The Complainant is Adam R. Wiles p/k/a/ Calvin Harris of Santa Monica, California, United States of America (“United States”), represented by Stubbs Alderton & Markiles, LLP, United States.
The Respondent is Privacy Protection Service Inc. d/b/a P of Nobby Beach, Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2015. On August 25, 2015, the Complainant filed an amendment to the Complaint. On August 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent, Domain Admin, Private Registrations Aktien Gesellschaft, and providing the correct contact details;
(c) the Respondent registered the disputed domain name on March 14, 2007;
(d) the language of the registration agreement is English.
The disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Policy, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 24, 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
The Complainant is a “DJ”, musician, songwriter and entertainer. He began performing in 2002. In 2004, he adopted the name CALVIN HARRIS and has been performing under that name since then.
Between 2004 and 2006, he released a number of singles under the name CALVIN HARRIS and achieved sufficient success that, in 2006, he secured a music publishing agreement with EMI Music Publishing and a recording agreement with Sony Music (then known as Sony BMG).
On March 12, 2007, he released under the name CALVIN HARRIS his recording of “Acceptable in the 80s” an advance track from his album “I Created Disco”. “Acceptable in the 80s” sold approximately 500,000 copies and was certified “Gold”.
On March 14, 2007, the Respondent registered the disputed domain name.
The Complainant’s album “I Created Disco” was released in June 2007 under the name CALVIN HARRIS. It went on to sell 800,000 copies.
In August 2009, the Complainant released his second album under the name CALVIN HARRIS. The third CALVIN HARRIS album followed in October 2012 and the fourth in October 2014.
Over that time frame, the Complainant has received numerous industry awards. He has also entered into endorsement agreements under the name CALVIN HARRIS with global brands such as Coca-Cola and Emporio Armani.
All up, the Complainant has sold approximately 6,000,000 albums under the name CALVIN HARRIS. Total revenues from live performance, record music sales, advertising, sponsorships and endorsements under the name CALVIN HARRIS exceed USD 200,000,000.
The Complainant’s corporate vehicle has secured registration as a Community Trade Mark (“CTM”), No. 011996816, for CALVIN HARRIS for a range of goods and services. The registration was granted in January 2014.
The disputed domain name has resolved to a “pay-per-click” website. The links on the website include links to “Calvin Harris” and also to music downloads, software to record music and music video making software.
The Complainant’s lawyers sent a letter of demand to the Respondent. The Privacy Protection Service confirmed the letter of demand had been passed on to the actual registrant. The Privacy Protection Service also recommended that the Complainant file a complaint under the Policy to resolve the dispute.
While there has been no response to the Complainant’s letter of demand, the disputed domain name now resolves to a website which offers the disputed domain name for sale for USD 49,999. 5. Discussion and Findings
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademark, CTM No. 011996816, referred to above. It was registered well after the disputed domain name. Nonetheless, it may still be relied on for the purposes of this requirement under the Policy: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.4.
In any event, the Complainant has actually been using the name CALVIN HARRIS as his stage name since 2004. That was well before the disputed domain name was registered. Moreover, that use has been to distinguish his services at a “DJ”, musician, songwriter and entertainer from those of other performers and writers. It is fair to say that much of the Complainant’s international fame has accrued in more recent years, after the disputed domain name was registered. That said, the Complainant’s reputation and goodwill date from when his activities under the name CALVIN HARRIS commenced. See, e.g., Royal Bank of Canada, Dain Rauscher Corporation and Dain Rauscher Incorporated v. RBCD Ain Rauscher,WIPO Case No. D2001-1236. See also Glaxo plc v. GlaxoWellcome Ltd [1996] FSR 388; 42 IPR 317, Fletcher Challenge Ltd v. Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196; [1982] FSR 1, the latter two both approved in British Telecom plc v. One in a Million Ltd [1998] 4 All ER 476; 42 IPR 289 (Eng CA). The Complainant’s common law rights are sufficient under the Policy. See, e.g., the decisions referred to in the WIPO Overview 2.0 at paragraph 1.6.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet, Inc.,WIPO Case No. D2001-0252.
Disregarding the generic Top-Level Domain (“gTLD”) component, the disputed domain name is identical to both the Complainant’s registered trademark and unregistered rights, apart from the essentially immaterial omission of the space.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview 2.0.
It is plain from the Complaint that the Complainant has not authorised the Respondent to register or use the disputed domain name. It is also plain that the Complainant and Respondent are not associated in any way.
The disputed domain name is not derived from either of the names which have been recorded in connection with the registration of the disputed domain name.
The Panel is conscious that CALVIN HARRIS could be the name of an individual. Although the case materials have been forwarded to the Respondent at the address details confirmed by the Registrar as correct, however, the Respondent has not come forward to claim that the disputed domain name is in fact derived from his, her or its own name or some name by which he, she or it is commonly known.
The use of the disputed domain name to resolve to a “pay-per-click” website and the offer of it for sale for USD 49,999 preclude a claim that the Respondent registered the disputed domain name for a legitimate noncommercial or fair use. Rather the music and music/video production nature of the links on the website suggest a strong inference of an attempt to capitalize on the Complainant’s trademark. See, e.g., Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267 and Owens Corning v. NA,WIPO Case No. D2007-1143.
In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As the Panel has noted above, the disputed domain name was registered several years after the Complainant commenced promoting his entertainment and musical skills by reference to the name CALVIN HARRIS. Moreover, the disputed domain name was registered two days after the release of the Complainant’s single, “Acceptable in the 80s” which was very successful, going on to be “Gold certified” as a result of the volume of sales it achieved. In the circumstances of this case, particularly having regard to the “music” and “music production” themed nature of the “pay-per-click” links on the Respondent’s website – activities which are closely connected to the Complainant’s business activities – the Panel infers that the disputed domain name was registered to take advantage of the Complainant’s developing reputation.
Further, the use of the website for “pay-per-click” links of the kind described and the offer of the disputed domain name for sale for USD 49,999 constitutes use in bad faith under the Policy in the absence of the Respondent rebutting the Complainant’s case that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has established the requirements under this limb of the Policy as well. 6. 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 the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: October 8, 2015
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