The Complainant is Guitar Center, Inc., United States of America (“United States”), represented by Much Shelist PC, United States.
The Respondent is Richard Ouzounian, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2021. On April 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 29, 2021, 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 May 3, 2021 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 May 18, 2021. 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 May 19, 2021. The Respondent requested and received a 4-day extension; in accordance with the Rules, paragraph 5, the due date for Response was June 12, 2021. The Respondent filed a Response on June 11, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on June 22, 2021. 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 large music retailer chain in the United States, with 269 brick-and-mortar retail locations across the country. The Complainant markets and promotes its goods and services through its website at “www.guitarcenter.com”, and by virtue of its longstanding use, substantial investment in marketing and promotion, and the provision of world-class goods and services, the Complainant’s trademark has become well known to purchasers of musical instruments and related goods and services. The Complainant owns a number of valid and subsisting trademark registrations in jurisdictions worldwide for GUITAR CENTER and other variations and stylized versions of that mark, with continuous use of some of those marks dating back to the mid-1960s. In the United States, for example, the Complainant owns GUITAR CENTER (stylized), United States Trademark Registration No. 1,290,481, registered on August 14, 1984 in international class 42; and GUITAR CENTER STUDIOS, United States Trademark Registration No. 4,250,600, registered on November 27, 2012 in international class 41 (hereinafter referred to collectively as the “GUITAR CENTER Mark”). The Disputed Domain Name was registered on April 3, 2019, after the Complainant registered and used its GUITAR CENTER Mark. The Disputed Domain Name resolves to a landing page entitled “Dirt Cheap Domains and Websites” that purports to offer domain name registrations, website hosting, and email marketing. On December 30, 2020, counsel for the Complainant sent a cease-and-desist letter to the Respondent via the “Domain Holder Contact Request Form” provided by the Registrar but received no reply. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark or trademarks. - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. - the Disputed Domain Name was registered and is being used in bad faith. - the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The following are the Respondent’s contentions: - the Disputed Domain Name was available on the open market on April 3, 2019, and was available for anyone to register, but the Complainant failed to register it. - the Respondent never used the Disputed Domain Name and there is no evidence showing otherwise. - the Respondent never offered the Disputed Domain Name for sale. - no confusion has been demonstrated between the Complainant and the Respondent. - the Complainant and the Respondent are not competitors, and the Disputed Domain Name was not registered by the Respondent to disrupt the Complainant’s business. - The Disputed Domain Name was not registered by the Respondent to attract Internet users to the Respondent’s website or any other online location, by creating a likelihood of confusion. - the Disputed Domain Name was registered by the Respondent in anticipation of potential future business opportunities. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)): (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. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the GUITAR CENTER Mark as set forth below. It is uncontroverted that the Complainant has established rights in the GUITAR CENTER Mark based on its numerous years of use plus its registered trademarks for the GUITAR CENTER Mark. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the GUITAR CENTER Mark. The Disputed Domain Name consists of the GUITAR CENTER Mark in its entirety followed by the term “pro” (a common abbreviation for “professional”), and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of another term. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary or descriptive word to a trademark – or an abbreviation thereof – does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Further, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s GUITAR CENTER Mark. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s GUITAR CENTER Mark. The Complainant does not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Based on the use made of the Disputed Domain Name to resolve to a website that offers domain name registrations, website hosting, and email marketing, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it, nor any evidence that the Respondent was making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c). In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case, and has merely referred (without evidence) to a future business plan. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy as set forth below. First, based on the circumstances here, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s landing page by creating a likelihood of confusion with the Complainant’s GUITAR CENTER Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving page. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its GUITAR CENTER Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”). Second, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration – and here there is nothing more than a vague claim to a potential future business, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Third, the Complainant has promoted and sold its goods and services using the GUITAR CENTER Mark since the mid-1960s, which is decades before the Respondent’s registration of the Disputed Domain Name. It is therefore implausible that the Respondent was not aware of the GUITAR CENTER Mark when it registered the Disputed Domain Name. Thus, the Panel finds that the Respondent had actual knowledge of the GUITAR CENTER Mark and targeted the Complainant when it registered the Disputed Domain Name, demonstrating the Respondent’s bad faith. Finally, the lack of response by the Respondent to the cease-and-desist letter sent by the Complainant supports a finding of bad faith. Past UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun
Sole Panelist
Date: July 2, 2021
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