Uprising Communications Group, LLC v. Whois Privacy Protection Service, Inc. / Whois Agent
Claim Number: FA1207001454025
Complainant is Uprising Communications Group, LLC (“Complainant”), represented by Peter E. Nussbaum of Wolff & Samson PC, New Jersey, USA. Respondent is Whois Privacy Protection Service, Inc. / Whois Agent (“Respondent”), represented by Gary Hammock of Profile Group, Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <staybrutal.com>, registered with ENOM, INC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2012; the National Arbitration Forum received payment on July 17, 2012.
On July 19, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <staybrutal.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2012 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@staybrutal.com. Also on July 20, 2012, 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 August 9, 2012.
An Additional Submission from the Complainant was received on August 14, 2012, and determined to have been received in a timely manner according to The Forum's Supplemental Rule #7.
An Additional Submission from the Respondent was received on August 17, 2012, and determined to have been received in a timely manner according to The Forum's Supplemental Rule #7.
On August 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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
The Complainant makes the following allegations:
Complainant uses the STAY BRUTAL trademark on its line of apparel since 2006, and uses a distinctive logo corresponding to the mark on its t-shirts. Complainant owns a trademark registration for its STAY BRU TAL mark through the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,131,664, filed August 23, 2011, registered April 24, 2012). See Complainant’s Exhibit C. Complainant uses its STAY BRUTAL mark to market its goods in the United States and throughout the world, and Complainant has spent substantial sums of money and resources to promote its brand, which has become widely recognized and enjoys extensive consumer good will.
Respondent registered the <staybrutal.com> domain name, which is identical to Complainant’s STAY BRUTAL mark.
The Respondent is a “notorious cybersquatter” with a history of UDRP decisions determining that Respondent registered and used domain names in bad faith. Respondent has no rights or legitimate interests in the <staybrutal.com> domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent is not commonly known by the disputed domain name and does not have approval to use the STAY BRUTAL mark to register a domain name.
Respondent uses the <staybrutal.com> domain name to direct Internet traffic to third-party websites that sell goods that compete with Complainant’s goods. Respondent registered the disputed domain name in bad faith, demonstrated by its use of the resolving website to host a “click-through” advertising website. Respondent registered the <staybrutal.com> domain name with the intent of misleading website visitors who attempt to locate Complainant on the Internet, and takes advantage of the good will associated with Complainant’s mark.
B. Respondent
The Respondent makes the following allegations:
Complainant’s actual use of the STAY BRUTAL mark consists of a stylized version of the word, in the following form:
STAY
BRU
TAL
Complainant does not have rights in the STAY BRUTAL mark because its registered trademark consists of the stylized three-word logo, not the actual STAY BRUTAL mark. Complainant provides no evidence of its “hundreds of thousands of dollars” in sales under its mark, and the website from which its goods are marketed was created on or about May 23, 2010, four months after Respondent registered the <staybrutal.com> domain name. The STAY BRUTAL mark in its three-word stylized form is no more than a logo used on Complainant’s products, and does not function as a source indicator.
Respondent denies that Complainant offers certain merchandise such as hats or caps for sale under the STAY BRUTAL mark. The Complainant’s claim that its first date of use of the STAY BRUTAL mark was in October 2006 is not supported by any evidence.
Respondent has a right to register and use the <staybrutal.com> domain name to attract Internet traffic. The term “stay brutal” is a generic phrase, which Respondent did not register in an attempt to exploit the rights Complainant alleges it has in the mark. Respondent registered the disputed domain name on or about January 23, 2010, four months before Complainant created its online store, and nineteen months before Complainant filed for the trademark registration for the STAY BRUTAL mark. At the time that Respondent assumed registration of the <staybrutal.com> domain name, Complainant’s use of the mark in commerce did not exist. Respondent registered the disputed domain name using a privacy protection service (“Whois Privacy Protection Service, Inc.,” or “WPP”), which allows a registrant to conceal its identity for a legitimate purpose, such as to cut unsolicited advertising or spam. The fact that WPP is named as a respondent in other UDRP proceedings that Respondent was not a party to does not support a finding of bad faith or a pattern of bad faith registration. Complainant fails to show how Respondent registered and uses the <staybrutal.com> domain name in bad faith.
