ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution Policy

1. Parties and Contested Domain Name

The Complainant is Two Systems Enterprises Co., Ltd., a corporation with an office in Richmond, British Columbia, Canada.

The Respondent is Sonie’s Creations, with an office in Toronto, Ontario, Canada.

The disputed domain name is musiclegs.com. The Registrar for the domain name is Tucows Inc.

This proceeding is pursuant to ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”) and ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). The Tucows.com Domain Name Registration Agreement regarding the musiclegs.com domain name subjects the Respondent to Tucows.com’s Dispute Policy, which is currently the Policy.

2. Procedural history

Based upon information provided by eResolution’s Clerk’s Office, the procedural history regarding this matter is as follows:

The electronic version of the Complainant’s complaint form was filed on-line through eResolution’s Web site on 26 June 2001. The hardcopy of the complaint form and annexes were received on 3 July 2001. Payment was received by the Clerk’s Office on 30 June 2001.

 Upon receiving all the required information, eResolution’s Clerk’s Office proceeded to:  (i) confirm the identity of the Registrar for the contested domain name; (ii) verify the Registrar’s Whois Database and confirm all the required contact information for the Respondent; (iii) determine if the contested domain name resolved to an active Web page; and (iv) determine if the complaint was administratively compliant.

The inquiry led eResolution’s Clerk’s Office to the following conclusions: (i) the Registrar is Tucows Inc.; (ii) the Whois database contained all the required contact information; (iii) the contested domain name resolves to an active Web page; and (iv) the complaint is administratively compliant.

On 3 July 2001, eResolution’s Clerk’s Office sent an email to the Registrar to obtain confirmation and a copy of the Registration Agreement. The requested information was received on 3 July 2001.

 eResolution’s Clerk’s Office then proceeded to send a copy of the complaint form and the required cover sheet to the Respondent, in accordance with paragraph 2(a) of the Rules. All the emails were delivered, but all the faxes failed. The complaint, official notification and all the annexes were sent via registered mail with proof of service to the Respondent. According to the Canada Post tracking system, the documents were delivered to the Respondent.

eResolution’s Clerk’s Office fulfilled all its responsibilities under paragraph 2(a) of the Rules in connection with forwarding the complaint to the Respondent, and notifying the Complainant, the Registrar, and ICANN on 4 July 2001. That date is the commencement date of this administrative proceeding.

 The electronic version of the Respondent’s response was filed on-line through eResolution’s Web site on 24 July 2001. The hardcopy of the response was received by eResolution’s Clerk’s Office on 24 July 2001.

On 25 July 2001, eResolution’s Clerk’s Office contacted Mr. Bradley J. Freedman and requested that he act as Panelist in this proceeding.

On 26 July 2001, Bradley J. Freedman agreed to act as Panelist in this proceeding, and filed the necessary Declaration of Independence and Impartiality.

On 26 July 2001, eResolution’s Clerk’s Office forwarded a username and password to Bradley J. Freedman, allowing him to access the complaint form, the response form, and the evidence submitted by the parties through eResolution’s Automated Docket Management System.

 On 26 July 2001, the parties were notified that Bradley J. Freedman had been appointed as Panelist in this proceeding, and that a decision was to be, save exceptional circumstances, handed down on 15 August 2001.

On 27 July 2001, the Panel issued a Direction and Order requesting the parties provide further submissions and evidence regarding certain matters.

The Complainant provided its further submissions and evidence on or before 6 August 2001.

On 13 August 2001, the Respondent advised that it was unable to respond to the Complainant’s submissions and evidence because it had not received them “within the time frame stipulated”.

On 13 August 2001, the Panel issued another Direction and Order requesting that the eResolution Case Administrator promptly deliver another copy of the Complainant’s further submissions and evidence to the Respondent by both email and facsimile transmission, and requiring the Respondent to deliver any reply submissions and evidence it considered appropriate by 20 August 2001.

On 20 August 2001, the Respondent delivered an unsigned email “Declaration” that “no further information or inquiry was received by the Respondent’s Prime Contact or Representative” by either email, facsimile transmission or postal mail since 12 August 2001.

