1310
Sound Choice
= v =
Wayne Usher
Nominet UK Dispute Resolution Service
DRS 01310
Decision of Independent Expert
Dated this 9th day of December 2003
1. Parties:
Complainant: Sound Choice
Country: USA
Respondent: Wayne Usher
Country: Great Britain
2. Disputed Domain Name
soundchoice.co.uk
This domain name is referred to below as the "Domain Name".
3. Procedural Background
The Complaint was lodged with Nominet on 8 October 2003. Nominet validated the Complaint and notified the Respondent on 10 October 2003 and informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Nominet informed the Complainant that mediation was not possible in these circumstances. On 19 November 2003 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy ("the Policy").
Sallie Spilsbury, the undersigned ("the Expert") has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.
4. Formal/procedural issues
Under Paragraph 5a of the Dispute Resolution Service ("the Procedure") the Respondent was required to submit a Response to the Complaint to Nominet by 3 November 2003. The Respondent has failed to do so.
Paragraph 15b of the Procedure provides as follows:
If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.
Are there exceptional circumstances which would suggest that it is not appropriate to proceed to a Decision?
It is the view of the Expert that there are no exceptional circumstances. The Respondent has made no attempt to explain its lack of response and there is no evidence to suggest that anything exceptional has occurred.
The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties' submissions (which consist of the Complaint and its Annexes) and the Policy and Procedure. In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent's non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure).
5. The facts
The Complainant
The Complainant is a United States business incorporated in 1985 trading under the name Sound Choice. It creates and markets musical accompaniment tracks, commonly known as "karaoke". It sells its branded items on CD, DVD, Video Cassette, and Cassette formats through distributors around the world. The Complainant states that it has created, to the best of its knowledge, the largest catalogue of karaoke music in the world, with nearly 3,000 products and over 14,000 songs in its collection and that it is widely considered to be the industry leader in the manufacture of karaoke accompaniment music. There is no independent evidence in relation to this statement. The Complainant operates its own website at www.soundchoice.com (this information is recorded on a number of copy invoices which are annexed to the Complaint).
In 1995 the Complainant established a business presence in the U.K. and began shipping its branded Sound Choice products to its distributor, Arbiter Group plc, in London immediately thereafter. The Complainant has annexed a number of copy invoices to its Complaint recording its dealings in the UK with its distributor in 1999. In 2001 the Complainant began expanding its presence into the E.U. through multiple other business relationships.
The Complainant asserts that it is the proprietor of Community Trade Mark number 000115287 (" the CTM") registered on 1 September 1999 for the name "Sound Choice" in classes 9, 16 and 41 of the CTM register for amongst other items, pre-recorded musical compositions and pre- recorded video related to musical compositions.
The registration certificate for the CTM is annexed to the Complaint. It records the proprietor of the CTM as Slep Tone Entertainment Corporation, a North Carolina corporation. The Complaint itself does not refer to Slep Tone (the Complainant identifies itself by the trading name Sound Choice in the Complaint). In order to try to clarify the situation the Expert visited the Complainant's website at soundchoice.com. The website contains a section headed "History" which relates how Derek and Kurt Slep had "incorporated" Sound Choice in 1985. The Expert is accordingly prepared to find on the basis of the evidence before her that the CTM is owned by the Complainant or, if not owned by the Complainant, is used by the Complainant with the proprietor's consent. In reaching this decision she relies on the following matters:
(a) The Complainant operates a website at soundchoice.com
(b) The website at soundchoice.com refers to the Slep brothers having incorporated the Sound Choice business and
(c) The CTM is owned by Slep Tone Entertainment Corp.
The Respondent
The Expert has very little information about the Respondent.
The Complainant states that it wanted to develop a website for the name Sound Choice for the UK, but found that the Domain Name was already registered by the Respondent. The Expert has visited the Respondent's website at www.soundchoice.co.uk. The site is headed "Soundchoice" and appear to sell compact discs, DVD, CD singles, audio visual equipment such as DVD players and video games as well as apparently operating a message board and an online dating service. The Expert noted that amongst the categories of music available were categories headed "karaoke". On clicking a karaoke heading the Expert was directed to the website of Amazon.co.uk.
The Domain Name
The Respondent registered the Domain Name through its ISP on 11 September 1999.
6. The Parties' contentions
Complainant
The Complainant states that a visit to the Respondent's website www.soundchoice.co.uk could easily give the impression to a visitor that they are at the Complainant's own Sound Choice karaoke website and that this is likely to confuse visitors into believing that the Domain Name is registered to, operated by, or authorised by the Complainant. It bases its assertions on the following grounds:
1. The Respondent's website header is titled "SoundChoice".
2. The word karaoke appears on the Respondent's homepage (the Complainant asserts that it appears three times. When the Expert visited the Respondent's site she saw two references to karaoke).
3. The word karaoke appears seven times in the HTML source code. The Complainant states that the source code is not visible to a visitor, but a high incidence of this keyword will improve the chances of a good ranking by a search engine.
4. The name "Sound Choice" appears sixty-nine times in the HTML source code. The Complainant states that the source code is not visible to a visitor, but a high incidence of this keyword will improve the chances of a good ranking by a search engine.
5. The Complainant's name, "Sound Choice" is continuously displayed in the lower left corner of the Internet Explorer and Netscape Navigator browsers.
6. If a visitor clicks most links at the very top of the Respondent's home page when the next page is displayed there is a small picture of an American flag that is shown at the top of the page. Right clicking on most any page displays a message that says "Copyright (c) Sound Choice". The website itself does not have a shopping cart but appears to have referral relationships with a number of other companies. Using the website's product search feature and searching on the keyword "karaoke" from this website search will refer the visitor to the UK Amazon website and return over 1,400 possible results.