C. Additional Submissions
Complainant’s Additional Submission:
The Complainant states that the Respondent cannot demonstrate that its registration of the disputed domain name was legitimate or in good faith, and claim again that Complainant's mark has been in use since 2006. The initial STAY BRUTAL line of t-shirts was first sold locally in 2006. Beginning in 2007, the brand exploded in national popularity when the shirts were sold at major musical festivals across the country, as well as sold online via Complainant's online store hosted by the popular online clothing retailer Big Cartel.
The disputed domain was registered in early 2010, during the peak of the popularity of the STAY BRUTAL brand. STAY BRUTAL is not a "generic phrase" that is free to register, but an arbitrary or fanciful mark, one that does not in any way describe or even suggest the nature or characteristics of Complainant's goods.
The Complainant repeats that the Respondent is a known cybersquatter.
Regarding the trademark, Complainant states that the registered and used mark is STAY BRU TAL, however it is widely understood and perceived by consumers as STAY BRUTAL.
Respondent’s Additional Submission:
Respondent states that Complainant’s alleged proof of use is not credible, and Respondent could not reasonably have been aware of any alleged rights Complainant may or may not have in the slogan STAY BRUTAL when it assumed registration of the Disputed Domain Name.
Complainant once again fails to provide any credible testimonial or documentary evidence in support of its alleged use pre-dating the date Respondent assumed registration of the Disputed Domain Name, let alone any credible testimonial or documentary evidence in support of its alleged use dating back to 2006.
Respondent reiterates that STAY BRU TAL is nothing more than a slogan that is primarily silkscreened onto the front of Complainant’s t-shirts. In addition to t-shirts and other merchandise emblazoned with the STAY BRU TAL slogan, Complainant also sells other stylized slogan-themed merchandise, such as t-shirts with the slogans, STAY POSI TIVE, TOUR LIFE, PAY ME, STREET ART IS A DRUG, LISTEN TO DUB STEP and others. Clearly, Complainant is merely in the business of marketing and selling t-shirts and other merchandise with catchy slogans on them, but said slogans do not function as trademarks because they do not identify the source of the product.
The Complainant is the owner of the U.S. trademark registration
No 4,131,664 STAY BRU TAL, filed August 23, 2011, registered April 24, 2012, with the date of first use of October 2006 (Exhibit C of the Complaint).
The Respondent registered the disputed domain name <staybrutal.com> on January 23, 2010.
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.
The Complainant has successfully demonstrated rights in its STAY BRU TAL mark via its USPTO registration, and Complainant’s rights in the STAY BRU TAL mark begin on the filing date of the trademark application, pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), wherein the panel stated that the complainant’s rights in its marks were secured through registration of the marks with the USPTO.
Complainant argues that the <staybrutal.com> domain name is identical to its STAY BRU TAL mark, because the disputed domain name uses Complainant’s entire STAY BRU TAL mark, with the only addition being the generic top-level domain (“gTLD”) “.com.” The Panel notes that the disputed domain name does not include the space that is contained in Complainant’s STAY BRU TAL mark. However, as spaces cannot be part of a domain name for pure technical reasons, and a trademark of several words therefore must be written either with a hyphen between the words, or – as in this case – as one word, there is in fact no difference between STAY BRU TAL, STAY BRUTAL or STAYBRUTAL and the domain name <staybrutal.com>.
The Panel finds that the <staybrutal.com> domain name is identical to Complainant’s STAY BRU TAL mark, due to the addition of only a gTLD. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).
While Respondent argues that its registration of the <staybrutal.com> domain name predates Complainant’s alleged rights in the mark, the Panel notes that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. 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).”).
