DECISION

 

Belting Bronco Merchandising Inc. v. Fahad Bin Khalid

Claim Number: FA2403002089309

 

PARTIES

Complainant is Belting Bronco Merchandising Inc. ("Complainant"), represented by Peter E. Nussbaum of Chiesa Shahinian Giantomasi PC, United States. Respondent is Fahad Bin Khalid ("Respondent"), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zachbryanmerch.co>, 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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 20, 2024; Forum received payment on March 20, 2024.

 

On March 20, 2024, NameCheap, Inc. confirmed by email to Forum that the <zachbryanmerch.co> 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 March 21, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2024 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@zachbryanmerch.co. Also on March 21, 2024, the Written Notice of the Complaint, notifying Respondent of the email 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 April 11, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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 is the trademark holding company of Zach Bryan, a musical artist who has performed under the name and mark ZACH BRYAN since 2017. He has also sold clothing, toys, and other merchandise bearing the ZACH BRYAN mark since 2017 to promote his musical artist goods and services. Bryan's album American Heartbreak, released in January 2022, debuted at number 5 on the US Billboard 200 with the highest first-week sales total for a country album in 2022; his self-titled album Zach Bryan, released in August 2023, debuted at number 1 on the Billboard 200. His songs have received over 300 million streams on Spotify, and his Spotify artist page has nearly 27 million monthly listeners. Complainant has several United States trademark applications pending to register ZACH BRYAN in various classes. Complainant asserts that it owns common law rights in the ZACH BRYAN mark arising from substantial use, promotion, and consumer recognition.

 

The disputed domain name <zachbryanmerch.co> was registered in February 2024. The name is registered in the name of a privacy registration service on behalf of Respondent. The domain name is being used for a website entitled "ZACH BRYAN MERCH" that offers for sale clothing and other merchandise displaying the ZACH BRYAN mark, Bryan's likeness, and other words and images associated with Bryan. The website also features images of and information about Bryan. Complainant alleges that Respondent is attempting to pass itself off as Complainant's authorized merchandise retailer. Complainant states that Respondent is not commonly known by the domain name and is not authorized to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <zachbryanmerch.co> is confusingly similar to its ZACH BRYAN mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

Complainant asserts common law trademark rights in ZACH BRYAN based upon longstanding use in connection with musical performances and recordings and related goods and services, and extensive promotion and public recognition of the claimed mark. Common law rights are sufficient under the Policy, provided the Complainant can prove that the mark has acquired secondary meaning. See, e.g., Belting Bronco Merchandising Inc. v. Waqas Anwar, FA 2088060 (Forum Apr. 8, 2024) (finding common law trademark rights in ZACH BRYAN); Belting Bronco Merchandising Inc. v. Dell Laptop, FA 2088064 (Forum Apr. 3, 2024) (same); Belting Bronco Merchandising Inc. v. Nano Techan, FA 2080867 (Forum Feb. 26, 2024) (same); Belting Bronco Merchandising Inc. v. Fahad Bink, FA 2080869 (Forum Feb. 22, 2024) (same); Belting Bronco Merchandising Inc. v. Waqas Anwar, FA 2081290 (Forum Feb. 21, 2024) (same); Belting Bronco Merchandising Inc. v. 黄立东 / 竹海國際貿易有限公司, FA 2078312 (Forum Feb. 5, 2024) (same). In the Panel's view, Complainant has provided sufficient evidence of use and recognition to support its unchallenged claim of common law rights in ZACH BRYAN.

 

The disputed domain name <zachbryanmerch.co> incorporates the ZACH BRYAN mark, omitting the space and adding the generic term "merch" and the ".co" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Belting Bronco Merchandising Inc. v. Waqas Anwar, FA 2088060, supra (finding <zachbryanmerch.us> confusingly similar to ZACH BRYAN); Belting Bronco Merchandising Inc. v. Dell Laptop, FA 2088064 (Forum Apr. 3, 2024) (finding <zachbryanmerch.net> confusingly similar to ZACH BRYAN); Belting Bronco Merchandising Inc. v. Fahad Bink, supra (finding <zachbryanmerch.shop> confusingly similar to ZACH BRYAN); Belting Bronco Merchandising Inc. v. 黄立东 / 竹海國際貿易有限公司, supra (finding <zachbryanmerch.store> confusingly similar to ZACH BRYAN). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a misleading website that attempts to pass off as Complainant and offers for sale unauthorized and unlicensed merchandise. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Belting Bronco Merchandising Inc. v. Dell Laptop, supra (finding lack of rights or interests in similar circumstances); Belting Bronco Merchandising Inc. v. Nano Techan, supra (same); Belting Bronco Merchandising Inc. v. Fahad Bink, supra (same); Belting Bronco Merchandising Inc. v. Waqas Anwar, FA 2081290, supra (same); Belting Bronco Merchandising Inc. v. 黄立东 / 竹海國際貿易有限公司, supra (same).

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

 

Respondent used a privacy registration service to register a domain name incorporating Complainant's mark without authorization, and is using the domain name for a misleading website that attempts to pass off as Complainant and offers for sale unauthorized and unlicensed merchandise. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., Belting Bronco Merchandising Inc. v. Dell Laptop, supra (finding bad faith registration and use in similar circumstances); Belting Bronco Merchandising Inc. v. Nano Techan, supra (same); Belting Bronco Merchandising Inc. v. Fahad Bink, supra (same); Belting Bronco Merchandising Inc. v. Waqas Anwar, FA 2081290, supra (same); Belting Bronco Merchandising Inc. v. 黄立东 / 竹海國際貿易有限公司, supra (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.

 

DECISION

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

 

Accordingly, it is Ordered that the <zachbryanmerch.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David E. Sorkin, Panelist

Dated: April 11, 2024