ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Avicii AB, v. Chung Do Case No. D2024-2775 1. The Parties The Complainant is Avicii AB, Sweden, represented by Westerberg & Partners Advokatbyrå AB, Sweden. The Respondent is Chung Do, Viet Nam. 2. The Domain Name and Registrar The disputed domain name
(the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2024. On July 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 12, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (“Cow Brand”) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 2024, 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 on July 15, 2024. 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 July 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2024.
page 2 The Center appointed Nicholas Smith as the sole panelist in this matter on August 21, 2024. 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 Swedish company that owns and uses intellectual property connected with the late Swedish musician Tim Bergling, better known by his stage name Avicii. Amongst its other activities the Complainant offers musical records, clothing, and other merchandise relating to Tim Bergling under the trademark AVICII (the “AVICII Mark”) and a device mark featuring “AVICII” in stylized form (the “Device Mark”) from its website at “www.avicii.com” (the “Complainant’s Website”). The Complainant has registered the AVICII Mark as a trademark in numerous jurisdictions including in the United States for goods and services in classes 9, 25, and 41 (Registration Number 4,205,008, registered September 11, 2012). The Domain Name was registered on August 1, 2023. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (“the Respondent’s Website”) that reproduced the AVICII Mark, Device Mark, and various images of the Complainant’s products. The Respondent’s Website purported to offer the Complainant’s clothing and merchandise products or counterfeit versions of the Complainant’s clothing and merchandise products under the Complainant’s AVICII Mark and Device Mark. The Respondent’s Website also (incorrectly) stated that it is the “official Avicii Merch Store” and contained, under the “contact us” section, links to the Complainant’s social media pages. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Notably, the Complainant contends that: a) The Complainant is the owner of the AVICII Mark, having registered the AVICII Mark in the United States and the European Union. The Domain Name reproduces the AVICII Mark and adds the generic term “shop” and the “.com” generic Top-Level Domain. b) There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial fair use of the Domain Name. Rather the Respondent is using the Domain Name to create a website that purports to be an official website of the Complainant by reproducing the Complainant’s marks and images of the Complainant’s products, but actually sells unauthorized versions of the Complainant’s products, such use not being bona fide. c) The Domain Name was registered and is being used in bad faith. By using the Domain Name for a website that reproduces the Complainant’s marks and images of Complainant’s products, and falsely asserts to be the “official Avicii Merch Store”, the Respondent is clearly aware of the AVICII Mark and is using it to deceive consumers as to its affiliation with the Complainant. Such conduct amounts to registration and use of the Domain Name in bad faith.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the Domain Name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “shop” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise. The Panel considers that the record of this case reflects that: - before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made 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. Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2.
page 4 - the Respondent (as an individual, business, or other organization) has not been commonly known by the Domain Name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3. - the Respondent is not 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. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4. - the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the Domain Name. The Respondent has used the Domain Name to operate a website to sell clothing and other merchandise that purport to be legitimate AVICII products. If the clothing and other merchandise sold on the Respondent’s Website are not genuine products produced by the Complainant, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s AVICII Mark for a site purportedly selling counterfeit products. Even if the Respondent is offering genuine AVICII products from the Respondent’s Website, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The WIPO Overview 3.0, section 2.8, summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner: “[…] Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. The “Oki Data test” does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.” In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather, its prominent display of the AVICII Mark and Device Mark, its reproduction of the Complainant’s official product images and its false assertion that it is the “official Avicii Merch Store” results in the misleading impression that the Respondent’s Website is an official website of the Complainant. Even in the event that the Respondent is reselling genuine AVICII products, its use of the Domain Name for the Respondent’s Website does not grant it rights or legitimate interests in the Domain Name in these circumstances. The Panel finds the second element of the Policy has been established.
page 5 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s AVICII Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s Website. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4. The Respondent registered the Domain Name for the purposes of operating a website that passes off as being an official website of the Complainant, specifically to sell either the Complainant’s products or counterfeit products that compete with the Complainant’s clothing and merchandise. The Respondent is using a Domain Name that is confusingly similar to the AVICII Mark to sell products, be they genuine or otherwise, in competition with the Complainant and without the Complainant’s approval and without meeting the Oki Data test. The Panel finds that the Complainant has established the third element 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 Domain Name be transferred to the Complainant. /Nicholas Smith/ Nicholas Smith Sole Panelist Date: September 2, 2024
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