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Slep-Tone Entertainment Corporation d/b/a Sound Choice Accompaniment v. Slep-Tone Entertainment Corporation d/b/a Sound Choice Accompaniment [2000] GENDND 156 (10 April 2000)


National Arbitration Forum

P. O. Box 50191
Minneapolis, Minnesota 55405 USA

DOMAIN NAME DISPUTE ADMINISTRATIVE DECISION

Slep-Tone Entertainment Corporation d/b/a Sound Choice Accompaniment Tracks

14100 South Lakes Drive

Charlotte, NC 28273

Complainant,

vs.

Sound Choice

P.O. Box 1969

Cathedral Station

New York, NY 10025

Respondent.

DECISION

Forum File No.: FA0002000093631

The above entitled matter came on for an administrative hearing on April 10, 2000 before the undersigned Arbitrator on the Complaint of Slep-Tone Entertainment Corporation d/b/a Sound Choice Accompaniment Tracks ("Complainant") represented by Christopher C. Dremann, 10925 David Taylor Drive, Suite 100, Charlotte, NC 28262 (email: cdremann@onlinepatents.com) against Sound Choice (Respondent). Upon the written submitted record, including the Complaint, the Response to the Complaint, Complainant’s additional Response and Respondent’s additional Response, I hereby render the following decision:

PROCEDURAL FINDINGS

Domain Name: SOUNDCHOICE.NET

Domain Name Registrar: Network Solutions, Inc.

505 Huntmar Park Drive

Herndon, VA 20170-5139

Domain Name Registrant: Sound Choice

P.O. Box 1969

Cathedral Station

New York, New York 10025 USA

Date of Domain Name Registration: January 13, 1998

Date Complaint Filed: February 8, 2000

Date Answer Filed: March 13, 2000

After reviewing the Complaint and determining it to be in administrative compliance, the National Arbitration Forum (the "Forum") forwarded the Complaint to Respondent in compliance with Rule 2(a) and the administrative proceeding was commenced pursuant to Rule 4(c) in compliance with Rule 4(d). The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS ("ICANN") and the Respondent that the administrative proceeding had commenced. Respondent submitted a Response to the Forum within twenty (20) days pursuant to Rule 5(a). The Complaint, the Response and the Additional Responses of the parties were docketed and forwarded to the undersigned Arbitrator for decision.

On January 13, 1998, Respondent registered the domain name SOUNDCHOICE.NET with the domain name registrar Network Solutions, Inc., the entity that is the registrar of the domain name. Network Solutions, Inc. verified that Respondent is the registrant for the domain name SOUNDCHOICE.NET and that by registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any disputes regarding its domain name through ICANN’s rules for Uniform Domain Name Dispute Resolution policy. Neither the Complainant nor the Respondent contest the jurisdiction of the Forum or the undersigned Arbitrator to resolve this controversy.

