The Complainant is Christopher B. Bridges, United States of America (“United States”), represented by Arnall Golden Gregory LLP, United States.
The Respondent is Douglas Swift, Third-Party Solutions LLC, 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 August 26, 2019. On August 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, August 27, 2019, 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 August 29, 2019, the Center sent an email to the Complainant providing the Respondent’s contact details provided by the Registrar. The Respondent sent an email to the Center on September 5, 2019. The Complainant amended the Complaint on September 5, 2019, based on the email received by the Respondent on the same day. A second amendment was submitted by the Complainant on September 10, 2019.
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 September 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2019. The Respondent did not submit any response. A second email from the Respondent was received by the Center on October 1, 2019.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on October 9, 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 a successful entertainer, professionally known as “Ludacris” or “Luda”, and the founder of a non-profit foundation operating in the United States dedicated to youth programs and other charitable and community activities —The Ludacris Foundation.
The Complainant holds two United States trade or service marks in various classes for LUDACRIS FOUNDATION; these trademarks were registered on September 2, 2003, and on July 6, 2004. The Complainant holds other trademarks for various iterations or abbreviations of the Foundation name, such as LUDA, LUDACRES, and LUDACRIMAS.
The disputed domain name was previously registered and used by the Complainant for more than 15 years; it was recently acquired by the Respondent when the Complainant inadvertently failed to renew its registration. At present the disputed domain name resolves to a parked page with auto-generated content.
Little is known of the Respondent, who appears to be an individual resident in the United States. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name incorporates the entirety of its well-known trademark and is obviously confusingly similar to it. The Complainant further submits that the Respondent is not using the disputed domain name for any bona fide offering of goods or services and has no legitimate interest or right to the disputed domain name. It follows, the Complainant asserts, that there can be no good faith explanation for the Respondent’s registration and passive use of the disputed domain name.
Whereupon the Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is composed of the entirety of the Complainant’s trademarks preceded by a “the”. It is close to identical, and certainly confusingly similar to the Complainant’s trademarks.
Paragraph 4(a)(i) of the Policy is accordingly proven. B. Rights or Legitimate Interests
The Complainant clearly asserts that it has no knowledge or good faith belief that the Respondent has any rights or legitimate interest in the disputed domain name. It is furthermore obvious that the Respondent is not known by the name “The Ludacris Foundation.”
There is, furthermore, no indication that the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services or that there is any legitimate noncommercial or fair use of the Complainant’s trademark.
It is now long-established in UDRP case law and jurisprudence that a complainant needs to establish at least a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Where such a prima facie case is made, the burden of proof shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy see also, Meizu Technology Co., Ltd. v. “osama bin laden”,WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo,WIPO Case No. D2014-0225.
In the instant case the Respondent has not answered the Complaint; the Complainant has established at least such a prima facie case; and there is nothing in the case file that would rebut or contradict it. The Complainant has therefore met its burden of proof under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The opportunistic registration of the disputed domain name, together with the uniqueness of the name itself, is clearly indicative of bad faith. The Respondent took advantage of a lapse in registration of an active domain name, to register a domain name that comported the Complainant’s trademark and that was clearly and exclusively associated with the Complainant and his foundation for more than fifteen years.
Under these circumstance a finding of bad faith use is also evident, notwithstanding that the disputed domain name has apparently thus far only been used passively. The Complainant lists the well-known Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and many of its progeny as justifying a finding of bad faith (passive) use here. The panel agrees. On the facts of this case it is difficult to conceive what good faith use the Respondent could make of the disputed domain name; and even its passive holding of the disputed domain name has the, apparently deliberate, effect of depriving the Complainant of validly continuing to use it as it did for many years.
The Panel accordingly finds bad faith registration and use within the meaning 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.
Nicolas Ulmer
Sole Panelist
Date: October 23, 2019
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