20th Feb 2009
National Arbitration Forum
Propellerhead Holding AB v. Domain Admin c/o Star Access Inc. (SAI) Domains
Claim Number: FA0812001238854
Complainant is Propellerhead Holding AB (“Complainant”), represented by Anatoly Ostrovsky, Latvia.Respondent is Domain Admin c/o Star Access Inc. (SAI) Domains (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <propellerhead.com>, registered with Moniker Online Services, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Paul M. DeCicco, Bruce E. Meyerson and David E. Sorkin as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2008.
On December 30, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <propellerhead.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name.Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 27, 2009 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on January 26, 2009.
On January 30, 2009, Complainant submitted an Additional Submission in compliance with Supplemental Rule 7.On February 4, 2009, Respondent also submitted a timely Additional Submission.
On February 6, 2009, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, Bruce E. Meyerson and David E. Sorkin as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that it is one of the world’s leading makers of software musical instruments, founded in 1994.According to Complainant, it has “pioneered the concept of computer based software synthesis [and] invented the concept of ‘recycling’ sampled sound material.”Complainant holds two relevant trademark registrations:PROPELLERHEAD and Propellerhead Software, registered with the United States Patent and Trademark Office on October 9, 2007 and October 23, 2007, respectively.
Complainant contends that the domain name in dispute is identical to its trademark and there is no indication that Respondent uses the Propellerhead name in its business for any appropriate purpose.Complainant states that Respondent is “hidden” behind a whois datashield provided by a service that conceals the identity of the true owner of the domain name.The domain name in dispute, according to Complainant, displays “sponsored links” from which Respondent presumably receives click-through fees.
Complainant contends that Respondent’s registration and use of the domain name is in bad faith because the domain name is “identical to Complainant’s well-recognized and world famous trademark [which] clearly indicates bad faith intent to profit from attraction of Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademarks and service marks.”
Respondent states that “propeller head” is a common descriptive term and that Respondent did not even have knowledge of Complainant’s trademark or existence when it registered the domain name.When Respondent registered the domain name in May 2004, Complainant had no registered trademark in the United States nor had it applied for one.
Respondent acknowledges that it used a privacy protection to shield its identity in order to protect its privacy and to help reduce the number of unsolicited emails it receives.Respondent states it did not hide its identity to avoid being subject to the UDRP.According to Respondent, Complainant had no trouble contacting Respondent.
Respondent formerly hosted the domain name with HitFarm.com, a domain name parking service, which displays pay-per-click advertising links on hosted domain names. Now the domain name resolves to a generic search engine page which contains no links or advertisements of any kind.
Respondent asserts that it did not register the domain name in bad faith because it had no evidence of Complainant’s mark when it registered the domain name.
C. Additional Submissions
In its Additional Submission, contrary to Respondent’s assertion, Complainant states that the term “propellerhead” is not a common term.Complainant suggests that Respondent’s motive in acquiring the domain name from its previous owner indicates the intent of Respondent to “profit off the Complainant’s trademark and good will.” Complainant points out that it previously offered to purchase the domain name from Respondent for $15,000.
Respondent acknowledges that at one time, after Respondent acquired the domain name, links to competing software appeared on the web site.According to Respondent, these “links were automatically displayed on the software of the Hitfarm domain parking service” and were not placed intentionally by Respondent.Prior to the initiation of this dispute, Respondent’s web page did not point to a “sponsored results” page but to a generic search engine page.
Respondent registered the domain name in May 2004.Complainant did not acquire a registered trademark for PROPELLERHEAD until 2007 although Complainant may have had common law rights at the time the domain name was registered.Because Complainant’s mark contains common terms, Respondent may register a domain name containing those terms absent evidence that Respondent was intending to profit from and exploit Complainant’s mark.No such evidence has been produced in this case.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Because the Panel concludes that Complainant has not established that the domain name has been registered and used in bad faith, the Panel finds it unnecessary to consider the remaining two elements of Paragraph 4(a) of the Policy.Dreamgirls, Inc. v. Dreamgirls Entm’t, D2006-0609 (WIPO Aug. 10, 2006).
Registration and Use in Bad Faith
The Panel assumes for the purposes of this Decision that Complainant had “rights” in the PROPELLERHEAD mark prior to Respondent’s acquisition of the domain name.
Although Complainant appears to have adopted PROPELLERHEAD as an arbitrary or at most suggestive mark, it is a common word or phrase that is equally capable of use in a descriptive sense. To establish bad faith, therefore, Complainant must show that Respondent registered the domain name in order to capitalize on Complainant's trademark interest, rather than because of its descriptive meaning.UltrafemInc. v. Royal, No. 97682 (NAF Aug. 2, 2001) (because “instead” is a generic and common word, to prove bad faith complainant must show that the respondent registered <instead.com> to derive benefit exclusively from the fame of complainant’s trademark).In the absence of establishing Respondent’s intent to capitalize on Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common, descriptive term.
Although Complainant has demonstrated rights in its PROPELLERHEAD mark in relation to its software musical instruments, the mark consists of common terms which are subject to use by numerous third parties, thus demonstrating that the terms are not exclusively associated with complainant’s business.Furthermore, Respondent has demonstrated that its business practice has been to register common words and descriptive terms as domain names, thus illustrating that Respondent’s intent in registering the domain name was not to target Complainant’s mark.Moreover, the president of Respondent has stated he was completely unaware of Complainant’s business when he acquired the domain name and Complainant has offered no evidence to contradict this assertion.
Accordingly, Respondent’s registration of the domain name was not in bad faith.
Reverse Domain Name Hijacking
The Panel does not find that Complainant has attempted to engage in reverse domain name hijacking.
Having failed to establish the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ordered that the Complaint is dismissed.
Paul M. DeCicco, Bruce E. Meyerson and David E. Sorkin, Panelists
Dated: February 20, 2009
National Arbitration Forum