The Administrator of the Ermias J. Asghedom Estate v. Ari Armani / Ari Armani & Co.
Claim Number: FA2104001943671
PARTIES
Complainant is The Administrator of the Ermias J. Asghedom Estate ("Complainant"), represented by Susan M. Schlesinger of Meister Seelig & Fein LLP, New York, USA. Respondent is Ari Armani / Ari Armani & Co. ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nipseyhussle.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2021; the Forum received payment on April 30, 2021.
On May 3, 2021, GoDaddy.com, LLC confirmed by email to the Forum that the <nipseyhussle.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@nipseyhussle.com. Also on May 10, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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.
On May 16, 2021, the Forum received email correspondence from Respondent acknowledging the proceeding and requesting that Complainant withdraw the Complaint.
Having received only this email correspondence from Respondent, the Forum transmitted to the parties a Notification of Respondent Default, and on June 4, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, appointed David E. Sorkin as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the administrator of the Estate of Ermias Joseph Asghedom, a recording artist, actor, activist, and entrepreneur who was known as Nipsey Hussle. Asghedom used that name professionally from approximately 2005 to his death in 2019, at which time Complainant acquired his publicity and intellectual property rights. Complainant owns a United States trademark registration for NIPSEY HUSSLE in standard character form. The registration issued in 2014; it reflects a date of first use of 2002 and a date of first use in commerce of 2005. Complainant also asserts common-law trademark rights in NIPSEY HUSSLE.
Respondent is the registrant of the disputed domain name <nipseyhussle.com>. The domain name was originally registered in 2007. Complainant states that beginning within a couple of days after Asghedom's death in 2019, Respondent began redirecting the domain name to Respondent's own website at <ariarmani.com>. Complainant accuses Respondent of "a history of impermissibly taking domain names that consist of the names of celebrities for Respondent’s own purposes to trade on the goodwill of such celebrities," citing a previous decision under the Policy in which Respondent was found to have redirected a domain name corresponding to the name of a professional football player to Respondent's own website. See Saquon Barkley, SRQB, LLC v. Ari Armani, Ari Armani & Co., D2019-0269 (WIPO Mar. 27, 2019) (noting several other domain names corresponding to names of celebrities that were registered by Respondent and redirected to Respondent's website). Complainant states that Respondent is not known by the disputed domain name and has not been authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <nipseyhussle.com> is confusingly similar to its NIPSEY HUSSLE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent did not submit a formal Response in this proceeding.
In email correspondence to the Forum, Respondent stated inter alia that he became acquainted with Asghedom in 2010, saw him occasionally thereafter, and began to consult for him beginning in 2013; that in late 2017, being "under the impression that [Respondent] was still part of the team," he "saved" the disputed domain name "from falling into the wrong hands," apparently by purchasing it in an auction; and that he subsequently used it for a website while Asghedom was alive, and that Asghedom "never let on that it was a problem." Respondent asserts that the NIPSEY HUSSLE trademark "was dead and abandoned" in 2017, and accuses Complainant of refiling the trademark after Asghedom's death, claiming that "[i]t's edited to look like it's always been intact."
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <nipseyhussle.com> corresponds to Complainant's registered NIPSEY HUSSLE trademark, with the space omitted and the ".com" top-level domain appended thereto. Such modifications are normally disregarded for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Stevland Morris a/k/a Stevie Wonder v. Unofficial Fan Club c/o Web Master, FA 453986 (Forum June 22, 2005) (finding <steviewonder.com> identical or confusingly similar to STEVIE WONDER). The Panel considers the disputed domain name to be identical to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name corresponds to Complainant's registered mark, and it is being used to redirect Internet users to Respondent's own website, apparently for Respondent's sole benefit. Respondent has offered no evidence in support of his assertions that he acquired the domain name for Asghedom's benefit and that Asghedom did not object to his using the domain name for a website.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name"; that it was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct"; that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor"; or that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered or acquired a domain name corresponding to Complainant's mark, apparently without any authorization from Complainant or Asghedom, Complainant's predecessor in interest; and appears to be using the domain name for his own commercial benefit, perhaps with the hope of selling it to Complainant or otherwise profiting from confusion with Complainant's mark. Respondent's conduct is indicative of bad faith registration and use under most or all of the provisions of the Policy described above. See Saquon Barkley, SRQB, LLC v. Ari Armani, Ari Armani & Co., supra (finding bad faith in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nipseyhussle.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 4, 2021
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