The Complainant is Nirvana LLC of Los Angeles, California, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is Darren Willcox of Armadale, Victoria, Australia / Perfect Privacy, LLC of Jacksonville, Florida, United States. 2. The Domain Names and Registrars
The disputed domain names and are registered with NetRegistryPty Ltd. The disputed domain name is registered with R. NetRegistryPty Ltd and R are together referred to as the “Registrars”. The disputed domain names are together referred to as the "Domain Names". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2014. On September 17, 2014, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On September 17, 2014, the Registrar, R, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of and providing the contact details. On September 19, 2014, the Registrar, NetRegistryPty Ltd, transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of and and providing the contact details.
The Center verified that 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 October 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2014. The Center received communications from the Respondent on September 29, 2014, October 2, 2014, October 13, 2014 and October 22, 2014. The Respondent confirmed in his email to the Center of October 22, 2014 that the Response submitted on October 13, 2014 was his complete Response.
The Center appointed Ian Lowe as the sole panelist in this matter on October 27, 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 the successor to and owner of the rights in the name and trademark NIRVANA, as used in connection with the world-famous rock band of that name and their recordings, as well as clothing and other associated merchandise. Nirvana was formed and first began performing in 1987 in Washington, United States. It released its first album in 1989 and became one of the bestselling bands of all time, with over 70 million records sold worldwide. Nirvana’s final studio album before the death of its lead singer was In Utero, which featured artwork on its cover comprising a winged woman. Nirvana was inducted into the Rock and Roll Hall of Fame in 2014 and the band has been ranked among the 100 greatest artists of all time by Rolling Stone magazine.
The Complainant is the proprietor of numerous trademark registrations in respect of the NIRVANA mark around the world including United States trademark number 1836895 registered on May 17, 1994 and Australia trademark number 988597 registered on February 11, 2004.
The Domain Name was registered on August 25, 2011, the Domain Name on September 15, 2012 and the Domain Name on March 2, 2013. At the date of the Complaint, resolved to a website whose homepage was headed “The Story so far…” featuring an eagle motif comprising an eagle holding a pair of drumsticks in its claws. The text describes how the Respondent, Darren Wilcox, began drumming as a child, has played the drums ever since and, since he sustained leg injuries during army training in 2008, has used drumming as a means of medical rehabilitation. It suggests that “Nirvana Drums blends the healing power of Drums with the over 2,000 year old Ancient Sanskrit Concept of Nirvana”. A link on the home page to “Merchandise” is to a web page offering T-shirts for sale featuring the eagle motif.
At the date of the Complaint, the Domain Name resolved to a basic website whose homepage indicated that the Respondent had undertaken a project of creating independent film and original music. The Domain Name did not resolve to any website.
The Complainant learned of the registration of the Domain Names when it objected to the application by the Respondent to register two Australian trademarks comprising NIRVANA DRUMS and the Respondent’s Eagle device. In response to a cease and desist letter the Respondent initially agreed to cease all use of Nirvana Drums on his websites and on various connected social media accounts on Facebook, ReverbNation and YouTube. He pointed out that the Sanskrit name Nirvana was an ancient Buddhist concept and said that he felt that the beneficial effect of drumming on his injuries would represent a personal Nirvana. The Respondent wished, however, to retain ownership of the Domain Names until they expired or until he reached some financial settlement with the Complainant for their transfer.
The Respondent later demanded payment of USD 1.5 million for the Domain Names and for two “.au” domain names also comprising “nirvanadrums”. When no financial agreement was reached, the Respondent resiled from his agreement to cease all use of Nirvana Drums. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to its NIRVANA DRUMS trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent registered and is using the Domain Names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Complainant points out that according to copies of the homepage of the website at “www.” in the Internet archive as at May 9, 2013, the Respondent’s “The Story so far…” then simply related the Respondent’s history of drumming and his injuries during army training and ended:
“After all that I had been through, it was suggested that the time to share my music had arrived…Nirvana Drums was created! The intention is simple: explore drums, refine techniques, share information, and encourage musical and rhythmic expression.”
