The Complainant is Britney Spears of West Hollywood, California, United States of America ("United States"), represented by Russ August & Kabat, United States.
The Respondent is Theodore Pelzer of Bronx, New York, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 19, 2017. On October 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2017. On November 6, 2017, the Center received an email communication from the Respondent. The Respondent did not submit any formal response. Accordingly, on November 23, 2017, the Center notified the Parties that panel appointment would commence.
The Center appointed William R. Towns as the sole panelist in this matter on November 30, 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
The Complainant is a popular American singer, dancer, and actress, whose work has garnered numerous awards and accolades, including a Grammy Award. The Complainant holds six United States trademark registrations for the name BRITNEY SPEARS,1 as well as international trademark registrations for BRITNEY SPEARS in numerous countries around the world.
The Respondent registered the disputed domain name on June 12, 2017, according to the concerned registrar's WhoIs records. The disputed domain name resolves to a parking page provided by the Registrar. The parking page content varies, but has included advertising links concerning tour dates for the Complainant and for Selena Gomez, and other links relating to tickets for upcoming events in Las Vegas.
The Respondent was formally notified of the Complaint on November 2, 2017. On November 6, 2017, the Center received an email communication from the Respondent stating as follows: "how much are you going to pay me for the domain name." 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the BRITNEY SPEARS marks. The Complainant further asserts that when the Top-Level Domain (TLD) ".store" is disregarded, the disputed domain name is identical to the BRITNEY SPEARS marks.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not been commonly known by the disputed domain name and acquired no trademark rights in the disputed domain name. The Complainant asserts that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but has registered the disputed domain name in order to exploit the Complainant's rights in the BRITNEY SPEARS marks.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant argues that the Respondent registered the disputed domain name primarily for purpose of selling the disputed domain name to the Complainant in an amount in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name. The Complainant further submits that the Respondent registered the disputed domain name to prevent the Complainant from reflecting the mark in a corresponding domain name, and that the Respondent is attempting for commercial gain to attract consumers to the Respondent's website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Respondent's website, or the products and services the Respondent may intend to provide on his website. B. Respondent
The Respondent did not formally reply to the Complaint's contentions, but as noted above in an email to the Center inquired how much he would be paid for the disputed domain name. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant's BRITNEY SPEARS mark, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name.
In this case, the Complainant's BRITNEY SPEARS mark is clearly recognizable in the disputed domain name.3 Top Level Domains ("TLDs") generally are disregarded when evaluating the identity or confusing similarity of the complainant's mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant's BRITNEY SPEARS mark. The Respondent notwithstanding has registered the disputed domain name, which is identical to the Complainant's mark, and which the Respondent has used with a parking page populated with what appear to be pay-per-click advertising links concerning the Complainant's tour and other entertainment events. Further, after receiving notification of the Complainant, the Respondent's only communication with the Center was to ask how much money he would be paid for the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the 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 has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.
It is evident from the record that the Respondent was aware of the Complainant and the Complainant's BRITNEY SPEARS marks when registering the disputed domain name. The Panel finds that the Respondent more likely than not registered the disputed domain name in order to exploit or profit from the Complainant's trademark rights, whether by selling the disputed domain name to the Complainant for an amount in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name, or by generating revenue from pay-per-click advertising links on the Respondent's parking page. Internet users could easily expect that the disputed domain name, which is identical to the Complainant's mark, would be linked to the Complainant's website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
The Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant's mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The record is convincing that the Respondent had the Complainant's BRITNEY SPARKS marks in mind when registering the disputed domain name. The Panel concludes from the attendant circumstances that the Respondent registered the disputed domain name seeking to profit from and exploit the Complainant's BRITNEY SPEARS marks, whether by generating pay-per-click revenue, or by selling the disputed domain name to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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.
William R. Towns
Sole Panelist
Date: December 12, 2017
1 BRITNEY SPEARS, United States Registration No. 2302300, registration date Dec. 21, 1999; BRITNEY SPEARS, United States Registration No. 2620427, registration date Sept. 17, 2002; BRITNEY SPEARS, United States Registration No. 362426, registration date May 19, 2009; BRITNEY SPEARS, United States Registration No. 3692571, registration date Oct. 6, 2009; BRITNEY SPEARS, United States Registration No. 3692572, registration date Oct. 6, 2009; BRITNEY SPEARS, United States Registration No. 3692573; registration date Oct. 6, 2009. The Complainants' registrations are for entertainment services, streaming audio, visual, and audiovisual material, music recordings, cosmetics, fragrance products, skin care products, body and beauty care products, and online retail store services.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
3 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
4 The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.
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