On 22 August 2001, the eResolution Case Administrator again sent a copy of the Complainant’s further submissions and evidence by facsimile to the Respondent, and left a voice mail message requesting an acknowledgement of receipt. On 22 August 2001, the Respondent delivered an email to the eResolution Case Administrator advising that the Respondent’s Prime Contact or Representative had not received the Complainant’s further submissions and evidence, and requesting the Panel issue its decision based upon the initial complaint and reply submissions.

On 22 August 2001, the Panel issued a third Direction and Order stating that the Panel intended to base its decision regarding this matter on the parties’ initial complaint and response, the Complainant’s further submissions and evidence provided in response to the Panel’s 27 July 2001 Direction and Order, and any submissions and evidence the Respondent may provide in reply to the Complainant’s further submissions and evidence, and providing the Respondent with a further and final opportunity to respond to the Complainant’s further submissions and evidence.

On 29 August 2001, the Respondent delivered its submissions in reply to the Complainant’s further submissions and evidence.

In order to accommodate the Panel’s Directions and Orders, the Panel ordered that the date for the issuance of its decision in this matter be changed to 7 September 2001.

3. Factual Backgrounds

The Panel proceeds on the basis of the following facts, which are established by the evidence and submissions of the parties and by the Panel’s review of the Respondent’s Web site:

The Complainant is the registered owner of the Canadian registered trademark MUSIC LEGS, which is registered for use in association with hosiery. The trademark application was filed on 11 June 1991, and the trademark was registered on 27 January 1995.

The Complainant has used its MUSIC LEGS trademark since as early as April 1980.  The Complainant now uses its MUSIC LEGS trademark on the packaging of approximately 1000 styles of hosiery and stockings. Those products are sold by the Complainant in Canada and by a related company in the United States. The Complainant says that its trademark is also used in other countries around the world, including Mexico, Japan, France, Switzerland, Germany, Hong Kong, Australia, New Zealand, Israel, and the United Kingdom. The Complainant did not provide any evidence in support of that assertion, but it has not been disputed by the Respondent.

The Respondent registered the musiclegs.com domain name on 9 June 2000.

The Respondent uses the musiclegs.com domain name for a Web site entitled: “Sonie’s Creations®” which is operated from Toronto, Canada and advertises the following diverse services: “Sonie’s Creations Fashion Design House”, “Sonie’s Creations System Builders” (which provides custom-built computer systems), “Sonie’s Creations Solution Providers” (including Web site creation and web site hosting services), and “Sonie’s Creations Paralegal/Court Agent Services” (including incorporation and business registration services). The Web site also advertises and contains an on-line catalog and purchasing system for the following kinds of wares: “SC Lingerie Collection”; “Dance Wear Collection”; Lady’s Lingerie Collection”; “Ladies Accessories”; “Swim Wear Line”; and “Men’s Line”.  The Respondent also uses the soniescreations.com domain name for its Web site.

The Respondent does not carry on business under the name “Music Legs”, and does not use the MUSIC LEGS trademark in connection with any wares or services. All of the wares and services advertised and offered through the Respondent’s Web site use the “Sonie’s Creations” brand. None use the “music legs” brand.

4. Parties' Contentions

.The Complainant contends as follows:

The Complainant is the owner of the MUSIC LEGS trademark registered in Canada, and the musiclegs.com domain name is identical and confusingly similar to the Complainant’s mark.

The Respondent has no rights or legitimate interests in respect of the musiclegs.com domain name because the Respondent has never been issued any rights in the domain name by the Complainant and is not authorized by the Complainant to use its MUSIC LEGS trademark.

The Respondent registered and used the musiclegs.com domain name in bad faith in order to confuse and divert Internet traffic to its Web site for commercial gain. Customers attempting to use the musiclegs.com domain name to find MUSIC LEGS brand merchandise on the Web will be confused when they access a Web site that is not owned or authorized by the Complainant, and which advertises products and services that are not controlled by the Complainant. Also, the Complainant says that it intends to use the MUSIC LEGS trademark on the Internet and as a “location on the World Wide Web” to extend its wholesale and retail services.

