The Complainant is Melo Enterprises, Inc., United States of America (“United States” or “USA”), represented by Moritt Hock & Hamroff LLP, United States.
The Respondent is Nathan Hughes, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2020. On August 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2020, 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 August 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2020. The Response was filed with the Center on September 14, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 21, 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 is the corporate vehicle through which a Mr. Carmelo Anthony carries on his numerous business and charitable enterprises. Mr. Anthony is a professional basketball player in the National Basketball Association (“NBA”) league. He is typically known as “Melo”. Mr. Anthony’s career began in 2003 playing college basketball for the Syracuse Orange team. At the end of the 2003 season, his team won the national collegiate (NCAA) championship and he was named the NCAA Final Four Most Outstanding Player. His professional career began when he entered the NBA draft immediately following. In 2011, Mr. Anthony transferred to the New York Knicks where he was allocated the jersey No. 7. At that time, he began incorporating the number “7” in his name to represent it as “Me7o”. Mr. Anthony has been an NBA All Star ten times (2007, 2008 and 2010 to 2017), twice named in the All NBA Second Team (2010, 2013), four times named in the All NBA Third Team (2006, 2007, 2009, and 2012), the NBA scoring champion in 2013, the NBA All-Rookie First Team in 2004 and three times the USA Basketball Male Athlete of the Year (2006, 2012, and 2016). The Complainant established an official Facebook page on May 29, 2012, and it now has almost 5,800,000 followers and over 5 million likes. Many of the posts feature the hashtag #StayMe7o. There are also links to the website at “www.thisisMELO.com”. The official “This is Melo” Facebook page now has over 13,000 followers. The Complainant also operates the official Carmelo Anthony Instagram page which has over 7.2 million followers. The “This is Melo” Instagram account has over 20,000 followers. Many, if not most, of the posts on both accounts feature the hashtag #StayMe7o. The official Youtube account was established in June 2012 under the name Carmelo Anthony and now has 113,000 subscribers. It features extensive use of “Melo” or “ThisisMelo”. Mr. Anthony’s online video series for Vice Sports makes extensive use of #StayMelo. Amongst other things, this series was nominated for a Webby Award in 2016. According to the Complaint, to promote his career and business and charitable activities Mr Anthony has been using the slogans #StayMelo since at least 2006 and #StayMe7o since at least 2011. The Complainant points out that almost all the listings on the first eight pages of a Google search on “stay melo” are results for Mr. Anthony or his merchandise or other activities. Similarly, almost all the entries on the first nine pages of a Google search for “stay me7o” are results for him or his activities. The Complainant has a registered trademark in the United States, Trademark No. 4,669,550, for MELO in respect of services in International Classes 35 and 41. This trademark was registered on January 13, 2015. The application was filed on May 30, 2013. The Complainant also has two pending trademark applications in the United States, Serial Numbers 88072012 and 88889826 for, respectively, MELOMADE and STAYME7O. The latter of which was filed on April 27, 2020. The Respondent registered the disputed domain name on June 7, 2012. It has not resolved to an active website since then. In his Response, the Respondent has not suggested it has been used in any way. 5. Discussion and Findings 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. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. 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 in the United States of the registered trademark for MELO, Trademark No. 4,669,550. In accordance with usual practice under the Policy, the Panel does not take into account the pending trademark applications. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.4. Given the length and extent of use of the strap lines #StayMelo and/or #Stayme7o, however, it also seems likely that the Complainant can claim rights in those expressions as unregistered trademarks. See WIPO Overview 3.0 , section 1.2. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. 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. See e.g., WIPO Overview 3.0 , section 1.7. 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 3.0, section 1.11. Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark and the term “stay”. As the trademark is fully encompassed within the disputed domain name in the identical alphanumeric string, this is sufficient for a finding of confusing similarity under the Policy. As this requirement under the Policy is essentially a standing requirement, the addition of a descriptive word like “stay” does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. Similarly, the disputed domain name is at least confusingly similar to the Complainant’s unregistered trademarks. The substitution of “l” for “7” (which is itself a transposition for “L”) is not significant. See e.g.,WIPO Overview 3.0, section 1.9. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and 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. UDRP 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. The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. In his Response, the Respondent stated in part: “Under current trademark law I feel that your complaint would not be upheld as none of the trademarks reference or match this domain name. I have also owned and maintained this domain name since registration in 2012 for a personal project. “In regards to the rest of the complaint, I can not see any lawful reason why this domain should be transferred. “I personally have run a number of businesses over the last 11 years and not once have I bought a domain for the purpose of selling it. All domain names have been bought for personal projects or businesses I have owned.” As mentioned in Section 4 above, the disputed domain name does not resolve to an active website. So far as searches archived by the Wayback Machine go, there have been none. Although the Respondent states he bought the disputed domain name for a personal project, he has not provided any indication of what the business or project is or may have been. Nor has the Respondent provided any evidence to demonstrate use in connection with such a project or to demonstrate that he had taken preparations for such use. In those circumstances, the Panel is not able to accept the bald claim that the disputed domain name was registered for some business or personal project. See e.g., WIPO Overview 3.0, section 2.2. The expression “stay mellow” is something of an ordinary expression in at least English vernacular. In broad terms, it can be understood as meaning stay relaxed or keep calm. The disputed domain name is not the precise expression in the vernacular. One “L” and the “w” have been omitted. The disputed domain name is not therefore such vernacular expression. How and why the Respondent arrived at the variant registered in the disputed domain name has not been explained. While the Respondent is apparently located in the United Kingdom, basketball and in particular the NBA competitions are broadcast around the world. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has provided only the most general explanation which is not corroborated by any supporting evidence. In these circumstances, the Panel is unable to accept the Respondent’s claim. Accordingly, 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 Respondent could not have been aware of the Complainant’s registered trademark for MELO at least because the Complainant did not apply to register it until 2013 and it was not registered until 2015. By June 2012, however, Mr. Anthony had been using and promoting the strap line “Stay Melo” since 2006 and “Stay Me7o” since 2011 after his move to the New York Knicks. By June 2012, Mr Anthony was a very prominent professional basketballer within the NBA. He had been named an NBA All Star at least four times – 2007, 2008, 2010, and 2011. He was also named an NBA All Star again in 2012. He had also been named the USA Basketball Male Athlete of the Year in 2006 and again in 2012. He had also been named in the All NBA Second or Third Teams in each of 2006, 2007, 2009, and 2010, and again in 2012. The Complainant, or Mr. Anthony, also started his official Facebook account in May 2012. The Youtube account was established in June 2012. It is not clear when the Instagram account was started. Given the international exposure of the NBA and Mr. Anthony’s prominence in the NBA, it is certainly possible that the Respondent was aware of Mr. Anthony and his unregistered trademarks. Most significantly, the disputed domain name is not the ordinary or common expression “stay mellow”, but rather a variant which is, and was by June 2012, closely associated with Mr. Anthony and, through him, the Complainant as his corporate vehicle. The Respondent registered the disputed domain name shortly after the Complainant started the Youtube channel. As discussed in Section 5B above, the Respondent has not explained how he arrived at the particular derivation embodied in the disputed domain name and has not made any attempt to corroborate his claim that he registered the disputed domain name for a personal project, let alone what the project was or whether it ever proceeded. In other words, the Respondent registered the disputed domain name, which is confusingly similar to the name by which Mr. Anthony is (and was by June 2012) commonly known and also confusingly similar to the distinctive straplines which Mr. Anthony used, in circumstances where the Respondent did not have rights or legitimate interests to the disputed domain name. In these circumstances and in the absence of explanation, the Panel finds that the disputed domain name was registered in bad faith. Further, it has been well-established since Telstra Corporation Limited v Nuclear Marshmallows,WIPO Case No. D2000-0003 that the passive holding of the disputed domain name in such circumstances constitutes use in bad faith. Accordingly, the Complainants have established all three requirements 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, Warwick A. Rothnie
Sole Panelist
Date: October 5, 2020
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