When the Complainant first sent its cease and desist letter, it says that the Respondent’s website was only being used to promote his own “Nirvana drums” clothing and music products which were goods and services covered by the Complainant’s own trademark registrations for the NIRVANA trademark. It was only after the correspondence with the Respondent, his offering to cease all use of the “Nirvana Drums” mark and then reinstating his websites that he changed “The Story so far…” to include the explanation that Nirvana Drums was intended to reflect the blending of the healing power of drums with the ancient concept of Nirvana.
The Claimant maintains that the Respondent was on actual, if not constructive, notice of the Complainant’s rights in the Nirvana trademark at the time he registered the Domain Names and that he has failed to establish his rights or legitimate interests in respect of the Domain Names. Furthermore, since the Respondent’s use of the Nirvana Drums name infringed the Complainant’s NIRVANA trademark the Respondent could not have made any bona fide offering of goods or services at his websites or claim any legitimate interest in any of the Domain Names.
The Complainant submits that there is no basis for the Respondent to have chosen the Nirvana Drums business name and corresponding domain names unless the Respondent was seeking to create an association with the Complainant. Each of the Domain Names is confusingly similar to the Complainant’s NIRVANA mark. The Complainant alleges that given the fame of the Complainant’s NIRVANA trademark consumers are likely to believe that the Domain Names are related to or associated with the Complainant. Thus, the only reason for the Respondent’s use of the Complainant’s trademark is to intentionally confuse consumers, to trade on the Complainant’s rights and reputation and to drive traffic to its websites for its own commercial benefit.
The Complainant suggests that the eagle motif selected by the Respondent is a deliberate allusion to the winged woman featured on the In Utero album whose wings are similar to those of an eagle.
The Complainant does not consider that the attempts by the Respondent to explain why he adopted the Nirvana Drums name are sufficient or establish any sort of innocent adoption of the Nirvana name. It points out that the Respondent adopted his explanation for selecting the Domain Names only after notice of the Complainant’s objections to them and submits that this is no more than a feeble attempt to rewrite history and create a legitimate basis for his ownership of the Domain Names where none previously existed.
The Complainant also states that because the ultimate effect of any use of the Domain Names will be to cause confusion with the Complainant and its Nirvana trademark, the use and registration of the Domain Names must be considered to be in bad faith. In the Complainant’s view, there can be no dispute that the NIRVANA mark is immediately recognizable and famous, and exclusively identifies the Complainant. Accordingly, the Respondent’s adoption and use of the NIRVANA trademark shows both the Respondent’s familiarity with the mark and the Respondent’s recognition of the fame of the mark.
Finally, the Complainant submits that the conduct of the Respondent in demanding the exorbitant amount of USD 1.5 million to sell the Domain Names to the Complainant constitutes registration and/or use in bad faith in accordance with paragraph 4(a)(iii) of the Policy. The Complainant submits that the Respondent was well aware of the Complainant, given the notoriety of the Nirvana band, when registering the Domain Names, and that the primary purpose of registering the Domain Names was to sell them to the Complainant at a significant profit. B. Respondent
The Respondent argues that the Complainant does not own any rights in the name Nirvana because it is a “universal concept” or “universal construct”. He maintains that the name Nirvana Drums is based on the experience of his disability from army service and is wholly based on the 2,500-year-old ancient Sanskrit spiritual concept of Nirvana, namely an ending to the cycle of rebirth. He says that it is a metaphor for his wishing to leave his continuous pain and that his drums have been included in his rehabilitation and treatment as an avenue of rewiring the brain and to assist in the growth of peripheral nerves in his legs.
The Respondent maintains that his rights and legitimate interests in the Domain Names are evidenced by his registration of the business name “Nirvana Drums” with the Australian Securities & Investments Commission on April 2, 2013 and the fact of his registration of the Domain Names.
The Respondent explains that his changes to his website and the adjustments to his “emergent story” are due to the trauma he suffered. He states that creating T-shirts and apparel is part of his business.