The Respondent contends as follows:

The Complainant’s MUSIC LEGS trademark does not give the Complainant rights in the musiclegs.com domain name. The MUSIC LEGS brand is not universally well known. The musiclegs.com domain name is not the same as the Complainant’s corporate name.

The Respondent is not obliged to obtain the Complainant’s permission to use the musiclegs.com domain name because the Complainant has neither rights nor authority to grant such permission. The Complainant’s Canadian registered MUSIC LEGS trademark does not give it rights in any country other than Canada, and only gives rights in Canada to the use of the MUSIC LEGS trademark in association with hosiery.

The musiclegs.com domain name does not confuse Internet users into thinking that the Respondent’s Web site is affiliated with or sponsored by the Complainant.  The Respondent’s Web site is not misleading because it does not claim to have any connection with the Complainant, and clearly indicates that the Respondent is a company that offers various kinds of wares and services.

The Respondent has rights to the musiclegs.com domain name because it legally registered the domain name in June 2000 and has been using it since then for its commercial Web site.

The Complainant is the owner of the musiclegs.net domain name, which it can use for its Web site, and the complaint is “a blatant attempt at reverse domain name hijacking as well as harassment”.

5. Discussions and Findings

The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as “cybersquatting” or “cyberpiracy”.  The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants.  The narrow scope of the Policy reflects its origins as a novel form of Internet dispute resolution designed to balance a wide range of perspectives regarding the regulation of Internet conduct.  See Quarterview v. Quarterview Co. Ltd., Case No. AF-0209(a-b) (July 6, 2000); Libro AG v. NA Global Link Limited, Case No. D 2000-0186 (May 16, 2000); Toronto Star Newspapers Limited v. Virtual Dates Inc., Case No. D2000-1612 (February 6, 2001); Educational Testing Service v. TOEFL, Case No. D2000-0044 (March 16, 2000); FLOS Spa. v. Victory Interactive Media S.A., Case No. D2000-0771 (December 15, 2000); Re. Infolink v. Nathan Frey, Case No. D2000-1687 (March 26, 2001); Tribeca Film Center Inc. v. Lorenzo Brusasco-Mackenzie, Case No. D2000-1772 (April 10, 2001); Deutsche Welle v. DiamondWare Limited, Case No. D2000-1202 (January 2, 2001); Nintendo of America Inc. v. Alex Jones, Case No. D2000-0998 (November 17, 2000); Wal-Mart Stores Inc. v. wallmartcanadasucks.com, Case No. D2000-1104 (November 23, 2000); Jules I. Kendall v. Mayer, Case No. D2000-0868 (October 26, 2000); and the ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, October 24, 1999, www.icann.org/udrp/udrp-second-staff-report-24oct99.htm, at paragraph 4.1(c).

The limited scope of the Policy is reflected in its provisions.  Policy paragraph 4(a) provides that the Policy applies only where a complainant asserts that: (i) the registered domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.

The burden is on the Complainant to prove each of the three requirements of Policy paragraph 4(a). See Edward Van Halen v. Morgan, Case No. D2000-1313 (December 20, 2000). It is not sufficient for the Complainant to make assertions without providing proof. See Radio Globo SA v. Diogo Pimentel, Case No. D2000-1705 (January 31, 2001).

Rules paragraph 15(a) provides that the Panel shall decide the complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.  The Final Report of the WIPO Internet Domain Name Process (available on-line at www.icann.org) indicates that if the parties are resident in one country, the domain was registered through a registrar in that country, and the evidence of bad faith registration and use arises from activities in that country, it is appropriate to refer to that country’s trademark laws.  A number of panels have taken that approach.  See Sporting Goods Manufacturers Association v. InterAD Group Inc., Case No. D2000-0202 (May 22, 2000); Robert Ellerbogen v. Mike Pearson, Case No. D2000-0001 (January 10, 2000); Exario Network Inc. v. The Domain Name You Have Entered is for Sale, Case No. AF-0536 (December 11, 2000); Packaging World Inc. v. Zynpak Packaging Products Inc., Case No. AF-0233 (July 28, 2000); The Chicago Tribune Company v. Varkey, Case No. D2000-0133 (May 9, 2000); Nintendo of America Inc. v. Holland, Case No. D2000-1483 (January 11, 2001).  In this proceeding, the Complainant, the Respondent and the Registrar are all based in Canada.  Accordingly, the Panel will look to the rules and principles of Canadian law to the extent that it would assist the Panel in determining whether the Complainant has met the burden imposed by Policy paragraph 4(a).

