The Complainant is Stefani Germanotta, Ate My Heart Inc. of New York, New York, United States of America (“United States”), represented by Pryor Cashman, LLP, United States.
The Respondent is Roza Avidor of Tel Aviv, Israel. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Domain The Net Technologies Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2018. On April 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 12, 2018, 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.
On April 17, 2018, the Center sent an email in English and in Hebrew to the Parties regarding the language of the proceedings. The Complainant filed a request for English to be the language of the proceedings on April 18, 2018. The Respondent filed a request for English to be the language of the proceedings on April 21, 2018. The Complainant filed an amendment to the Complaint on May 1, 2018, to correct an administrative formality.
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 May 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2018. The Respondent did not file a Response.
The Center appointed Ellen B Shankman as the sole panelist in this matter on June 4, 2018. 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 Stefani Germanotta, the performing and recording artist publicly known as “Lady Gaga”, together with the company Ate My Heart Inc. through which the Complainant operates her business affairs and which owns the Complainant’s trademarks.
The Complainant provided evidence of registration of its trademarks, which include, inter alia,United States Registration No. 3,960,468 for LADY GAGA (registered May 17, 2011) and Israel Registration No. 241134 for LADY GAGA FAME (registered February 4, 2014) for goods and services which include clothing.
The Complainant also provided evidence of correspondence between the Parties and their respective legal representatives regarding the demand to transfer the Domain Name by the Complainant and the refusal by the Respondent, analyzing the Complainant’s claims under the UDRP that preceded the filing of this UDRP Complaint.
The date of the Domain Name registration was confirmed by the Registrar to be December 28, 2017. The Domain Name previously resolved to a website at “/password”, which displayed an article of clothing with the words “Lady Gaga” printed on the inside collar. The Respondent’s website featured fields for Internet users to “Enter store using password” and to “Enter Your Email Address” to “Subscribe”. The Respondent’s website also featured a live countdown of days until the Respondent’s purported online store would open. The Complainant alleges that several of the links for navigation of the Respondent’s website did not work.
The Panel also conducted an independent search to determine that the Domain Name is currently active, and the website to which the Domain Name resolves appears to be a page reading “something went wrong”, identifying that the “store” will “Be Back Soon” (and no longer appears as in the pages of evidence supplied by the Complainant that were relevant at the time of initiating this proceeding). 5. Parties’ Contentions A. Complainant
The Complainant is the internationally renowned musical star Stefani Germanotta publicly known as Lady Gaga (“Lady Gaga”) and her company Ate My Heart, Inc. (“AMH”). In addition to entertainment and live musical performances, the Complainant is involved in marketing and sales of a wide variety of goods including jewelry, musical sound recordings, fragrances, cosmetics, and clothing for men, women and children. AMH owns applications and registrations for a family of “GAGA” marks including LADY GAGA, HAUS OF GAGA, EAU DE GAGA and LADY GAGA FAME covering a wide variety of goods and services, around the world. In addition to the evidence of registration of its trademarks, the Complainant provides an affidavit of extensive common law rights by virtue of use in Israel as well as the United States.
The Complainant alleges that when it came to its attention that the Respondent registered and was using the Domain Name which wholly incorporates the LADY GAGA trademark to sell clothing, the Complainant contacted the Respondent with a cease-and-desist (“C&D”) letter asking for transfer of the Domain Name. The Complainant provided the correspondence between the Parties, (referred to above), and the response to the Complainant’s C&D letter denied any infringement or bad faith in the registration and use of the Domain Name and contained extensive legal analysis by counsel for the Respondent. Shortly thereafter the Domain Name was transferred into the name of the current Respondent who appears to be a family member of the registrant of the Domain Name.
The Complainant further alleges that the Respondent used on its website pages not only a name similar to the LADY GAGA mark, but also the logos and trade dress of the Complainant’s album covers.
To summarize the Complaint, the Complainant is the owner of common law trademark rights as well as multiple registrations for the trademark LADY GAGA, in respect of a wide range of goods and services, including clothing. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the single letter “s” placed between the word “lady” and the word “gaga” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. The continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark, the correspondence between the Parties, as well as use of the Domain Name and the content that appeared on the Respondent’s website at the Domain Name are taken from the Complaint and are generally accepted as true in the circumstances of this case. 6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings”.
