DECISION

 

Music & Arts, a division of Guitar Center Stores, Inc. v. Nova Baumann / Joe Price

Claim Number: FA2309002062835

 

PARTIES

Complainant is Music & Arts, a division of Guitar Center Stores, Inc. ("Complainant"), represented by Corsearch, Inc., Texas, USA. Respondent is Nova Baumann / Joe Price ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <kenstanton.shop> and <kenstantons.shop> (collectively "Domain Names"), registered with Web Commerce Communications Limited dba WebNic.cc and PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 21, 2023; Forum received payment on September 21, 2023.

 

On September 22, 2023 and September 26, 2023, Web Commerce Communications Limited dba WebNic.cc and PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <kenstanton.shop> and <kenstantons.shop> domain names are registered with them and that Respondent is the current registrant of the names. Each of the Registrars has verified that Respondent is bound by their registration agreements 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 October 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 2023 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@kenstanton.shop and postmaster@kenstantons.shop. Also on October 2, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On October 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder." 

 

Complainant contends that both of the registrants for the Domain Names are related because: 1) the Domain Names are both variants of Complainant's KEN STANTON MUSIC mark, containing the KEN STANTON element 2) the Domain Names are almost identical and both contain the gTLD ".shop" 3) the Domain Names have resolved to very similar websites ("Respondent's Websites") which purport to offer products in competition with Complainant and reproduce Complainant's name and images of products taken from Complainant's official website 4) The Domain Names have similar e-mail addresses, the same server and similar IP addresses. This evidence, in the Panel's opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that two unconnected entities would register almost identical domain names and point them to almost identical websites operating an identical business model.

 

In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as "Respondent" for this Decision.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant and its predecessors in title have been involved in the sale of musical instruments to band and orchestras in the Atlanta area since 1949, including, since 2000, through a website ("Complainant's Website") at www.kenstanton.com. Complainant has rights in the KEN STANTON MUSIC mark through a trademark registration with the Unites States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,067,799, which was registered on March 14, 2006). Respondent's <kenstanton.shop> and <kenstantons.shop> domain names are confusingly similar to the KEN STANTON MUSIC mark since they include the distinctive portion of the KEN STANTON MUSIC mark or and then add a generic top-level domain ("gTLD") and in one case the letter "s".

 

Respondent lacks rights or legitimate interests in the <kenstanton.shop> and <kenstantons.shop> domain names since Respondent is not licensed or authorized to use Complainant's KEN STANTON MUSIC mark and is not commonly known by the Domain Names. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Names resolve to websites that display Complainant's KEN STANTON MUSIC mark, reproduce images from the Complainant's Website and attempt to pass themselves off as Complainant.

 

Respondent registered and uses the <kenstanton.shop> and <kenstantons.shop> domain names in bad faith. Respondent disrupts Complainant's business by passing itself off as Complainant and purporting to offer competing goods. Finally, Respondent registered the Domain Names with actual knowledge of Complainant's rights in the KEN STANTON MUSIC mark as shown by Respondent's attempts to pass off as Complainant and offer competing goods.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the KEN STANTON MUSIC mark.  Each of the Domain Names is confusingly similar to Complainant's KEN STANTON MUSIC mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant has rights in the KEN STANTON MUSIC mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 3,067,799, which was registered on March 14, 2006). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) ("Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

The Panel finds that each of the Domain Names are confusingly similar to the KEN STANTON MUSIC mark as they each incorporate the distinctive portion of the KEN STANTON MUSIC mark ("KEN STANTON", the remaining portion ("MUSIC") being descriptive) while adding the ".com" gTLD and in one case, the letter "s". Adding or removing a letter and a gTLD to a mark or a distinctive portion of a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i).  See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable 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."); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent's <hacrs.com> domain name was confusingly similar to the complainant's HACRES mark because it omitted the letter "e" from the mark and added the generic top-level domain ".com"); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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."). The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the KEN STANTON MUSIC mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (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)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Nova Baumann / Joe Price" as the registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).

 

Each of the Domain Names resolves or has resolved to the Respondent's Websites. These websites, through the reproduction of the KEN STANTON mark and images of products copied from the Complainant's Website, each pass themself off as an official website of the Complainant for the purpose of selling products in direct competition with Complainant's merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers goods or services that directly compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) ("The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (July 26 and August 20, 2023), Respondent had actual knowledge of Complainant's KEN STANTON MUSIC mark since each of the Respondent's Websites passes off as an official website of the Complainant by reproducing Complainant's name and material from Complainant's Website. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register two domain names that contain the distinctive element of the KEN STANTON MUSIC mark and use them to redirect visitors to similar websites selling goods in direct competition with the Complainant under the KEN STANTON MUSIC mark other than to take advantage of Complainant's reputation in the KEN STANTON MUSIC mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant's KEN STANTON MUSIC mark for commercial gain by using the confusingly similar Domain Names to resolve to websites copying elements of Complainant's Website and offering goods in direct competition with the goods offered on the Complainant's Website.  Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <kenstanton.shop> and <kenstantons.shop> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: October 24, 2023