The Complainant is Afropunk LLC, United States of America (“United States”), represented by Squire Patton Boggs (UK) LLP, United States.
The Respondent is Matthew Morgan, Matthew Morgan, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2021. On September 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 2021, 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 September 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2021. The Respondent did not submit any formal response. Accordingly, the Center started the Commencement of panel Appointment process on October 11, 2021.
The Center received informal communications from the Respondent on September 20, 2021 and on October 12, 2021 to which the Center acknowledged receipt.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 15, 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 a New York limited liability company headquartered in Brooklyn, New York, United States. The online database of the New York Division of Corporations shows that it was established in June 2004. Since 2005, the Complainant and its affiliates have produced music festivals in Brooklyn featuring live music, film, fashion, and art produced by black artists. The Complaint attaches a Membership Unit and Sale Agreement (“2018 Purchase Agreement”) showing that the Complainant was acquired in August 2018, by Afropunk Worldwide, LLC (“Afropunk Worldwide”), which the state corporations database indicates is a limited liability company formed in May 2018.
The Complainant holds United States Trademark Registration Number 4,825,000 (registered October 6, 2015) for AFROPUNK as a standard character mark, claiming first use in commerce on May 29, 2001. Presumably, this first use in commerce, which is also claimed in the Complaint, was made by a predecessor in interest, but that use is not explained or documented in the Complaint. It would have occurred before the current Complainant entity was formed and before the first Afropunk live festival in 2005.
The Domain Name is currently registered to the Respondent “Matthew Morgan”, listing his organization as “Matthew Morgan” with a postal address in Brooklyn, New York, United States. Hence, Mr. Morgan is referred to hereafter in the singular as the “Respondent”.
The Complaint states that “Afropunk has a robust website at AFROPUNK.COM, a domain that was initially registered in Complainant’s name on August 18, 2000, and which it has maintained since July 2005”, citing an attached domain registration history and historical screenshots from November 2, 2004 through the present.
The Complaint explains that the Respondent “formerly was a member of Complainant’s board of directors (until February 2020) and was co-CEO of the Complainant until March 24, 2020. By virtue of his employment with Complainant, Respondent controlled and managed access to the disputed domain during his employment. Respondent oversaw digital marketing and Complainant’s AFROPUNK.COM website. Respondent was very aware of the AFROPUNK Trademark and its importance to Complainant’s business and renown”. The Complaint states further that “Respondent Morgan registered, or directed the registration of, the domain name AFROPUNK.COM on August 18, 2000, as part of his duties for Afropunk. The disputed domain was originally registered in the name of Complainant Afropunk, LLC. […] Respondent Morgan registered the disputed domain with Registrar Network Solutions. He solely maintained the username and password for that Network Solutions account”.
There is no contemporaneous documentation in the record concerning the arrangements in the early 2000s when the Domain Name was registered. The Complaint attaches an email thread from 2017 demonstrating that the Respondent exercised control at that time over the Domain Name in managing the Complainant’s hosting arrangements for the website and email accounts associated with the Domain Name. It also appears that from 2015 to May 2020 the Respondent renewed the registration of the Domain Name using a domain privacy service. In 2018, the Respondent entered into an employment agreement (the “2018 Employment Agreement”) with the Complainant’s parent, Afropunk Worldwide. This provided in part as follows:
“Upon termination of your employment for any reason, or at any other time the Company may so request, you will deliver promptly to the Company all memoranda, notes, records, reports and other documents (and all copies thereof) in any form whatsoever (including information contained in computer memory or on any computer disks or other storage devices) relating to the Company’s business, which you obtained during the Term, or otherwise serving or acting on behalf of, the Company and which you may then possess or have under your control and not maintain copies of any such documents on any personal computer or other storage device in your personal possession. No later than the effective date of your termination, you will also return all Company property previously in your possession, including but not limited to any Company equipment, electronic devices, keys, identification cards, and credit cards.”
The Complaint includes a termination letter from Afropunk Worldwide to the Respondent dated March 24, 2020. According to the Complaint, the Respondent thereafter declined to furnish the username and password for the Registrar’s management account and did not reply to repeated requests to transfer control of the Domain Name.
The WhoIs history attached to the Complaint shows an “Update” on May 2, 2021, where the registration details for the Domain Name were changed to list the Respondent openly as the registrant rather than displaying the name of a domain privacy service as was the case previously.