While Respondent contends that the <staybrutal.com> domain name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, the Panel also finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <staybrutal.com> domain name and does not have the Complainant’s approval to use the STAY BRUTAL / STAY BRU TAL mark in a domain name. The Panel observes that the WHOIS information associated with the disputed domain name identifies “Whois Privacy Protection Service, Inc.” as the registrant. The panel in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), concluded that the respondent did not establish rights and legitimate interests in the disputed domain name because the WHOIS information, as well as other information on the record, did not suggest that the respondent was commonly known by the disputed domain name. The Panel concludes that the Respondent is not commonly known by the disputed domain name based on the WHOIS information, and can therefore not demonstrate rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Respondent argues that the terms of the <staybrutal.com> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. However, the Panel notes that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. In this case, the Complainant’s trademark is used in a non-generic way for specific goods, and the disputed domain name is used for the same type of goods. The Panel therefore does not agree with Respondents argument.
Complainant claims that Respondent’s use of the disputed domain name to host a webpage containing hyperlinks to competing businesses does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that the sole purpose of Respondent’s website is to “deceptively route Internet users who mistakenly” access the website associated with the <staybrutal.com> domain name, and Respondent’s interest in the domain name to host “click-through” advertising is not legitimate. The panel in Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), stated that by operating a pay-per-click website at a confusingly similar domain name, respondent was not making a bona fide offering of goods or services or a legitimate use of the disputed domain name.
The Panel finds that Respondent’s use of the disputed domain name to host click-through links to competing commercial entities does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant alleges that Respondent demonstrates a pattern of bad faith registration and use of domain names using other entities’ registered marks, as evidenced by the multiple UDRP decisions involving Respondent where bad faith and no legitimate interests were found. See Vanguard Trademark Holdings USA LLC v. Whois Privacy Protection Servs. / Singh, FA 1340858 (Nat. Arb. Forum Oct. 12, 2010); see also Jagex Ltd. v. Whois Privacy Protection Serv., Inc. / Terrazik, D2011-2075 (WIPO Jan. 12, 2010). The Respondent denies that it has a history of bad faith registration and use of domain names in prior UDRP cases, however the Panel is not convinced by Respondents arguments in this matter.
The Panel observes that Respondent in the present case is identified as “Whois Privacy Protection Service, Inc. / Whois Agent,” and the decisions mentioned by Complainant involve, among other, “Whois Privacy Protection Service, Inc. / Whois Agent.” The Panel therefore agrees with Complainant, as evidence of several UDRP decisions involving Respondent in which the domain name is transferred to the complainant is evidence of Respondent’s bad faith registration and use of the <staybrutal.com> domain name under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant argues that Respondent’s actions in registering and using the <staybrutal.com> domain name were in bad faith because Respondent attempts to frustrate Internet consumers trying to find Complainant’s website by offering links with headings such as “Custom T Shirt Printing,” “Music Band T Shirts,” and “Custom T Shirt.” See Complainant’s Exhibit E. Complainant contends that Respondent’s use of the disputed domain name to host hyperlinks to websites offering competing goods for sale and likely receiving “click-through” fees is evidence of Respondent’s bad faith. The Panel determine that by making a profit by attracting Internet users through the use of a domain name identical to Complainant’s mark, Respondent registered and uses the <staybrutal.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Finally, the Respondent denies that it could have registered the disputed domain name in bad faith because Respondent assumed registration of the <staybrutal.com> domain name four months before Complainant filed its trademark application for the STAY BRU TAL mark and nineteen months before Complainant began using its mark in commerce in relation to all the goods listed on its trademark application.
The question is: Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were required?
The Panel notes that the Complainant has used its trademark since 2006, and therefore can claim common law trademark rights since that year. The disputed domain name was registered first in 2010.
It is also noticed that at the beginning in 2007, the STAY BRU TAL / STAY BRUTAL trademark expanded in national popularity when the shirts were sold at major musical festivals across the USA, and <staybrutal.com> was registered “during the peak of the popularity of” the STAY BRU TAL / STAY BRUTAL trademark. Where a trademark is the subject of substantial media attention, of which the Respondent seems aware of, and before the Complainant is able to obtain a registration for the mark, it is obvious that the Respondent has registered the disputed domain name in order to take advantage of the Complainants upcoming national trademark rights.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <staybrutal.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 28, 2012
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