(i)   The Complainant’s Trademark Rights

The Complainant is the owner of the MUSIC LEGS trademark registered in Canada, and uses that mark in association with hosiery in Canada, and through a related company in the United States.  The Complainant’s assertions in this regard are supported by documentary evidence, and are not disputed by the Respondent.  The Respondent argues, however, that the Complainant’s registered Canadian MUSIC LEGS trademark only gives the Complainant rights regarding the use of the mark in association with hosiery, and does not give it rights outside of Canada.

The Policy does not require that a complainant’s trademark rights exist in all countries or extend to all possible wares or services. The limited jurisdictional nature of a complainant’s trademark rights and the scope of the wares and services with which a complainant’s mark is registered or used are considerations that may be relevant to the other two requirements of the Policy – the respondent’s rights and legitimate interests in the domain name and the respondent’s bad faith – but they are not relevant to the first element of the Policy.

Accordingly, the Panel finds that the Complainant has rights in the MUSIC LEGS trademark.

The Policy also requires that the musiclegs.com domain name be “identical or confusingly similar” to the Complainant’s MUSIC LEGS trademark.  The Complainant asserts that the challenged domain name is identical to its trademark.  The Respondent does not disagree.

When comparing a challenged domain name and a trademark, the addition of the .com suffix is irrelevant for the purpose of determining whether the domain name is identical or confusingly similar to the trademark.  Rather, one looks to the second-level domain for such a determination, since the .com suffix is merely descriptive of the registry services and is not an identifier of a source of goods or services.  See Experience Hendrix L.L.C. v. Denny Hammerton and The Jimi Hendrix Fan Club, Case No. D2000-0364 (August 15, 2000); VAT holding AG v. Vat.com, Case No. D2000-0607 (August 22, 2000); Northwest Airlines Inc. v. Kim Jong Sub, Case No. FA01010000096377 (February 19, 2001); Rollerblade Inc. v. Chris McGrady, Case No. D2000-0429 (June 25, 2000); Nintendo of America Inc. v. Alex Jones, Case No. D2000-0998 (November 17, 2000); AltaVista Co. v. Stonybrook Investments, Case No. D2000-0886 (October 26, 2000); Wal-Mart Stores Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477 (July 20, 2000).

The omission of spaces between the components of a trademark when used in a domain name does not mean that the domain name and the mark cease to be identical.  The omission of spaces is simply a function of the technological limitations of domain names, and should be disregarded when determining whether the domain name is identical or confusingly similar to a mark.  See The Pep Boys Manny, Moe and Jack of California v. E-Commerce Today, Ltd., Case No. AF‑0145 (May 3, 2000); V Secret Catalogue, Inc. v. Artco, Inc., Case No. FA0094342 (May 9, 2000); V Secret Catalogue, Inc. v. victoriassecret.org, Case No. FA0094349 (May 14, 2000); Hunton & Williams v. American Distribution Systems Inc., Case No. D2000-0501 (August 1, 2000); Micron Electronics Inc. v. Frank Holden, Case No. FA0103000096797 (April 4, 2001); Blue Cross and Blue Shield Association and Trigon Insurance Company Inc. d/b/a Blue Cross Blue Shield v. InterActive Communications Inc., Case No. D2000-0788 (August 28, 2000).

For these reasons, the Panel finds that the musiclegs.com domain name is identical to the Complainant’s MUSIC LEGS trademark.

Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.

