Complainant is Steve Angello of Beverly Hills, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is Adam Kyron of Concord, Ontario, Canada, represented by Traverse Legal, PLC, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2012. On November 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 21, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 27, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2012. The Response was filed with the Center on December 19, 2012. On December 20, 2012, the Center received a supplemental filing consisting of Complainant’s Reply to the Response. On December 21, 2012, the Center sent a communication informing the parties that, while there was no express provision in the Rules permitting such a reply, Complainant’s supplemental filing would be forwarded to the Panel, once appointed, to determine in its discretion whether to consider or admit the supplemental filing.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on January 4, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is a DJ, music producer and record label owner of note, with extensive touring and performing experience. Complainant’s name is well known among certain music and dance club aficionados, having made much use in his professional career of the first two of his given names, Steve Angello.1
Complainant owns trademark rights in STEVE ANGELLO, as evidenced by Swiss Trademark Registration No. 633727 in Classes 9 and 41, issued August 31, 2012.
The disputed domain name was registered February 2, 2010 and presently does not route to any active webpage.2 It had previously been used as a parking page, displaying commercial advertising and links to third-party websites. 5. Parties’ Contentions A. Complainant
The Complaint makes lengthy allegations and annexes much material to establish that Complainant enjoys common-law trademark rights in the name STEVE ANGELLO. The Complaint alleges that the disputed domain name is identical or confusingly similar to Complainant’s trademark.
Complainant also alleges under the Policy that Respondent has no rights or legitimate interests in use of the disputed domain name, noting that Respondent has no authorization to use the trademark and is not commonly known by the disputed domain name. Instead, Complainant alleges, Respondent registered the disputed domain name to generate click-through revenues by linking to third-party sites offering entertainment in the same field in which Complainant’s name and trademark is used.
Complainant also alleges that Respondent’s choice of a disputed domain name confusingly similar to the trademark, to generate click-through revenues, establishes registration and use in bad faith.
Complainant avers that its attorney sent a cease and desist letter by email to the Registrar and to the privacy email registration address for Respondent on October 1, 2012. 3 In that letter, Complainant's attorney asked that the Registrar (1) disclose the unidentified private registrant's name and contact information, (2) forward the letter to the unidentified private registrant so that the registrant would respond in writing that it would deactivate the disputed domain name to leave it with no website, and (3) transfer the disputed domain name to Complainant. Counsel requested a response by October 15, 2012. On October 16, 2012, Complainant avers that counsel sent another copy of the October 1 letter to the legal department of the Registrar with a cover e-mail asking for the registrant's contact information and for confirmation that the earlier letter had been forwarded to the registrant. On October 19, 2012, Complainant's attorney received an email apparently from the registrant’s proxy email address stating: "This domain was not registered in bad faith in order to resell for a profit. The parked page will be removed. "
Complainant avers that later on October 19, 2012, Complainant's attorney sent an email to the then-unidentified registrant stating "Our client offers you $5000 for this domain name." The Complaint states that on October 22, 2012, Complainant's attorney received an email from the proxy registration email address stating that the disputed domain name was "not for sale." Despite all of this correspondence, Complainant notes, Respondent did not reveal his name or actual contact information.
Complainant contends that the delay in responding and the fact that Respondent did not reveal his identity to Complainant - despite Respondent, another DJ, having “opened” for Complainant at a music show in January 2010 - is further evidence of bad faith.
On the basis of the foregoing, Complainant seeks transfer of the disputed domain name. B. Respondent
Respondent denies that Complainant has sufficient trademark rights in his name under the Policy.
The Response states: “Respondent was aware of Complainant at the time of registration, having seen Complainant perform on several occasions. Respondent was inspired, in part, by Complainant’s skills as a disc jockey. As a result, Respondent asked [a] club-owner-friend to allow him to perform on January 24, 2010, prior to Complainant performing as a disc jockey at a venue in London, Ontario. [citations to record omitted] This experience further impressed Respondent and ultimately contributed to his decision to register the Domain Name for use in connection with a fan page. ”
Respondent challenges Complainant’s common law trademark rights and avers that he registered the disputed domain name with the intention of creating a fan website before Complainant registered the Swiss Trademark. Even if Complainant possesses trademark rights, Respondent alleges that he has a legitimate interest in use of the disputed domain name as a fan website with no commercial intent, citing prior UDRP decisions permitting such unauthorized use of celebrity names and trademarks.
