an owner of the licensed property. However, such circumstances have not been shown to exist here.

“The Policy is believed by the Panel to envision a transfer of a disputed domain name to a complainant/trademark owner as a route to unification of control over the uses of the domain name and the trademark. However, Complainant’s request for an order transferring the disputed name to Complainant in this case would place ownership of the domain name in an entity other than the trademark owner without consent from the trademark owner.”

This case represents the minority position in UDRP panel decisions. This has been known for some years. If ICANN, as the authors of the policy, had preferred the minority view, one would have expected it to express this publicly or changed the policy to make clear the extent of the ownership rights required. By doing neither, it has indicated that it is content with the majority view. It would be wrong, in the circumstances, to dismiss a complaint made on the basis of the minority view.

In the present case, one could imply consent from the trademark owner to the Complainant to use the trademark in question. The more common view among panels is that the expression “rights in a trademark” should be construed broadly to cover licensees of a trademark. See e.g. NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079. Here, there is no practical risk of control of the domain name and ownership of the trademark ending up in separate hands.

In reality, the Complainant appears to have been operating under an oral or written licence for a significant length of time. It apparently has rights in connection with the trademark in the sense that it would appear to have a defence to a claim by its wholly owned subsidiary for trademark infringement in the form of an equitable estoppel or waiver. The subsidiary has apparently known of the Complainant’s extensive use of the trademark in its website “www.emigroup.com” and of the Complainant’s considerable expenditure in reliance on its acquiescence. This equitable waiver or estoppel could operate to provide to the Complainant the protection described above under English law.

For all the above reasons, the Panel concludes that the Complainant does have rights in the trademark, EMI. While it would have been more straightforward if the Complainant’s subsidiary had brought this Complaint, in the Panel’s judgement, the Complainant’s rights in connection with the trademark suffice for the purposes of satisfying this threshold component of the test.

In relation to identity or confusing similarity, the addition of generic words to a trademark name do not usually prevent the domain name in issue from being confusingly similar to the trademark. The letters “www” have no meaning other than to denote the “world wide web”. The impact of adding “www” to a trademark name was considered in Rockstar Games v. Juan Carlos Azurdia, WIPO Case No. D2007-1557. The Panel found that the addition of “www” did not prevent the domain name from being confusingly similar. It said:

“The main difference between Complainant’s trademark and the disputed domain name is the “www” that precedes “rockstargames”. As spaces are not permitted in domain names, there is no other distinguishing feature of the Respondent’s domain name which is capable of differentiating it from the Complainant’s domain name.

“The disputed domain name is also similar, but not identical to, the domain name <rockstargames.com> registered by the Complainant, which reflects its rights in its mark ROCKSTAR GAMES.

“Whilst no longer mandatory with most modern browsers, the use of ‘www.’ in front of a domain name is invariable global practice when typing a URL into a browser. Historically it was required to designate the world wide web part of the Internet.

“In the present case, the Internet user would merely have to omit a single dot, rather than misspell the trademark element of the domain name in order to find itself at Respondent’s website. This case is analogous to CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273, which found that the addition of the prefix ‘www’ to the mark does not prevent a finding of confusing similarity.”

Equally, the addition of the generic word “group” does not render the domain name in issue any less confusingly similar to the mark EMI. In EMI Group plc v. E MI musicgroup, WIPO Case No. D2007-1202, the Panel took the identical view of the addition of the word “group” to a trademark name.

Overall, the effect of adding “www” to the beginning of the trademark and then ending it with “group” still does not disguise or prevent the confusing similarity between the domain name in issue and the trademark EMI.

For all the above reasons, the Panel concludes here that the domain name in issue is confusingly similar to the trademark EMI in which the Complainant has rights.

The Panel would anyway have concluded that the domain name is confusingly similar to the trademark Thorn EMI which the Complainant owns. The EMI part of the trademark name has no independent meaning except as an acronym for an earlier name of the business. The Complainant is widely known as “EMI” and was commonly known as “Thorn EMI” in the past. The “EMI” part of the name was and remains well known. A domain name which combines the distinctive well known part of a trademark which has no independent meaning with the generic “www” and “group” must be regarded as confusingly similar to that trademark.

B. Rights or Legitimate Interests

There is no evidence before the Panel that the Complainant or any part of its group of companies has authorized the Respondent to use any of its trademarks. There is no evidence that the Respondent has rights or legitimate interests in the name “EMI”. The absence of any ordinary meaning for the word would suggest otherwise.

For these reasons, and in the absence of evidence to the contrary or any Response in this case, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name in issue.

C. Registered and Used in Bad Faith

The domain name in issue resolves to a website advertising music and providing a number of references to Robbie Williams. There is no apparent reason why the Respondent registered and is using this website except to benefit from the association with the name “EMI”. Robbie Williams is a world famous performer that is widely known to be contracted to the Complainant. That name is known worldwide as a brand of music. The Respondent must have known that the Complainant or a member of its group owned trademark rights to the “EMI” name in view of its worldwide fame in the area of music.

This is essentially a case of typosquatting. The idea of registering or using the domain name is to attract web users who type “www” twice into their browser while looking for the Complainant’s website. The only explanation of what has happened is that the Respondent’s motive in registering and using the site seems to be to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. These both constitute evidence of registration and use in bad faith: paragraph 4(b)(iii) & (iv) of the Policy.

This conclusion is supported by the view expressed in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568:

“Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source” of the website. Here such conduct was undertaken to send Complainant’s customers to a site that promoted directly competing services”.

For all these reasons, the Panel concludes that the domain name was registered and is being 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 <wwwemigroup.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist

Dated: January 22, 2008