The Complainant is Hamiet Bluiett of New York, New York, United States of America (“United States”), represented by Debevoise & Plimpton, United States.
The Respondent is Daisuke Sato of Osaka, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2017. On June 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 26, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 30, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on July 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2017.
The Center appointed Haig Oghigian as the sole panelist in this matter on August 2, 2017. 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
As there is no submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.
The Complainant, Hamiet Bluiett, is a natural person, and has been a fixture in the contemporary jazz scene since 1969. As of today, the Complainant has released over 40 albums over the span of 40 years and has participated in countless number of live performances. The Complainant has 16 albums listed on Amazon Music and at least 17 albums listed on the Apple iTunes Store. All of the Complainant’s work on albums and in entertainment services has been marketed and sold under his name.
From approximately 2005 to 2013, the Complainant owned the domain name in dispute (i.e., ) and operated the associated website as a marketing tool to reach his fans and provide updates on his music. The Complainant also registered the domain name in July 2014.
The record shows that the disputed domain name was updated on October 18, 2016. Although the record does not show the exact date on which the disputed domain name was registered by the Respondent, it can be inferred from the record that the Respondent acquired the disputed domain name at some point between July 2014 and February 2017. Currently, the disputed domain name resolves to a webpage on which there is information regarding menstrual cramps in Japanese.
On September 5, 2016, an individual emailed the Complainant seeking monetary compensation in exchange for the disputed domain name. On November 10, 2016, the Complainant’s counsel sent this individual a letter requesting that she transfer the registration of the disputed domain name back to the Complainant on the grounds that the registration constituted misappropriation of the Complainant’s name in violation of his rights. The individual responded with an offer to sell the disputed domain name to the Complainant for “$250” on December 24, 2016. 5. Parties’ Contentions A. Complainant
The Complainant requests transfer of the disputed domain name.
The Complainant contends that the disputed domain name is identical to and confusingly similar with the name “Hamiet Bluiett” and the common law trademark rights which he asserts in HAMIET BLUIETT. The disputed domain name fully incorporates the Complainant’s personal name, and the addition of “.com” is without any legal significance in determining similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name . The Respondent is not nor has ever been known by the name “Hamiet Bluiett” nor does the Respondent have any legitimate interests in being associated with the disputed domain name .
The Complainant contends that he previously owned the disputed domain name and had used it in order to manage his brand and remain connected to his loyal fan base.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith, alleging that (1) the Respondent has engaged in a pattern of conduct to prevent mark owners from reflecting their marks in the corresponding domain names in violation of paragraph 4(b)(ii) of the Policy, (2) by acquiring a domain name reflecting an extremely rare name, the Respondent has engaged in opportunistic bad faith, (3) if the individual who contacted the Complainant to sell the disputed domain name is the Respondent using a pseudonym, that offer of sale constitutes bad faith under paragraph 4(b)(i) of the Policy.
The Complainant contends that the Respondent owns at least 59 domain names which appear to be trade names and trademarks for which third parties have legitimate rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:
(i) The domain name is identical or confusingly similar to a trademark 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. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In line with such provision, the Complainant must prove that it enjoys the trademark right, and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.
While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. See, for example, Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210.
For a complainant to successfully assert common law rights, the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. See, for example, Uitgeverij Crux v. W. Frederic Isler,WIPO Case No. D2000-0575.
Further, it is recognized that the incorporation of a trademark in its entirety is sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105.
The Panel notes that the Complainant used his name on his albums and in entertainment services and have marketed and sold them under his name, resulting in acquiring secondary meaning in the name “Hamiet Bluiett”.
The Panel further finds that the disputed domain name reproduces the Complainant’s name in its entirety, with the addition of the generic Top-Level Domain “.com”.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances include:
(i) Use of or demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
(iii) Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
The Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the burden of production shifts to the Respondent to come forward with evidence demonstrating its rights or legitimate interests in the disputed domain name. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174.
There is no evidence to show that the disputed domain name has been or is used in connection with a bona fide offering of goods or services prior to notice of the dispute, nor is there evidence to suggest that the Respondent has been or is commonly known by the disputed domain name.
No evidence has been submitted that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could use the name “Hamiet Bluiett” or any mark confusingly similar thereto as a domain name or otherwise. The Panel finds that the offering of the disputed domain name for sale outweighs any plausible assertion of a legitimate noncommercial use of the disputed domain name. The Respondent has failed to rebut the Complainant’s prima facie showing.
Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel notes that the name “Hamiet Bluiett” is not only well-known, but is also unique. The Complainant has submitted the results of a people search showing that only two people in the United States are recorded as having the name “Hamiet Bluiett”.
The uniqueness of the name “Hamiet Bluiett”, coupled with his fame and trademark rights in his name, weighs in favor of finding that the Respondent was aware of the Complainant’s identity when the Respondent registered the disputed domain name and therefore opportunistically registered the disputed domain name in bad faith. The Panel finds it more likely than not that the Respondent has (by using either a third party or a pseudonym) attempted to sell the disputed domain name to the Complainant. This conduct falls squarely within paragraph 4(b)(i) of the Policy.
In addition, the Panel notes that the Respondent had engaged in a pattern of registering domain names that are identical to or bear strong resemblance to third parties’ marks. Under the circumstances, the Panel finds that it is more likely than not that the Respondent has engaged in a bad faith pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy.
Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
Haig Oghigian, F.C.I.Arb.
Sole Panelist
Date: August 16, 2017
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