The Complainant is Felipe Coronel, United States of America (“United States” or “U.S.”), represented by Melwani & Chan LLP, United States.
The Respondent is Contact Privacy, Ireland.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2021. On July 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 21, 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 July 21, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not file an amendment to the Complaint.
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 August 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 14, 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 BackgroundThe Complainant is an individual who is a well known hip-hop performer and recording artist under his stage name which is “Immortal Technique”. His debut album was released on September 14, 2001. He registered the Disputed Domain Name on September 4, 2002. On September 4, 2013, he inadvertently allowed it to lapse. Since then it has been transferred between third parties a number of times. The Respondent acquired it at an unknown date subsequent to September 4, 2013.
The Complainant owns U.S. trademark 3306458, registered on October 9, 2007, for the words IMMORTAL TECHNIQUE. This trademark is referred to as the “IMMORTAL TECHNIQUE trademark” in this decision.
The filed evidence establishes the Complainant as being the only user of the name “Immortal Technique” and that name is, in the world of hip hop music, famous and well known.
The Disputed Domain Name resolves to a website which contains “pay‑per-click” (“PPC”) links which appear likely to be automatically generated. Many of these appear lead to third party sites concerning hip hop music related items.
5. Parties’ Contentions A. ComplainantThe Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is identical to the Complainant’s trademark IMMORTAL TECHNIQUE.
The Respondent has no rights or legitimate interests in the terms “immortal technique”.
The Disputed Domain Name was registered and is being used in bad faith. It is being used for a PPC website which attracts traffic because the Disputed Domain Name has adopted the Complainant’s well‑known and famous trademark.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsPreliminary Matters
The Panel notes that no communication has been received from the Respondent. However, given that the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has rights in the IMMORTAL TECHNIQUE trademark. The Panel finds the Disputed Domain Name is identical to this trademark. It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, section 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), and G4S Plc v. Noman Burki,WIPO Case No. D2016-1383.
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsThe Panel finds the IMMORTAL TECHNIQUE trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use IMMORTAL TECHNIQUE trademark. The Complainant has prior rights in the IMMORTAL TECHNIQUE trademark, which precede the registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad FaithUnder paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 on-line 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 Panel concludes that (iv) applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s mark, and the Respondent derives commercial gain as a result. The combination of the two ordinary English words “immortal” and “technique” produces a conjoined word which on the evidence can only refer to the Complainant. It is the Complainant’s fame and reputation that is likely to attract Internet traffic to the website linked to the Disputed Domain Name. That website comprises a series of PPC links to other third-party websites. The Panel infers that some consumers, once at this website will follow the provided links and “click through” to other sites. The Respondent presumably earns “click-through” linking revenue as a result. The Panel infers the website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click-through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006‑1315; Owens Corning v. NA,WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; and Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396.
See also WIPO Overview 3.0 section 3.5: “Can third-party generated material ‘automatically’ appearing on the website associated with a domain name form a basis for finding bad faith?
Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).
Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”
Accordingly, the Panel finds the Respondent has registered and used the Disputed Domain Name in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
7. DecisionFor 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
Nick J. Gardner
Sole Panelist
Date: September 28, 2021