Evan Hitch d/b/a DJ Ev v. Eric Vajda / Evision
Claim Number: FA2009001913115
Complainant is Evan Hitch d/b/a DJ Ev (“Complainant”), represented by Ronald S. Bienstock of Scarinci Hollenbeck LLC, US. Respondent is Eric Vajda / Evision (“Respondent”), represented by Renner Otto, Ohio.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <djev.com>, registered with TierraNet Inc. d/b/a DomainDiscover.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2020; the Forum received payment on September 21, 2020.
On September 22, 2020, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the Forum that the <djev.com> domain name is registered with TierraNet Inc. d/b/a DomainDiscover and that Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@djev.com. Also on September 28, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 23, 2020.
On October 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
On October 30, 2020 an Additional Submission was received from Complainant.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a renowned DJ, who is in the business of providing disc jockey (“DJ”) services and other performances, in addition to selling and recording music and related products. Complainant has continuously done business under the name DJ EV since 1994. Complainant has rights in the trademark DJ EV through Complainant’s use of the mark and its registration thereof with the United States Patent and Trademark Office (“USPTO”) in 2017. In the early 2000’s Complainant registered the disputed domain name <djev.com> but the domain was due for renewal in 2005 and Respondent obtained the domain name before Complainant could renew the same. Respondent’s <djev.com> domain name, registered on August 22, 2007, is identical or confusingly similar to Complainant’s DJ EV mark as it incorporates the entirety of the Complainant’s mark.
Respondent lacks rights or legitimate interests in the <djev.com> domain name. Due to its registration of the disputed domain name using a privacy service, Respondent is not commonly known by the DJ EV mark nor has Respondent been authorized by Complainant to use the DJ EV mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent’s resolving website offers identical products and services as those of Complainant.
Respondent registered and uses the <djev.com> domain name in bad faith. Respondent uses the disputed domain name to directly compete with Complainant as Respondent’s website offers the same types of goods and services sold in connection with Complainant’s mark. Furthermore, Respondent uses the disputed domain name to intentionally deceive visitors to its site as to the source of Respondent’s goods and services for commercial gain. Lastly, Respondent utilized a privacy shield when registering the disputed domain name.
B. Respondent
Respondent is a musical artist, disk jockey (“DJ”), and producer providing various entertainment services and he has been offering DJ services since the early 2000s. Complainant has failed to show rights in a trademark that predate Respondent’s registration of the <djev.com> domain name and does not provide evidence of Complainant’s alleged long time use of the mark in commerce nor the scope of its trademark rights.
Respondent has rights and legitimate interests in the <djev.com> domain name. Respondent is commonly known by the disputed domain name as it reflects Respondent’s personal name. Respondent uses the disputed domain name to promote Respondent’s music.
Respondent did not register or use the disputed domain name in bad faith. Complainant waited nine years before bringing this dispute. Next, Complainant failed to renew the <djev.com> domain name and the domain name sat dormant for three years before Respondent purchased it through a domain name brokerage. Additionally, Respondent could not have registered the domain name in bad faith, as Respondent’s registration predates Complainant’s demonstrated trademark rights. Next, although Respondent used a WHOIS privacy service, its identity was not withheld from the public as the very purpose of the website is to inform fans and Internet users about Respondent’s music. Finally, Complainant is attempting to reverse domain name hijack Respondent’s <djev.com> domain name.
