Westmore · UDRP DecisionHmv-go-online.com
The Panel ordered transfer of <hmv-go-online.com>. It found the domain confusingly similar to the Complainant's HMV trademark because it incorporated HMV in full with only the descriptive or non-distinctive expression “-go-online.” The Complainant established a prima facie case that the Respondent lacked rights or legitimate interests, which the Respondent did not rebut. Bad faith was found based on the incorporation of the mark, registration on the date the HMV brand was the subject of media reports, and the Respondent's offers to sell the domain for amounts substantially exceeding registration expenditure.
The timeline behind hmv-go-online.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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The decision illustrates how several mutually reinforcing circumstances can establish bad faith: a well-established mark incorporated in full, a descriptive online-oriented addition, registration timed to coincide with major media attention concerning the brand, thematically related website content, and an offer to sell the domain to the trademark holder. It also shows the practical importance of responding with evidence of rights or legitimate interests rather than limiting a response to sale discussions.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Palm Green Capital Limited, HMV Retail Limited v. Mike Blake, Geecom Case No. D2015-0761 1. The Parties The Complainants are Palm Green Capital Limited of Road Town, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and HMV Retail Limited of Middlesborough, United Kingdom (referred to individually and collectively as “the Complainant”), represented by Williams Powell, United Kingdom. 1 The Respondent is Mike Blake, Geecom of Bristol, United Kingdom. 2. The Domain Name and Registrar The disputed domain name <hmv-go-online.com> is registered with eNom (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2015. On April 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2015, the Registrar 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” or “UDRP”), 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 May 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2015. The Respondent filed various email communications with the Center on May 5, 2015, inter alia confirming that the communications can be regarded as the complete Response and stating that it no longer wanted to take part in the proceedings. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on May 5, 2015. The Center appointed George R. F. Souter as the sole panelist in this matter on May 11, 2015. 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, a retailer of recorded music, has supplied the Panel with details of registration of its HMV trademark in the United Kingdom (dating from 1995) and the European Community (dating from 1999). The disputed domain name was registered on January 15, 2013. The disputed domain name resolves to a music-themed site with links to “buy on Amazon” what appear to be singles or albums. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is confusingly similar to its HMV trademark, comprising the Complainant’s HMV trademark with the addition only of descriptive or non-distinctive elements. The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name, and states that the Respondent has no registered trademark rights in the trademark HMV, and operates no business under the HMV trademark. The Complainant has drawn the Panel’s attention to Complaint D00013248 – Nominet UK, in which the same parties as in the present proceedings featured as complainant and respondent respectively, and has asked the Panel in this case to take its submissions in Complaint D00013248 into account in the present case. In Complaint D00013248, it was decided that the Respondent abusively registered the domain names involved in that Complaint, which incorporated the Complainant in the present case’s HMV trademark together with additions regarded in the decision in Complaint D00013248 as insufficient to avoid a finding of confusing similarity with the Complainant’s HMV trademark. The Complainant alleges that the disputed domain name was registered in bad faith and is being used in bad faith. The Complainant argues that the fact that the disputed domain name was registered the very day the media reported that HMV Group plc had entered administration indicates the Respondent’s awareness of the Complainant at the time of registration. The Complainant also draws the Panel’s attention to an offer by the Respondent to transfer the disputed domain name to the Complainant for a sum of $25,000 (presumably USD). B. Respondent While the Respondent did not formally take part in these proceedings, he did, as indicated previously, file several email communications with the center. In summary, the Complainant’s emails state that the Respondent “would have been happy” to sell the disputed domain name to the Complainant for an amount reflecting its worth if the Complainant had approached him about a sale instead of launching the current proceedings, and that the Respondent is still willing to sell the disputed domain name to the Complainant “for a minimum” of GBP 1,000. The Respondent also states that at the time of registering the disputed domain name, the Complainant had “gone…into liquidation”. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators ( e.g., “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in the present case. In the Panel’s opinion, the Complainant has demonstrated clear rights to its HMV trademark. The disputed domain name incorporates the Complainant’s HMV trademark, with the mere addition of the expression “-go-online”. It is well-established in prior decisions under the UDRP that the mere addition of descriptive or non-distinctive elements to a trademark in which a complainant has rights is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, “-go-online” is, in the Panel’s opinion, clearly descriptive or non-distinctive. The Panel, consequently, finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity in his email communications to the Center or otherwise to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Complainant’s trademark was incorporated in its entirety, with no additions beyond descriptive or non-distinctive elements and the legally irrelevant “.com” gTLD indicator, as sufficient for the Panel to find that the disputed domain name was registered in bad faith. Relevant to the Panel’s finding in this regard is the timing of the registration, on the exact date that the HMV brand was the subject of media reports. It is the consensus view of panels in UDRP proceedings that evidence of offers to sell the domain name is generally admissible under the UDRP. It is well-established in prior decisions under the UDRP that an offer from a respondent to sell a disputed domain name to a complainant for a sum greatly in excess of the respondent’s expenditure in registering the domain name constitutes use of a domain name in bad faith, and the Panel so finds in the present case. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii). 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <hmv-go-online.com> be transferred to the Complainant. George R. F. Souter Sole Panelist Date: May 25, 2015 1 The Panel accepts the Complainant’s statement that HMV Retail Limited is the licensee of Palm Green Capital Limited and finds the consolidation of multiple complainants appropriate in this case.
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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