WIPO Domain Name Decision: D2007-0723

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Joseph Patelson Music House, Ltd. v. Modern Empire Internet Ltd.

Case No. D2007-0723

1. The Parties

The Complainant is Joseph Patelson Music House, Ltd., of New York, United States of America, represented by Davis & Gilbert LLP, United States of America.

The Respondent is Modern Empire Internet Ltd., of Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <patelsons.com> is registered with Fabulous.com.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2007. On May 18, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On May 22, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).

3.2 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 May 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 14, 2007.

3.3 The Center appointed Mary Vitoria, QC as the sole panelist in this matter on June 22, 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.

3.4 The language of the proceedings is English.

4. Factual Background

4.1 Because there has been no response, the following facts are taken from the Complaint and are accepted as true in the circumstances of this case.

4.2 The Complainant (and its predecessors in title) have owned and operated a classical, retail, sheet music store, known as Patelson Music House. The store is located in New York City, behind the world famous Carnegie Hall, and has been in the exact same building since 1947. The store was founded by Joseph Patelson and ownership has consistently remained within the Patelson family. The Complainant has customers from all over the world, and ships orders internationally to customers who purchase online through the company web site at “www.patelson.com” or who make a visit to the Complainant's New York store. Goods and services that are branded by the PATELSON trademark are obtainable from the “ www.patelson.com“ website. The Complainant has sold music to virtually every famous classical musician in the world.

4.3 According to the Whois database maintained by the Registrar, the Respondent is an entity located in Hong Kong, SAR of China.

4.4 The Respondent operates a web site at “www.patelsons.com”. This website contains links for classical sheet music but when a user activates such links, the resulting page includes affiliate marketing and sponsored links for services such as car insurance, ringtones, dating, mortgages and airline tickets.

5. Parties' Contentions

5.1 The Complainant asserts that Patelson Music House has continually and publicly used the trademark PATELSON and is the owner of the domain name <patelson.com>. It asserts that Patelson Music House has expended significant amounts of time, labour and expense developing and promoting its products and services under the PATELSON trademark. As a result of these efforts, it contends that all goodwill attached to the PATELSON trademark is associated with the Complainant, and that the public associates the PATELSON trademark solely with the Complainant. It submits that although the PATELSON trademark is a personal name of the founder and current owner of the Complainant, it is also used as an unregistered trademark and that common law trademark rights can exist in a personal name relying on Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210. The Complainant also submits that it “…is undisputed and accepted practice, that paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which the complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark” relying on Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322.

5.2 The Complainant submits that the disputed domain name <patelsons.com> is virtually identical and confusingly similar to the PATELSON trademark because the second level domain name is nearly identical to the trademark; that the Respondent has merely added an “s” to the end of the trademark; and that turning the trademark into a plural word or possessive term does not distinguish the domain name in dispute from the PATELSON trademark.

5.3 The Complainant asserts that there is no indication that the Respondent has even been commonly known by, or associated with, the PATELSON trademark at any time prior or subsequent to the Respondent's registration of the disputed domain name and, further, that the Respondent is not associated with the Complainant and has not been authorized by the Complainant to use the PATELSON trademark. The Complainant asserts that the domain name in dispute is being used in a confusing and deceptive manner to mislead Internet users searching for the Complainant's web site.

5.4 The Complainant asserts that the Respondent's web site “www.patelsons.com“ makes immaterial references to the PATELSON trademark merely to encourage users to click upon the various links on the page and that on clicking any link on the page, the user is presented with affiliate marketing and sponsored links that are not associated with the PATELSON trademark, and in many instances, have no connection to the industry in which the trademark is used.

5.5 The Complainant asserts that the Respondent has registered and is using the domain name in dispute in bad faith because by using it, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site, by creating a likelihood of confusion with the PATELSON trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site. The Complainant contends that on the “www.patelsons.com” website, the Respondent uses the PATELSON trademark in a manner intentionally to deceive and confuse the Complainant's current and potential customers, and Internet users in general, who may be searching for the web site that corresponds to the PATELSON trademark. The Complainant points out that on the Respondent's website there are links for classical sheet music, which is a major source of the Complainant's business, but when a user activates such links, the resulting page includes affiliate marketing and sponsored links for services such as car insurance, ringtones, dating, mortgages and airline tickets, none of which have anything to do with the PATELSON trademark. The Complainant says that the Respondent is merely counting on the fact that the Internet user's initial confusion will result in their clicking on a few links, thereby generating revenue for the Respondent on a cost-per-click basis. The Complainant submits that the Respondent is using bad faith practices to take advantage of Complainant's hard-earned public trust and to divert Internet traffic to the Respondent's links for the Respondent's commercial gain. The Complainant says that such actions abuse the good name of the Complainant, damage its reputation and disrupt its business and that Internet users and the Complainant are thus both adversely affected by the Respondent's bad faith registration and use of the domain name <patelson.com>.