(ii)   The Respondent’s Rights and Legitimate Interests

Policy paragraph 4(a)(ii) requires the Complainant to prove a negative proposition – that the Respondent has no rights or legitimate interests in the musiclegs.com domain name – which can be particularly difficult.  The burden on the Complainant regarding this element is necessarily light, because the nature of the Respondent’s rights or interests, if any, in the domain name lies most directly within the Respondent’s knowledge.  See Radio Globo S.A. v. Diogo Pimentel, Case No. D2000-1705 (January 31, 2001); Packaging World Inc. v. Zynpak Packaging Products Inc., Case No. AF-0233 (July 28, 2000); Educational Testing Service v. TOEFL, Case No. D2000-0044 (March 16, 2000); Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, Case No. D2000-0158 (May 9, 2000); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, Case No. D2000-1415 (January 23, 2001).

Paragraph 4(c) provides that the Panel shall find that the Respondent has legitimate rights or interests in the musiclegs.com domain name if, on the evidence:

(i)   before any notice to the Respondent of the dispute, the Respondent used, or made demonstrable preparations to use, the musiclegs.com domain name or a name corresponding to the musiclegs.com domain name in connection with a bona fide offering of goods or services; or

(ii)  the Respondent has been commonly known by the musiclegs.com domain name, even if it has acquired no trademark or service mark rights; or

(iii)  the Respondent is making a legitimate noncommercial or fair use of the musiclegs.com domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark or service mark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the musiclegs.com domain name because the Respondent has never been issued any rights in the domain name by the Complainant and is not authorized by the Complainant to use its MUSIC LEGS trademark.

The Respondent responds by asserting that it is not obliged to obtain the Complainant’s permission to use the musiclegs.com domain name because the Complainant has neither rights nor authority to grant such permission.  The Respondent also contends that it has used the musiclegs.com domain name since June 2000 for a commercial Web site, and the musiclegs.com domain name does not misleadingly divert consumers to the Respondent’s Web site.

Policy paragraph 4(c)(ii) is not applicable.  The Respondent does not contend that it has been commonly known by the musiclegs.com domain name, that it has used the MUSIC LEGS trademark, or that the musiclegs.com domain name is derived from one of its trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable.  The Respondent uses the musiclegs.com domain name for a commercial Web site. 

The Respondent appears to rely upon Policy paragraph 4(c)(i).  The Respondent is using the musiclegs.com domain name for a commercial Web site that appears to offer legitimate goods and services.  However, in order to satisfy the requirements of that provision, the Respondent’s use of the domain name must be in connection with a “bona fide” offering of goods or services.

The offering of goods or services in association with an infringing trademark use does not constitute a “bona fide” offering of goods and services within the meaning of Policy paragraph 4(c)(i).  See Packaging World Inc. v. Zynpak Packaging Products Inc., Case No. AF-0233 (July 28, 2000); Slep-Tone Entertainment Corporation v. Sound Choice Disc Jockeys Inc., Case No. FA20002000093636 (March 13, 2000); Quixtar Investments Inc. v. Dennis Hoffman, Case No. D2000-0253 (April 20, 2000); Motorola Inc. v. Newgate Internet Inc., Case No. D2000-0079 (April 14, 2000); America Online Inc. v. John Deep Buddy U.S.A. Inc., Case No. FA01030000096795 (May 14, 2001).

The Complainant is the registered owner of the Canadian MUSIC LEGS trademark for use in association with hosiery, and under Canadian law is thereby granted various rights regarding the use of that mark in association with hosiery in Canada.  Those rights include the exclusive right to the use of the MUSIC LEGS trademark in Canada in association with hosiery, and the right to prevent other persons from using a confusingly similar trademark.  See Trade-marks Act, R.S.C. 1985, c. T-13, ss. 19 and 20.

The Respondent is located in Canada and is using the musiclegs.com domain name for a Web site that advertises and sells hosiery to Canadians.  In addition, the use of the musiclegs.com domain name is likely to confuse Internet users regarding the source of the Web site or to mislead them into believing that the Web site is sponsored by, affiliated with or endorsed by the Complainant.  Accordingly, the Respondent’s use of the musiclegs.com domain name infringes the Complainant’s statutory trademark rights.  See Pro-C Ltd. v. Computer City Inc. [2000] O.J. No. 2823 (Sup.Ct.) and British Columbia Automobile Association v. Office and Professional Employees’ International Union, Local 378, 2001 BCSC 156 and the cases mentioned therein. 

