Complainant is David Michael Bautista, Jr. of Washington, DC, United States of America (“United States”), represented by Mitchell, Silberberg & Knupp, LLP, United States.
Respondent is Quantec LLC of Dallas Texas, United States / Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2016. On February 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 2, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 3, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on March 7, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 29, 2016.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 1, 2016. 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, David Michael Bautista, Jr., is an actor and wrestler known as “Dave Bautista”. He has been featured in television shows and motion pictures, including Chuck (2010), The Man with the Iron Fists (2012), Riddick (2013), Guardians of the Galaxy (2014), and the James Bond film Spectre (2015). Before appearing on the movie screen, Bautista was a professional wrestler, beginning his career in 2002. He won six world championships, in particular headlining WrestleMania 21 in 2005, in which he won the World Heavyweight Championship.
The Domain Name was registered on April 9, 2005. 5. Parties’ Contentions A. Complainant
(i) Identical or confusingly similar
Complainant states that he owns common law trademark rights in the name “Dave Bautista” because he is a famous entertainer performing under that name. Citing prior UDRP cases, Complainant contends that to establish common law rights in a personal name, it is necessary to show use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source. Furthermore, a celebrity’s name can serve as a trademark when used to identify the celebrity’s performance services.
Complainant states that Respondent owns and operates a website located at the Domain Name, . When a user types the Domain Name into an Internet browser, the user is directed to other commercial websites, as determined by a “cash parking” service. The websites the user is shown are determined by his particular IP address and “cookies”. Respondent is then paid based on the traffic Respondent drives to these other commercial websites.
Respondent’s Domain Name is identical to Complainant’s name, Dave Bautista.
(ii) Rights or legitimate interests
Complainant contends that it bears only the initial burden of presenting a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name. Once Complainant satisfies this initial burden, the burden shifts to Respondent to present evidence that it nonetheless has rights or legitimate interests in the Domain Name.
Complainant asserts there is no evidence of Respondent’s use of the Domain Name in connection with a bona fide offering of goods or services. Nor has Respondent ever been commonly known as “Dave Bautista” or . Nor is Respondent making a legitimate noncommercial or fair use of the Domain Name. And Complainant has never authorized Respondent to use his name. To the contrary, the Domain Name is being used by Respondent to mislead users looking for information about Dave Bautista to instead visit Respondent’s website, for Respondent’s commercial gain.
(iii) Registered and used in bad faith
Complainant contends that Respondent registered and is using the Domain Name in bad faith under the Policy, paragraphs 4(b)(ii) and (iv).
Complainant first refers to paragraph 4(b)(ii), which provides that a domain name was registered and is being used in bad faith if Respondent “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” Here, Complainant asserts that Respondent has been the respondent in at least 20 UDRP proceedings before WIPO that have resulted in transfer of the disputed domain name to the complainant. Thus, Respondent has engaged in a pattern of registering domain names containing others’ trademarks. Because Respondent is a professional cybersquatter, it is evident that it registered the Domain Name as part of its pattern of cybersquatting, with the intent of preventing Complainant from registering a domain name in his own name. Therefore, Respondent has engaged in bad faith registration and use of the Domain Name.
Second, Complainant refers to paragraph 4(b)(iv) of the Policy, which provides that a domain name was registered and is being used in bad faith if “by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.” Here, when an Internet user types “www.” into a browser, the user is directed to other commercial websites, as determined by Respondent’s “cash parking” service. Respondent is then paid based on the amount of traffic that the Domain Name drives to the other commercial websites. Complainant contends that the use of a domain name that is confusingly similar to a trademark, in order to drive traffic to a website and generate revenue, constitutes bad faith. This is true whether these efforts consist of an attempt to capitalize on initial interest confusion or are accomplished through “cash parking”. Respondent is guilty of both. Respondent is capitalizing on the initial confusion of users who are looking for information about Dave Bautista, and who instead are directed to other websites, as determined by Respondent’s cash parking service. Respondent also profits based on the number of users who type the Domain Name into their browsers and who are redirected to other sites through the cash parking program. This constitutes bad faith.
