The Complainant is Nirvana LLC of Los Angeles, California, United States of America (“United States”), represented by Spruson & Ferguson Lawyers, Australia.
The Respondent is Darren Marc Wilcox of Armadale, Victoria, Australia. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with NetRegistryPty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2014. On September 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 19, 2014, 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2014. The Response was filed with the Center on October 13, 2014. This replaced a series of earlier Responses that were filed with the Center on September 19, 2014 and October 4, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 29, 2014. 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 US company that owns the name and trade mark rights in connection with the rock band Nirvana. Formed in 1987, Nirvana was a leading “grunge” band that sold over 75 million records worldwide. The band was inducted into the Rock and Roll Hall of Fame in 2014.
The Complainant is the owner of Australian trade mark registration 988597 for the word mark NIRVANA (the “NIRVANA Mark”), which has been registered since February 11, 2004 for goods and services in classes 9, 16 and 41.
The Respondent owns five related domain names each featuring the words “nirvana drums”, being , , , , and (the “Collected Domain Names”). Only the first two are the subject of the present proceeding.
The Respondent is an individual and has applied for two trade mark registrations for a design mark featuring the words “NIRVANA DRUMS” (the “NIRVANA DRUMS Mark”) but has now withdrawn those applications. The Respondent is also the owner of Australian Business Name Registration 160270217 for “Nirvana Drums”. The Domain Names and were each created on September 15, 2012. The Domain Names are currently inactive and reach a page stating that “Site not published”. However, prior to the commencement of this proceeding the Respondent had operated a website at “www.” (the “Respondent’s Website”). The Respondent’s Website makes reference to the Respondent’s expertise in drumming and the role that drumming played in dealing with injuries suffered while serving in the Australian Army. Following settlement correspondence the Respondent’s Website commenced offering t-shirts and other merchandise featuring the NIRVANA DRUMS Mark. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s NIRVANA Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and/or are subsequently being used in bad faith.
The Complainant is the owner of the NIRVANA Mark. It owns a trade mark registration for the NIRVANA Mark in Australia.
The Domain Names are confusingly similar to the NIRVANA Mark, in that they each incorporate the NIRVANA Mark in its entirety and add the descriptive term “drums”. Given the reputation and success of Dave Grohl, the drummer for the band Nirvana, the addition of “drums” will increase the likelihood of confusion with the band Nirvana.
The Respondent has no rights or legitimate interests in the Domain Names. The Respondent is not licensed or authorised by the Complainant to register the Domain Names. The Respondent does not hold a trade mark for NIRVANA or any similar trade mark. The Respondent’s use of the Domain Names to retail products such as clothing and music products does not amount to a bona fide offering of goods and services as this is in breach of the NIRVANA Mark, the Australian Consumer Law and was done in response to failed settlement negotiations. Such use does not give rise to rights or legitimate interests.
The Domain Names were registered and are being used in bad faith. The Respondent registered the Domain Names with awareness of the Complainant. There is no basis for Respondent to have chosen the “Nirvana Drums” business name and corresponding Domain Names unless Respondent was seeking to create an association with the Complainant. The Respondent is trading off the renown of the NIRVANA Mark for his own commercial benefit. The Respondent’s only current use of the Domain Names is to misdirect Internet traffic to his own websites where he sold clothing and musical products that competed directly with the Complainant and its merchandise and music related to the band.
The Respondent’s attempts to explain why he adopted the “Nirvana Drums” name are insufficient and do not establish any sort of innocent adoption of the “nirvana” name. The fact that the Respondent clearly adopted his explanation for selecting the Domain Names after receiving notice of the Complainant’s objections to his domain names is little more than a feeble attempt to rewrite history and create a legitimate basis for his ownership of the Collected Domain Names where none previously existed. Finally the conduct of the Respondent in demanding the payment of USD 1.5 million to sell the Collected Domain Names to the Complainant constitutes registration and/or use in bad faith in accordance with paragraph 4(a)(iii) of the Policy. B. Respondent
The Respondent makes the following contentions:
The Complaint contains various incorrect allegations and has attempted to besmirch the character of the Respondent.
The Complainant does not have rights in NIRVANA, because the name “Nirvana” has existed for over 2,500 years, where it was first formally written in the Bhagavad Gita (500BCE). The Complaint is not about the Respondent, but actually about the perceived ownership of an ancient concept /construct. This appropriation of the ancient Nirvana concept by the band Nirvana is misrepresentative of the underlying concept. The Respondent is not infringing the intellectual property of the band Nirvana, rather the Respondent has the right to use the ancient Nirvana concept.