In addition, for the reasons set forth below, the Panel finds that the Respondent’s registration and use of the musiclegs.com domain name is in bad faith within the meaning of the Policy paragraph 4(a)(iii).  The use of a domain name in bad faith is not a “bona fide” offering of goods and services within the meaning of Policy paragraph 4(c)(i), and is not sufficient to demonstrate any rights or interests in the domain name in the sense contemplated by Policy paragraph 4(a)(ii).  See National Football League Properties Inc. v. One Sex Entertainment Co., Case No. D2000-0118; The Hamlet Group Inc. v. Lansford, Case No. D2000-0073; Packaging World Inc. v. Zynpak Packaging Products Inc., Case No. AF-0233 (July 28, 2000); AltaVista Co. v. Stonybrook Investments, Case No. D2000-0886 (October 26, 2000).

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the musiclegs.com domain name.

(iii)   Bad Faith Registration and Use

Policy paragraph 4(a)(iii) requires the Complainant to assert and prove that the Respondent registered and has used the musiclegs.com domain name in bad faith. 

“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term.  See Wal-Mart Stores Inc. v. wallmartcanadasucks.com, Case No. D2000-1104 (November 23, 2000).

Policy paragraph 4(b) provides that the following circumstances are deemed to be evidence that a respondent has registered and used a domain name in bad faith:

(i)   circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii)   the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)   the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)   by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its Web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its Web site or location or of a product or service on its Web site or location.

Policy paragraph 4(b)(i) is not in issue.  There is no evidence that the Respondent registered the musiclegs.com domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.  There is no evidence that the Respondent ever offered to sell the musiclegs.com domain name to the Complainant or any other person.

Policy paragraph 4(b)(ii) is not in issue.  There is no evidence that the Respondent has engaged in a pattern of registering domain names in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name.

The Complainant appears to rely upon Policy paragraphs 4(b)(iii) and 4(b)(iv).  Policy paragraph 4(b)(iii) requires the Complainant to establish that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor.  Policy paragraph 4(b)(iv) requires the Complainant to establish that the Respondent registered and is using the musiclegs.com domain name in order to confuse and divert Internet traffic to its Web site for commercial gain.

The term “competitor” is not defined in the Policy or the Rules.  However, other panels have given a literal interpretation to the Policy provision, and held that parties are competitors if they sell competing goods or services.  See Tribeca Film Center Inc. v. Lorenzo Brusasco-Mackenzie, Case No. D2000-1772 (April 10, 2001); Compusa Management Co. v. Customized Computer Training, Case No.  FA0006000095082 (August 27, 2000).  The Complainant and the Respondent both sell hosiery in Canada.  The Complainant says that it intends to use the MUSIC LEGS trademark on the Internet and as a “location on the World Wide Web” to extend its wholesale and retail services.  Accordingly, the Panel concludes that the Complainant and the Respondent are competitors within the meaning of the Policy.

There is no direct evidence that the Respondent knew of the Complainant or its MUSIC LEGS trademark, or intended to use the musiclegs.com domain name in bad faith.  Nevertheless, the Respondent’s intention may be determined by common sense inferences from circumstantial evidence.  See Tourism and Corporate Automation Ltd. v. TSI Ltd., Case No. AF-0096 (March 16, 2000); Educational Testing Service v. Netkorea Co., Case No. D2000-0087;  Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-003 (February 18, 2000); Bloomberg L.P. v. David Cohen, Case No. FA01020000096600 (February 19, 2001).

The Panel infers that the Respondent knew of the Complainant’s trademark from the following circumstances:  (a) the Respondent is a Canadian-based business; (b) the Complainant’s trademark is registered in Canada; (c) the Respondent’s Web site indicates that it provides paralegal and court agency services (including incorporation and business registration services), and is therefore presumably familiar with Canadian trademark search practices; (d) the Complainant sells its MUSIC LEGS brand hosiery in Canada and elsewhere; (e) the Respondent is in the hosiery business in Canada and sells through the Web site hosiery that competes with the Complainant’s MUSIC LEGS brand hosiery; (f) the Respondent has not denied any knowledge of the Complainant or its trademark; and (g) the Respondent has not provided any explanation or rationale for its use of the musiclegs.com domain name for its Web site.