The Respondent also submits that the eagle device used on his webpage and comprised in his trademark applications came about after he suffered “a significant Global Aphasic event in 2014” after which the eagle came to him in a dream. He maintains that a reasonable person would immediately, and without question, see a very clearly identifiable difference between the eagle comprised in his eagle device and the winged woman featured on the cover of the In Utero album. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant owns numerous trademark registrations in respect of the mark NIRVANA. The Panel is also satisfied that as a result of the undoubted success of the rock band Nirvana and their substantial sales of the band’s albums over a number of years, the Complainant is also the owner of very substantial goodwill in the name Nirvana. The Respondent argues that because Nirvana also refers to an ancient Sanskrit concept this in some way negates any trademark rights that the Complainant might otherwise have. The Panel notes, however, that there is no question of the Complainant arguing for a complete monopoly over the name Nirvana or exclusive right to use the name. That is not necessary for the purposes of the Policy. It is sufficient for the Complainant to have established, as the Panel finds it has, that it has rights in a relevant trademark.
Ignoring the “.com” and “.net” suffixes, each of the Domain Names comprises the entirety of the Nirvana trademark together only with the generic words “drums” and “drums film”. The addition of these terms does not detract from the distinctiveness of the NIRVANA mark. Accordingly, the Panel is satisfied that the Complainant has rights in a trademark which is confusingly similar to the Domain Names. B. Rights or Legitimate Interests
The Panel considers that the Complainant has made out a strong prima facie case that the Respondent can have no rights or legitimate interests in respect of the Domain Name. The Panel notes that the Respondent has nowhere denied that the band Nirvana was famous or, indeed, denied that he was well aware of the band and its notoriety at the time he registered the Domain Names. In light of the very strong interest in drumming that the Respondent espouses and his involvement in music and drumming over many years, the Panel considers, on balance, that the Respondent must have been aware of the band Nirvana and of the very strong reputation that must have accrued in respect of the name Nirvana at the time of registration and was most likely to have had the band in mind when he registered the Domain Name. The lineup of the Nirvana rock band undoubtedly included a drummer and the adoption of domain names comprising “Nirvana” and “drums” points all the more to an awareness of the band on the part of the Respondent.
The Panel further notes that early examples of the homepage of the Respondent’s website describing “The Story so far…” did not offer any explanation of the derivation of the “Nirvana Drums” name. It was only after the Complainant had sent a cease and desist letter that the Respondent appears to have changed that explanation to attempt to justify using “Nirvana” by reference to its ancient Buddhist associations.
In the Panel’s view, the offering for sale of music themed T-shirts from the Respondent’s website cannot give rise to relevant rights or legitimate interests. Furthermore, the Panel does not consider that the registration of “Nirvana Drums” as a business name by the Respondent assists his case. It simply calls into question whether the Respondent was entitled to register the name as a business name in the same way that this Complaint addresses his right to register the Domain Names. The Respondent has not displaced the Complainant’s prima facie case. In the circumstances, the Panel finds, on balance, that the Respondent does not have any rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith
On the basis of similar reasoning, the Panel considers that the Respondent registered the Domain Names in bad faith. There is no suggestion that the Respondent was not fully aware of the notoriety of the rock band Nirvana at the time he registered the Domain Names. His subsequent use of the Domain Names for a business comprising the sale of merchandise such as T-shirts, and his promotion of his music making activities, also points to bad faith use within the meaning of the Policy. In the Panel’s view, the undoubted notoriety of the Nirvana name was bound to mislead Internet users as to the source, sponsorship, affiliation or endorsement of the Domain Names and the obvious inference is that the purpose was to attract Internet users to the Respondent’s website for commercial gain. The Respondent emphasized in his communications with the Complainant and in his Response that “Nirvana Drums” was the name of his business.
The Respondent’s initial reaction to the cease and desist letter from the Complainant, offering to cease all use of the Domain Names and his subsequent offer to sell the Domain Names to the Complainant for USD 1.5 million also points to bad faith on the Respondent’s part. The Panel notes that the offer was made by the Respondent in the course of what could be argued to be “without prejudice” correspondence. However, as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) notes at paragraph 3.6, the consensus view amongst panelists is that evidence of offers to sell domain names is generally admissible under the UDRP, and is often used to show bad faith.
The Panel also takes into account the unexplained registration by the Respondent of a number of domain names incorporating the NIRVANA mark. In addition, as numerous UDRP panels have found previously, the passive use of a domain name, such as in this case does not prevent a finding of bad faith use.
Accordingly, the Panel finds that the Respondent registered and is using the Domain Names in bad faith. 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 Names , and be transferred to the Complainant.
Ian Lowe
Sole Panelist
Date: November 10, 2014
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