mymp3.com

WIPO Arbitration and Mediation Center

The Complainant is mp3.com Inc, a Delaware corporation with its principal place of business at San Diego, California ("the Complainant").

The Respondent is Sander & Associates, with its principal place of business in Seoul, Korea ("the Respondent").

The domain name that is the subject of this dispute is mymp3.com ("the domain name"), which was first registered on October 1, 1998.

The registrar of the domain name is Network Solutions, Inc., of Herndon, Virginia, USA ("the Registrar").

A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on June 9, 2000, and in hard copy on June 13, 2000. The latter was accompanied by payment in the required amount for a single Panelist.

On June 16, 2000, a formal Acknowledgement of Receipt (Complaint) was sent to the Complainant.

On June 15, 2000, a Request for Registrar Verification was sent to the Registrar, requesting confirmation that it had received a copy of the Complaint from the Complainant, that the domain name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name.

On June 20, 2000, the Registrar advised that it had received the Complaint and that it is the registrar of the domain name, that the Respondent is the holder of the domain name, confirming the Respondent's contact details, advising that the Registrar's 5.0 Service Agreement was in force, and advising that the domain name was in 'Active' status.

On June 15, 2000, the Complaint was checked by WIPO for compliance with the Policy, the Rules and with the World Intellectual Property Organization Supplemental Rules for Uniform domain name Dispute Resolution Policy ("the Supplemental Rules").

On July 13, 2000, the formal requirements having been met, a Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent and the Registrar, advising that the formal date of commencement of the administrative proceeding was July 13, 2000, and that accordingly the Response was due by August 2, 2000. The Notification was also sent by email and by courier to the Respondent's Administrative/Billing contact and Technical/Zone contact.

On August 3, 2000, a Response pursuant to the Policy, the Rules and the Supplemental Rules was received by WIPO by email and on August 14, 2000, by hardcopy.

On August 8, 2000, a formal Acknowledgement of Receipt (Response) was sent to the Respondent noting that the Response was received one day after the deadline indicated in the Notification of Complaint.

On August 16, 2000, a Notification of Appointment of Administrative Panel and Projected Decision Date ("the Appointment Notification") was sent to the Complainant and the Respondent. In accordance with the parties’ request, the Appointment Notification informed the parties that the Administrative Panel would be comprised of a single panelist, Mr. Clive Elliott, and advised that the decision should be forwarded to WIPO by August 30, 2000.

Having reviewed the file, the Panel is satisfied that the formal requirements of the Administrative Proceeding have been satisfied.

Complainant

The Complainant asserted and provided evidence in support of the following, which is accepted by the Panel.

The Respondent registered the domain name "mymp3.com" on October 1, 1998.

The Respondent operates a web site that allows visitors to download a variety of computer screen savers including, among other things, nude pictures of celebrities and models.

The Respondent has registered the domain name "window98.com".

The Complainant offers a service via the internet which allows users to virtually upload various music files to their personal cyber locker to help consumers store, access and customize their own music.

The Complainant in February 2000, instructed its Korean counsel to enlist the services of an investigator to locate the correct phone number for the Respondent as the number registered appeared to be incorrect. The Complainant provided a declaration from it's Korean counsel, S W Han an attorney at Kim & Chang (Korean counsel) and not by Y S Kwon as stated in the Complaint, relating to their efforts in contacting Mr. Lee and their lack of success in speaking with him.

The Complainant's Korean counsel via an email to the Respondent dated February 28, 2000, indicated the Complainant's interest in acquiring the domain name "mymp3.com". The Respondent did not respond. Further attempts were made, but no evidence was provided by the Complainant of further contact.

A response was received from the Respondent showing an interest in negotiating a sale of the "mymp3.com" domain name on June 1, 2000. The Respondent's administrative contact enquired as to who the interested party was and invited the Complainant to contact him directly to negotiate on behalf of the Respondent company and informed the Complainant that he was currently negotiating on behalf of the Respondent for the sale of the domain name to Sony Music.

Respondent

The Respondent asserted and provided evidence in support of the following, which is accepted by the Panel.

The Respondent company owns a number of web sites which provide access to downloading selected shareware and freeware applications; the downloading of various screensavers which are produced in seven different languages and internet sites; to store data such as software applications and free screen savers as domain names; free desktop themes database for users to download and free wallpaper downloading.

The Respondent provided copies of email correspondence between the Complainant's Korean Counsel, the Complainant's Vice President of Legal Affairs and the Respondent regarding the interest of the Complainant in acquiring the domain name "mymp3.com" from the Respondent during the period February 28, 2000, and June 13, 2000.

The Respondent provided evidence of a number of web sites, and provided printed copies of the web sites owned and managed by it, which shows the access to its many functions, namely the downloading of screen savers and software applications.

