Complainant Capitol Records, LLC d/b/a Capitol Music Group (“Complainant”), gained control of the domain name capitolmusicgroup.com in a UDRP that is owned until 2010 when it was “inadvertently deleted.”
The opinion doesn’t discuss how one of the largest music company’s on earth just “inadvertently deleted” the domain name of its company, but the panel seemed to award the domain name not due to the domain holder parking the domain, but for not using the domain name.
Here are the relevant facts and finding by the one member panel:
Complainant’s CAPITOL mark is well-known to consumers and has significant goodwill in the industry. Complainant also owns the capitolrecords.com domain name, which it uses to promote its music and services.
“Complainant began doing business under the corporate name “Capitol Music Group” in 2007 and registered the name as a d/b/a of Complainant in California and New York, and has come to be publicly recognized under the “Capitol Music Group” name. Complainant owned the capitolmusicgroup.com domain name until the middle of 2010, when the domain name was inadvertently deleted and removed from Complainant’s possession”.
“Respondent registered the domain name capitolmusicgroup.com in January of 2010, after it was deleted from Complainant’s portfolio.
“”Respondent does not make an active use of the <capitolmusicgroup.com> domain name and the domain name does not resolve to an active website. ”
“The Panel concludes that Respondent’s failure to actively use the <capitolmusicgroup.com> domain name does not show a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”
“Complainant asserts that Respondent registered and uses the <capitolmusicgroup.com> domain name in bad faith as a result of Respondent’s purposeful selection of a domain name using Complainant’s well-established CAPITOL mark. Complainant contends that the domain name was registered with the intent to confuse Internet users and attract traffic to the website. ”
“The Panel finds that Respondent’s registration of a confusingly similar domain name to attract Internet users to its empty website is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv)”.
Complainant argues that Respondent demonstrates bad faith registration and use of the capitolmusicgroup.comdomain name due to its failure to make an active use of the resolving website.
The Panel concludes that Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii) is shown by the inactive use of the resolving website.
Complainant contends that Respondent registered the capitolmusicgroup.com domain name at a time immediately following the domain name’s deletion from Complainant’s domain name portfolio, which Complainant asserts is additional evidence of bad faith.
The Panel concludes that Respondent demonstrates bad faith registration under Policy ¶ 4(a)(iii) as a result of its registration of the capitolmusicgroup.com domain name after Complainant’s registration lapsed.
Complainant alleges that Respondent had actual, and at the least, constructive knowledge of Complainant’s rights in the CAPITOL mark when Respondent registered the Capitolmusicgroup.com domain name.
Complainant argues that its USPTO trademark registrations, as well as the fame associated with the mark gave Respondent notice of the mark. The Panel concludes that the constructive knowledge given by Complainant’s USPTO registrations does not satisfy Policy ¶ 4(a)(iii) to find bad faith registration.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.