The Complainant is Guitar Center, Inc., United States of America (“United States”), represented by Much Shelist PC, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / UIT, dinh tu tran, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2020. On July 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2020, 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 July 10, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 10, 2020. The Center verified that the Complaint together with the amendment to 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 July 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2020. On July 21, 2020, the Respondent sent an email to the Center. The Center acknowledged the receipt of the Respondent’s email on July 21, 2020. On August 7, 2020, the Center notified the Parties that it would proceed to Panel Appointment. The Center appointed Assen Alexiev as the sole panelist in this matter on August 17, 2020. 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 and its affiliates operate a music retailer chain in the United States with 269 physical retail locations across the country. The Complainant is the owner of the European Union trademark GUITAR CENTER with registration No. 8993206, registered on September 20, 2010 for goods and services in International Classes 9, 15, 35 and 41 (the “GUITAR CENTER trademark”). The Complainant markets and promotes its goods and services on the Internet through its website at “www.guitarcenter.com”. The disputed domain name was registered on April 15, 2020. It resolves to a parking page of the Registrar, which advertises its services and contains a “Submit Offer” link, redirecting visitors to a form for the submission of an offer for the purchase of the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is identical or confusingly similar to the GUITAR CENTER trademark in which the Complainant has rights, because it incorporates the trademark in its entirety, and the inclusion of the “.cloud” generic Top-Level Domain (“gTLD”) does not avoid the confusing similarity. According to the Complainant, the Respondent lacks rights or legitimate interests in the disputed domain name, as it is not commonly known by the disputed domain name, there is no relationship between the Complainant and the Respondent, and the Complainant has not authorized the Respondent to use the GUITAR CENTER trademark in a domain name or for any other purpose. The Complainant adds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, or a use of the disputed domain name in connection with a bona fide offering of goods or services. Rather, it offers the disputed domain name for sale, and its website contains a link to the Registrar’s services, which is not a bona fide use of the disputed domain name. The Complainant contends that the disputed domain name was registered and is being used in bad faith. It points out that it has marketed and sold its goods using the GUITAR CENTER trademark since the mid‑1960’s, which was well before the Respondent’s registration of the disputed domain name on April 15, 2020. According to the Complainant, it is therefore implausible that the Respondent was not aware of the GUITAR CENTER trademark when it registered the disputed domain name; rather, it knew about this trademark and targeted the Complainant when it registered the disputed domain name. The Complainant maintains that a domain name registrant may be found to have acted in bad faith by passively holding a domain name. In this case, the disputed domain name is confusingly similar to Complainant’s trademark and the Respondent has not used it other than offering it for sale, and has sought to conceal its identity and location by using a privacy protection service so that the service of documents directly to the Respondent and verification of service would be delayed or impossible. The Complainant submits that on May 5, 2020, it sent a cease and desist letter to the Respondent, to which the Respondent did not respond. B. Respondent The Respondent did not file a formal Response. In an email communication of July 21, 2020, it made the following statement: “Firstly, we’ve just legally bought this domain from [the Registrar] and they checked the conflict or duplicate domain beforehand. We include the receipt as an attachment. Secondly, we buy this domain for study purposes. Actually, at this moment, we haven’t used this domain yet.” 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the Respondent has registered and is using the disputed domain name in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …” The Respondent however did not submit a formal Response in this proceeding addressing the specific contentions of the Complainant and the evidence submitted by it. A. Identical or Confusingly Similar The Complainant has provided evidence that it is the owner of the GUITAR CENTER trademark, so the Panel accepts that the Complainant has rights in this trademark for the purposes of the Policy. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.cloud” gTLD section of the disputed domain name. The relevant part of the disputed domain name for purposes of the first element is therefore the sequence “guitarcenter”, which incorporates the word elements of the GUITAR CENTER trademark, omitting the space between them. As discussed in section of 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the GUITAR CENTER trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, as it is not commonly known by it and is not using it in connection with a bona fide offering of goods and services, but offers it for sale and the parking page at the disputed domain name advertises the services of the Registrar. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has only alleged that it has legally acquired the disputed domain name for study purposes, without going into any detail and without providing any supporting evidence about the “study purposes”. It has not responded to the Complainant’s cease and desist letter either. The contact details that the Respondent has provided to the Registrar are wrong. The disputed domain name is confusingly similar to the GUITAR CENTER trademark, and the evidence in the case file shows that it resolves to a parking website that advertises the services of the Registrar and contains a “Submit Offer” link, redirecting visitors to a form for the submission of an offer to purchase the disputed domain name. This makes it likely that Internet users may be attracted to the disputed domain name due to its confusing similarity to the GUITAR CENTER trademark, and then offered the services of the Registrar and an opportunity to buy the disputed domain name, whereby certain commercial opportunities may arise because of the attractiveness of the GUITAR CENTER trademark to Internet users. In the Panel’s view, such conduct does not appear to be legitimate and giving rise to rights and legitimate interests of the Respondent in the disputed domain name, while the Respondent’s explanation of the reason for the registration of the disputed domain name is unconvincing. In view of the above, the Panel finds that the Respondent has not rebutted the prima facie case made by the Complainant, and does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel. As discussed above, the disputed domain name is confusingly similar to the GUITAR CENTER trademark, which was registered ten years before the registration of the disputed domain name, while the Complainant claims to have used it for more than 50 years. The Respondent has used the disputed domain name only for a parking page that advertises the services of the Registrar and offers visitors an opportunity to submit offers for the purchase of the disputed domain name. The Respondent’s allegation that it has legally acquired the disputed domain name for study purposes is not convincing, it does not serve to explain the reasons for the registration and current use of the disputed domain name, it lacks any details, and it is not supported by evidence. The Respondent has not responded to the Complainant’s cease and desist letter and has provided non-existent contact details to the Registrar. In view of the above, the Panel accepts that the Respondent is more likely than not to have registered the disputed domain name with knowledge of the Complainant and targeting the GUITAR CENTER trademark in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an official online location of the Complainant, and then offer them the services of the Registrar and/or the possibility to make offers for the disputed domain name. In view of this, the Panel accepts more likely than not that by registering and using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s GUITAR CENTER trademark. Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith. 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 Assen Alexiev
Sole Panelist
Date: September 3, 2020
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