The Complainant is GFR, Ltd. of Traverse City, Michigan, United States of America (“USA”), represented by Bishop & Heintz, P.C., USA.
The Respondent is Domain Administrator / Fundacion Private Whois of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2014. On July 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 4, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed two amendments to the Complaint on July 7 and 9, 2014.
The Center verified that the Complaint together with the amendments to the 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 the Respondent of the Complaint, and the proceedings commenced on July 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2014.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 13, 2014. 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
The Complainant is a Michigan corporation having its registered office in Traverse City, Michigan, USA. While the Complaint is sparse when it comes to the detail of the Complainant’s business, it appears to be the corporate entity holding the rights to the music and performances of the Grand Funk Railroad Band.
The Complainant is the registered proprietor of various United States trade mark registrations comprising or including the name “Grand Funk”, the earliest of which is No. 1409871 filed July 5, 1985 and registered September 16, 1986 GRAND FUNK (typed drawing) in class 41 for “Entertainment services in the form of performances by a vocal and instrumental group” with a first use claim dating back to January 1, 1970.
The Domain Name was first registered on September 28, 1999 and on May 19, 2014 was connected to a parking page featuring five sponsored listings ranging from “Windows XP Driver Updates” to “Detroit Party Band” and eight so-called “related links”, all of which were music related, two of them relating specifically to the Complainant’s Grand Funk Railroad band.
It appears from Annex 3 to the Complaint that on April 15, 2014 the Domain Name featured on a Network Solutions website as a “Premium Resale Domain” at a listed price of USD 50,000. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s GRAND FUNK trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
In support of its bad faith claim the Complainant points to the fact that the Domain Name is up for sale for USD 50,000 and that the Respondent is making commercial gain on the back of the Complainant’s trade mark by connecting the Domain Name to a pay-per-click parking page. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent 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. B. Identical or Confusingly Similar
The Domain Name comprises (a) the Complainant’s GRAND FUNK trade mark (albeit without the space) and (b) the generic Top-Level Domain suffix “.com”, which for the purposes of assessing identity and confusing similarity under paragraph 4(a) of the Policy may be ignored.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s GRAND FUNK trade mark. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out examples of what, if established to the satisfaction of the Panel, shall constitute rights or legitimate interests in respect of the Domain Name, namely (i) the Respondent is making (or preparing to make) use of the Domain Name in relation to a bona fide offering of goods and services or (ii) the Domain Name is a name by which the Respondent has been commonly known or (iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name without any intent to mislead consumers or tarnish the Complainant’s trade mark.
The first point to note is that the Complainant’s trade mark, GRAND FUNK, is an unusual word combination and not one, which a third party is likely to select at random.
On the evidence before the Panel, it is clear that the Domain Name, a domain name which is identical or confusingly similar to the Complainant’s trade mark, is being used for commercial advertising purposes. Its use bears no relation to the word “funk”, “grand” or otherwise. It is not being used with the permission of the trade mark owner and is being used for the benefit of a variety of advertisers the majority of them seemingly having no connection with the Complainant. Whether or not there might be some indirect benefit to the Complainant via any of the related links (see section 4 above) is not known. Either way, it is difficult to see how the advertising services in question could be said to be bona fide when provided under and by reference to a domain name identical or confusingly similar to the Complainant’s trade mark.
Were it the case that the Respondent has been commonly known by the name “Grand Funk” (with or without the space), then of course there might well be a basis for arguing that the Respondent’s use of the Domain Name is bona fide, but that is not this case. There is nothing before the Panel to suggest that the Respondent has been commonly known by that name.
Indeed, there is nothing before the Panel to indicate that the Respondent’s use of the Domain Name could be said to be “a legitimate noncommercial or fair use”.
While it is for the Complainant to prove all three elements of paragraph 4(a) of the Policy, it is now well-established that for the purposes of paragraph 4(a)(ii) of the Policy, a provision which requires the Complainant to prove a negative, it is sufficient for the Complainant to establish a prima facie case. It is then for the Respondent to answer that case.
The Panel finds that the Complainant has established a prima facie case calling for an answer from the Respondent and that in the absence of any answer from the Respondent the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant contends first that the Domain Name was registered by the Respondent with a view to selling it to the Complainant at a profit (paragraph 4(b)(i) of the Policy). In support of that contention the Complainant points to the fact that on a Network Solutions website featuring premium domain names for resale the Domain Name appears in that list at a price of USD 50,000.
The Panel has no information on the extent to which the Respondent was responsible for the Domain Name’s appearance in that list. The Panel is aware that some resellers of domain names create these lists without reference to the domain name registrants and then seek to broker deals when potential purchasers make themselves known. Moreover, if that was the Respondent’s primary purpose in registering the Domain Name back in 1999, it seems strange that it should not have made some attempt at making a sale in the intervening 15 years.
However, it is plain that the Respondent is making commercial use of the Domain Name and it seems clear on the evidence before the Panel (including the nature of the related links on the parking page to which the Domain Name is connected – see section 4 above) that the Respondent and its advertising clientele is well aware of the significance of the Complainant’s trade mark. In the same way that the algorithm used to select the advertising links for the Respondent’s webpage recognizes the Complainant’s trade mark, the Panel believes it to be highly probable that Internet users will visit the Respondent’s website believing it to be a website of or authorized by the Complainant. In other words, a not insignificant number of Internet users visiting the Respondent’s website are likely to have been attracted to it by the use of the Complainant’s trade mark in the Domain Name. On arriving at the website they will be exposed to commercial links from which the Respondent is likely to be deriving commercial gain whether directly or indirectly.
It is noteworthy that the Complainant has apparently taken no action in relation to the Domain Name until now, some 15 years after it was registered. However, as stated at paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”): “Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.”
The Panel is satisfied that in this case there is nothing in the evidence to suggest that the delay detracts in any way from the merits of the case put forward by the Complainant. In 1999 when the Domain Name was registered, the Complainant’s trade mark had been on the United States Principal Register for over 10 years, and as indicated in C above it is an unusual name and, in the Panel’s view, not one likely to have been selected at random. In other words, the Panel is satisfied that the Respondent had the Complainant’s trade mark in mind when registering the Domain Name.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of 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 Domain Name be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: August 22, 2014
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