The Complainant is Musidor B.V. of Amsterdam, Netherlands, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Steve Crosby of Worcester, Massachusetts, United States of America (“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 November 5, 2018. On November 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2018, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and providing the contact details;
(c) the Respondent registered the disputed domain name on September 13, 2018;
(d) the language of the registration agreement is English;
(e) 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 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 November 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2018. On December 12, 2018, the Center sent an email to the Parties, noting that, presumably due to an administrative oversight, the Center’s Notification email sent to the Parties was incomplete, and granting the Respondent a five day period to indicate whether it wished to participate in the proceedings. The Respondent did not submit any response. The Center notified the Parties on December 18, 2018, that it would proceed to panel appointment.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 4, 2019. 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 the owner of the intellectual property rights including the global music rights relating to the Rolling Stones, the well-known rock band. The rock band has been in existence since at least 1962. The group has sold over 240 million albums worldwide and is ranked fourth in the 100 Greatest (Music) Artists of All Time.
As might be expected, the Complainant owns numerous registered trademarks for ROLLING STONES in many countries, including (by way of example only) United States Registered Trademark Nos 2,201,605 (International Class 26), 3,853,613 (International Classes 9 and 41), 4,335,063 (International Class 25) and 4,578,925 (International Class 16). All of the United States registered trademarks pre-date the registration of the disputed domain name; the earliest trademark in the United States being registered on November 3, 1998, the most recent on August 5, 2014. The earliest registrations worldwide date from 1972 (Benelux) and 1974 (the United Kingdom).
In addition, the Complainant is the owner in many countries of registered trademarks for the so-called “Tongue & Lips” device. These registrations include (by way of example only) United States Registered Trademark No. 4,874,833, registered on December 22, 2015 in International Classes 9, 16, 25, 41. The International Registration, designating Australia, Hungary, Montenegro, Romania, Serbia and Switzerland, was registered on October 13, 1975.
As already noted, the Respondent registered the disputed domain name on September 13, 2018.
The disputed domain name resolves to a website offering for sale cannabis products. A feature of the website is a banner or flag at the top of the page featuring the words “rolling” and “stoned” separated by an image which appears to be a faithful reproduction of the Complainant’s “Tongue & Lips” trademark. 5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at 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.
The Panel notes that the initial delivery of the Complaint to the Respondent was incomplete in that it was not copied to the Respondent’s online contact form. This resulted in a further email delivery and the allowance of an additional five days for the Respondent to consider his position.
The Panel further notes that the initial delivery included delivery of a hard copy of the Written Notice informing the Respondent of the commencement of the proceeding by courier to the physical address which the Registrar has confirmed as the physical address provided by the Respondent and still current. That delivery was accepted and signed for at the delivery address. In addition, the initial delivery included email communication of the Complaint (and annexes) to the email address also confirmed by the Registrar as the Respondent’s current email address.
In these circumstances, the Panel considers that the Respondent has been given a fair opportunity to present his case as required by paragraph 10(b) of the Rules. Accordingly, it is appropriate to proceed to a decision on the Complaint as required by paragraph 14(a) of the Rules.
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 at least of numerous registered trademarks for ROLLING STONES.
The second stage of the inquiry under the first requirement of the Policy simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. Questions such as the scope of the trademark rights, the geographical location of the respective Parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the gTLD “.delivery” as a functional component of the domain name system, the disputed domain name differs from the Complainant’s trademark by the substitution of the letter “d” for the letter “s”. While there is no doubt intended to be a humorous or “witty” element to this substitution, that does not change the fact that such an obvious misspelling of the Complainant’s trademark is the sort of “typosquatting” that has long been recognised as confusingly similar to the Complainant’s trademark for the purposes of the first element under the Policy.
Accordingly, the Panel finds that the disputed domain name is confusingly to the Complainant’s trademark and so 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. 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., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it in any way. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
The disputed domain name resolves to a website offering for sale cannabis products in a way that does not qualify as nominative fair use so the requirements of paragraph 4(c)(iii) of the Policy do not apply.
The use of the “Tongue & Lips” logo on that website, in close conjunction with the close variant of the Complainant’s trademark, is plainly intended to and is highly likely to convey a representation of association with or endorsement by the Complainant or the well-known rock group. As the Respondent does not have any such authorisation or affiliation, that representation is false. In these circumstances, the Respondent’s use of the disputed domain name does not constitute a good faith offering of the Respondent’s goods or services for the purposes of paragraph 4(c)(i) of the Policy.
Accordingly, the Complainant has established a clear 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. Therefore, 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. These are conjunctive requirements; both must be satisfied for a successful complaint: 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.
The incorporation of the Complainant’s distinctive “Tongue & Lips” logo on the Respondent’s website so close in time to the registration of the disputed domain name provides a solid basis for inferring that the Respondent was well aware of the Rolling Stones rock group and has sought to take advantage of the group’s renown to promote its products when registering the disputed domain name. The Respondent has not sought to dispute or rebut that inference. The Panel concludes therefore that the disputed domain name was registered in bad faith under the Policy.
For the reasons discussed in section 5B above, the disputed domain name is being used in bad faith.
Accordingly, the Panel finds that the Complainant has also established the third requirement under 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.
Warwick A. Rothnie
Sole Panelist
Date: January 8, 2019
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