napstertogo.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Napster, Inc. v. Armin Mededovic

Case No. D2005-1263

1. The Parties

The Complainant is Napster, Inc., Los Angeles, California, United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP, United States of America.

The Respondent is Armin Mededovic, Malmoe, Sweden.

2. The Domain Name and Registrar

The disputed domain name <napstertogo.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2005. On December 7, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On December 7, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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”).

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 December 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2006. The Response was filed with the Center on December 29, 2005.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 13, 2006. 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.

4. Factual Background

The Complainant is the current owner of a series of NAPSTER trademarks (Complainant’s Submissions, Annex 4 and 5), some of which were used in public as early as 1999. The NAPSTER trademarks are used in conjunction with the offering of a subscription service to enable consumers to sample and download digital music from a diverse online collection of music.

The Complainant has also recently created a premium membership entitled, “Napster To Go Membership” whereby members can download and manage songs on their MP3 players. The Complainant currently has an application pending for its NAPSTER TO GO trademark, which was filed on July 2, 2004 (Complainant’s Submissions, Annex 4 and 6).

The Respondent registered the disputed domain name <napstertogo.com> on September 4, 2004. At present, the website displays advertisements and links to various other websites relating to downloading music, including several of the Complainant’s competitors. The website also contains a link that offers the domain name for sale, requesting that purchasers submit a bid for the domain name. (Complainant’s Submissions, Annex 7).

The Complainant and Respondent corresponded several times regarding the disputed domain name (Complainant’s Submissions, Annex 8 and Respondent’s Submissions, Attachments 1 - 3). The Complainant’s letters:

(a) requested that the Respondent should cease and desist use of disputed domain name;

(b) explained that although the Complainant encourages use of its website through its referral affiliate network, it does not authorize use of a domain name confusingly similar to its own domain name and trademark; and

(c) offered to reimburse the Respondent for his out-of-pocket registration costs for the disputed domain name in exchange for the transfer of the domain name to the Complainant.

The Respondent replied by stating that his registration of the disputed domain name was not in bad faith because he joined the affiliate network offered by the Complainant to earn money for each visitor sent to the Complainant’s website. He admitted that he was negotiating with other third parties regarding the sale of the domain name, but refused to transfer the domain name in exchange for his out-of-pocket registration costs. The Respondent claimed that the website had a large amount of traffic and was worth more than $100,000.

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions can be summarized as follows:

(a) Identical or Confusingly Similar – The domain name <napstertogo.com> is identical to the Complainant’s NAPSTER TO GO mark, as the addition of “.com” is not sufficient to avoid a finding of confusing similarity. The Respondent’s domain name is also confusingly similar to Complainant’s registered NAPSTER mark, as the addition of the phrase “to go” is insufficient to avoid confusion. The Respondent’s use of the phrase “to go” suggests that the website is sponsored by or affiliated with the Complainant’s products and services.

(b) Rights or Legitimate Interests– The Respondent has no rights or legitimate interests in the domain name. The Complainant has not licensed its NAPSTER or NAPSTER TO GO marks to the Respondent. Furthermore, the Respondent has not used and is not using the domain name in connection with a bona fide offering of goods or services, has not provided any evidence that he has been commonly known by the domain name, and has demonstrated its use of the domain name is commercial and intended to divert customers from the Complainant’s website for monetary gain.

(c) Registered and Used in Bad Faith– The domain name was registered and is being used in bad faith, as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. In addition, the Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of his out-of-pocket costs directly related to the domain name.

B. Respondent

The Respondent made the following submissions in his response:

(a) Identical or Confusingly Similar – The Respondent admits that the disputed domain name <napstertogo.com> is identical to the Complainant’s unregistered trademark as of the date of these proceedings but asserts that it was not a trademark when the domain name was originally registered by the Respondent on September 4, 2004.

(b) Rights or Legitimate Interests– The Respondent has the right to the domain name in question because it was registered before NAPSTER TO GO became a trademark.

(c) Registered and Used in Bad Faith– The domain name was not registered in bad faith because the Respondent does not seek to extract payment from the Complainant and did not register the domain name to prevent the Complainant from doing so. The domain name was also registered before NAPSTER TO GO became a trademark. Furthermore, the domain does not disrupt the business of the Complainant, because it links directly to the Complainant’s own site and therefore is not an attempt to create confusion amongst Internet users and can only create more revenue for the Complainant.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first issue in this matter is whether the domain name <napstertogo.com> is confusingly similar to the Complainant’s marks. There are two elements that must be satisfied to establish this: a) that the Complainant has rights in the particular mark or marks; and ii) that the domain name in question is identical or confusingly similar to that mark.

