Cameron Thomaz p/k/a Wiz Khalifa and Wiz Khalifa Trademark, LLC v. Anthony Lynch
Claim Number: FA1503001610084
Complainant is Cameron Thomaz p/k/a Wiz Khalifa and Wiz Khalifa Trademark, LLC (“Complainant”), represented by Brad D. Rose of Pryor Cashman LLP, New York, USA. Respondent is Anthony Lynch (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taylorgang.us>, registered with GODADDY.COM, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2015; the Forum received payment on March 18, 2015.
On March 19, 2015, GODADDY.COM, INC. confirmed by e-mail to the Forum that the <taylorgang.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the .usTLD Domain Name Dispute Resolution Policy (the “Policy”).
On March 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2015 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@taylorgang.us. Also on March 20, 2015, 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 April 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 .usTLD 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 Policy, 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 contends as follows:
Complainant owns U.S. Trademark Reg. No. 4,605,980 and Serial No. 86/274,541 for the TAYLOR GANG Mark for use in connection with a variety of goods and services, including, but not limited to, Class 25 clothing and Class 34 electronic smoking vaporizers and electronic cigarettes, respectively. Complainant has used the TAYLOR GANG Mark in connection with clothing since at least as early as December 2008.
Respondent registered the domain name <taylorgang.us> without authorization. Respondent’s domain name (i) wholly incorporates the TAYLOR GANG mark; (ii) is confusingly similar to Complainant’s TAYLOR GANG mark; and (iii) is likely to cause confusion, mistake and/or deception among the consuming public.
The disputed domain name is identical to the distinctive TAYLOR GANG Mark, or is confusingly similar thereto, and is likely to cause consumer confusion.
Respondent lacks rights or legitimate interests in the at-issue domain name. Respondent has never been an authorized representative or agent of Complainant. Complainant’s adoption and use of the TAYLOR GANG mark in 2008 precedes Respondent’s registration of the at-issue domain name, which took place on December 16, 2013. Respondent had knowledge of Complainant’s distinctive TAYLOR GANG mark and fame prior to registration of the domain name. Respondent is not commonly known as “Taylor Gang,” “Taylor” or “Wiz Khalifa.”
Respondent has deliberately attempted to trade upon the goodwill associated with Complainant. Respondent has not used the disputed domain name in connection with a good faith, bona fide offering of goods and services. Prior to the transfer of <taylorgang.net> to Complainant, the <taylorgang.us> website redirected to the <taylorgang.net> site.
The <taylorgang.net> website featured photographs of Wiz Khalifa, offered full album music downloads from music by various artists from Taylor Gang Ent., including Complainant Wiz Khalifa, and provided an online link to another website to sell clothing bearing the TAYLOR GANG mark that was not manufactured, licensed or approved by Complainant.
Taken together, Respondent’s (linked) websites give the false impression that they are authorized by and/or affiliated with Complainant.
Upon information and belief, the Respondent uses the disputed domain name to mislead Internet users searching for Taylor Gang news and merchandise to its unauthorized, commercial website for the Respondent’s financial benefit. Prior to the transfer of <taylorgang.net> to Complainant, the <taylorgang.net> website, to which the disputed domain name was redirected, was a commercial website that had an online store offering infringing TAYLOR GANG merchandise for sale.
Respondent has registered and used the disputed domain name in bad faith.
Respondent registered the disputed domain name at least five years after Complainant began using the TAYLOR GANG mark continuously and exclusively as a source identifier for their goods and services.
Respondent, in common with the general public, is well-aware of the valuable goodwill and reputation represented and symbolized by the TAYLOR GANG mark. Despite this knowledge, Respondent wholly incorporates Complainant’s TAYLOR GANG mark in the disputed domain name. Complainant has not granted a license or consented to the Respondent’s use of the TAYLOR GANG mark, or Wiz Khalifa’s images or likeness, and there was no disclaimer as to source or sponsorship on the websites.