FINDINGS OF FACT

    1. Complainant is the owner of U.S. Trademark Registration No. 1,923,448 for the trademark Sound Choice in International Class 9 for pre-recorded audio cassette tapes and compact discs containing musical compositions and compact discs containing video related to musical compositions. Complainant is also the owner of U.S. Trademark Registration No. 2,026,912 for the trademark Sound Choice in International Class 16 for printed publications namely catalogs pertaining to audio recordings. Finally, Complainant is also the owner of European Community Trademark Registration No. 000115287 for the trademark Sound Choice in international class 9 for pre-recorded musical compositions and pre-recorded video related to musical compositions, in International Class 16 for printed publications pertaining pre-recorded musical compositions and pre-recorded video related to musical compositions, and in International Class 41 for sound recordings pertaining to pre-recorded musical compositions and pre-recorded video related to musical compositions. Complainant has been using the mark Sound Choice on or in connection with the goods and services in the music industry since at least as early as 1986 and has owned the U.S. Trademark Registration for the mark since 1989.
    2. Respondent’s domain name SOUNDCHOICE.NET is almost identical to Complainant’s registered trademarks. Complainant also registered the mark SOUNDCHOICE as the second level domain in its own domain name SOUNDCHOICE.COM.
    3. Because Respondent’s second level domain name is almost identical to Complainant’s trademark internet users and consumers are likely to be confused into believing there is some affiliation, connection, sponsorship, approval or association between Respondent and Complainant, when in fact, no such affiliation or association exists. The likelihood of confusion is further increased by the fact that Complainant and Respondent operate within the same industry. Complainant arranges previously recorded musical compositions and records and records the new arrangements in Karaoke format. Complainant also manufactures and distributes audio cassettes and compact discs containing the musical compositions and compact discs containing the video related to the musical compositions for sale to others.
    4. Sound Choice is the service mark for the various professional service activities performed by Jeffrey Bernstein of Respondent. Mr. Bernstein is a noted music producer and mixer. Respondent provides recording studio services, vocal training and performance enhancement and counseling services to performing artists. These services are classified as Class 41 services by the Trademark Acceptable Identification of Goods And Services Manual. Mr. Bernstein d/b/a Sound Choice has been providing these services to professional artists since 1986. Mr. Bernstein registered with Network Solutions, Inc., the domain name SOUNDCHOICE.NET in 1998 to facilitate his music production business on the internet.
    5. Both Complainant and Respondent use the internet to advertise and promote their business activities. Complainant markets and sells its audio cassettes and compact discs on its website as SOUNDCHOICE.COM. Sales generated by the website represent a significant and growing portion of Complainant’s revenues. Respondent also promotes and advertises its services on the website.
    6. Although the Complainant and Respondent do not directly compete, both parties are using the internet to market their business activities. As a result, internet users may be confused into believing that there is some affiliation in connection with sponsorship, approval or association between Complainant and Respondent, when in fact, none exists.
    7. Even though Respondent contends that its domain name is not confusingly similar to Complainant’s trademark, as an accommodation to Complainant, Respondent has amended his website to disclaim any relationship with Respondent. According to Respondent, should any customer of Complainant reach Respondent’s website by mistake, the customer is immediately redirected to Complainant’s Karaoke website by a banner that reads "This site is in no way affiliated with Sound Choice, the quality leader in Karaoke. If you are interested in Sound Choice, please go to soundchoice.com". Respondent contends that as a result the two names will not confuse the party’s patron.
    8. Respondent has been registered as a publishing member of the American Society of Authors, Composers and Publishers since December 2, 1988 and has been granted a New York Business Certificate under the "Sound Choice" on December 7, 1988. Respondent has been commonly known by its domain name and has gained credibility as the producer of Cher and other world class recording artists and has provided services to all of the major and top independent record companies. Respondent therefore has demonstrated its right and legitimate interests in the domain name SOUNDCHOICE.NET.
    9. There is no evidence that Respondent acquired the disputed domain name SOUNDCHOICE.NET for the purpose of selling it to Complainant. To the contrary, Respondent has been successfully providing services using the name Sound Choice for many years. Moreover, there is no evidence that Respondent registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, nor has it been shown that Respondent had registered the domain name primarily for the purpose of disrupting the business of a competitor or attracting its customers.
    10. While Complainant registered its domain name SOUNDCHOICE.COM on September 19, 1995 before Respondent registered its domain name SOUNDCHOICE.NET on January 13, 1998, there is no evidence that Respondent registered or acquired the domain name SOUNDCHOICE.NET primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. Moreover, there is no evidence that Respondent registered the domain name SOUNDCHOICE.NET in order to prevent Complainant, the owner of the trademark or service mark, from reflecting the market in the corresponding domain name or primarily for the purpose of disrupting Complainant’s business. Finally, there is no evidence that Respondent intentionally attempted to attract for commercial gain internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant’s mark as the source, sponsorship, affiliation or endorsement of Respondent’s website or location or a product of service on Respondent’s website or location. On the contrary, with the inclusion of a banner referred to above, such clearly was not Respondent's intent.

Complainant requests that the domain name SOUNDCHOICE.NET be transferred to it.

CONCLUSION

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial and neutral, the undersigned makes the following findings and conclusions:

1.The domain name SOUNDCHOICE.NET registered by Respondent on January 13, 1998 is identical or confusingly similar to the domain name SOUNDCHOICE.COM registered by Complainant on September 19, 1995, in which Complainant has rights.

2.The Respondent has substantial rights and legitimate interests in respect to the domain name SOUNDCHOICE.NET.

3.The Respondent has not registered or used the domain name SOUNDCHOICE.NET in bad faith.

DECISION

Based upon the above findings and conclusions and pursuant to the Rules of the Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum Supplemental Rules of ICANN’s Uniform Domain Resolution Policy, I hereby Order that the domain name SOUNDCHOICE.NET registered by Respondent Sound Choice not be transferred to Complainant Slep-Tone Entertainment Corporation d/b/a Sound Choice Accompaniment Tracks.

Herman D. Michels

Arbitrator

Dated: April 10, 2000


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