At the time of this Decision, the Domain Name continues to resolve to the website at “www.afropunk.com”, which appears much as it has historically, advertising AFROPUNK live music events, recorded music, and AFROPUNK branded clothing and other merchandise, along with short articles about African-American artists and business people. The website does not have an “About Us” page, but it includes a copyright notice in the Complainant’s name on several pages including the “Contact Us” page: “(c) 2015 – 2021 Afropunk LLC.” The “AFROPUNK” logo at the top of several pages is followed not by a trademark symbol but by a small “©” symbol indicating copyright. It appears from photographs in the “Shop” section of the website that the merchandise for sale is also branded with the AFROPUNK mark followed by a copyright rather than a trademark symbol, when there is any marking at all. The Terms of Use page refers to the Policy of “Afropunk” regarding copyright violations, and the Privacy Policy page is written in the name of the Complainant. The website links to social media sites on Facebook, YouTube, Instagram, and Twitter.
In short, the website associated with the Domain Name continues to appear to the public to be operated by or on behalf of the Complainant. The Complaint acknowledges that the Domain Name “hosts the content of its main website” and does not mention any other website or social media site through which the Complainant is doing business. The Complainant objects, however, that the “Complainant still cannot access the Network Solutions Account, as needed for control of the disputed domain (…) Respondent has the ability to create and alter content on the website residing at the disputed domain without authority or permission from Complainant, as Respondent is no longer employed by Complainant but has refused to transfer the registration of the disputed domain to Complainant, despite his knowledge that Complainant is the rightful owner of the domain name”.
The 2018 Purchase Agreement, the 2018 Employment Agreement with the Respondent, and a similar employment agreement with another key employee all included arbitration clauses. Afropunk Worldwide and its principal investor initiated an arbitration proceeding in 2020 against the Respondent and others regarding various claims including intellectual property rights. The Complaint attaches the Final Award dated August 19, 2021, in American Arbitration Association Case No. 01-20-0015-015. At paragraph 80, the arbitrator observed that “Respondents [did] not dispute that all intellectual property owned by Afropunk and used in its business is part of the August 2018 Transaction and properly owned by Afropunk.” However, the Domain Name is not mentioned in the Final Award, and as paragraph 86 of the Final Award makes clear, the arbitration proceeding did not resolve any specific intellectual property claims:
“To reiterate, for either side to prevail on a claim of ownership of intellectual property would require an item-by-item inventory of the exact work whose ownership rights are at issue, and, for each specific work, clarification of what right is being claimed (i.e., copyright, some other intellectual property right, or simply ownership of the physical embodiment), along with evidence as to who created it, at what time, under what circumstances, and how it came to be in the possession of Afropunk. Neither side undertook that task. Accordingly, both sides’ claims fail as stated, and Claimants’ Third Cause of Action and Respondents’ Thirteenth and Fourteenth Counterclaims are therefore denied.”
A previously-filed state court action in New York largely overlapped the claims in the arbitration proceeding and was stayed pending arbitration. The Complainant reports that a motion is pending in that court to confirm the arbitrator’s Final Award. Thus, there is no reason to suspend or delay this UDRP proceeding due to other judicial or arbitral proceedings. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.14.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that the Domain Name is identical to its registered AFROPUNK trademark.
The Complainant contends that the Respondent never had rights or legitimate interests in the Domain Name and “hijacked” it after his employment was terminated by the Complainant.
The Complainant treats the May 2, 2021 update of the WhoIs record, when the Respondent listed himself rather than a domain privacy service as the registrant, as a “re-registration” or “new registration”. Consequently, the Complainant argues that both the registration and use of the Domain Name subsequent to the Respondent’s termination were made in bad faith, with full knowledge of the Complainant’s trademark rights. “Further, Respondent Morgan’s hijacking of the disputed domain and by extension, of Complainant’s main customer-facing website, was a premeditated attempt to disrupt Complainant Afropunk’s business and harm Complainant.”
B. RespondentThe Respondents did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under 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”.
A. Identical or Confusingly SimilarThe first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Complainant holds a trademark registration for AFROPUNK as a standard character mark, which is the identical string found in the Domain Name. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.