Respondent has intentionally attempted to profit from its bad faith registration and use of the disputed domain name is inescapable in light of the fact that (i) the TAYLOR GANG mark is a valuable commercial asset; (ii) Complainant has expended substantial amounts of time and money promoting and marketing goods and services under the TAYLOR GANG brand name; and (iii) upon information and belief, Respondent used the disputed domain name to profit from the sale of clothing bearing the TAYLOR GANG mark and was accessible for purchase from the “online store” link on the <taylorgang.net> website to which it redirected; (iv) the prolific use of photographs of Wiz Khalifa, his videos, lyrics, tour dates and other information about Wiz Khalifa on the <taylorgang.net> website (to which <taylorgang.us> redirected) demonstrates knowledge of Complainant Wiz Khalifa’s popularity and success and the intent to trade upon the goodwill associated with Wiz Khalifa and his TAYLOR GANG mark.
Respondent’s domain name <taylorgang.us> automatically redirected to <taylorgang.net> prior to the latter’s transfer to Complainant. Complainant now controls the <taylorgang.net> website after winning a UDRP concerning the domain name in late 2014.
Respondent’s bad faith intent to profit is also reflected because the <taylorgang.net> website (to which <taylorgang.us> redirected) offered full album music downloads from several artists, including Complainant Wiz Khalifaz.
Respondent’s use of the disputed domain name to generate confusion in order to attract users for commercial gain is bad faith use. Panels have found bad faith where the domain name in question causes consumer confusion strictly for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TAYLOR GANG mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent used the at-issue domain name to redirect Internet users to the address of an unauthorized, commercial website for Respondent’s financial benefit.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
In light of the similarity between the Uniform Domain Name Dispute Resolution Policy and the usTLD Policy, the Panel will in some instances, rely on UDRP precedent where necessary.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its TAYLOR GANG mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i).See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <taylorgang.us> domain name contains Complainant’s entire trademark, less its space, with the country-code top-level domain name, “.us,” appended thereto. The slight differences between the <taylorgang.us> domain name and Complainant’s trademark do nothing to distinguish one from the other pursuant to the Policy. Therefore, the Panel finds that the at-issue domain name is identical to Complainant’s TAYLOR GANG trademark. See Lockheed Martin Corp. v. Roberson, FA 323762(Nat. Arb. Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name lists “Anthony Lynch” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <taylorgang.us> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to usTLD Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) [the UDRP section equivalent to usTLD Policy 4(c)(iii)] does not apply).
Respondent used the <taylorgang.us> domain name to redirect Internet users to a commercial website selling infringing TAYLOR GANG merchandise. Using the at-issue domain name in this manner is neither a bona fide offering of goods or services under usTLD Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use usTLD under Policy ¶ 4(c)(iv). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden under usTLD Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, usTLD Policy ¶4(b) specific bad faith circumstances, as well as other circumstances, are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the usTLD Policy.
As mentioned above, Respondent used the domain name to ultimately address a website which sold infringing TAYLOR GANG merchandise. Such use of the domain name demonstrates Respondent’s bad faith under usTLD Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent’s unauthorized use of a trademark identical domain name in connection with Respondent’s commercial website surely confused Internet users into erroneously supposing that Complainant was the source, sponsor, affiliate, or advocate of the commercial promotions and hyperlinks displayed on such website. Respondent’s bad faith intent to profit from Internet users’ confusion as to Complainant’s association with the at-issue domain name demonstrates Respondent’s bad faith pursuant to usTLD Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also, H-D v. Dunajevs(NAF FA1302001486359) ("Respondent uses the confusingly similar <hdclothes.com> domain name to divert Internet users seeking Complainant to Respondent’s website, where it sells counterfeit H-D goods. This diverts commercial gain from Complainant to Respondent and disrupts Complainant’s business. Respondent is in clear violation of both Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).")
Finally, Respondent registered the <taylorgang.us> domain name knowing that Complainant had trademark rights in the TAYLOR GANG mark. Respondent’s prior knowledge is evident 1) from the notoriety of Complainant’s trademark; 2) from Respondent’s use of the at-issue domain name to direct Internet users to a website selling unauthorized TAYLOR GANG merchandise where Complainant’s images were displayed and where Complainant’s musical works were allowed to be downloaded without license; and 3) by Respondent’s multiple statements via Twitter indicating that Respondent was well aware of Complainant and the TAYLOR GANG trademark. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <taylorgang.us> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the .usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <taylorgang.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 20, 2015
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