The language of the Registration Agreement in relation to the Domain Name has been confirmed to be in Hebrew. The Complaint was filed in English, with reasonable factors claimed for why the proceedings should proceed in English. The Complainant also provided evidence that in receipt of the C&D letter the Respondent replied in English. The Domain Name is in Latin characters. The Center sent a notification to the Respondent regarding the proceedings in Hebrew and in English and provided the Respondent with a chance to object to the proceedings being conducted in English. The Respondent failed to submit any formal Response, but in an email sent to the Center acknowledged that the proceedings could be done in English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In light of the circumstances, the Panel finds the arguments made by the Complainant to be persuasive, and together with the notification sent by the Center in Hebrew providing the Respondent with the chance to object to the proceedings being conducted in English, and the Respondent’s subsequent agreement to English, the Panel finds under paragraph 11(a) of the Rules that it is fair to continue these proceedings and to issue a decision in English. A. Identical or Confusingly Similar.
The Panel finds that the Complainant has satisfactorily proven that it has both registered and common law trademark rights in Israel, the United States, and other jurisdictions for LADY GAGA.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the single letter “s” to the Domain Name – especially buried in the middle – does not t prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “[t]he incorporation of a Complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant’s trademark.”
This holding is consistent with numerous UDRP decisions that have found various versions of domain names incorporating the Complainant’s mark, many of which are arguably even more different than the current Domain Name, to be confusingly similar with the Complainant’s mark. See, e.g., Stefani Germanotta and Ate My Heart Inc. v. Nancy Faralisz, The Michigan Initiative LLC,WIPO Case No. D2016-0298 (transferring to the Complainant and finding that “Complainant has demonstrated rights [to the LADY GAGA mark]”); Stefani Germanotta and Ate My Heart Inc. v. Deborah Allen,WIPO Case No. D2015-2353 (transferring to the Complainant, finding that “Complainant clearly holds rights in its registered trademark LADY GAGA”); Stefani Germanotta and Ate My Heart Inc. v. Rola Dowens,WIPO Case No. D2013-1506 (transferring to the Complainant, finding that “Complainant has established that it has rights to the trademark LADY GAGA)
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
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, 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 burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the disputed 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.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case (which was not refuted in response to the filing of the Complaint) that the Respondent lacks rights or legitimate interests in the Domain Name. Specifically, the Respondent’s use of the Complainant’s trademark on the website at the Domain Name, displayed in the same stylized form as that used by the Complainant, gives the misleading impression that the Respondent’s website, which purports to be an online store, is operated by or somehow affiliated with the Complainant. Even if the Panel were to take into account the response to this point provided in the Complainant’s evidence of the Respondent’s response to the C&D letter as a “hypothetical” response to the Center, the Panel does not find the claims made therein by the Respondent to be persuasive, and would not change the Panel’s conclusion. As such, the Panel does not consider the Respondent’s use of the Domain Name to fall within the meaning of paragraph 4(c)(i) of the Policy.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark LADY GAGA and uses it for the purpose of misleading and diverting Internet traffic.
The Panel finds this to be true even considering the current “error” page to which the Domain Name resolves, and even more so given the evidence of the prior use of the Domain Name supplied by the Complainant. The Respondent’s use of the Complainant’s trademark in stylized form, together with the words “Dress this way”, which the Panel considers to be a play on the title of one of the Complainant’s songs “Born this Way”, suggests that the Respondent sought to create a likelihood of confusion with the Complainant and its marks in order to attract Internet users to the Respondent’s online store. Such conduct is bad faith use of the Domain Name within the meaning of paragraph 4(b)(iv) of the Policy.
Interestingly, in response to the C&D letter, the legal counsel for the Respondent laid out extensive reasoned arguments that could have been a response to the current UDRP proceeding. Even had they been made, the Panel does not find them persuasive and indeed some of the claims quite unconvincing, and would still find for the Complainant.
Given the evidence of the Complainant’s prior rights in the trademark together with the extensive use of the mark in Israel, the international fame of the Complainant as a performing artist, the timing of the registration of the Domain Name, the Respondent’s reply to the Complainant’s request for voluntary transfer of the Domain Name, and the full chance to respond that was not taken even after the analysis provided earlier in response to the C&D letter of the Complainant, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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.
Ellen B Shankman
Sole Panelist
Date: June 7, 2018
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