Mr. Glenn Treibitz, owner of Sweet 16 Musical Properties and the historic Hollywood Piano stores in California, has been involved with the sale and rental of over 50,000 pianos of all modern and many historical piano brands. He also created his own piano brands, one of which is called Schiedmayer.
Mr. Treibitz registered the domain name Schiedmayer.com in 2002 and began piano sales in 2007, after filing to register the SCHIEDMAYER trademark for pianos in August of 2002. Schiedmayer is the name of a German Instrument-manufacturing family, established in 1735 according to Wikipedia.
Germany company Schiedmayer Celesta GmbH filed a UDRP to get the domain, after suing him in 2015 in an attempt to cancel the trademark registration. In the UDRP, the panelist stated:
Complainant is basing its trademark rights on its USPTO registration, claiming a priority date of October 17, 2014, and Respondent registered and used the domain at issue since August 24, 2002. Respondent’s rights to the domain predate Complainant’s claimed trademark priority date. Since Respondent’s registration of the <schiedmayer.com> domain name predates Complainant’s first claimed rights in the SCHIEDMAYER mark, Complainant cannot prove registration in bad faith […]
As the scope of the UDRP process is not to resolve trademark issues, the Complainant’s demands to transfer the domain Schiedmayer.com were denied.
The domain transfer was denied.
DECISION – Schiedmayer Celesta GmbH v. Glenn Treibitz / Hollywood Piano Company
Claim Number: FA2208002010146
PARTIES
Complainant is Schiedmayer Celesta GmbH (“Complainant”), represented by Robert S. Broder of Collard & Roe, P.C., New York, USA. Respondent is Glenn Treibitz / Hollywood Piano Company (“Respondent”), represented by Adam R. Stephenson, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David P. Miranda, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on August 29, 2022; Forum received payment on August 29, 2022.
On August 30, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 31, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@schiedmayer.com. Also on August 31, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 20, 2022.
On October 3, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed David P. Miranda, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends it is a world renown provider of piano/celestas. Complainant has rights in the SCHIEDMAYER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,726.968 registered May 24, 2022), with a claimed priority date of October 17, 2014 based upon an international registration dated April 2, 2015. See Compl. Annex E. Respondent’s domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the SCHIEDMAYER mark in its entirety and adds the “.com” generic top-level domain (“gTLD”)
Complainant contends Respondent has no legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the SCHIEDMAYER mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves a page previously offering competing goods and now negative information about Complainant’s legal proceedings with Respondent.
Respondent registered and uses the domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SCHIEDMAYER mark.
B. Respondent
Respondent argues that Complainant has no trademark rights in the SCHIEDMAYER mark.
Respondent argues that it does have legitimate interests in the domain name. Respondent argues it is commonly known by the disputed domain name. Respondent does use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use, as the disputed domain name is used to complain about the actions of Complainant.
Respondent did not register and use the domain name in bad faith. Respondent uses the disputed domain name to complain about the actions of Complainant in good faith. Finally, the Doctrine of Laches should apply.
The Panel may note that the domain name was registered on August 24, 2002. See WhoIs Information.
FINDINGS
Complainant has failed to establish all necessary elements required under the ICANN policy and as such, its Complaint is denied.
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.”
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 asserts rights in the SCHIEDMAYER mark based upon the registration with the USPTO (e.g., Reg. No. 6,726.968 registered May 24, 2022). See Compl. Annex E. Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the SCHIEDMAYER mark with the USPTO, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues Respondent’s domain name is identical or confusingly similar to Complainant’s SCHIEDMAYER mark as it contains the SCHIEDMAYER mark in its entirety and merely adds the “.com” gTLD. The addition of a generic or descriptive phrase and gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the SCHIEDMAYER mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain name lists the registrant as “Glenn Treibitz / Hollywood Piano Company,” and there is no other evidence to suggest that Respondent was authorized to use the SCHIEDMAYER mark. Therefore, Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent contends that it has rights and legitimate interests in the disputed domain name because it uses the site to complain about Complainant’s actions. Where a respondent uses a disputed domain name as a complaint site, the Panel may find that the respondent has rights and legitimate interests in the domain name per Policy ¶ 4(a)(ii). See Capgemini North America, Inc. v Randel Tomina, FA 1658191 (Forum Apr. 11, 2016) (“UDRP panels have repeatedly stated that a U.S.-based website engaged in noncommercial criticism of a U.S.-based trademark owner’s activities enjoys First Amendment protection, even if the domain name incorporates the complainant’s trademark.”). Here, Respondent provides screenshots of the disputed domain names resolving page. See Respon. Annex I. A determination of whether Respondent has raised an issue regarding rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii) is not necessary in light of Complainant’s failure to establish Respondent registered and used the domain in bad faith.
Registration and Use in Bad Faith
Complainant argues that Respondent registered and uses the domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Use of a disputed domain name to offer competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); See also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant’s authority . . . is bad faith use of a confusingly similar domain name.”); See also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). Here, Complainant provides screenshots of the disputed domain name’s previous iterations offering competing goods. See Compl. Annex K.
However, Complainant is basing its trademark rights on its USPTO registration, claiming a priority date of October 17, 2014, and Respondent registered and used the domain at issue since August 24, 2002. Respondent’s rights to the domain predate Complainant’s claimed trademark priority date. Since Respondent’s registration of the domain name predates Complainant’s first claimed rights in the SCHIEDMAYER mark, Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
It should be noted that UDRP proceedings have very narrow and specific rules that are different from the analysis in an action for trademark infringement. This decision makes no determination regarding the viability of a trademark infringement action by the Complainant and does not prevent Complainant from bringing a trademark infringement action seeking further relief, including recovery of the domain name.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.
___________________________________________________________
David P. Miranda, Esq., Panelist
Dated: October 14, 2022
