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Fender Guitars Playing Sad Song After Losing Dispute

     

In the recent case of Fender Musical Instruments Corporation v. Christopher Ruth (Nat. Arb. Forum FA1333857 August 9, 2010), a single member Panel was faced with a dispute over the domain www.fendercustomshop.com. Complainant Fender Musical Instruments Corporation, is the well known seller of musical instruments, amplifiers, and accessories.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FENDER mark (e.g., Reg. No. 805,075 registered on March 8, 1966). Fender maintains a website at www.fender.com. Respondent registered the disputed domain in 2003 and failed to respond to this complaint.

Paragraph 4(a) of the ICANN UDRP 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.

The Panel quickly dispensed with the first prong, noting that “Based on precedent and Complainant’s trademark registrations, the Panel finds Complainant has sufficiently proved its rights in the FENDER mark pursuant to Policy ¶ 4(a)(I).” The Panel found that Respondent merely added the descriptive phrase “custom shop “ at the end of the domain, which was not enough to distinguish it from the FENDER mark.

Moving to the second prong, the Panel explained that Fender must make a prima facie case that Respondent lacked any rights or legitimate interests in the domain. The Panel found as follows:

Here, Complainant claims Respondent made no use of, or any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.  However, Complainant fails to allege any facts related to Respondent’s use or provide any screen shots of Respondent’s resolving website.  The Panel finds Complainant’s assertions, without any supporting evidence or analysis, do not sufficiently establish Respondent lacks rights or legitimate interests in the <fendercustomshop.com> domain name.  Therefore, the Panel finds Complainant has failed to make a prima facie case showing Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).

For these reasons, the Panel found that Fender failed to prove up its case, and the Panel declined to review the final element. Ultimately, the Panel DENIED Fender’s request for transfer of the domain.

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