Accordingly, the Panel finds that the Domain Name is identical to the Complainant’s registered mark for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant has established trademark rights and the general conclusion from a final arbitral award that “all intellectual property owned by Afropunk [Afropunk Worldwide, the Complainant’s parent] and used in its business is part of the August 2018 Transaction and properly owned by Afropunk”. Although the arbitrator did not identify the Domain Name as such property, there is no evidence on this record to contradict the Complainant’s account that the Domain Name has historically been used in the Complainant’s business and is still used for the Complainant’s “main website” despite being controlled by the Respondent. The Respondent has not come forward to assert rights or legitimate interests of his own in the Domain Name. The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(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 web site 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 web site or location or of a product or service on your web site or location.”
As discussed in the preceding section, the Respondent has no visible rights or legitimate interests in the Domain Name, yet the Respondent has acquired and has continued to control it, hosting the Complainant’s website, since the Complainant terminated the Respondent’s employment in 2018. The Complainant describes how this is disruptive and costly for its business, engenders confusion, and continues to attract Internet users to a site controlled by the Respondent not the trademark owner. This clearly amounts to bad faith use of the Domain Name, as the Respondent, a former director and officer, is fully aware of the Complainant and its mark.
However, the Policy, paragraph 4(a)(iii), is stated in the conjunctive: it requires bad faith both in the registration and use of the Domain Name. The registration history here is two decades old and rather murky. Fortunately, the Complaint includes a detailed historical WhoIs record.
The Complaint states that the “Respondent Morgan registered, or directed the registration of, the domain name AFROPUNK.COM on August 18, 2000, as part of his duties for Afropunk. The disputed domain was originally registered in the name of Complainant Afropunk, LLC”. The Complaint then argues that the Domain Name was registered anew, first in the name of a domain privacy service and then in the Respondent’s name in May 2021, which should be considered as the relevant time for assessing bad faith.
This historical account is not entirely accurate at the outset. First, there is no evidence that the Complainant entity existed until 2004, when the state corporations database shows that the Complainant was formed as a limited company. Second, while the Complaint attaches historical WhoIs records from DomainTools, the earliest WhoIs records show that the Domain Name was registered on August 18, 2000, but does not name the registrant. (In the current proceeding, the Registrar shows the Domain Name’s “creation date” instead as June 24, 2002, possibly attributable to a change in registrar.) The next historical WhoIs record is dated March 26, 2004 and names “highyellow productions” as the registrant; the Complainant offers no information about that entity.
But from July 24, 2005 through February 13, 2015, the WhoIs records list “Afropunk” as the registrant, presumably referring to the Complainant, at its Brooklyn address. From May 8, 2013 through January 28, 2021, the historical WhoIs records then list the registrant as Perfect Privacy, LLC. On May 3, 2021, the WhoIs record shows that the registration listed the Respondent as the registrant. According to the Complainant, the Respondent always controlled the Doman Name registrations and related hosting arrangements, ostensibly on behalf of the Complainant, as reflected in the 2017 email thread cited above and the fact that the Respondent’s email address appears in the contact information in some of the WhoIs records.
The Complainant states that the Respondent changed the registration to a domain privacy service in 2013 and then changed it again to his own name in 2021. The Respondent may have been acting within his authority when he made the 2013 change; he clearly however did not have authority to make the change in 2021 – let alone a change into his own name, because he had been terminated in 2018. What is unknown is whether the privacy service treated the Complainant or the Respondent as the underlying registrant during those years. Absent a Response establishing contrary facts, the Panel finds it probable that the Respondent, a former employee, in either event subsequently used his de facto control of the Domain Name to effect a change of registration to his own name in May 2021. The Panel finds that this must be treated as a new registration. See WIPO Overview 3.0, section 3.9 (while renewals and “formal” registration changes do not normally represent a break in the chain of possession, where there is a change masked by a privacy registration or other circumstances where the complainant credibly alleges a relevant change in registration to a third party, it is “incumbent on the respondent to provide satisfactory evidence of an unbroken chain of registration”). There is no evidence in the record that the Domain Name was ever previously registered in the Respondent’s own name, or that the Respondent was the underlying and rightful registrant when the Domain Name was registered in the name of a domain privacy service.
By 2021, the Respondent was separated from the Complainant and had no right to continue to control the Domain Name and the associated website, both displaying the Complainant’s trademark and amplifying the actual and potential confusion as to source and affiliation with the Complainant.
The Panel finds bad faith in the Respondent’s registration and use of the Domain Name and concludes that the Complainant has established the third element of the Complaint.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
W. Scott Blackmer
Sole Panelist
Date: October 26, 2021