Respondent also contends that he never profited or received revenue from his website, which, without Respondent’s knowledge, temporarily displayed a parking page with sponsored link advertising. Respondent states in his Declaration that since February 2010, he has been engaged in preparations to launch the website and names a few plug-ins and platforms he considered using for the site operation.
Respondent denies bad faith registration and use, and points out that he did not register the disputed domain name to sell it, having refused Complainant’s USD 5,000 offer and other third-party offers to purchase before that time.
With respect to the eighteen-day delay in responding to Complainant’s initial demand letter, Respondent states that “I chose not to respond to the original October 2012 correspondence from Complainant’s attorney because it did not appear to be a credible legal issue.”. 6. Discussion and Findings A. Complainant’s Supplemental Filing
The Panel has considered Complainant’s request to admit its Reply in this proceeding. The Panel denies that request.
Under the UDRP’s summary procedures, each party is entitled as of right to submit only one single pleading. Paragraphs 10 and 12 of the Rules grant the Panel discretion to determine the admissibility of supplemental filings, including further statements or documents.
Complainant’s sole argument for making its supplemental Reply is that it could not have anticipated that Respondent would allege (as he did) that the disputed domain name was registered with the intention to create a “fan” website. With all respect to counsel, the Panel disagrees. Such allegations are often raised by respondents in disputes involving the registration of celebrities and performers as domain names.
Therefore, there has been no indication that there are exceptional circumstances, new developments, arguments or evidence that were not available to Complainant before. See, e. g., The E. W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (discussing considerations to balance in determining whether exceptional circumstances exist sufficient to admit supplemental filings in light of the Policy’s overriding goal of efficiency), cited in Anachusa Ltd. v. Ashantiplc Limited / Ashantiplc Ltd.,WIPO Case No. D2011-0005.
In its discretion and in the interests of due expedition, the Panel feels that the record that already exists without supplemental filings is adequate for purposes of this proceeding.4 B. Substantive Rules
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. C. Identical or Confusingly Similar
While Respondent denies that Complainant has rights in the STEVE ANGELLO trademark, the Panel agrees with Complainant that the disputed domain name is identical to a trademark in which Complainant has rights.
Complainant spills much ink and submits voluminous annexes in its attempt to establish its rights to a common law, unregistered mark. This material shows that Complainant is successful and well known within certain circles, enjoying impressive popularity. For purposes of the first element of the UDRP, however, the existence of Complainant’s Swiss Trademark Registration relieves the Panel of any necessity of determining whether Complainant has unregistered trademark rights. WIPO Overview 2. 0, paragraph 1. 1.
Respondent insists that since the Swiss-registered mark did not issue until 2012, the first element of Complainant’s UDRP case may be established only if Complainant’s unregistered marks can be shown to have existed before Respondent’s registration of the disputed domain name in February 2010. However, the weight of UDRP authority recognizes that a complainant’s trademark rights are usually sufficient even when those rights are not registered or perfected until after registration of a disputed domain name, as long as such rights exist at the time of the filing of the complaint. See, e. g. , WIPO Overview 2. 0, paragraph 1. 4.
The Panel finds, therefore, that Complainant’s Swiss Trademark Registration is a sufficient interest for purposes of the first element of the Policy.
Panels usually disregard the gTLD suffix in determining whether a domain name is identical or similar to a complainant’s marks. See e. g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A. G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat. com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc. ,WIPO Case No. D2006-1315. Removing the gTLD suffix, then, the disputed domain name is identical to Complainant’s STEVE ANGELLO mark.
The Panel concludes, therefore, that the Complaint establishes the first element of paragraph 4(a) of the Policy. D. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the disputed domain name; or
(3) the making of a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant must establish a prima facie case that Respondent lacks rights or legitimate interests. See e.g.,Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S. p. A. v. Marco Cialone,WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if a prima facie case is established and Respondent does not rebut that prima facie case.
Respondent appears to concede the Complaint’s allegations that Respondent has no authorization to use the STEVE ANGELLO mark and that Respondent is not commonly known by the disputed domain name. The Panel therefore so finds.
Some UDRP panels have found a legitimate interest in favor of respondents using a celebrity’s name to create a fan website while others have denied such an interest exists, even when presented with clear proof of a respondent’s unequivocally noncommercial website. e.g., WIPO Overview 2. 0, paragraph 2.5 (citing decisions reaching both conclusions). 5
Turning to the evidence, the Panel has considered Respondent’s Declaration. The Declaration states that, from the time of registration and before any notice to Respondent of the dispute, Respondent was involved in planning to create a noncommercial fan site dedicated to information respecting Complainant. Respondent alleges that Respondent used or demonstrably prepared to use the domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Panel notes that Respondent’s Declaration is devoid of attachments, preparatory designs, annexes or any other form of corroborative statements or material.
