WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EMI GROUP PLC and KHALIL EL-HOLIBY
Case No. D2000-0761
1. The Parties
Complainant: EMI Group plc, Dawley Road, Hayes, Middlesex, UB3 1HH, United Kingdom
Represented by Mathisen & Macara, The Coach House, 6-8 Swakeleys Road, Ickenham, Uxbridge UB10 8BZ
Respondent: Khalil El-Holiby, 8 Bouchers Mead, Chelmsford, CM1 6PJ United Kingdom
2. The Domain Name and Registrar
Domain Name: "emimusic.org"
Registrar: Register.com
3. Procedural History
The Complaint was received by WIPO on July 10, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that "emimusic.org" ("the Domain Name") was registered through Register.com and that Khalil El- Holiby is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On July 20, 2000, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was August 9, 2000. No Response was filed. On August 23, 2000, WIPO issued to the Respondent a Notification of Respondent Default informing the Respondent of the consequences of his default.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision, is September 22, 2000.
4. Factual Background
The Complainant is an English company engaged in the music business. The Complainant and its subsidiaries have traded under and by reference to the name EMI for over 50 years. EMI is a registered trademark of the Complainant. It is very well known in the United Kingdom and elsewhere and is registered worldwide. The Complainant has produced in evidence copies of some its United Kingdom and CTM registration certificates.
In June this year, the Complainant became aware that the Domain Name was being advertised for sale on the GreatDomains.com website at "http://greatdomains.com". Visitors to the website were invited to make an offer for the name. The Complainant made an offer for the name of $500. The offer was transmitted to the Respondent and on June 2, 2000, the following response was received "Offer less than $2500 not accepted. Please increase the amount".
An e-mail was sent to the Respondent by the Complainant’s trade mark attorneys on or about June 18, 2000, (the date given by the Complainant, but the copy exhibited is undated) inviting the Respondent to reconsider the Complainant’s offer to pay $500 for the Domain Name to cover the cost of registering the name and any costs involved in its transfer. The e-mail further advised that if the offer was not accepted a complaint would be instituted pursuant to the Policy. A deadline of June 30, 2000, was set for a response, but no response was received.
The Domain Name does not appear to be connected to any Internet facility.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s trade mark because it consists of a combination of the Complainant’s trade mark and the word "MUSIC" which describes the business interests of the Complainant and is what the Complainant is renowned for.
According to the search of the Whois database, the Respondent registered the Domain Name on January 24, 2000. As the Respondent has not set up a website but has simply offered the name for sale on the GreatDomains.com website, it is submitted by the Complainant that the Respondent has no rights or legitimate interests in the Domain Name.
It is further submitted that by virtue of the aforementioned facts, the Respondent has registered and is using the Domain Name in bad faith.
B. Respondent
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
1. The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interest in respect of the Domain Name; and
3. The Domain Name has been registered and is being used in bad faith.
6.1 Identical or confusing similarity
The Domain Name comprises three elements, namely ‘emi’, which is the Complainant’s name and trade mark, ‘music’, which describes the Complainant’s business area, and ‘.org’, which is generic.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
6.2 Rights or legitimate interest of the Respondent
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purpose of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of the Respondent. Paragraph 4(c) of the Policy sets out certain circumstances any of which, if found by the Panel to be proved, will demonstrate the Respondent’s rights or legitimate interests in the Domain Name.
The circumstances set out in that paragraph are (i) the Respondent is using or demonstrably preparing to use the Domain Name in connection with a bona fide offering of goods or services, (ii) the Domain Name is how the Respondent is commonly known, and (iii) the Respondent is using the Domain Name in a legitimate non commercial or fair manner.
None of those circumstances appear to apply here and the Panel has no evidence before it to suggest any other reason why the Respondent might have any rights or legitimate interests in the Domain Name. Indeed, the circumstances surrounding the offer for sale indicate the contrary.
The Panel finds that the Complainant has made out a strong prima facie case under this head. The Respondent has not responded. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
6.3 Bad Faith
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith. Here, it is unnecessary to look beyond sub paragraph (i), namely circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket expenses.
The Panel finds that the advertising of the Domain Name for sale on the "greatdomains.com" website at a price of not less than $2500 combined with the refusal of the monetary offer made by the Complainant, which would have more than covered any relevant expenses, comes within the terms of paragraph 4(b)(i) of the Policy.
The Panel finds that the Domain Name has been registered in bad faith and is being used bad faith.
7. Decision
In the result, the Panel having found that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used bad faith, the Complaint succeeds.
The Panel directs that the Domain Name, "emimusic.org", be transferred to the Complainant.