C. Additional Submissions
Complainant submits additional evidence to support its claim of common-law trademark rights in the DJ EV mark prior to Respondent’s registration of the disputed domain name. Also submitted are screenshots of a comment allegedly made by Respondent stating “im the NEW DJ E-V” and a further screenshot by Respondent in which he identifies himself as “E-V formerly known as Dj E-V”.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was not registered or used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the DJ EV mark through its registration thereof with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the DJ EV mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that Respondent’s <djev.com> domain name is identical or confusingly similar to Complainant’s DJ EV mark as it incorporates the entirety of the Complainant’s mark. Generally, the addition of only a generic top-level domain name (gTLD) fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent argues that its registration of the <djev.com> domain name predates Complainant’s alleged rights in the mark. However, the Panel notes that the issue of timing is not relevant to the Policy ¶ 4(a)(i) inquiry as this element of the Policy considers only whether Complainant has rights in the mark (irrespective of when those rights came into existence) and whether the disputed domain name is identical or confusingly similar to the asserted mark. However, timing may be considered under other elements of the Policy. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”)
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Various circumstances by which a respondent may demonstrate its rights and legitimate interests in a disputed domain name are set out in Policy ¶ 4(c). Complainant claims that Respondent’s products and services offered through the <djev.com> website violate his trademark rights and thus that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i). In defense, Respondent argues that his use of the domain name is bona fide and that it dates back to a time prior to his having been on notice of any dispute involving the domain name. Using a disputed domain name to promote legitimate business operations may establish rights and legitimate interest in a disputed domain name. See Modern Props, Inc. v. Wallis, FA 152458 (Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name). Here, Complainant submits a copy of his 2017 USPTO trademark registration and a 2005 archived screenshot of his website that displays the DJEV mark at the time that he owned the <djev.com> domain name. In defense, Respondent asserts that, since 2008, he has continuously used the name EV and the disputed domain name to promote his music DJ services and sell recordings thereof and he has submitted evidence to support this claim. He further argues that Complainant has not sufficiently demonstrated his pre-USPTO registration common-law trademark rights and, in any event, that Respondent’s use predates Complainant’s earliest rights to its asserted mark. In his Additional Submission, and to counter Respondent’s defense, Complainant provides a copy of his CV, images of various posters promoting his DJ EV mark dating back to 1997, and reviews of his mix tapes also dating to 1997. Complainant claims that Respondent “offers products and services that directly compete with the Complainant in the Music Industry.” However, these present questions of when Complainant acquired its trademark rights and what were the geographic scope of any such rights at the time Respondent acquired the disputed domain name, and whether Respondent’s use of the name EV as a performing DJ is an infringement of Complainant’s trademark rights. Although obvious cases of trademark infringement (e.g., cybersquatting) may be found not to be bona fide by a Panel, the Policy is not designed to address evidence-heavy questions of competing trademark claims and possible infringement as are presented here. Such cases as this are more suitable for resolution in a courtroom environment where discovery, witness testimony, cross examination, and other evidentiary tools are available. Therefore, the Panel declines to address the issue of whether Respondent is making a bona fide use of the disputed domain name under Policy ¶ 4(c)(i).
Next, Complainant asserts that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Respondent argues that he is commonly known by the <djev.com> domain name as it reflects Respondent’s own personal name and his work as a disc jockey (“DJ”). Panels have held that rights and legitimate interests may be found when a respondent uses a disputed domain name that bears a close relation to the respondent’s personal name. See Stephen L. Tucker v. Joseph Golio, FA 1796141 (Forum July 27, 2018) (“Respondent does have rights and legitimate interests in the domain name, as the term ‘Golio’ reflected in the <golio.com> domain name is Respondent’s family name. A respondent can be found to be commonly known by a domain name where it reflects a personal name.”); G. A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001) (finding that the respondent had rights and legitimate interests in the <armani.com> domain name, where the domain name reflects the initials of the respondent’s first and middle name, combined with its entire last name). Here, Complainant argues that “Panelists have concluded that a respondent is ‘not commonly known’ by a disputed domain name where the publicly-available WhoIs information does not correspond with the domain name and there is no other information to the contrary.” Complainant notes that Respondent used a privacy shield when registering the disputed domain name and further asserts that he has not been authorized to use Complainant’s mark. However, these are not the limits of a ¶ 4(c)(ii) inquiry. Respondent argues that the <djev.com> domain name reflects his own personal name, “Eric Vajda”, and his work as a DJ. Further, Respondent has submitted images of promotional posters dating back to 2011, website banner advertisements, and listings from an online music store showing his use of the letters “EV” in various text and logo forms to identify his DJ services. Even Complainant’s own submitted screenshot of Respondent’s <djev.com> website shows the letters “EV” prominently displayed on the site. Therefore, the Panel finds that Respondent has rebutted Complainant’s prima facie case and successfully demonstrated that he is commonly known by the term DJ EV and the <djev.com> domain name under Policy ¶ 4(c)(ii). It is thus determined that he has rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
A foundational question underlying the bad faith requirement of Policy ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant’s rights in its DJ EV mark at the time it registered the disputed domain name. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”) Here, Respondent submits a receipt showing that it purchased the disputed domain name on January 16, 2008 through a registrar sales platform. He states that “When I acquired the domain <DJEV.com> I had no knowledge of Complainant, Complainant’s business, or Complainant’s (or anyone’s) prior use of the domain <DJEV.com>” and that “prior to 2017, Respondent had never encountered Complainant or heard of his existence in the industry.”[i] He goes on to say that he first learned of Complainant in 2017 by way of certain social media posts claiming that he had stolen the domain name. Complainant submits images of posters, reviews, and other evidence of his use of the DJ EV mark dating back to 1997. While this evidence supports Complainant’s claim that his mark had gained some reputation, under the unique circumstances of the present case the Panel feels that this is not the proper venue in which to determine the full scope of Complainant’s trademark rights and whether Respondent was or should have been on-notice thereof at the time it acquired the disputed domain name in early 2008.