With respect to the first element, although the Complainant has established trademark rights in the NAPSTER mark through registration, it has not filed any substantial evidence to support its allegation of common law rights in the service mark NAPSTER TO GO, which was filed on July 2, 2004 but has not yet been registered.

The Respondent asserts that because the Complainant’s NAPSTER TO GO trademark was not registered when the disputed domain name was originally registered, the domain name cannot be found to be identical or confusingly similar to the Complainant’s mark. However, this defense fails to address the essential foundation of the Complaint: the Complainant owns registered rights in the NAPSTER mark itself, and the domain name in question is confusingly similar to that registered trademark. The disputed domain name comprises the highly distinctive NAPSTER trademark itself, combined with the suffix “togo”. Where a domain name incorporates a complainant’s mark in its entirety, the addition of another descriptive word does not obviate the likelihood of confusion (Wal-Mart Stores, Inc. v. Horoshiy, Inc, WIPO Case No. D2004-0620, “benefits” added to WAL-MART). The caselaw on confusion in the context of the addition of descriptive words is well developed. See Experian Information Solutions v. Credit Research Inc., WIPO Case No. D2002-0095 (“credit” added to EXPERIAN), Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (“drinks” added to COCA COLA).

Furthermore, the first and dominant element in the disputed domain name is NAPSTER and ample authority exists to support the conclusion that confusion is far more likely to occur when the first part of trademarks and domain names are identical (See the principle enunciated in Booz Allen Hamilton Inc. v. Human Works Inc., WIPO Case No. D2002-0656).

The finding of confusion in this case is further strengthened by the fact that the words “togo” used by the Respondent to combine with NAPSTER has a direct connection to Napster’s own membership program offered to the public entitled NAPSTER TO GO. A reasonable consumer would expect the Respondent’s site to allow users to download and manage songs on their MP3 players. Where generic words have been added to a well-known trademark and the generic words identify goods or services that the trademark owner also provides, confusing similarity between the mark and the domain name is inevitable (Wal-Mart Stores Inc. v. Alvaro Collazo, WIPO Case No. D2004-0621 (“musicdownloads” was added to WAL-MART), Harrod’s Limited v. Peter Pierre, WIPO Case No. D2001-0456 (“stores” was added to HARRODS)).

The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There is no evidence to establish that the Respondent ever had any legitimate rights or interests in the <napstertogo.com> domain name. There is no absolute entitlement to a domain name solely on the basis of registering it as such before a mark that is identical or confusingly similar becomes a registered trademark. Furthermore, no relationship exists between the Complainant and Respondent that would give rise to any license, permission or authorization to use the domain name.

The Respondent is not using the domain name in connection with a bona fide offering of goods or services. The evidence shows that the Respondent’s current use of the domain name actually relies on the Complainant’s trademark to divert Internet traffic to commercial services competitive to the Complainant’s and to attract potential purchasers for the domain name.

The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s argument with respect to bad faith and notes that the essential facts in this case correspond closely to the examples of bad faith cited in paragraph 4(b)(i) and 4(b)(iv) of the Policy.

With respect to 4(b)(i) of the Policy, the circumstances which lead to the conclusion that the Respondent has registered or acquired the disputed domain name particularly for the purpose of selling the domain name registration to the Complainant, who is the owner of the trademark, or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket expenses directly related to the domain name are two-fold. Firstly, the Panel is of the view that the Respondent knew of the registration and use of the Complainant’s NAPSTER mark prior to registering the disputed domain name. The Complainant’s existence in the marketplace since 1999 and the Respondent’s admissions that he registered the domain name to take advantage of the Complainant’s referral program, evidences actual knowledge. This sort of prior knowledge of the Complainant’s mark creates a strong indication of bad faith, which the Respondent has failed to rebut (Napster, Inc. v. John Gary, WIPO Case No. D2005-0913). Secondly, the Respondent expressly offered to sell the domain name to the Complainant, indicated his intention of negotiating with other potential customers, and refused the Complainant’s offer to pay Respondent’s out-of-pocket expenses for registration.

With respect to 4(a)(iv) of the Policy, bad faith is established in this case by the Respondent’s use of the disputed domain name to attract visitors to his website that link to other commercial websites offering similar services to the Complainant’s services, creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.

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 <napstertogo.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist

Date: January 17, 2006