A domain name is more than a mere Internet address.  It often identifies the Internet site to those who reach it, and sends a message that the Web site is owned by, sponsored by, affiliated with, or endorsed by the person with the name, or owning the trademark, reflected in the domain name.  See DaimlerChrysler Corporation v. Bargman Case No. D2000-0022 (May 29, 2000); Cardservice International Inc. v. Webster R. McGee, 950 F.Supp. 737 (E.D. Va. 1997); aff’d 129 F.3d 1258 (4th Cir. 1997).  See also Green Products Co. v. Independence Corn By-Products Co., 992 F.Supp. 1070 (N.D. Iowa 1995); Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999); British Telecommunications plc v. One In A Million Ltd., [1997] E.W.J. No. 1599 (H.C.), aff’d, [1998] 4 All E.R. 476 (C.A.); TCPIP Holding Company Inc. v. Haar Communications Inc. 244 F. 3d 88 (2nd Cir. 2001); Ford Motor Company v. Ford Financial Solutions Inc. 103 F. Supp. 2d 1126 (N.D. Iowa 2000); PACCAR Inc. v. Telescan Technologies L.L.C., 2000 U.S. Dist. LEXIS 12857 (E.D.Mich. 2000).

The Respondent’s Web site does not expressly claim to have any connection with the Complainant.  Nevertheless, in the circumstances, and particularly in the absence of any legitimate explanation by the Respondent regarding its registration and use of the musiclegs.com domain name, the Panel finds that the Respondent’s registration and use of the musiclegs.com domain name is likely to cause confusion with the Complainant’s MUSIC LEGS trademark and is calculated to mislead Internet users to infer that the Respondent’s Web site and the hosiery products available through that Web site are either owned by the owner of the MUSIC LEGS trademark (the Complainant), or are sponsored by, affiliated with, or endorsed by the Complainant. 

Further, there is a material risk that Internet users attempting to use the musiclegs.com domain name to find the Complainant’s Web site or hosiery products and accessing the Respondent’s Web site in error will continue to knowingly deal with the Respondent and purchase its hosiery products after any confusion has resolved.  This deliberate bait and switch diversion of consumers’ initial interest is a misappropriation of the Complainant’s goodwill associated with its MUSIC LEGS trademark.  See Green Products Co. v. Independence Corn By-Products Co., 992 F.Supp. 1070 (N.D. Iowa 1995); Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999); Interstellar Starship Services Limited v. Epix Incorporated 184 F.3d 1107 (9th Cir. 1999), cert. denied 120 S.Ct. 1161 (2000), and 2001 U.S. Dist. LEXIS 100 (D.Ore. 2001); Northland Insurance Companies v. Blaylock, 115 F. Supp. 2d 1108 (D.Minn. 2000); British Telecommunications plc v. One In A Million Ltd., [1997] E.W.J. No. 1599 (H.C.), aff’d, [1998] 4 All E.R. 476 (C.A.).  In the circumstances, and particularly in the absence of any legitimate explanation by the Respondent regarding its registration and use of the musiclegs.com domain name, the Panel finds that the Respondent registered and is using the musiclegs.com domain name primarily for the purpose of disrupting the Complainant’s business.

The Complainant’s registration of the musiclegs.net domain name, and its ability to use that domain name for a Web site, is not an answer to the complaint, and does not excuse the Respondent’s bad faith registration and use of the musiclegs.com domain name.

For these reasons, the Panel finds that the Respondent registered the musiclegs.com domain name in bad faith, primarily for the purpose of disrupting the business of its competitor, the Complainant, and to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s Web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s Web site or the hosiery products available through its Web site.

6. Conclusion

The Complainant has established each of the three requirements set forth in Policy paragraph 4(a) – the Complainant has legitimate rights in its MUSIC LEGS trademark, the Respondent does not have any rights or legitimate interests in the musiclegs.com domain name, and the Respondent registered and has used the musiclegs.com domain name in bad faith.

The Panel therefore directs that the registration of the musiclegs.com domain name be transferred from the Respondent to the Complainant.

7. Signature