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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pamplin Music Corporation v. Keith Larman
Case No. D2001-1249
1. The Parties
The parties are Pamplin Music Corporation of 10209 S.E. Division Street, Portland, Oregon 97266, U.S.A. (Complainant) and Mr. Keith Larman, of 3831 West End Ave., No. 21, Nashville, Tennessee 37205, U.S.A. (Respondent).
2. The Domain Name and Registrar
The domain names in dispute (the "Domain Names") are:
The Registrar is Go Daddy Software, Inc., an Arizona corporation.("Registrar")
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") in electronic form on October 16, 2001, and in hard copy (including the appropriate fee) with attachments on October 18, 2001. The Registrar verified the information required by Paragraphs 2(a) and 4 of the Rules for Uniform Dispute Resolution Policy on October 22, 2001. The Center’s formal requirements checklist was completed on October 23, 2001. The Panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements.
A Notification of Complaint and Commencement of Administrative Proceeding was sent by email and fax on October 23, 2001, and by courier with attachments the same day. Copies were sent by e-mail to Complainant, to ICANN and to the Registrar.
Respondent timely filed its Response by email and hard copy on November 1, 2001. Receipt of the Response was acknowledged by the Center on November 7, 2001.
On November 7, 2001, Complainant notified the Center that it intended to "submit additional evidence and argument", relying upon a statement in Respondent’s Response that allegedly consented to supplementing the record. Respondent replied to this notification on November 8, 2001, arguing that the proposed additional submission exceeded Respondent’s limited consent to presentation of "evidence of a developed site". On November 13, 2001, Complainant filed a letter, with attachments, including "evidence and argument". On November 16, 2001, Respondent filed "Respondent’s Reply to Complainant’s Supplemental Submission", taking issue with Complainant’s arguments. These additional submissions are dealt with below.
Having submitted a Statement of Acceptance and Declaration of Impartiality and Independence, David W. Maher was appointed as the Single Member Panel on November 27, 2001. The Panel is required to forward its decision to the Center by December 11, 2001.
Having reviewed the file, the Panel concludes that the Complaint complied with the applicable formal requirements, was properly notified, and has been submitted to a duly appointed Panel in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy") applicable to the Domain Names.
4. Factual Background
Complainant is engaged in the music industry, and operates a record label "RED HILL RECORDS". Complainant filed an application to register this mark, based on Intent to Use, in the United States Patent and Trademark Office, on February 18, 2000. The application was published for opposition on December 12, 2000 (Annex 6 to the Complaint). Annexes 4 and 8 to the Complaint show that various web sites (not operated by the parties) refer to the record label RED HILL RECORDS during the period from September, 2000 to the present.
Respondent is a "self-employed record producer who at some point had a business relationship with Complainant". (Response, page 2).
Complainant’s additional submission contains evidence that, in October 2000, it had established a web site at the URL, <www.redhillrecords.com>. There appears to be no dispute that the domain name, <redhillrecords.com> was originally registered by one Dan Michaels on April 19, 2000, and that Mr. Michaels was in some manner affiliated with Complainant or at least that the registration was consented to by Complainant. The registration was in Mr. Michael’s name and not in Complainant’s name, although there is evidence that Complainant had the benefit of the registration for its web site. The domain name registration for <redhillrecords.com> was allowed to lapse, effective on April 19, 2001, and Respondent subsequently, on July 13, 2001, registered the Domain Names in issue.
Complainant has provided evidence that Respondent at one time posted on its web site: "If interested in these domain names contact firstname.lastname@example.org." The Complainant alleges, and Respondent does not dispute, that Respondent was aware of Complainant’s use of the mark RED HILL RECORDS prior to Respondent’s registration of the Domain Names.
Complainant alleges, and Respondent does not dispute, that an employee of Complainant contacted Respondent in August, 2001 inquiring about the domain name, <redhillrecords.com>. Respondent replied by email "If interested in this domain name contact immediately as other offers are on the table." (Complaint, p. 8, Response, p. 4).
As of December 11, 2001, Respondent maintains a web site for <redhillrecords.com> that shows only the three Domain Names. The two Domain Names <redhillrecords.org> and <redhillrecords.net> point to place holder pages maintained by the Registrar.
5. Parties’ Contentions
A. Complainant requests that the Domain Names be transferred to it on the following grounds:
1. that Complainant owns the trademark, RED HILL RECORDS;
2. that Complainant, although aware that the Domain Name <redhillrecords.com> was originally registered in the name of a person affiliated with Complainant, failed to obtain a voluntary transfer of the registration from that person to Complainant and then inadvertently allowed the registration to lapse;
3. that Respondent subsequently registered the Domain Names; and
4. (i) that the Domain Names are identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
B. Respondent argues that Complainant released the Domain Name <redhillrecords.com> to the "public domain" and that a transfer of the Domain Names to Complainant would "inhibit the flow of commerce on the Internet and chill the market that has developed in domain names" (Response, p. 1). Respondent maintains that the failure by Complainant to renew the registration was negligent or intentional.
Respondent further maintains that it did not register the Domain Names in bad faith and that Respondent has legitimate rights in respect of the Domain Names based upon either an intent to criticize or parody Complainant or future plans to exploit the names by reselling them to other potential users of the mark, RED HILL RECORDS. Respondent has offered to provide certain assurances that such other potential user(s) would not be in competition with Complainant.
6. Discussion and Findings
The Panel initially determines that Respondent consented to a limited supplement of the original pleadings in the case. The Panel accepts the supplemental filings by Complainant and Respondent only to the extent that Complainant has produced evidence that there was a web site in existence prior to Respondent’s registration of the Domain Names and that the domain name registration of the original web site was held by a person affiliated with Complainant or operating with the consent of the Complainant.
The Panel does not consider the question of Complainant’s alleged inadvertence, negligence or intentional behavior in connection with the registration of, and subsequent failure to renew, one of the Domain Names, <redhillrecords.com> to be a relevant factor in the decision in this case.
Based upon a review of Complainant’s and Respondent’s submissions, the Panel finds that Complainant has trademark rights in RED HILL RECORDS. Respondent has conceded that the Domain Names "are identical or confusingly similar to a trademark in which the Complainant has rights." (Response, p. 5).
As to Respondent’s rights or legitimate interests in respect of the Domain Names, Respondent claims that its rights are based on a right to participate in a free market for domain names. The Panel does not find this persuasive. Respondent has offered certain assurances that it would not use the Domain Names for a business that would be competitive to Complainant. However, Respondent’s creative attempts to construct possible future legitimate uses for the Domain Names do not rise to the level of a legitimate interest. Granted that there does exist a market for certain domain names, Respondent has failed to convince the Panel that this market legitimately extends to situations, such as this, where the new registrant of a domain name is fully aware of the interest of the original registrant in the name.
The Panel further finds that (i) Respondent’s response to an inquiry from an employee of Complainant ("If interested in this domain name contact immediately as other offers are on the table."), (ii) Respondent’s subsequent posting at its web site of an offer to sell the Domain Names, and (iii) Respondent’s current posting of the Domain Names on a web site constitute bad faith in the registration and use of the Domain Names within the meaning of the Policy.
Pursuant to paragraphs 4 (i) of the Policy, and 15 of the Rules, the Panel directs that the Domain Names <redhillrecords.com>, <redhillrecords.org>, and <redhillrecords.net> be transferred to Complainant.
David W. Maher
Dated: December 13, 2001