DECISION

 

Belting Bronco Merchandising Inc. v. Nano Techan

Claim Number: FA2401002080867

 

PARTIES

Complainant is Belting Bronco Merchandising Inc. ("Complainant"), represented by Peter Nussbaum of Chiesa Shahinian Giantomasi PC, New Jersey, USA. Respondent is Nano Techan ("Respondent"), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <zachbryan.shop>, registered with Namecheap, Inc.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 25, 2024; Forum received payment on January 25, 2024.

 

On January 25, 2024, Namecheap, Inc. confirmed by e-mail to Forum that the <zachbryan.shop> domain name is registered with Namecheap, Inc. and that Respondent is the current registrant of the name. Namecheap, Inc. has verified that Respondent is bound by the Namecheap, 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 January 29, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2024 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@zachbryan.shop. Also on January 29, 2024, 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 February 21, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in the personal name, ZACH BRYAN, and alleges that the disputed domain name is "virtually identical and confusingly similar" to the trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

 

1.    Zach Bryan is an American professional musician;

 

2.    the disputed domain name was registered on February 20, 2023;

 

3.    the domain name resolves to a website that offers for sale merchandise bearing the name ZACH BRYAN and/or bearing images of the singer, Zach Bryan; and

 

4.    there is no commercial agreement between the parties and Respondent is not authorized to use the name, Zach Bryan, or to register any domain name incorporating that name.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

The Complaint states that Zach Bryan is a musician who has performed successfully and released six full length albums under his name since 2017. The Complaint states that Complainant is controlled by Zach Bryan and is the owner of the common law rights in the ZACH BRYAN mark which has been used in commerce.  

 

The domain name is legally identical to the name, "Zach Bryan" (see, for example, ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) ("Neither the addition of country code top-level domains, i.e., '.co.,' '.de,' '.cr,' '.es,' nor the insertion of a gTLD has a distinctive function"); Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Forum Nov. 16, 2009) holding that even after the "addition of a ccTLD the disputed domain name is still identical to Complainant's mark."); Abt Elecs., Inc. v. Ricks, FA 904239 (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.")).  The principal issue is whether Zach Bryan's name is a trademark in which Complainant has rights.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) ("Complainant's registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).")).  Complainant lists several trademark applications but has no registered trademark.  Nonetheless, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights and UDRP panels have found that a governmental registration is not required so long as a complainant can establish common law rights (see, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) finding that "The Policy does not require a complainant to own a registered trademark prior to a respondent's registration if it can demonstrate established common law rights in the mark.").

 

Proof of such common law trademark rights involves, in this case, two enquiries, best explained by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview") as follows:

 

1.5 Can a complainant show UDRP-relevant rights in a personal name?

The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant's goods or services.

 

Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.

 

1.3 What does a complainant need to show to successfully assert unregistered or common law trademark rights?

To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant's goods and/or services.)

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. …

The fact that a respondent is shown to have been targeting the complainant's mark (e.g., based on the manner in which the related website is used) may support the complainant's assertion that its mark has achieved significance as a source identifier.

Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant's mark may be considered relevant in evaluating the second and third elements.

 

As originally filed, the Complaint was brought against two domain names, the domain name at issue in these proceedings, but also <zachbryanmerchandise.shop>. The names are registered to different holders and after receipt of a deficiency letter from Forum dated January 25, 2024, Complainant elected to split out the cases. The decision in respect of the name <zachbryanmerchandise.shop> has now issued as Belting Bronco Merchandising Inc. v. Waqas Anwar, FA 2081290 (Forum Feb. 21, 2024). That case proceeded on essentially the same evidence and the panelist there wrote:

 

"Zach Bryan has offered musical services under the ZACH BRYAN mark since 2017.  Zach Bryan has released 6 albums including his most recent album that debuted at number 1 on the Billboard 200 chart. Zach Bryan's songs have received 329,464,886 streams on Spotify and his verified artist page has 26,991,223 monthly listeners. Zach Bryan maintains a promotional website at www.zachbryan.com that received over 15 million visitors in 2023.  The Panel is satisfied from Complainant's evidence (including evidence of the length of use, sales and reputation) that Complainant/Zach Bryan's use of the ZACH BRYAN mark for Zach Bryan's musical services is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the ZACH BRYAN mark for the purposes of Policy ¶ 4(a)(i)."

 

Having regard to paragraph 1.5 of the WIPO Overview, there is little doubt that, at least in the United States if not more broadly, Zach Bryan's name is well known as a popular and successful country music artist.  This Panel agrees that the reputation exists in respect of musical services and that the personal name acts as "a trademark-like identifier in trade or commerce". Accordingly, the Panel finds that common law trademark rights exist in ZACH BRYAN (see, also Philippe Pierre Dauman v. Dinner Business, WIPO Case No. D2013-1255; Dr. Ellen Ochoa v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT , FA 1995027 (Forum June 14, 2022)).

 

The remaining question is whether Complainant can exercise those rights.  Although there is no proof of the matter, the Panel accepts the uncontested statement that Complainant is the holding company for the intellectual property rights of the musician, Zach Bryan, a company which he owns and controls.

 

The Panel therefore finds that Complainant has shown trademark rights in a term which is identical to the disputed domain name.  Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Notwithstanding the absence of a Response, Complainant must nevertheless make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).  The Panel returns to paragraph 1.3 of the WIPO Overview and, in particular, to the caveat that:

 

Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant's mark may be considered relevant in evaluating the second and third elements.

 

Casual investigation by the Panel shows numerous persons named Zach Bryan, other than the American singer.  One of those persons may have a legitimate interest in the domain name.  However, the evidence here unambiguously points away from that.  The domain name was not registered by a Zach Bryan – on the contrary it was registered using a proxy service to conceal the registrant's identity and in consequence of these proceeding the Registrar revealed the name of the underlying domain name holder as Nano Techan, a person associated with three earlier UDRP decisions, all essentially resulting in adverse decisions based on registration in bad faith (see, TFC IP Holdco, LLC v. Nano Techan, FA 2043561 (Forum June 1, 2023); BEIJING POP MART CULTURAL CREATIVE CO., LTD. v. Nano Techan, FA 2041868 (Forum May 23, 2023) and Not a Real Holding Company, Inc. v. Nano Techan, FA2013326 (Forum Oct. 24, 2022)). Further, the only use of the disputed domain name has been to assist Respondent to pass off the resolving site as an official website of Complainant for the purpose of offering for sale unauthorized merchandise featuring the name and image of Zach Bryan in direct competition with Complainant's interests.  

 

The use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate non-commercial or fair use.  The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name (see, for example, Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant's mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name)). 

 

The onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, op. cit.).  Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

'(i) circumstances indicating that the respondent has registered or acquired the domain name 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 the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website 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 the respondent's website or location or of a product or service on the site or location.'

 

The Complaint argues for the application of all/any of paragraphs 4(b)(ii), (iii) and (iv) above but the Panel finds that paragraph 4(b)(iv) is, on the evidence, most clearly dispositive of the matter.  The Panel has already found the domain name to be identical to the trademark.  Confusion is inevitable.  The resolving website exists for commercial gain. In terms of the Policy, the Panel finds that Respondent registered the domain name primarily for the purpose of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and used 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 that the third and final element of the Policy is satisfied.

 

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 <zachbryan.shop> domain name be TRANSFERRED to Complainant.

 

 

 

Debrett G. Lyons, Panelist

Dated:  February 26, 2024