5.6 The Complainant submits as further evidence that the Respondent has registered and is using the disputed domain name in bad faith, that the Respondent has engaged in an extensive pattern of typo-squatting in order to perpetrate similar schemes upon other well-recognized brands and trademarks. The Complainant specifically refers to the fact that the Respondent operates web sites which, the Complainant asserts, use confusingly similar URLs to the web sites “www.askjeeves.com”, “www.mp3.com” and “www.wikipedia.org” and that the Respondent owns in excess of 3,200 domains, many of which include, according to the Complainant, domains used for typo-squatting, including <disnney.com>, <mopheus.com>, <starwras.com>, <windowns.com>, <gvoogle.com>, <crigslist.com>, <adiads.com>, <opraph.com>, <orditz.com>, <skypy.com>, <spidrman.com>, <yamahah.com>,<pokemoon.com>, <nicklelodeon.com>, <cinguler.com> and <oscares.com>. The Complainant also refers to the fact that the Respondent has been the subject of a number of domain name disputes in the past: Swarovski A.G v. Modern Empire Internet Ltd, WIPO Case No. D2006-0148, Weld Racing, Inc. v. Modern Empire Internet Limited, WIPO Case No. D2005-0305 and Army and Air Force Exchange Service (AAFES) v. Modern Empire Internet Ltd., WIPO Case No. D2006-0510.

5.7 The Complainant requested that the disputed domain name <patelsons.com> be transferred to the Complainant.

B. Respondent

5.8 The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1 According to paragraph 15(a) of the Rules, the Panel must decide a 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 applicable.

6.2 In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

(i) The 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 domain name; and

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

6.3 Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies on the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel may draw such inferences therefrom, as it considers appropriate.

6.4 Since the Respondent failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds the following:

A. Identical or Confusingly Similar

6.5 The Panel notes that the mark PATELSON has been used by the Complainant in connection with a business in New York of selling sheet music and related goods for over 60 years. The Complainant has provided evidence of press-write ups over the years showing public recognition of its use of the PATELSON trademark. The Complainant also trades world-wide over the internet using its business name PATELSON MUSIC HOUSE and the mark PATELSON mark.

6.6 The Panel also notes that the Complainant's use of the trademark PATELSON in connection with sales of sheet music and related goods pre-dates the Respondent's registration of the domain name in dispute by many years. The products in which the Complainant trades are specialized items and the Respondent specifically refers to such specialized items on its website “www.patelsons.com”. Independent creation and use by the Respondent of the trademark PATELSON on the self-same specialized goods as those of the Complainant is extremely unlikely. In the absence of any explanation by the Respondent for the adoption of the domain name <patelsons.com> the Panel infers that the Respondent must not only have known of the Complainant's trademark before registering the domain name but also must have considered it to be a valuable name to adopt in connection with these specialized goods.

6.7 The Panel finds that by the date of the registration of the domain name, the Complainant had established substantial goodwill in the unregistered trademark PATELSON in connection with the sale of sheet music and related goods and that it had common law rights in the mark PATELSON.

6.8 The common law rights do not provide ownership rights over the unregistered mark as such, but instead protect the goodwill of the business in which the mark has been used and in respect of which business the mark has, by use, become distinctive. The owner of the goodwill does not have an absolute monopoly in the mark, but merely has a right to prevent others from damaging the trading reputation of his business by means of misrepresentations (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the owner of the goodwill.

6.9 Paragraph 4(a) of the Policy, which requires that a complainant should have “rights” in the trademark or service mark relied on, should be construed purposively. The purpose of the Policy is to resolve disputes involving the use of domain names which are the same as or are confusingly similar to a complainant's trademark or service mark. A complainant's right to object to a domain name should not depend on the precise manner in which a national legal system gives a complainant the right to interfere. The Panel concludes that a complainant who can establish that it has protectable goodwill and reputation in a mark has “rights” in the trademark or service mark in question for the purposes of paragraph 4(a) of the Policy. Other panels have reached the same view, see Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322.

6.10 The Panel accepts that although PATELSON trademark is a personal name of the founder and current owner of the Complainant, it is also and has been for many years used by the Complainant as an unregistered trademark. It is well-established that common law trademark rights can exist in a personal name, see Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210.

