The Complainant is Guitar Center, Inc., United States of America (“United States”), represented by Much Shelist PC, United States.
The Respondent is Luiz Carlos de Arruda Leite, Brazil. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. On September 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 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 October 2, 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 October 13, 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 October 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2020. The Center appointed Luca Barbero as the sole panelist in this matter on November 30, 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, either itself or through its affiliates, uses the trademark GUITAR CENTER in connection with the operation of a music retailer chain in the United States and has 269 brick-and-mortar retail locations across the country. The Complainant offers in fact a wide variety of musical instruments and related accessories for sale, including acoustic and electric guitars, bass, amplifiers, drums, cables, sheet music, and many others. The Complainant has provided evidence of ownership of trademarks consisting of, or comprising GUITAR CENTER, including the following: - European Union trademark registration No. 8993206 for GUITAR CENTER (figurative mark), registered on September 20, 2010, in international classes 9, 15, 35, and 41; - United States trademark registration No. 1290481 for GUITAR CENTER (figurative mark), registered on August 14, 1984, in international class 42; - United States trademark registration No. 4250600 for GUITAR CENTER STUDIOS (word mark), registered on November 27, 2012, in international class 41; - United States trademark registration No. 5048228 for GUITAR CENTER LESSONS INSTRUCTION AND WORKSHOPS (word mark), registered on September 27, 2016, in international class 41; - United States trademark registration No. 4687184 for GUITAR CENTER MUSIC MENTOR SERIES (figurative mark), registered on February 17, 2015, in international class 41. The Complainant is also the owner of the domain name The disputed domain name The Complainant contends that disputed domain name With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant highlights that the Respondent is pointing the disputed domain name to a website using the Complainant’s trademark to promote identical goods and services as the ones provided by the Complainant. The Complainant contends that there has never been any relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain name. Moreover, the Complainant states that it has in no way authorized the Respondent to use the trademark GUITAR CENTER in a domain name, on any website or for any other purpose. The Complainant points out that the Respondent would be unlikely to provide any evidence of demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services, as the Respondent has shown that the registration and use of the disputed domain name was conducted with the intent to trade off the goodwill of the Complainant’s trademark. With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering its various trademark registrations and longstanding use of the trademark GUITAR CENTER, the use of the Complainant’s trademark on the Respondent’s website and the addition of the word “music” to the trademark in the disputed domain name, the Respondent was undoubtedly aware of the Complainant when registering the disputed domain name. The Complainant also emphasizes that the Respondent sought to conceal its identity and location by using a privacy protection service and submits that the Respondent constructed this privacy in such a way that the service of documents directly to the person or entity of the Respondent would be delayed or impossible, which is a further demonstration of bad faith registration. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed 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 disputed domain name; and, (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark GUITAR CENTER based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annex 3 to the Complaint. As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Moreover, as indicated in section 1.8 of the WIPO Overview 3.0, “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Furthermore, as held in section 1.10 of the WIPO Overview 3.0, “To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element”. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark GUITAR CENTER as it reproduces the denominative element of the trademark “guitar center” in its entirety, with the mere addition of the descriptive word “music”, which does not prevent a finding of confusing similarity, and the gTLD “.com”, which can be disregarded when comparing the similarities between a domain name and a trademark. In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Moreover, there is no evidence that the Respondent might be commonly known by the disputed domain name or a name corresponding to the disputed domain name. As mentioned above, the disputed domain name has been pointed to a website showing a logo reproducing the core of the Complainant’s trademark “guitar center” and promoting the sale of musical instruments and other products, i.e., the same products provided by the Complainant under the domain name In view of the above-described use of the disputed domain name, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. The Panel notes that the words “guitar center” encompassed in the disputed domain name and in the Complainant’s trademark correspond, individually, to English dictionary words and, together, to a potentially common phrase in English. As held in section 2.10 of the WIPO Overview 3.0, in order for a respondent to rely on the circumstance a domain name is composed of dictionary words to ground a claim to rights or legitimate interests, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. The Complainant has provided evidence to show that the Respondent has used the disputed domain name in connection with a website in Portuguese where not only guitars but also other musical instruments and accessories are offered for sale. In view of the foregoing and considering i) the composition of the domain name, combining GUITAR CENTER with the descriptive term “music”, ii) the reputation of the Complainant’s trademark and iii) the Respondent’s failure to file a Response to counter the Complainant’s allegations, the Panel finds that the Respondent likely registered the disputed domain name with the Complainant’s trademark in mind, in order to take advantage from the likelihood of association with the Complainant and its GUITAR CENTER products and services. See, along these lines, Guitar Center, Inc. v. Contact Privacy Inc. Customer 0156291006 / Nikolay CHAVDAROV, My Guitar Center,WIPO Case No. D2019-3092; and Guitar Center, Inc. v. CallYouNet, Claes Von Post,WIPO Case No. D2020-1084. Therefore, the Panel finds that the Complainant has proven that, on balance of probabilities, the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith: “(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 As to bad faith at the time of registration, the Panel finds that, in view of the well-known character of the Complainant’s trademark not only in the United States but also internationally, as recognized also in the prior WIPO decisions Guitar Center, Inc. v. Contact Privacy Inc. Customer 0156291006 / Nikolay CHAVDAROV, My Guitar Center and Guitar Center, Inc. v. CallYouNet, Claes Von Post, supra, the Respondent, being active in the same sector, was or ought to be aware of the Complainant and its business under the trademark GUITAR CENTER. Moreover, the Respondent’s use of the disputed domain name in connection with a website offering for sale not only guitars but also other musical instruments and accessories suggests that the Respondent did not register the disputed domain name in light of the individual descriptive meaning of the words combined in it, but, most likely, in order to trade off the Complainant’s trademark rights. In view of the above-described use of the disputed domain name made by the Respondent, the Panel finds that the Respondent has been intentionally attempting to attract Internet users to its website for commercial gain, by causing a likelihood confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the products promoted therein, according to paragraph 4(b)(iv) of the Policy. As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”. Along the same lines is the decision Renegade LLC v. Kenneth Gibert,WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain name in bad faith according to 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, Luca Barbero
(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.”
Sole Panelist
Date: December 15, 2020
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