Complainant

In relation to paragraphs 4(a), (b) and (c) of the Policy, the Complainant makes the following assertions.

The domain name is identical or confusingly similar to the Complainant's alleged trademark rights, title and interest in the MY.MP3.COM mark.

The Complainant owns all rights, title and interest in the MY.MP3.com trademark registration. The Complainant also asserted, but did not provide evidence in support of a United States trademark application.

The Complainant has since May 1999, developed substantial fame, consumer recognition and secondary meaning in its MYMP3 mark and in April 2000, had approximately 557 average daily unique visitors to its web site and as at May 1, 2000, had over 10 million registered users.

An independent report by Media Metrix, a leading research company, indicates that the Complainant had the second highest rate of customer usage among prominent music web sites such as CDNOW.com, MTV.com and TUNES.com.

The Respondent operates a web site which allows visitors to download a variety of computer screen savers, some of which consist of nude pictures of celebrities and models.

The Respondent has registered over 50 other domain names which are confusingly similar to well-known trademarks of other companies. This demonstrates the Respondent's bad faith intent to pirate the well-known trademarks of others to divert internet traffic to its pornographic and other unrelated commercial web sites, which have no connection to the trademark owners, other than the pirated trademarks.

The Respondent has knowingly registered "mymp3.com" and other domain names in order to misdirect Internet traffic and/or to hold the names for ransom of trademark owners.

The Complainant attempted to make contact with the Respondent and instructed Korean counsel to locate the Respondent's correct phone number. During the period February 21 and February 24, 2000, it placed numerous calls to the Respondent, but found that the number had been changed and, upon information and belief, believes the Respondent is attempting to evade the Complainant.

The Complainant's Korean counsel during the period February  28, 2000, to June 8, 2000, communicated with the Respondent by email with an interest in acquiring the domain name. The Respondent invited the Complainant to negotiate directly with them in a transparent attempt to stimulate an actual or sham bidding war.

The Respondent informed the Complainant by email that it was the registered owner of the domain name and that the Respondent was negotiating to sell the domain name to Sony Music for USD $1,500,000 (their target) and USD $2,000,000 (our bottom). This was an obvious attempt by the Respondent to extort money from the Complainant to acquire the challenged domain name under the pretence of an actual or sham bid from Sony Music.

Second, the Respondent should be considered as having no rights or legitimate interests in respect of the domain name. In support of this assertion the Complainant makes the following comments.

The Respondent has neither used nor demonstrated preparations to use the domain name in connection with a bona fide offering of goods and/or services.

The Respondent has not been commonly known by the domain name.

The Respondent uses the domain name only to link to its primary pornographic web site where Respondent provides free downloads of pornographic computer screen savers.

The Respondent's use of the "mymp3.com" domain name is to misdirect Internet traffic to the Respondent's illicit commercial web site by deliberately confusing consumers into believing that a sponsorship, affiliation or endorsement exists between "mp3.com" and the Respondent.

The Respondent is not in any business related to the MP3 format for compressing, storing and transmitting digital music files.

Third, the domain name was registered and is being used in bad faith. The Complainant provides the following in support of this assertion.

The Respondent's adoption and use of the domain name to drive misdirected traffic to its pornographic web site is evidence of Respondent's bad faith.

The Respondent acquired or registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain name.

The Respondent by registering the domain name intentionally attempted to attract Internet users to its web site or other on-line location for commercial gain.

The Respondent by registering the domain name has created a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation and/or endorsement of their web site.

Respondent

The Respondent has provided a detailed Response, making the following assertions.

The Respondent registered the domain name seven months before the Complainant began using the sub-domain MY.MP3.com. The Respondent's purpose was the facilitation of free distribution of and easy access by music lovers to unpopular music not easily accessible in the off-line world, by providing the server and web site link to MP3 files of such music.

There was a large demand for services via the "mymp3.com" web site during the period 1998 to 1999.

Court action over the legality of the musicians rights to have their music distributed via the internet meant the Respondent made the decision in March 1999, to temporarily withhold the provision of services on the web site until all legal issues were resolved.

In relation to the Complainant's allegation that the domain name is identical or confusingly similar to the Complainant's registered trademarks, the Respondent notes that the registration of the domain name "mymp3.com" was perfected 7 months prior to the Complainant's registration or use of the domain name.

In relation to the Complainant's allegation that the Respondent has no rights or legitimate interests in respect of the domain name, the Respondent makes the following claims.

The Respondent registered the domain name for the purpose of providing services relating to the downloading of MP3 files. It provided such services from October 1998, to March 1999, and intends pursuing this business opportunity once the legal issues are dealt with, using all the necessary models and technologies developed through its prior experience.