In conclusion, Complainant maintains that Respondent is guilty of registering and using the Domain Name in bad faith under paragraphs 4(b)(ii) and (iv) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied, as follows:
(i) the Domain Name registered by Respondent 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 Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Here, Complainant has provided evidence that his name, “Dave Bautista”, has acquired distinctiveness in relation to his performance services, both as a wrestler and an entertainer appearing in widely viewed movies. The Panel finds that Complainant has developed sufficient goodwill in his name to give rise to common law trademark rights. See, e.g., Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210 (“registration of her name as a registered trademark or service mark was not necessary and […] the name ‘Julia Roberts’ has sufficient secondary association with Complainant that common law trademark rights do exist under United States trademark law.”).
In addition, the Domain Name is identical to Complainant’s name and common law mark, DAVE BAUTISTA. Accordingly, Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. The overall burden of proof, however, remains with the complainant.
The Panel finds that Complainant has made out a prima facie case in the Complaint that Respondent lacks rights or legitimate interests in the Domain Name. The Panel finds that Respondent has not been commonly known as “Dave Bautista” and Complainant has not authorized or licensed Respondent to use his name. Further, Respondent is not making a legitimate noncommercial or fair use of the Domain Name, and has not been using it in connection with a bona fide offering of goods or services. Instead, as the evidence submitted by Complainant establishes, the Domain Name has been used by Respondent to mislead users looking for information about the Complainant to visit Respondent’s website, for Respondent’s own commercial gain. See, e.g., Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000,WIPO Case No. D2006-0431 (“The domain name is used to mislead Internet users looking for Jeffrey Archer to a commercial website for Respondent’s benefit. Such use cannot be considered bona fide.”).
Respondent has not submitted a Response in this case, to challenge any of these findings. Accordingly, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name. Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel also determines that the Domain Name has been registered and used in bad faith.
The Panel finds that, in accordance with paragraph 4(b)(ii) of the Policy, Respondent has registered the Domain Name in order to prevent Complainant from reflecting his trademark in a corresponding domain name, and that Respondent engaged in a pattern of such conduct.” Respondent has submitted evidence to show that Respondent has been involved as a respondent in 20 previous UDRP cases that resulted in transfer of the disputed domain name to the respective complainant. See, e.g., Société des Hôtels Méridien v. LaPorte Holdings, Inc.,WIPO Case No. D2004-0849 (finding bad faith where “the Respondent has already been involved in seven cases, and in each of these cases the Respondent has been found to have registered and used the disputed domain names in bad faith. It results from the above that Respondent has been engaged in a pattern of cybersquatting conduct giving rise on bad faith registration and use, and that the Respondent registered the domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name.”)
Further, the Panel finds that, in accordance with paragraph 4(b)(iv) of the Policy, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s DAVE BAUTISTA mark. As explained above, when an Internet user types “www.” into an Internet browser, the user is directed to commercial websites, as determined by Respondent’s cash parking service. This effort reflects an attempt to capitalize on initial interest confusion in relation to Complainant’s name and common law mark, for Respondent’s own financial gain. See, e.g., Abraxis BioScience, LLC v. Les Rubin,WIPO Case No. D2008-0066 (“The fact that the website contains advertising links, from which Respondent likely benefits through the Registrar’s ‘Cash Parking’ monetization program, supports the inference that the purpose of Respondent’s diversion of traffic from Complainant to himself is for Respondent’s own commercial gain. The panel finds bad faith use […]”); Merck Sharp & Dohme Corp. v. Sanjay Patel,WIPO Case No. D2010-1037 (“[T]he use of a domain name that is confusingly similar to a trademark, in order to drive traffic to a website and generate revenue, constitutes bad faith. This is true whether these efforts consist of an attempt to capitalize on initial interest confusion […] or are accomplished through ‘cash parking’.”)
Once again, the Panel observes that Respondent has not submitted a Response to challenge any of the allegations or evidence submitted by Complainant in this case.
Accordingly, the Panel finds, in view of all of the above circumstances and the allegations and evidence submitted in this case, that the Domain Name was registered and is being used in bad faith, satisfying the third element 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 Complainant.
Christopher S. Gibson
Sole Panelist
Date: April 30, 2016
Full & Egal Universal Law Academy