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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wherehouse Entertainment, Inc. v. NetVentures
Case No. D2001-0036
1. The Parties
1.1 Complainant is Wherehouse Entertainment, Inc., a corporation organized under the laws of the State of Delaware, U.S.A. ("Complainant"). Respondent is NetVentures, located at 7224 Eads Avenue, La Jolla, California 92037, U.S.A. Complainant is represented by counsel, The Trademark Group.
2. The Domain Name and Registrar
2.1 The domain name which is the subject of this proceeding is <mediawherehouse.com> owned by NetVentures. The domain name is registered with Network Solutions, Inc., Herndon, Virginia, USA.
3. Procedural History
3.1 Complaint was submitted on January 8, 13 and 16, 2001 (four hard copies, e-mail and an original respectively).
3.2 Acknowledgment of Receipt of Complaint was transmitted on January 12, 2001.
3.3 Complaint Deficiency Notification was issued on January 12, 2001.
3.4 Response to Complaint Deficiency Notification with Amendment was submitted on January 13 and 16, 2001 (e-mail and hard copy respectively).
3.5 Center’s Request for Registrar (NSI) Verification was sent on January 15, 2001, and the Verification was received on January 16, 2001.
3.5 Center’s Formal Requirements Compliance Checklist was completed on January 19, 2001.
3.6 Notification of Complaint and Commencement of Administrative Proceeding was sent on January 19, 2001.
3.7 E-mail Response was submitted on February 6, 2001.
3.8 Acknowledgment of Receipt of Response was issued on February 7, 2001.
3.9 Notification of Appointment of Administrative Panel was issued on
February 20, 2001.
4. Factual Background
4.1 Wherehouse Entertainment’s trademark THE WHEREHOUSE was first used in 1970 and has been in continuous use since and has been registered.
4.2 The WHEREHOUSE and THE WHEREHOUSE service marks are used in connection with on-line and in-store retail services featuring audio and video products and information relating to pricing and description of and store location for audio and video products provided via an interactive global computer network, along with computerized on-line retail services in the field of audio and video products. Wherehouse Entertainment provides information relating to a wide range of topics in the movie and music industries, namely background information concerning movies, actors, music and musicians, biographical information concerning actors and musicians, and photographic museums featuring actors and musicians provided via an interactive global computer network under these marks.
5. Parties’ Contentions
5.1 Respondent’s domain name <mediawherehouse.com> uses the uniquely coined spelling of Complainant’s famous mark, THE WHEREHOUSE, and is confusingly similar to Complainant’s WHEREHOUSE and THE WHEREHOUSE service marks. Respondent has used the coined word WHEREHOUSE in connection with a website that suggests affiliation with the media industry, the same industry that Complainant has occupied since the early 1970’s. Respondent therefore has no rights to the word WHEREHOUSE, when it is spelled in the manner in which Complainant has coined and registered it.
5.2 On October 27, 1999 counsel for Complainant corresponded with Respondent NetVentures, advising NetVentures of its violation of the WHEREHOUSE and THE WHEREHOUSE service marks. Complainant requested that NetVentures execute a Name Change Agreement transferring the domain name <mediawherehouse.com> to Complainant Wherehouse Entertainment.
5.3 Respondent corresponded with Complainant on November 8, 1999 declining to transfer the disputed domain name, but indicating willingness to entertain an "offer to acquire" the subject domain name from NetVentures. Counsel for Wherehouse Entertainment offered to reimburse Respondent for its costs in registering the subject domain name; however, as of the date of filing this complaint, Respondent has not replied to Complainant’s offer.
5.4 Under Panavision Intern. L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) registering a domain name that dilutes a famous trademark with the intent of receiving payment in return for surrendering the domain name is actionable trademark dilution. Registering a domain name with the intent to extort money in return from a resident in California is a tortuous act, which can subject the domain name registrant to the personal jurisdiction of California courts.
5.5 Respondent’s domain name is further subject to cancellation under the Anti-Cybersquatting Consumer Protection Act, which was signed into law on November 29, 1999 and incorporated into section 23 of the Lanham Act. The Lanham Act, at 15 U.S.C. §1125(d) provides that:
A person shall be liable in a civil action by the owner of a mark, including a famous personal name, which is protected under this section if, without regard to the goods or services of the parties, that person—(1) has a bad faith intent to profit from that mark. . .and (ii) registers, traffics in, or uses a domain name that (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark. . .