The Respondent has no intention of pirating the Complainant's visitors or creating any confusion with the Complainant's web site. This is evidenced by the earlier registration of the domain name by the Respondent.

In relation to the Complainant's allegation that the domain name was registered in bad faith, the Respondent makes the following claims.

The Respondent successfully operated its business of providing free MP3 files for downloading before it determined the temporary withholding of its services due to the legal issues described above.

The Respondent at the time of initial contact by the Complainant had no intention to sell or transfer its domain name without proper compensation for its investment in developing the necessary know-how, management skills, business models and technologies and was not prepared to give up any future business opportunity.

The Respondent intends to resume the use of the domain name and the business related to the download of MP3 files after resolution of the related legal issues, and, therefore it had no intention of selling the domain name to the Complainant, and for that purpose had no reason to respond to the Complainant's counsels offer to purchase.

The Respondent's intention on receiving further emails from the Complainant offering to purchase the domain name, was not to sell the domain name, but merely a way to operate and further its own business interests.

The Respondent did not want to be involved in an "economically unjustifiable discussion" with the Complainant.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the

following:

(i) the domain name is identical or confusingly similar to the TradeMark; and

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

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

Identical or confusingly similar

The first question is whether the domain name "mymp3.com" is identical or confusingly similar to "my.mp3.com". While "mymp3.com" and "my.mp3.com" are not identical, in terms of a side by side comparison they are clearly substantially identical. Paragraph 4(a)(i) requires that the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The question arises as to what is MP3? The panelist understands "MP3" to simply represent a method for compressing digital information so as to reduce necessary storage space. Since music is able to be stored digitally the format can be used to compress a musical sound file to allow ease of transmission to various people. MP3 started out as an abbreviation for MPEG Layer 3 - an audio compression algorithm which was then standardized by the International Standards Organisation (ISO). Quite apart from this, MP3 is now a de facto standard representing CD quality music files which are small enough to be downloaded from the Internet.

Today, MP3 orientated web sites, search engines, NewsGroups, software and hardware are both popular and widely available on the Internet.

As to whether the Complainant has protectable rights in the trademark MY.MP3 rests on the assertion that the Complainant owns all right, title and interest in the trademark, based on continuous use of the mark since at least as early as May 1999. While it is asserted that a United States Federal trademark application has been filed, no evidence of this is provided. It is clear from the evidence that the Complainant's mp3.com web site is extremely popular. However, while the my.mp3.com page is accessible through the mp3.com site no conclusive evidence is provided as to any established secondary meaning of my.mp3.com. However, given the evidence filed, it is possible to give the Complainant the benefit of the doubt and to infer a necessary reputation and goodwill in the MY.MP3 trademark. Accordingly, for the purposes of this decision the Panel holds that this ground is made out.

No right or legitimate interest

What seems important under this ground is that the term MP3 is a well-established acronym which directly describes the method of compression and transmission of digital information and has become a shorthand term for a discrete area of technology. Secondly, the Complainant commenced use of my.mp3.com in or about May 1999, whereas the Respondent registered the domain name "mymp3.com" on October 1, 1998; some 7 months earlier.

Given the term MP3 is a widely used descriptor for a particular file format the Respondent, and others, would have a legitimate interest in using the term in the course of any business that involved MP3 files or technology.

Likewise, given that the Respondent registered the "mymp3.com" domain name some time before the Complainant's first use, it is difficult to see how the Complainant can allege that the Respondent has no rights or legitimate interests in respect of the domain name.

Furthermore, the term "my" or "mine" has a well-understood English meaning. When used in conjunction with MP3 it arguably suggests that a user is able to personalize his/her MP3 activity. In its business plan the Respondent indicated that the reason the domain name "mymp3.com" diverts to screensaver.com is because of its topic of music. It is interesting to note that on downloading off the Respondent's site a screensaver for certain musicians, their songs are played. This would seem to represent the legitimate use of MP3 type technology.

Registered and used in bad faith

As at the date of registration of the domain name in dispute (i.e. on October 1, 1998,) there is no compelling evidence to suggest that the registration was made in bad faith. Given the descriptive nature of the term MP3, the aptness for use of the term "my" and thus "myMP3" and the apparent use of an MP3 type process in downloading music clips from the Respondent's web site, it is found that the allegation of registration and use in bad faith is not made out.

Both parties have made various assertions and submissions on these and other related issues. Some are substantiated while others are not. These have been considered. However, it is felt by the Panelist that this matter can and should be dealt with on matters established on the record or not essentially in dispute which, in the final analysis, make a determination relatively straightforward. For this reason, there is no benefit in identifying these issues or balancing them up.

In view of the above, in the Panelist’s view, the Complainant has failed to make out its case and its request for relief is accordingly denied.

Clive L. Elliott
Presiding Panelist

Dated: September 22, 2000