The Respondent chose the name Nirvana Drums based on the 2,500-year-old ancient Sanskrit spiritual concept of Nirvana (an ending to the cycle of re-birth). In this ancient culture choosing to forgo reincarnation is a metaphor for the Respondent wishing to leave his continuous pain which arose following his army service. The Respondent’s use of drums have been included in his rehabilitation and treatment as an avenue of rewiring the brain and also to assist in the growth of peripheral nerves in his legs, which are damaged.
The Respondent operates a business out of various websites selling t-shirts and other apparel. He has registered a business name and owns an Australian Business Number. This establishes the rights of the Respondent to the Domain Names. The Respondent chose to withdraw his trade mark applications for the NIRVANA DRUMS Mark because he did not wish to engage in legal proceedings due to his ill-health. The Complainant never formally filed a notice of opposition to the NIRVANA DRUMS Mark.
The Complainant’s submissions about the Respondent’s offer to sell the Collected Domain Names for USD 1.5 million does consider the fact that, in his original estimate of costs, the Respondent did not include man hours, concept consolidation, trademark applications, future projects, and the amount of knowledge that the Respondent has about drums. The Complainant, in seeking to acquire the Collected Domain Names is seeking to purchase the Respondent’s business, which is more than the raw ingredients being the cost of acquiring the Collected Domain Names. 6. Discussion and Findings A. Admissibility of Without Prejudice Correspondence
The Respondent, in his Response, has questioned the right of the Complainant to rely on communications between the parties that were labelled “Without Prejudice”, including evidence of correspondence in which the Respondent provided evidence of the costs of registering the Collected Domain Names and correspondence in which the Respondent demanded the payment of USD 1.5 million for the sale of the Collected Domain Names.
The auDA Overview of Panel Views on Selected auDRP Questions First Edition provides, in response to the question “Can statements made in settlement discussions be relevant to showing bad faith?” that
“The general position is the same as that under the UDRP.
Evidence of an offer to sell the domain name is generally admissible in proceedings under the auDRP, and is often used to show bad faith. This is so in relation to an offer to sell made by a respondent prior to filing of the complaint, as well as after filing of the complaint. An offer to sell the domain name made in settlement discussions may be seen as a “use” of the domain name for the purposes of showing bad faith, even if that is the respondent’s only use of the domain name.”
Given the relevance of the correspondence between the Complainant and the Respondent in determining whether the Domain Names were registered or used in bad faith, the Panel finds that the evidence of communications between the parties is admissible in the present proceeding. B. Identical or Confusingly Similar
To prove this element the Complainant must have a name or trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s name, trade or service mark.
The Complainant is the owner of the NIRVANA Mark, having registrations for the NIRVANA Mark as a trade mark in Australia.
The Domain Names and consist of the NIRVANA Mark, the word “drums” and the country code Top-Level Domain suffixes “.” and “.”. The addition of a generic noun to a domain name that otherwise incorporates a mark in its entirety typically does not prevent a finding of confusing similarity. Furthermore, the addition of “drums”, which describes the instrument played to considerable renown by Nirvana member and successful solo artist Dave Grohl may have the effect of increasing the confusion, as a person viewing the Domain Names may be confused into thinking the Domain Names referred to a site run by the Complainant relating to the drums or drum beats used by Mr. Grohl. The Panel finds that the Domain Names are confusingly similar to the Complainant’s NIRVANA Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.” (Policy, paragraph 4(c))”
The Respondent is not affiliated with the Complainant in any way. It has not been authorised by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the NIRVANA Mark or a mark similar to the NIRVANA Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used the Domain Names in connection with a legitimate non-commercial use. The Complainant submits that the Respondent has not made a bona fide use or demonstrable preparations to use the Domain Names or a name corresponding to the Domain Names as the Domain Names are unused and one of the Collected Domain Names is used to sell products that would infringe the NIRVANA Mark. This does not amount to a bona fide use of the Domain Names in connection with an offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The onus then shifts to the Respondent to provide evidence or assertions demonstrating rights or legitimate interests. The Respondent submits that:
a) he owns a business registration for “Nirvana Drums”;
b) the sale of t-shirts from “www.” is a bona fide business; and
c) he chose the Domain Names by reference to the ancient concept of Nirvana.
The Panel finds that the ownership of a registered business name for “Nirvana Drums” is insufficient in itself to establish that the Respondent has rights and legitimate interests in the Domain Names. The process of registering a business name in Australia does not require an examination, other than to confirm that no other entity has the identical business name. If the mere registration of a business name (as opposed to an examined trade mark) was sufficient in itself to show rights or legitimate interests it would be possible for a respondent to succeed in any UDRP or auDRP case merely by obtaining an unexamined business name registration. What is relevant in order to establish rights and legitimate interests pursuant to paragraph 4(c)(i) and 4(c)(ii) of the Policy, is how the business name being relied upon, or the domain name itself is used and in particular if it is part of a bona fide offering of goods and services.