The Panel doubts the veracity of this statement in Respondent’s Declaration. For instance, the Panel views it as highly unlikely that, after making nearly three years’ preparation to launch a website, Respondent would not be in the position to show flowcharts, designs, correspondence with platform providers or other material to support the naked statements in the Declaration. Moreover, despite repeated correspondence between the parties prior to the institution of these proceedings, Respondent never suggested that he intended to launch a fan website using the disputed domain name.
The Declaration also states that Respondent did not earn click-through revenue or “profit” from the sponsored links. On the other hand, annexes to the Complaint establish that Respondent’s website did display sponsored link advertising promoting dance music collections and other DJs until the webpage was taken down in late October 2012, apparently in response to the institution of these proceedings. Respondent does not contest the accuracy of those annexes to the Complaint. The Declaration and the Response also omit squarely to address the question of how long the sponsored link advertising appeared on Respondent’s parking page; Respondent alleges only that the parking page was displayed “temporarily,” however screens captured by the Wayback Machine on www. show that a parking page with commercial advertisements was visible at least as early as June 2010, and at various times thereafter.
In light of these inconsistencies, the Panel must conclude that Respondent’s Declaration is self-serving, without any other support or corroboration in the record and in many respects, not credible.
Examining click-through links in an unrelated proceeding, it was stated that “[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to [third-party] site[s]. ” The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082). Many panels have agreed with this approach.
In this case, Respondent has submitted a Declaration denying that he received such benefits. However, even though the Panel has determined that Respondent’s Declaration lacks credibility, the question in this proceeding is not whether Respondent himself profited from the advertising links, but whether indeed the website was non-commercial. If the parking page website was commercial, the website would not qualify under the third subsection in paragraph 4(c) of the Policy.
The Panel finds that the uncontroverted annexes to the Complaint establish that the links displayed under the heading “sponsored listings” were of a commercial nature, whether or not Respondent benefitted from them. The Panel thus finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate non-commercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. The Panel also finds that the record establishes that the disputed domain name is not being used for a bona fide offering of goods and services. 6
The Panel also finds that the Complaint makes out a prima facie case. Respondent has not rebutted Complainants’ prima facie case or credibly proven the existence of any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e. g , L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including passive holding and other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Respondent concedes that he knew of Complainant and his celebrity DJ status. He states that he intentionally registered the disputed domain name to create a fan website.
The Panel infers that Respondent’s registration, made only nine days after Respondent performed as the opening act at Complainant’s January 24, 2010 show, was made with the intention to trade on the value of Complainant’s name and trademark. Since the Panel finds that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark, registration in bad faith is established.
Since the disputed domain name was used to promote third-party music producers and DJs other than Complainant, the disputed domain name is being used for direct competition with Complainant. This is often viewed as evidence of use in bad faith. See, e. g., Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc. v. wwwgoogle. com and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co , Ltd. ) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088). Even accepting Respondent’s self-serving statement that he did not profit from the links, their very existence is an indication of bad faith use under the circumstances. 7
Finally, the Panel finds that Respondent’s delay in responding to counsel’s cease and desist letters and his choice to refrain from revealing his identity in his written responses when finally made is additional evidence of use in bad faith.
The Panel consequently concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Nasser A. Khasawneh
Sole Panelist
Date: January 18, 2013
1 Complainant is apparently also known as a member of the DJ and producer trio “Swedish House Mafia. ” Some of his online posts are signed Steve Josefsson Fragogiannis, and according to Wikipedia, his birth name was Steven Angello Josefsson Fragogiannis.
2 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2. 0”), paragraph 4. 5. The Panel has also viewed archives of the parking page to which the disputed domain name routed from 2010 to the present at www. .
3 All the correspondence described here is included in annexes to the Complaint.
4 Among other things, the Panel notes that to accept a Reply without extending proceedings to permit further comment or filing by a respondent would also be inadvisable in most circumstances.
5 Since the Panel concludes that Respondent’s website contains commercial content, however, the Panel refrains from expressing a view on this apparent split of authority.
6 Offerings were made via the website linking to DJs and producers other than Complainant.
7 E. g. , WIPO Overview 2. 0, paragraph 3. 8: “Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content . . . . It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or ‘commercial gain’ was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. ”
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