Complainants are Cameron Thomaz p/k/a Wiz Khalifa and Wiz Khalifa Trademark, LLC (collectively, "Complainant") of New York, New York, United States of America ("United States"), represented by Pryor Cashman, LLP, United States.
Respondents are Anthony Lynch, Anthony ceo (collectively, "Respondent") of Lewes Delaware, United States. 2. The Domain Name and Registrar
The disputed domain names , , , , , , and are registered with Moniker Online Services, LLC (the "first Registrar"). The disputed domain name is registered with GoD, LLC (the "second Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2015. On February 3, 2015, the Center transmitted by email to the first Registrar a request for registrar verification in connection with the disputed domain names , , , , , , and . On February 4, 2015, the first Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On February 6, 2015, the Center transmitted by email to the second Registrar a request for registrar verification in connection with the disputed domain name . On the same day, the second Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant 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 Respondent of the Complaint, and the proceedings commenced on February 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 18, 2015.
The Center appointed Gary J. Nelson as the sole panelist in this matter on March 31, 2015. 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 the owner of at least one United States trademark registration for TAYLOR GANG. Specifically, Complainant owns the following trademark registration:
Country/Territory
Reg. No.
Mark
Classes
Date of Registration
United States
4605980
TAYLOR GANG
025
September 16, 2014
Filing date:
June 4, 2012
Complainant is the owner of at least one pending United States trademark application for the mark TAYLOR GANG.
Complainant is the owner of at least seventeen pending United States trademark applications for the mark WIZ KHALIFA.
Respondent appears to have registered the following disputed domain names on the dates identified below:
Domain Name
Registration Date
August 1, 2010
December 30, 2011
October 31, 2012
October 31, 2012
January 13, 2014
October 31, 2012
October 31, 2012
December 15, 2013
5. Parties' Contentions A. Complainant
Complainant Cameron Thomas, professionally known as, Wiz Khalifa, is an internationally renowned recording artist and performer. Throughout his career, Complainant has released Platinum-selling singles, including the Triple-Platinum single Black and Yellow, five critically-acclaimed studio albums, and thirty-four music videos.
In 2006, Complainant was declared by Rolling Stone magazine as "an artist to watch". Since then, his albums and songs have peaked on numerous music charts and have earned many awards, including, but not limited to, the 2012 Top New Artist Billboard Music Aware. Complainant is also a multi-time Grammy Award-nominated artist, being nominated in several categories in 2012, 2013 and 2014.
In 2008, Complainant founded Taylor Gang Ent. with Academy Award winner Juicy J, and has since signed several notable hip hop artists, such as Chevy Woods, Berner, Courtney Noelle and Ty Dolla $ign. Among the studio albums and recordings released by Taylor Gang Ent. are Wiz Khalifa's Star Power (2008), Flight School (2009), Kush & Orange Juice (2010), Cabin Fever (2011), Taylor Allderdice (2012), and 28 Grams (2014).
Through his company, Complainant owns United States trademark registration/applications for the marks TAYLOR GANG and WIZ KHALIFA for a variety of goods/services.
Complainant claims United States common law trademark rights in TAYLOR GANG and WIZ KHALIFA.
Complainant's trademarks TAYLOR GANG and WIZ KHALIFA are famous trademarks.
All disputed domain names are identical or confusingly similar to Complainant's TAYLOR GANG or WIZ KHALIFA trademarks.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and is using the disputed domain names in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it owns rights in the TAYLOR GANG and WIZ KHALIFA trademarks and all the disputed domain names are either identical or confusingly similar to Complainant's TAYLOR GANG and WIZ KHALIFA trademarks. ; ; ;
Complainant owns at least one trademark registration for TAYLOR GANG in the United States. The registration date for this trademark is September 16, 2014, and the relevant date is the filing date for this registration (i.e., June 4, 2012). Based on this United States trademark registration, Complainant has established rights in the TAYLOR GANG mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that "registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption".)
Accordingly, Complainant has established rights in the TAYLOR GANG trademark relevant to the disputed domain names , , , and . Although not relevant for purposes of the first element, the Panel notes that these rights precede the registration of all four of these disputed domain names.
All four of these disputed domain names are identical to Complainant's TAYLOR GANG trademark. These four disputed domain names consist of the entirety of Complainant's TAYLOR GANG trademark and Respondent has merely added a top Level-Domain ("gTLD") (i.e., ".mobi", or ".tv", or ".biz", or ".info") See Sponda Plc v. Motohisa Ohno,WIPO Case No. D2007-0579 (holding that the domain name was identical to complainant's SPONDA trademark); easyGroup IP Licensing Limited v. wang tao,WIPO Case No. DCO2012-0001 (holding that the domain name was identical to complainant's EASY JET trademark).