There is no evidence that the Domain Names have ever hosted an active site. Nor does the Respondent provide any documentary evidence of demonstrable preparations to use the Domain Names for a bona fide offering of goods and services. Such documentary evidence could include business plans, marketing plans, website designs or budgets however no such evidence is included to support the assertions in the Response that the Respondent intended to use the Domain Names for a bona fide purpose.
The Panel notes that the Respondent has at certain times maintained an active website at the Respondent’s Website however the Respondent’s Website was not hosted at the Domain Names. Furthermore the Respondent does not enclose evidence of sales, marketing or business development arising from the Respondent’s Website to establish that the Respondent’s Website was part of an on-going business, as opposed to, as alleged by the Complainant, being part of a ploy to encourage the Complainant to purchase the Collected Domain Names for the demanded price of USD 1.5 million.
The Response does not contain any evidence (as opposed to assertions), such as documents or website concepts created prior to the commencement of the dispute between the Complainant and the Respondent, that support the Respondent’s claim that he chose the Domain Names by reference to the concept of Nirvana, as opposed to the Complainant’s submissions that he chose the Domain Names by reference to the band Nirvana.
Ultimately, the Complainant’s submissions and evidence are sufficient to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence to satisfy its burden to demonstrate rights and legitimate interests. There is no evidence before the Panel that the Respondent is commonly known by the Domain Names, nor is there any documentary evidence to support the Respondent’s assertions that he is making demonstrable preparations to use the Domain Names for a bona fide offering of goods and services. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. D. Registered or Subsequently Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s web site or location or of a product or service on the respondent’s web site or location.
The Panel notes that the Policy only requires that a complainant establish that a respondent registered or subsequently used the domain name at issue in bad faith.
The Panel finds that the Respondent has used the Domain Names in bad faith as there are circumstances indicating that the Respondent has used the Domain Names for the purpose of selling the Domain Names to the Complainant for valuable consideration in excess of its documented out-of-pocket costs.
Between April 2014 and the filing of the Complaint, the Complainant and the Respondent engaged in considerable legal correspondence relating to the Collected Domain Names. In his initial response to the Complainant’s letter of demand the Respondent understood that he would cease all use of the Collected Domain Names and withdraw the NIRVANA DRUMS trade mark applications but would maintain ownership of the Collected Domain Names until “a reasonable financial offer is made”. He further noted that the band Nirvana “is a considerable financial juggernaut”.
In further correspondence on July 1, 2014 the Respondent indicated that the total costs of the registration of the Collected Domain Names, as well as the hosting, web design and trade mark application fees for the NIRVANA DRUMS trade mark applications were AUD 2,567.31. In that letter the Respondent indicated that he was prepared to transfer the Collected Domain Names for USD 1.5 million.
On July 17, 2014 the Respondent, in response to the failure of the Complainant to respond to his letter of July 1, 2014, sent a letter indicating that if the matter was not settled he would launch websites from the Collected Domain Names. On July 25, 2014, the Respondent made a further demand for the payment of USD 1.5 million in exchange for the Collected Domain Names.
In August, following the failure of the Applicant to accept his offer of USD 1.5 million the Respondent launched an active website at “www.” selling clothing branded with the NIRVANA DRUMS Mark.
The Panel finds that the amount demanded by the Respondent for the sale of the Collected Domain Names is well in excess of any documented out-of-pocket costs directly related to the Collected Domain Names. Indeed the Respondent himself indicated that the costs were AUD 2,567.31.
The Panel also finds that the conduct of the Respondent, in:
a) undertaking to cease all use of the Collected Domain Names;
b) then demanding USD 1.5 million for the transfer of the Collected Domain Names; and
c) when the Complainant refused to pay such a sum, threatening to commence use of the Domain Names and, in breach of its undertaking, relaunching a website at “www.”;
amounts to use of the Domain Names in bad faith.
The circumstances of this case indicate that, despite agreeing to cease all use of the Collected Domain Names, the Respondent retained ownership of the Collected Domain Names in the hope that he would obtain compensation well in excess of his out-of-pocket costs. When such compensation was not forthcoming the Respondent re-launched a website on a Collected Domain Name and threatened launch of similar websites at the Domain Names. Such conduct amounts to use of the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy. As it is not necessary to consider this issue, the Panel does not make any finding as to whether the Respondent registered the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy. E. Complainant’s Eligibility
The Complainant has requested transfer of the Domain Names. Given that the Complainant owns an Australian registered trademark that appears to be closely and substantially connected to each of the Domain Names, in that the Domain Names reproduce the NIRVANA Mark in its entirety, the Complainant appears to satisfy the eligibility requirements for registration of the Domain Names. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names and be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: November 3, 2014
Full & Egal Universal Law Academy