DECISION

CHUM Limited v. Modern Web Development

Claim Number:  FA0401000230262

PARTIES

Complainant is CHUM Limited (“Complainant”), represented by Linda M. Byrne, of Merchant & Gould P.C., 3200 IDS Center, 80 South Eighth Street, Minneapolis, MN, 55402-2215.  Respondent is Modern Web Development (“Respondent”), P.O. Box 908, George Town, Grand Cayman.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <muchmusicusa.com>, registered with 123 Easy Domain Names d/b/a Signature Domains.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 21, 2004; the Forum received a hard copy of the Complaint on January 23, 2004.

On January 23, 2004, 123 Easy Domain Names d/b/a Signature Domains confirmed by e-mail to the Forum that the domain name <muchmusicusa.com> is registered with 123 Easy Domain Names d/b/a Signature Domains and that Respondent is the current registrant of the name. 123 Easy Domain Names d/b/a Signature Domains has verified that Respondent is bound by the 123 Easy Domain Names d/b/a Signature Domains registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 16, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@muchmusicusa.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 23, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <muchmusicusa.com> domain name is confusingly similar to Complainant’s MUCHMUSIC mark.

2. Respondent does not have any rights or legitimate interests in the <muchmusicusa.com> domain name.

3. Respondent registered and used the <muchmusicusa.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, CHUM Limited, operates a division named “MuchMusic,” which in turn operates a Canadian network that broadcasts concerts, specials, news, interactive television, wireless communications and web content around the world. In connection with the services offered by MuchMusic, Complainant has obtained numerous trademark registrations for marks incorporating the name MuchMusic, such as the MUCHMUSIC mark (U.S. Reg. No. 1,905,977, registered on the Principal Register of the U.S. Patent and Trademark Office on July 18, 1995). Complainant also operates a website reflecting its mark at the <muchmusic.com> domain name.

Respondent, Modern Web Development, registered the <muchmusicusa.com> domain name on April 17, 2002, without license or permission to use the MUCHMUSIC mark for any purpose. Respondent uses the domain name to host a webpage that is titled “Muchmusicusa.com.” The remainder of the content at the disputed domain name includes a generic search engine and a banner advertisement.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the MUCHMUSIC mark through use of the mark in commerce and through registration of the mark in the United States. See Microsoft Corp. v. J. Holiday Co., D2000-1493 (WIPO Feb. 20, 2000) (“Registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.”).

Respondent’s <muchmusicusa.com> domain name is confusingly similar to Complainant’s MUCHMUSIC mark. Respondent has entirely incorporated Complainant’s registered MUCHMUSIC mark into its domain name, and its addition of the geographic qualifier “usa” (which describes one of Complainant’s markets and one of the jurisdictions where it has registered its mark) does not mask the confusing similarity that arises from Respondent’s use of Complainant’s mark. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also JVC Ams. Corp. v. Macafee, CPR006 (CPR Nov. 10, 2000) (finding that the domain name registered by Respondent, <jvc-america.com>, is substantially similar to, and nearly identical to Complainant's JVC mark).

Accordingly, the Panel finds that the <muchmusicusa.com> domain name is confusingly similar to Complainant’s MUCHMUSIC mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is using the disputed domain name, which incorporates Complainant’s MUCHMUSIC mark both within the domain name itself and on its webpage, to host a generic search engine webpage and a banner advertisement. By using Complainant’s mark without authorization for these purposes, Respondent fails to qualify for the protections of Policy ¶¶ 4(c)(i) and (iii). See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain name to divert Internet users to a website that featured pop-up advertisements and an Internet directory was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name).

As Respondent only appears to be known as “Modern Web Development,” and has not come forward with any evidence establishing that it is commonly known by the name “MuchMusicUSA.com,” the Panel finds that Policy ¶ 4(c)(ii) does not apply in this dispute. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <muchmusicusa.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain name as a vehicle for generating advertising revenue, and is using Complainant’s MUCHMUSIC mark without authorization to further these purposes. Registering a domain name that fully incorporates Complainant’s mark and placing that mark in the title of its commercial website created a likelihood that Internet users will be confused as to whether Complainant sponsors or endorses Respondent’s website. Respondent’s use of this likelihood of confusion for commercial gain is evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (“[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.”); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

The Panel thus finds that Respondent registered and used the <muchmusicusa.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <muchmusicusa.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  March 8, 2004

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