6.11 The Respondent's domain name incorporates the whole of the Complainant's trademark PATELSON. Merely adding the letter 's' to the end of the word so as to make it into a plural does not avoid confusing similarity.

6.12 The addition of a ccTLD or gTLD to the mark does not avoid confusing similarity. See, for example, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific service provider or enterprise as a source of goods or services.

6.13 The incorporation of the entirety of the Complainant's trademark PATELSON into the Respondent's domain name <patelsons.com> is bound to lead consumers familiar with the Complainant's trademark into the belief that the domain name is one belonging to the Complainant or that the Complainant has authorised or licensed the use of its trademark to the Respondent. Consumers are thus likely to be confused as to the origin or sponsorship of <patelsons.com> because the domain name is virtually identical and is thus confusingly similar to the Complainant's trademark PATELSON in which the Complainant has common law rights.

6.14 The Panel accepts the Complainant's submissions in relation to the disputed domain name <patelsons.com> and finds for the Complainant on the first element of the UDRP.

B. Rights or Legitimate Interests

6.15 There is no evidence of any rights or legitimate interest of the Respondent in the disputed domain name. The Complainant states that it has not licensed or otherwise permitted the Respondent to use the trademark PATELSON or to apply for any domain name including these trademarks. The Complainant has prior common law rights in the trademark PATELSON which precede for many years the Respondent's registration of the domain name in dispute.

6.16 The Respondent currently operates a website at “www.patelsons.com”. This website contains a number of sponsored links to a number of sites that are not associated with the Complainant or its business and which, in many instances, have no connection with the industry in which the PATELSON trademark is used. The Complainant has alleged that the Respondent derives revenue on a cost-per-click basis. The Respondent has not denied this allegation. The Respondent does not appear to offer any goods or services of its own and the Panel is, therefore, prepared to infer that, as alleged by the Complainant, the Respondent is using the website itself as a source of revenue. The use of the domain name <patelsons.com>, being a domain name which is confusingly similar to the Complainant's mark, is not fair use in these circumstances.

6.17 The Panel accepts the Complainant's submissions that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Panel finds for the Complainant on the second element.

C. Registered and Used in Bad Faith

6.18 The Complainant submits that the Respondent registered the domain name in dispute in bad faith, knowing of the reputation of the trademark in question, in an attempt to capitalize unfairly on the goodwill of the Complainant's trademark.

6.19 The Panel has already found that it is most likely that the Respondent selected the domain name in dispute knowing of the reputation of the PATELSON trademark. Accordingly, the disputed domain name was registered in bad faith, see America Online Inc v. Anson Chan, WIPO Case No. D2001-0004.

6.20 The Panel also finds that the deliberate adoption of a confusingly similar domain name and, in particular, one differing from the Complainant's mark merely by the addition of the letter 's' at the end further, constitutes bad faith in registering the domain name in issue.

6.21 The Respondent has a history of registering domain names which differ from third party's trademarks merely by the omission of the letter 's' at the end of the trademark or by a misspelling or typographical variation of the trademark, see Swarovski A.G v. Modern Empire Internet Ltd, WIPO Case No. D2006-0148, SWAROVSKI/<swarvoski.com>, Weld Racing, Inc. v. Modern Empire Internet Limited, WIPO Case No. D2005-0305, WELDWHEELS/<weldwheel.com> and Army and Air Force Exchange Service (AAFES) v. Modern Empire Internet Ltd. ,WIPO Case No. D2006-0510, AAFES/<affes.com>.

6.22 The Panel infers that the Respondent has adopted a policy of typo-squatting and this constitutes further evidence of bad faith in registering the domain name in dispute <patelsons.com>.

6.23 According to paragraph 4(b)(iv) of the Policy, the use of a domain name, with the intention to attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the disputed website or location or of a product or service on said website or location is regarded as evidence of bad faith.

6.24 The Panel is satisfied on the evidence that the Respondent knew of the PATELSON mark of the Complainant when it registered and used the disputed domain name. There is no natural connection between the mark PATELSON and the Respondent. The Panel draws the conclusion that the most likely reason the Respondent chose the domain name was to associate itself and its business with that of the Complainant and to profit from the reputation of the Complainant's trademark and thereby to attract Internet users to its websites for commercial gain.

6.25 The Panel concludes that by registering and using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's PATELSON trademark as to the source, sponsorship, affiliation, or endorsement of the business through the use of the disputed domain name <patelsons.com>. The Panel concludes that the Respondent registered and has 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 <patelsons.com> be transferred to the Complainant.

Mary Vitoria, QC
Sole Panelist

Dated: July 6, 2007