American Song Archives, LLC dba Bob Dylan Center v. Alan Weberman
Claim Number: FA2207002003980
Complainant is American Song Archives, LLC dba Bob Dylan Center (“Complainant”), represented by Penina Michlin of Frederic Dorwart, Lawyers PLLC, Oklahoma, USA. Respondent is Alan Weberman (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thebobdylancenter.com>, registered with IONOS SE.
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2022; the Forum received payment on July 12, 2022.
On July 15, 2022, IONOS SE confirmed by e-mail to the Forum that the <thebobdylancenter.com> domain name is registered with IONOS SE and that Respondent is the current registrant of the name. IONOS SE has verified that Respondent is bound by the IONOS SE 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 July 20, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2022 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@thebobdylancenter.com. Also on July 20, 2022, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, American Song Archives, LLC dba Bob Dylan Center, owns and operates a museum. Complainant asserts rights in the BOB DYLAN CENTER mark based upon with the United States Patent and Trademark Office (“USPTO”) (e.g. reg. no. 6,025,816, registered March 31, 2020). See Compl. Annex 2. Respondent’s <thebobdylancenter.com> domain name is confusingly similar to Complainant’s mark because it contains the BOB DYLAN CENTER mark in its entirety, merely adding the term “THE” and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <thebobdylancenter.com> domain name. Respondent is not licensed or authorized to use Complainant’s BOB DYLAN CENTER mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name, which is confusingly similar to Complainant’s mark, to pass itself and its website off as Complainant and its website and to denigrate Complainant’s business and Mr. Dylan.
Respondent registered and uses the <thebobdylancenter.com> domain name in bad faith. Respondent uses the disputed domain name to compete with Complainant. Respondent uses the disputed domain name to cause initial interest confusion. Respondent uses the disputed domain name’s resolving webpage to host pornographic and other disparaging content. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BOB DYLAN CENTER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that owns and operates a prestigious museum relating to the works of Bob Dylan.
2. Complainant has established its rights in the BOB DYLAN CENTER mark based upon the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. reg. no. 6,025,816, registered March 31, 2020).
3. Respondent registered the disputed domain name on April 15, 2022.
4. Respondent has used the disputed domain name to pass off itself and its website as Complainant and its website, to host pornographic and other disparaging content and to denigrate Complainant’s business, the Bob Dylan Center and Mr. Dylan.
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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BOB DYLAN CENTER mark based upon registration of the mark with the USPTO (e.g. reg. no. 6,025,816, registered March 31, 2020). See Compl. Annex 2. Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Since Complainant has provided evidence of registration of the BOB DYLAN CENTER mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BOB DYLAN CENTER mark. Respondent’s <thebobdylancenter.com> domain name is confusingly similar to Complainant’s mark because it contains the BOB DYLAN CENTER mark in its entirety, merely adding the word “THE” and the gTLD “.com” to form the disputed domain name. The domain name is therefore virtually identical to the trademark. The addition of generic or descriptive terms and gTLDs to a mark does not distinguish the disputed domain name from the mark incorporated therein per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Therefore, as the Panel agrees, it finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i)).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show 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”).
(a) Respondent has chosen to take Complainant’s BOB DYLAN CENTER mark and to use it in its domain name adding only the word “the” to the mark to create the <thebobdylancenter.com> domain name;
(b) Respondent registered the disputed domain name on April 15, 2022;
(c) Respondent has used the disputed domain name to pass off itself and its website as Complainant and its website, to host pornographic and other disparaging content and to denigrate Complainant’s business, the Bob Dylan Center and Mr. Dylan;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent does not have rights or legitimate interests in the <thebobdylancenter.com> domain name because Respondent is not licensed or authorized to use Complainant’s BOB DYLAN CENTER mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Alan Weberman.” See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the overwhelming and substantial evidence submitted by Complainant shows that Respondent uses the disputed domain name, which is confusingly similar and almost identical to Complainant’s mark, to denigrate Complainant’s museum and Mr. Dylan. Establishment of a website containing allegations or discreditable remarks about a complainant is not a legitimate use of a disputed domain name where the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights. It is therefore important to distinguish between, on the one hand, criticism in the meaning that is generally given to that word, which may be legitimate, and on the other hand the use of a domain name consisting of or confusingly similar to a trademark contained in the domain name. See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”). Here, Complainant has provided very substantial evidence including screenshots of the website to which the disputed domain name resolves, showing a great deal of extremely prurient content that is demeaning to Complainant’s business. Accordingly, there are two reasons why the text and material on the website cannot be regarded as legitimate. The first reason is that what the domain name does is to pretend that it speaks with authority for and actually is the Complainant, even going so far as to infer that some of the material has emanated from Bob Dylan himself and therefore would have been posted at Complainant’s museum by Mr. Dylan. The second reason is that whether or not the material on the website is criticism in any sense of the word, it goes far beyond what is regarded in this field as criticism and is more accurately described as the generation of prurient and degrading content. See Complainant Annex 8. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent has used the disputed domain name to pass off itself and its website as Complainant and its website, to host pornographic and other disparaging content and to denigrate Complainant’s business, the Bob Dylan Center and Mr. Dylan. The Panel agrees. Use of a disputed domain name to host pornographic and similar material constitutes bad faith under Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”); see also The TJX Companies, Inc. v. Whois-Privacy.Net ltd / DN Manager, FA1309001519645 (Forum Oct. 22, 2013) (holding that the respondent’s use of the disputed domain name to offer hyperlinks to adult-oriented businesses and websites indicated bad faith registration and use pursuant to Policy ¶ 4(a)(iii)). Here, Complainant has provided screenshots of the disputed domain name’s resolving webpage, showing pornographic and other prurient material. See Complainant Annex 8. The Panel therefore finds Complainant acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Secondly, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BOB DYLAN CENTER mark when it registered the domain name. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the use the respondent makes of the domain name. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, Complainant has provided extensive evidence including screenshots of the disputed domain name’s resolving webpage, showing a photograph of Complainant’s business, thus invoking the notion that the website is an official site of Complainant. See Complainant Annex 8. Therefore, the Panel finds Respondent registered the disputed domain name with actual knowledge of the trademark and clearly intending to pretend that it was the trademark owner or was authorized by it in some way. Thus, Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered and uses the <thebobdylancenter.com> domain name in bad faith because Respondent uses the disputed domain name to compete with Complainant. Under Policy ¶ 4(b)(iii) and (iv), use of a disputed domain name to compete with a complainant demonstrates bad faith. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). Here, Complainant has provided screenshots of the disputed domain name’s resolving webpage, showing a photograph of Complainant’s business premises and purporting association therewith, while showing material that denigrates Complainant’s business and Mr. Dylan. See Complainant Annex 8. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and (iv).
Fourthly, Complainant contends that Respondent uses the disputed domain name to cause initial interest confusion. Where a mark is obviously connected with well-known products, its very use by someone with no connection to these products can evidence opportunistic bad faith, as in the present case. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use); see Nw. Airlines, Inc. v. Koch, FA 95688 (Forum Oct. 27, 2000) (“[T]he selection of a domain name [<northwest-airlines.com>] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”). Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BOB DYLAN CENTER mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression. It is apparent from the evidence that Respondent has a history of stalking and defamation. It is also apparent that he has a fixation on Mr. Dylan which he manifests in a disturbing manner with conduct of the sort revealed by this proceeding. Complainant has documented these very concerning matters in detail. It is therefore clear that the registration and use of the domain name by Respondent are entirely unjustified and have no legitimate basis.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thebobdylancenter.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: August 16, 2022
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