DECISION

 

Belting Bronco Merchandising Inc. v. fahad bink

Claim Number: FA2401002080869

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zachbryanmerch.shop>, registered with NameSilo, LLC.

 

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.

 

Paul M. DeCicco, 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, NameSilo, LLC confirmed by e-mail to Forum that the <zachbryanmerch.shop> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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@zachbryanmerch.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 Paul M. DeCicco 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 contends as follows:

 

Complainant is the trademark holding company of Zach Bryan ("Bryan"), an extremely well-known musical artist who performs and records under the name and mark ZACH BRYAN.

 

Complainant is the owner of common law rights in the mark ZACH BRYAN which mark has acquired secondary meaning based on Complainant's substantial use of the mark. Complainant is the owner of numerous USPTO applications for ZACH BRYAN.

 

Respondent's at-issue domain name is confusingly similar to Complainant's ZACK BRYAN trademark. Respondent's domain name contains Complainant's entire trademark together with the suggestive generic word "merch" and the also suggestive word ".shop" top-level domain name.

 

Respondent lacks rights and legitimate interests in the at-issue domain name. Respondent is not authorized to use Complainant's trademark. Respondent is not commonly known by the domain name. Respondent has never made any legitimate or noncommercial use of the at-issue domain name. Instead, Respondent uses the at-issue domain name to direct to a website where Respondent is engaged in the sale of a substantial amount of infringing merchandise bearing or utilizing Complainant's ZACH BRYAN mark as well as images, designs or other forms of intellectual property that directly infringe upon Complainant's and Bryan's intellectual property.

 

Respondent has registered and is using the at-issue domain name in bad faith. Respondent is attempting to disrupt Complainant's business by offering unauthorized products for-sale and is intent on using the domain name to attract internet users for commercial gain. Respondent passes off as Complainant to offer such products for-sale. Respondent had actual knowledge of Complainant's rights in ZACH BRYAN when it registered <zachbryanmerch.shop> as evidenced by Respondent's use of the domain name to pass off as Complainant and sell unauthorized goods.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the ZACH BRYAN mark.

 

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 the ZACH BRYAN.

 

Respondent uses the at-issue domain name to address a website offering for-sale ZACH BRYAN related merchandize that bears Complainant's mark and/or other proprietary intellectual property.

 

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 a mark that is confusingly similar to the at-issue domain name.

 

Complainant shows that it has filed for USPTO registration of the ZACH BRYAN mark. Importantly, Complainant need not have registered its trademark to proceed under the Policy. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant proffers sufficient evidence in its papers to show that Complainant's mark has acquired secondary meaning and thus Complainant has common law trademark rights in such mark. Further, Complainant's rights predate Respondent's registration of the at-issue domain name. Therefore and without any opposition from Respondent on point, the Panel finds that Complainant has rights in a mark for the purposes of Policy ¶4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and on-going and secondary meaning was established).

 

Respondent's <zachbryanmerch.shop> domain name is confusingly similar to Complainant's ZACH BRYAN mark under Policy ¶ 4(a(i). The domain name differs from Complainant's trademark only by the addition the term "merch" and the ".shop" top-level domain name. 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.").

 

Rights or Legitimate Interests

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 (Forum Aug. 18, 2006).

 

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. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

The WHOIS information for <zachbryanmerch.shop> identifies the domain name's registrant as "fahad bink" and the record before the Panel contains no evidence showing that Respondent is commonly known by the <zachbryanmerch.shop> domain name. The Panel therefore concludes that Respondent is not commonly known by <zachbryanmerch.shop> for the purposes of Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 1919893 (Forum Dec. 16, 2020) ("Here, the WHOIS information lists "er nong wu" as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).").

 

Respondent uses <zachbryanmerch.shop> to address a website that offers unauthorized ZACH BRYAN related items for-sale. The website displays Complainant's ZACH BRYAN trademark, and images of products bearing Complainant's mark and/or protected intellectual property. Respondent's use of the domain names in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent's lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).

 

Respondent uses its confusingly similar domain name to address a website promoting an unauthorized offering of merchandize under Complainant's ZACH BRYAN trademark. Such merchandize displays Complainant's mark and/or related intellectual property. Using the confusingly similar domain name in such a manner is disruptive to Complainant's business and falsely implies that there is a sanctioned relationship between Complainant and Respondent when there is no such relationship. Respondent's use of the <zachbryanmerch.shop> domain name shows Respondent's bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Wall v. Silva, FA 105899 (Forum Apr. 29, 2002) (finding that despite respondent's claim that it used the <josephinewall.com> domain name, which was identical to complainant's JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent's use of the domain name to sell the complainant's artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) ("[U]se of domain names to sell Complainant's goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.").

 

Moreover, Respondent registered <zachbryanmerch.shop> knowing that Complainant had trademark rights in ZACH BRYAN. Respondent's actual knowledge of Complainant's rights is evident from the notoriety of Complainant's trademark as well as from Respondent offering of ZACH BRYAN related merchandise on the <zachbryanmerch.shop> website. Respondent's prior knowledge of Complainant's ZACH BRYAN trademark further indicates Respondent's bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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 the disputed domain name").

 

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 <zachbryanmerch.shop> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: February 22, 2024