Furthermore, the mere addition of a gTLD to an established trademark is insufficient to create a distinct domain name capable of overcoming a proper claim that the disputed domain name is identical to complainant's trademark. See EKKIA SAS v. LINECOM,WIPO Case No. D2009-1124 (finding the disputed domain name to be identical to complainant's EQUITHEME trademark). ;
Complainant's pending United States trademark applications for WIZ KHALIFA are irrelevant to this dispute. However, the Panel finds Complainant has established common law trademark rights in WIZ KHALIFA. Although not relevant for purposes of the first element, the Panel notes that Complainant established these trademark rights prior to the registration of the disputed domain names and (i.e., both with registration dates of October 31, 2012).
A common law mark is established when a complainant's goods or services become distinctive through the acquisition of secondary meaning. Complainant has established secondary meaning in WIZ KHALIFA through its extensive use and promotion of this mark beginning at least as early as 2006. Evidence of record has established that Complainant has developed this trademark and maintains a strong presence in the United States and in many countries throughout the world. See Keppel TatLee Banck Limited v. Lars Taylor,WIPO Case No. D2001-0168 ("On account of long and substantial use of the said name [] in connection with its banking business, it has acquired rights under the common law").
Furthermore, the disputed domain names, and are identical to Complainant's WIZ KHALIFA trademark. See Sponda Plc v. Motohisa Ohno, supra; easyGroup IP Licensing Limited v. wang tao, supra. The addition of a gTLD such as ".com" is insufficient to overcome a legitimate claim of confusing similarity. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that "[n]either the addition of an ordinary descriptive word ... nor the suffix '.com' detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY"). ;
The registration of the disputed domain names (i.e., registration date of August 1, 2010) and (i.e., registration date of December 30, 2011) predate the filing date of Complainant's only United States trademark registration. However, this does not prevent a finding of identity or confusing similarity. See paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Additionally, the Panel finds that Complainant has submitted sufficient evidence to prove the creation of common law trademark rights in TAYLOR GANG beginning in 2008.
Complainant has alleged that the TAYLOR GANG trademark is confusingly similar to the and domain names. Complainant has alleged that "taylor" is the dominant portion of the TAYLOR GANG trademark, and that Respondent has incorporated this dominant portion of the trademark into the disputed domain names. Complainant has alleged and provided unrebutted evidence that Respondent operated a website at featuring the personality of Wiz Khalifa and products associated with the WIZ KHALIFA trademark. Complainant has alleged and provided unrebutted evidence that Respondent operated a website at that featured products associated with the TAYLOR GANG trademark.
Because Respondent has not rebutted Complainant's allegation that the and domain names are confusingly similar to the TAYLOR GANG trademark, and because it is clear Respondent established websites associated with these two domain names that featured the TAYLOR GANG trademark and the related WIZ KHALIFA trademark, the Panel finds that Respondent most likely registered the and domain names with the express intention to target Complainant and its trademarks. The Panel holds that both the and domain names are confusingly similar to Complainant's TAYLOR GANG trademark.
Accordingly, for all of the disputed domain names, Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent has failed to file a Response, which suggests, in the circumstances, that Respondent lacks rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that the respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by any of the eight disputed domain names, or that it is commonly known by any name consisting of, or incorporating the words "taylor", "gang", "taylor gang", "wiz", "khalifa", " wiz khalifa", "clothes", "green", "taylor clothes", or "taylor green", or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant's rights in its related trademarks precede the respondent's registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain names predates the establishment of Complainant's rights in the TAYLOR GANG and WIZ KHALIFA trademarks.
The fact that Respondent's domain names , , , , and automatically redirect to , a domain name which Complainant claims was formerly owned by Respondent is further evidence that Respondent does not have a right or legitimate interest in these domain names.
Complainant has provided unrebutted evidence showing that Respondent was operating websites at each of the disputed domain names that featured the personality of Wiz Khalifa or products bearing the TAYLOR GANG or WIZ KHALIFA trademarks, or which redirected to websites that did so, confusing and misleading Internet users into believing that the websites are authorized or endorsed by Complainant. The Panel holds that such use of the disputed domain names by Respondent cannot be considered a bona fide offering of goods or services or as a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain names in bad faith.
Respondent maintained websites associated with the disputed domain names that featured the trademarks TAYLOR GANG and WIZ KHALIFA, or the personality of Wiz Khalifa, or websites that redirected the Internet user to websites that did, creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the websites. The misappropriation of the goodwill associated with another's well-known trademark for the purpose of attracting unwary Internet users to a website for no other reason than for commercial gain is evidence of bad faith. See L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623 (finding that exploitation of the reputation of trademarks by diverting Internet users is a common example of bad faith).
The Panel also finds that Respondent almost certainly chose the disputed domain names with full knowledge of Complainant's rights in the TAYLOR GANG and WIZ KHALIFA trademarks. Respondent's awareness of Complainant's trademarks may be inferred because of Respondent's use of these trademarks on the websites associated with each of the disputed domain names. This activity is further evidence the disputed domain names were registered and are being used in bad faith.
The Panel finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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 names,
be transferred to Complainant.
Gary J. Nelson
Sole Panelist
Date: April 10, 2015
Full & Egal Universal Law Academy