Theodore Presser Company v. John Smith/Whois Protection
Case No. D2008-0549
1. The Parties
The Complainant is Theodore Presser Company, King of Prussia, Pennsylvania, United States of America, represented by Day Pitney LLP, United States of America.
The Respondent is John Smith/Whois Protection, Whois Protection Service LLC, Georgetown, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <theodorepresser.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2008. On April 10, 2008, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On April 11, 2008 Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 16, 2008. The Center verified that the Complaint April 18, 2008 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 April 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2008.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 15, 2008. 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 a music publisher which began its business operations in 1848. The founder, Mr. Theodore Presser, began publishing The Etude, a music magazine in October 1883. The magazine and related publishing company were successful and in 1906, Theodore Presser established the Presser Home for Retired Music Teachers, and subsequently formed the Presser Foundation. Since 1916, the Presser Foundation has granted annual awards, scholarships, grants and funds for music education and music in America. The Complainant represents and distributes music for more than 70 American and foreign publishers, in addition to its own catalogues.
The Complainant has used the common law marks THEODORE PRESSER and THEODORE PRESSER COMPANY since approximately 1883, in connection with The Etude magazine, sheet music catalogues, and individual sheet music packages. The Complainant has also used the THEODORE PRESSER common law mark in its marketing and advertising materials.
The Respondent registered the domain name <theodorepresser.com> on April 6, 2002. At the time of the Complaint, the Respondent was operating a website in connection with the disputed domain name, which provided links to third-party websites offering goods and services related to music, including “sheet music”, which compete with the Complainant.
5. Parties’ Contentions
A. Complainant
(a) Identical or Confusingly Similar
The Complainant contends that the domain name <theodorepresser.com> is confusingly similar to the Complainant’s common law trademarks THEODORE PRESSER and THEODORE PRESSER COMPANY. The Complainant submits that the domain name <theodorepresser.com> incorporates the Complainant’s trade name and common law mark in their entirety.
(b) Rights or Legitimate Interests
The Complainant contends that the Respondent is not affiliated or related to its trademark or business name, and is not a licensee or otherwise authorized to use the THEODORE PRESSER name or common law mark. The Complainant submits that the Respondent is not generally known by the subject domain name, and that the Respondent has not acquired any trademark rights or other service mark rights in the domain name. The Complainant’s rights in the THEODORE PRESSER common law mark pre-date the registration of the domain name <theodorepresser.com> by more than 125 years. The Complainant also submits that the Respondent is not using the domain name in a manner which offers bona fide goods and/or services. The Complainant contends that the Respondent is operating a website that provides links to third party websites for the purpose of monetary gain. The Complainant contends that the Respondent has not established any legitimate right or interest in the disputed domain name.
(c) Registered and Used in Bad Faith
The Complainant contends that the domain name <theodorepresser.com> has been registered and is being used in bad faith based on the following factors: (i) Respondent’s knowledge of the well-known THEODORE PRESSER common law mark at the time of registration of the disputed domain name; (ii) Respondent’s knowledge of the Complainant’s use of Theodore Presser Company as a trade name; (iii) Respondent’s registration of confusingly similar domain name; and (iv) Respondent’s use of confusingly similar domain name to operate a website that provides links to third party websites for purposes of monetary gain.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
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 the trademark or service mark in which the Complainant has rights; and
(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 Panel finds that the Complainant has established rights in the THEODORE PRESSER common law mark and trade name.
The Complainant has put forward evidence, in the form of the Hayden Conner Declaration, that it has been using the trade name and mark THEODORE PRESSER and THEODORE PRESSER COMPANY since 1883. In the absence of any evidence to the contrary, the Panel is prepared to accept that the Complainant has common law rights in the THEODORE PRESSER mark and trade name.
The Panel finds that the domain name <theodorepresser.com> is confusingly similar to the Complainant’s marks THEODORE PRESSER and THEODORE PRESSER COMPANY, as it incorporates the distinctive elements of the Complainant’s mark and trade name.
The Panel notes that the Complainant need not have a trademark registration to assert valid trademark rights in a UDRP proceeding, and accepts that the Complainant has established sufficient common law rights in the THEODORE PRESSER mark to support this Complaint. (Savino Del Bene Inc. v. Graziano Innocenti Gennari,WIPO Case No. D2000-1133)
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds no evidence that the Respondent ever had any legitimate right or interest in the domain name in dispute. The Respondent registered the domain name over 125 years after the Complainant began using the THEODORE PRESSER trade name and mark in the United States. The Panel finds no evidence that the Respondent was ever known by the disputed domain name. The Panel also accepts the Complainant’s assertion that it never licensed or authorized the Respondent to use the THEODORE PRESSER mark, and that the Respondent is not affiliated or related to the Complainant in any manner.
The Panel finds that the Respondent is not using the domain name in connection with a bona fide offering of goods and services. The Complainant has filed evidence in this proceeding showing that the Respondent is operating a website in connection with the disputed domain name which provides links to third party websites for the purpose of monetary gain. The operation of “click-through” sites is not evidence of a bona fide offering of goods and services.
The Panel is therefore satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. Once a complainant has made this prima facie showing, the Respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270).
As the Respondent has not filed any Response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the absence of any evidence to the contrary, the Panel accepts the evidence put forward by the Complainant, namely the Declaration of Hayden Connor, the Chairman of the Theodore Presser Company. The Connor Declaration confirms that the Complainant has been using the names THEODORE PRESSER and THEODORE PRESSER COMPANY since at least as early 1883, in connection with publication of The Etude magazine, music catalogues, and individual music sheets. In addition to its own publications, the Complainant also represents 70 other American and foreign publishers in connection with the distribution and sale of music catalogues and music sheets. The Connor Declaration also provides proof of the existence of the Presser Foundation and its mandate, which has been operating since 1916.
Based on this evidence, the Panel is prepared to find that the Complainant has a reputation in the trade name and marks THEODORE PRESSER and THEODORE PRESSER COMPANY with respect to music catalogues, individual music sheet packages and with respect to music education and scholarships. Accordingly, the Panel is prepared to infer that the Respondent knew about the Complainant’s trade name and common law rights at the time the disputed domain name was registered, by virtue of the long history and use of the THEODORE PRESSER name and mark by the Complainant.
The Panel is also prepared to find that the Respondent registered and is using the domain name for the operation of a click-through website which provides links to third party websites for the purposes of monetary gain. The evidence shows that the Respondent was not authorized or licensed to use the Complainant’s mark and the Respondent did not file any response contesting this claim. The Respondent appears to have deliberately traded on the goodwill of the Complainant, by replicating the Complainant’s trade name and mark, and providing links to competitive music suppliers.
For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) 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 name <theodorepresser.com> be transferred to the Complainant.
Christopher J. Pibus Sole Panelist
Dated: May 29, 2008
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