The Complainant also asserts that the Respondent's use of the Domain Name is an Abusive Registration, based on the following grounds:
1. The Domain Name is identical to the Complainant's CTM
2. The Complainant has conducted business under the name Sound Choice in the U.K. continuously since 1995.
3. The Respondent's website promotes and sells through a referral program karaoke music and other musical products substantially similar to the Complainant's products and that are in the same channel of trade.
4. As the Complainant's business and name recognition in the UK grows it is highly probable that customers would try and guess at the UK Sound Choice URL by typing into their browser "soundchoice.co.uk:" They would end up at the Respondent's site and become confused about the ownership of the website, believing it was registered to, operated by, or authorised by the Complainant.
5. Doing a web search in Google, a widely used Internet Search Engine, on the terms "Sound Choice UK karaoke" brings up the Respondent's URL in the second position - an extremely favourable ranking. Visitors who click through to this site would become confused about the ownership of the website.
The Complainant requests that the Domain Name be transferred to it.
Respondent
The Respondent has made no submissions.
On visiting the Respondent's website at www.soundchoice.co.uk, the Expert noted that a disclaimer appears at the bottom of the homepage stating that "soundchoice.co.uk is not connected with the American.com site". The disclaimer is in a relatively small typeface and is coloured grey whereas most of the remainder of the homepage is more colourful and eye catching. The Expert noted that on her computer screen the grey colour was very difficult to make out and could be easily missed on the computer screen (she only spotted the text when she had printed off a copy of the Respondent's homepage). She also had to scroll down the screen to reach the text which was at the very bottom of the page.
The disclaimer is not referred to in the Complaint and may well have been inserted after its submission.
7. Discussion and findings
Clause 2 of the Policy provides that a Complainant must prove that:
(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
(ii ) The Domain Name, in the hands of the Respondent, is an Abusive Registration.
The onus of proving both of the above elements is borne by the Complainant who must prove them on the balance of probabilities (Clause 2b of the Policy).
The term "Rights" is defined by the Policy to include, but not be limited to, rights enforceable under English law but the term does not extend to a name or term which is wholly descriptive of the Complainant's business.
Abusive Registration is defined in Clause 1 of the Policy to mean;
A Domain Name which either:
(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's rights; OR
(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
The Complainant relies on the second of these grounds relating to use of the Domain Name.
The first criterion under clause 2 of the Policy- the Complainant's Rights
The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name
For the reasons set out above the Complainant has successfully asserted that it owns rights in the Sound Choice mark by virtue of the CTM registered to Slep Tone Entertainment Corporation for amongst other items pre- recorded musical compositions and pre-recorded video related to musical compositions. The Respondent is making use of the words Sound Choice in relation to these categories of product. Although the Domain Name condenses the Sound Choice mark into a single word, this difference is of no relevance. The Domain Name is identical to the mark in which the Complainant has successfully asserted its rights.
The first criterion under the Policy has accordingly been met.
The second criterion under clause 2 of the Policy- Abusive Registration
The Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name has been used in a manner which took unfair advantage of or was wholly detrimental to the Complainant's Rights. The Complainant relies on the following ground set out in Clause 3:
There are circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with The Complainant.
The Expert is asked to infer confusion on the part of the relevant public arising from the Respondent's use of the Domain Name. The Expert has no evidence before her relating to actual instances of confusion, but that is not surprising. It is perfectly possible that confusion may have occurred, and custom may have been diverted, without the Complainant's knowledge.
The Expert has no information from the Respondent concerning its duration and manner of use of the Domain Name.
On the basis of the information which the Complainant has submitted the Expert finds that on the balance of probabilities there are circumstances indicating that the Domain Name is being used in a way which has caused confusion.
In reaching this decision the Expert relies on the following:
* The overall impression of the Respondent's site. This illustrates a coherent use of the Soundchoice brand by the Respondent which is likely to lead to confusion with the Complainant. The banner headline use of the "Soundchoice" mark is a distinctive feature of the Respondent's homepage. The home page of the Respondent's site contains other references to the Soundchoice mark e.g. urging users to "add Soundchoice to your favourites". When the Expert visited the Respondent's site the name "Soundchoice UK" was displayed in the lower left hand corner of the Expert's Internet Explorer browser. The Complainant's identification of the copyright notice featuring the Soundchoice name on the homepage is another instance of the Respondent's use of the mark (although the notice is in the same type as the disclaimer referred to above and is not easy to decipher on screen).
* The reference on the Respondent's website to the specific category of karaoke music with which the Complainant is associated (in conjunction with the Soundchoice mark).
The appearance of the disclaimer on the Respondent's site does not lessen the risk of confusion in any meaningful way for the reasons set out above in section 6 of this decision. The disclaimer is difficult to decipher and would be easily missed by users of the website.
The Expert is not placing any weight on the Complainant's assertions regarding the HTML source code for the Respondent's site which the Complainant asserts would not be visible to a visitor to the site. These assertions have not been supported by evidence from the Complainant and it is in any event a moot point whether such non-visible use would amount to Abusive Use for the purposes of the Policy. The fact that a web search in Google brought up the Respondent's site taken in isolation is not sufficient to constitute abusive use on the part of the Respondent. The Expert could not verify the Complainant's submission that clicking on a link on the homepage caused the American flag to appear. This may be a further change to the Respondent's site since the Complaint was filed but this is not clear.
8. Decision
The Expert finds that the Complainant has proved on the balance of probabilities that the two elements in paragraph 2 of the Policy are present, namely that there are Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.
Accordingly the Expert finds in favour of the Complainant and directs that the Domain Name is transferred to the Complainant.
Sallie Spilsbury
9 December 2003