Next, Complainant contends that Respondent registered and uses the <djev.com> domain name in bad faith as Respondent directly competes with Complainant by offering the same types of music downloads and DJ services as are sold in connection with Complainant’s mark. Registration of a confusingly similar domain name with the intent to disrupt business by selling competing products and services to customers can evidence bad faith registration and use per Policy ¶ 4(b)(iii) and 4(b)(iv)). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). In the present case, while both Complainant and Respondent appear to be providing similar DJ services, the Panel is unable to conclude that Respondent had a bad faith intent to target Complainant.
It is noteworthy that Complainant was the original owner of the <djev.com> domain name but that the domain expired in 2005. Complainant asserts that Respondent “obtained the DJ EV domain name once it came up for renewal before Complainant could renew same,” but this overlooks two important points. First, domain name registrants have the unchallenged ability to renew their domains long prior to the expiration date and second, there is a period of more than two years between the 2005 expiration of the domain name and Respondent’s 2008 acquisition thereof through a registrar sales platform. There is no evidence in the record of any steps Complainant took to attempt renewal of its domain name in 2005 or to re-acquire the domain prior to its purchase by Respondent and so this does not support the claim that Respondent acted in bad faith. Further, Respondent points out that there is a lapse of over thirteen years between its purchase of the <djev.com> domain name and Complainant’s assertion of a dispute concerning the domain. Complainant claims that he “has reached out directly to the Faux DJ EV regarding this unauthorized use and the blatant theft of the domain on numerous occasions, but the Faux DJ EV has continued to ignore all communications”. However, no such communications have been made of record here and the timing thereof is not stated by Complainant. While the legal theory of laches is disfavored under the Policy it is worth noting that both parties to this case list addresses in the United States where such theory is typically applied by the courts.
In sum, this is a dispute that is best resolved in the courts. See PetSmart, Inc. v. Pet Mart, D2020-2065 (WIPO Sep. 29, 2020) (“The written submissions procedure provided under the Policy is not best suited to resolving such a case, where the issues are substantial, complex, and nuanced. [C]ourt proceedings may provide the Parties with an opportunity to conduct a fuller inquiry into the facts and circumstances of this matter with the benefit of discovery procedures, oral testimony, and cross-examination.”) As Respondent has been offering its DJ services under the name EV for many years and makes no reference to Complainant on its website, the possibility exists that the parties may be in a state of trademark co-existence. However, as noted above, this case is not one that is well-suited for resolution under the Policy. The dispute between the parties is multi-faceted and requires more robust evidentiary tools and exploration than are within the Panel’s reach. In light of all of the circumstances of this case the Panel finds that Complainant has not met its burden of demonstrating, by a preponderance of the evidence, that Respondent registered or uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <djev.com> domain name, of its rights to use the disputed domain name. Respondent argues that Complainant had clear knowledge of Respondent’s rights and legitimate interests in the disputed domain name, knew Respondent was not acting in bad faith, and brought this action primarily to harass Respondent.
However, even though the Panel has found that Complainant has failed to satisfy his burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
The number of open issues in this case leads the Panel to conclude that, while Complainant has chosen the wrong vehicle for its dispute, it cannot be said that it has abused the Policy by bringing a claim bereft of substance. Should this matter find its way into an appropriate courtroom, there is at least some chance that Complainant will be found to have a basis for its grievances.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <djev.com> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: November 2, 2020
[i] It is of interest that Complainant submits a screenshot of a January 12, 2009 blog comment by a user identified as “DJ E-V” stating “ha ha ha…. im the NEW DJ E-V…..not to be mixed up with dj ev (from epmd). and i didn’t take his damn name…. www.djev.com”. Assuming that Respondent is the person who posted this comment it may undercut his claim to have first learned of Complainant in 2017. However, as this comment is dated after Respondent’s 2008 acquisition of the disputed domain name it is of only limited relevance in the present case.
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