The Complainant is Kejuan Muchita Inc., United States of America (“United States”), represented by Soler Legal LLC, United States.
The Respondent is Quality Hosting, Quality Hosting, 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 October 21, 2020. On October 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 27, 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 30, 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 amended Complaint on November 2, 2020. The Center verified that the Complaint together with the amended 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 November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on December 16, 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 a New York limited liability company, which represents and furnishes the services of the musician Kejuan Muchita (collectively, the “Complainant”), an internationally known recording artist, who performed professionally under the name “Havoc" with a hip hop duo of which he was a founding member known as “Mobb Deep”. In addition to the Complainant, the other member of the Mobb Deep duo was Albert Johnson, who performed in the duo under the stage name “Prodigy” and died in June 2017. The Complainant has rights in two registrations for the trademark MOBB DEEP with the United States Patent and Trademark Office (“USPTO”). The first of these (No 2,630,610) issued on October 8, 2002, in connection with “entertainment, namely live performances by a musical group in class 41”. The registration shows a date of first use in commerce of September 28, 1992. The second registration (No. 5,737,546) issued on April 30, 2019, in connection with “Digital media, namely pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring and promoting music; musical sound recordings, downloadable musical sound recordings; series of musical sound recordings” as well as “hats, headwear, shirts, tank-tops, baseball caps, skull caps, sweat shorts, (and) T-shirts”. It shows a first use in commerce date of 19 November 1996. The Disputed Domain Name The Complainant cites two United States trademark registrations for the mark MOBB DEEP, as prima facie evidence of ownership. The Complainant submits that the mark MOBB DEEP is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. The Complainant contends that it also enjoys common law rights based on usage of the “Mobb Deep” group name and brand since 1992. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name is identical to and incorporates in its entirety the MOBB DEEP trademark and that the similarity is not removed by addition of the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of any affiliation with, or consent to use the trademark by, the Complainant and questions “why the Respondent would intentionally misspell the word ‘mob’ other than to confuse the public, capitalize on the Complainant’s mark and brand, or to register the domain with the intent to hold the disputed domain for ransom”. Finally, the Complainant alleges that the registration and use of the Disputed Domain Names was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use and fame of the Complainant’s trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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 Complainant has produced sufficient evidence to demonstrate that it has trademark rights in the mark MOBB DEEP for the purposes of the Policy, in this case having regard to the registrations in the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). It is necessary for the Panel to consider whether the Complainant has common law rights in the mark MOBB DEEP. That is so because, although the time when a Complainant acquires its trademark rights may not be significant for the purposes of paragraph 4(a)(i) of the Policy, it may well be important during a consideration of paragraphs 4(a)(ii) and (iii) of the Policy. It is therefore necessary to consider whether the Complainant has common law trademark rights and, if so, whether they date back to a time when the Disputed Domain Name was registered. The Complainant has submitted uncontested evidence concerning the recognition of the name “MOBB DEEP” as a trademark and of the wide extent of media mentions, sales and other indicia of secondary meaning that appears to have occurred demonstrating that the mark MOBB DEEP has been known publicly as the source of musical performances and related recorded formats of such performances. This Panel therefore finds the Complainant has, for the purposes of the Policy, carried its burden of proving that it enjoys common law rights in the mark MOBB DEEP from the date of first use as indicated in the registered trademark No 2,630,610 that shows a date of first use in commerce of September 28, 1992. Turning to whether the Disputed Domain Name is identical or confusingly similar to the MOBB DEEP trademark, the Panel observes that the Disputed Domain Name Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s MOBB DEEP trademark, and the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name mainly because: (a) the Respondent is neither affiliated with Complainant in any way nor has been authorized by the Complainant to register any domain name incorporating the MOBB DEEP trademark; (b) the Respondent is not commonly known by the Disputed Domain Name; and (c) there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. On any objective view of the facts and evidence, this is not a case that involves a legitimate fan website (see WIPO Overview 3.0, section 2.7). This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and, given the burden then shifts to Respondent to demonstrate rights or legitimate interests in the Disputed Domain Name, in the absence of a reply by the Respondent, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, the trademark MOBB DEEP is so well known for hip hop music, that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present case, the Respondent registered the Disputed Domain Name several years after the Complainant first established common law rights in the MOBB DEEP trademark. In view of the identical composition of the Disputed Domain Name, the Panel finds it highly probable that the Respondent knew of the Complainant’s trademark, and had it in mind at the time of registration. On the issue of use, the uncontested evidence is that the website resolves to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent with links that include the following: “Mobb Deep Songs”, “Hip Hop” and “Havoc”. Although each of these are references to the duo’s music, their genre of music and the Complainant’s stage name, this Panel finds these links do not make it a fan site as such, and certainly not one without commercial intention. This Panel agrees with previous panels that “while use for purely a non-commercial fan site would not constitute use in bad faith, use for a commercial fan site does” (see: RAI Radiotelevisione Italiana S.p.A. v. Alessandro Pescetelli,WIPO Case No. D2002-0716; Curtis Jackson v. WhoisGuard,WIPO Case No. D2006-0070). This Panel notes the 20 year delay between the registration of the Disputed Domain Name and the filing of the Complaint, and agrees with numerous previous Panels that have found this neither bars a complainant from filing such case, nor from potentially prevailing on the merits (see WIPO Overview 3.0, section 4.17). This Panel observes that the Respondent is advantaged, rather than prejudiced, by the Complainant’s long delay in seeking relief in view of the long period it has had to receive PPC click-through commissions, by creating a likelihood of confusion with the Complainant’s trademark as to the source of the website. Accordingly, the Panel finds that the Respondent has registered and used the Disputed Domain Name in bad faith, and the Complainant has satisfied the requirements 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 Nicholas Weston
Sole Panelist
Date: December 30, 2020
Full & Egal Universal Law Academy