5.6 Respondent has acted in bad faith by registering and refusing to surrender a domain name that is confusingly similar to Complainant’s famous service marks, and by in effect, demanding payment from Complainant in amount above that expended to register the domain name exchange therefor. By retaining the domain name <mediawherehouse.com>, Respondent has confused Complainant’s customers who have been accustomed to the unique spelling of Complainant’s name WHEREHOUSE, for approximately 30 years and who seek out Complainant’s services under the WHEREHOUSE name.
5.7 There is no evidence of Respondent’s use of, or demonstrable preparations to use the subject domain name in connection with a bona fide offering of goods or services. Respondent registered for the domain name <mediawherehouse.com> in May 1999 and there is no evidence that Respondent has become commonly known by the domain name. Furthermore, there is no apparent legitimate non-commercial or fair use of the domain name.
5.8 The name of Respondent’s company, which is incorporated under an LLC, is not the same as "The Wherehouse Group". The name MediaWherehouse, although containing similar spelling embodied in the context of Respondent’s name, is not at all confusing to would be consumers searching under any search engine for the Complainant "The Wherehouse". Respondent’s type of business is not in any way similar to that of "The Wherehouse". Respondent produces marketing material for the real estate industry and in no way solicits goods that are similar to music/video or merchandise.
5.9 Many companies that are trademarked contain similar spellings embodied in their trademarked names. Although Microsoft owns the trademark to its name, its name contains the word "soft" embedded within. There are numerous companies that use the word soft within the context of their names. Although the word soft is spelled the same way within the context of both, Microsoft does not own the word soft, only the use of it embedded within the entire context of its name Micro"soft".
5.10 The spelling of Complainant’s name is in no way unique to them; it is merely an evolution of the English language. Take the word color. In the U.S.A. it is spelled "color" and in England it is spelled "colour". This is merely the use of a slang term for the word. Americans tend to take words as their own and coin them.
5.11 When Respondent first acquired the name "MediaWherehouse", plans were underway to launch the company and companies are not built overnight. It takes planning and financing to set up a business the right way to compete in today’s marketplace. The Respondent did not and does not plan to solicit the domain name. The only meaning of the "offer to acquire" was to listen to any reasonable offer for the domain name. The only contact Respondent had with Complainant was a registered letter demanding Respondent sign over the domain name with no offer to reimburse for out-of-pocket expenses. We never heard from Complainant again until this action was taken.
5.12 In support of Respondent’s argument, counsel for Complainant wrote an article for a local paper:
"Trademarks on the Worldwide Web"
San Diego Daily Transcript law Journal, Volume 2, Number 2, May 10, 1999 by Marnie Wright Barnhorst
Here is an excerpt from that article:
"The NSI Domain Name Dispute Resolution Policy gives trademark owners the chance to win back their names without paying a cybersquatter’s ransom. In order to challenge a domain name registration, the trademark owner must provide NSI with proof that the domain name holder has been notified that use of the domain name infringes trademark rights. This is usually done by supplying a signed certified-mail receipt for a notice letter addressed to the domain name holder. In addition, the trademark owner must provide NSI with a current certified copy of a United States Principal Registration or a foreign registration that is identical to the second-level domain name being challenged. The trademark registration cannot differ from the second-level domain name by even one letter and it cannot include any additional elements, i.e., ".com", ".net", or a design. The trademark registration may, however be in a stylized font."
In the own words of Complainant’s counsel "the trademark registration cannot differ from the second-level domain name being challenged", MediaWherehouse and the Wherehouse differ substantially.
Regarding the procedure for arbitration, the Respondent agrees to the one member committee for settlement of this case. It is the Respondent’s hope that the committee sees the difference in spelling and usage and allows it to keep its domain name intact.
6. Discussion and Findings
6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) 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. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.
6.2 The Panel has reviewed the evidence submitted by the Complainant concerning ownership of the trademark WHEREHOUSE and is satisfied that the Complainant has proven trademark rights in such term. Furthermore, the Panel finds that the domain name <mediawherehouse.com> is confusingly similar to the trademark in which the Complainant has rights, particularly since Complainant is in the media business.
6.3 The record does not show any legitimate non-commercial use or fair use by Respondent. The Panel hereby finds that Respondent has not shown any legitimate rights in the domain name.
6.4 Finally, the Panel needs to examine the issue of bad faith. The record only includes an exchange of two e-mail which is inconclusive as to bad faith. Accordingly, the Panel finds that Complainant has not met its burden of proof as to Policy 4(a)(iii) as to bad faith.
7.1 The Panel decides that the domain name <mediawherehouse.com> is identical or confusingly similar to the service mark of Complainant, that Respondent has no rights or legitimate interests in such domain name, and that there is insufficient evidence concerning bad faith.
7.2 The Panel hereby denies the Complaint.
Clark W. Lackert
Dated: March 12, 2001