DECISION

 

Belting Bronco Merchandising Inc. v. Son Nguyen Van

Claim Number: FA2403002089322

 

PARTIES

Complainant is Belting Bronco Merchandising Inc. ("Complainant"), represented by Peter E. Nussbaum of Chiesa Shahinian Giantomasi PC, New Jersey, USA. Respondent is Son Nguyen Van ("Respondent"), Vietnam.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <shop-zachbryanmerch.com>, registered with NameCheap, Inc.

 

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.

 

Richard Hill 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 e-mail to Forum that the <shop-zachbryanmerch.com> 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 e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@shop-zachbryanmerch.com. Also on March 21, 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 April 11, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 states that it is the trademark holding company of Zach Bryan, an extremely well-known musical artist who performs and records under the name and mark ZACH BRYAN. Complainant is a limited liability company established and solely controlled by Mr. Bryan that is charged with the ownership of Mr. Bryan's intellectual property. Complainant is the owner of valid common law rights in the mark ZACH BRYAN which mark has acquired secondary meaning based on Complainant's substantial use of the mark as detailed herein. Mr. Bryan began his extremely successful career as a musical artist in 2017. His first recording under the mark ZACH BRYAN entitled "God Speed" was released on March 11, 2018 via YouTube. Since 2019, Mr. Bryan has released six full-length albums and EPs, all of which have received substantial consumer response. Mr. Bryan's album American Heartbreak released on January 25, 2022 (his first album for the world famous record label Warner Brothers) is a triple album that debuted at number five on the US Billboard 200 with over 70,000 album-equivalent units sold, marking the highest sales total in a first week for a country album in 2022. Mr. Bryan's self-titled album Zach Bryan released on August 25, 2023 debuted at number one on the Billboard 200. ZACH BRYAN songs and music videos have received substantial plays and streams via a variety of online sources. For example, Mr. Bryan's first uploaded his music to the popular online musical portal Spotify was a song entitled Heading South on September 30, 2019 and since that time his songs have received 329,464,886 streams. The ZACH BRYAN Verified Artist Spotify page has 26,991,223 monthly listeners. The ZACH BRYAN YouTube page has nearly 900K subscribers and Mr Bryan's music videos and song tracks have received 805,236,568 views. In addition, ZACH BRYAN music has been available for purchase and streaming via Apple's iTunes service for many years. ZACH BRYAN goods and services are promoted via Complainant's website <zachbryan.com> that went live on November 2020 and received over 15 million site visitors in the past year. ZACH BRYAN also has a substantial social media following, including over 3 million followers on Instagram which page went live on April 13, 2013. Mr. Bryan has performed live in major venues throughout the United States, Europe and Australia as well as at major music festivals across the United States and elsewhere throughout the world, including Lollapalooza, Bonnaroo Music and Arts Festival, Austin City Limits, the Grand Ole Opry, the Red Rocks Amphitheater and many more. In addition, since 2017 Complainant has been continuously selling clothing, toys and other merchandise under the ZACH BRYAN mark to promote Mr. Bryan's musical artist goods and services. Complainant has submitted applications in the United States for the mark ZACH BRYAN, with first use claimed in 2017.

 

Complainant alleges that the disputed domain name is confusingly similar to its ZACH BRYAN mark as it incorporates the mark in its entirety, merely adding a hyphen, the generic/descriptive terms "shop" and "merch" (which stands for "merchandise"), and the ".com" top-level domain ("gTLD").

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use its mark, nor is Respondent commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website offers for sale unauthorized or counterfeit versions of Complainant's goods, that is, 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 intellectual property. Specifically, Respondent is selling goods that either use or depict Complainant's ZACH BRYAN mark; images or representations of Mr. Bryan or his likeness; and/or other forms of intellectual property owned by Complainant. Respondent's website also features numerous images of Mr. Bryan as well as information about Mr. Bryan and his goods and services. None of the merchandise being sold by Respondent is authorized or licensed by Complainant and it is clear that Respondent is attempting to pass itself off as Complainant's authorized merchandise retailer.

 

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to attract users for commercial gain by selling unauthorized or counterfeit versions of Complainant's goods. Additionally, Respondent had constructive and/or actual notice of Complainant's rights in the ZACH BRYAN mark, evidenced by the fame and notoriety of the mark and its use on the resolving website.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has common law rights in the mark ZACH BRYAN, preceding the registration of the disputed domain name.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

The disputed domain name was registered in 2023.

 

The resolving website offers for sale unauthorized or counterfeit versions of Complainant's goods.

 

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 asserts common law rights in its ZACH BRYAN mark. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). 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). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including "longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising."). Here, Complainant registered the domain name <zachbryan.com> in 2000, and used it to market merchandise. Complainant provides ample evidence of media recognition and use of the mark in promotional material, as well as media recognition. Therefore, the Panel finds that Complainant established common law rights in its ZACH BRYAN mark, with rights predating the registration of the disputed domain name.

 

The disputed domain name incorporates Complainant's ZACH BRYAN mark in its entirety, merely adding a hyphen, the generic/descriptive terms "shop" and "merch" (which stands for "merchandise"), and the ".com" top-level domain ("gTLD"). Under Policy ¶ 4(a)(i), adding a gTLD and/or hyphens and/or generic terms and/or significant or meaningless letters, is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also 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 Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) ("The domain name contains the mark in its entirety, with only the addition of the generic letters 'sb' and the digits '2018,' plus the generic Top Level Domain ("gTLD") '.com.' These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy."). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: the Panel may reference WHOIS information to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same). Here, the WHOIS information shows that the registrant is known as "Son Nguyen Van". Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

The resolving website sells unauthorized or counterfeit versions of Complainant's goods. This is not a bona fide offering of goods and services or legitimate noncommercial or fair use under the Policy. See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) ("Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant's WATTS brand and displays counterfeit versions of Complainant's products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name."); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant's MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

 

Indeed, as already noted, the resolving website offers for sale unauthorized or counterfeit versions of Complainant's products. This is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Crocs, Inc. v. jing dian, Case No. FA 1587214 (Forum Dec. 12, 2014) (finding bad faith where the respondent used the disputed domain name to display the complainant's marks to sell unauthorized goods); see also Swarovski Aktiengesellschaft v. ailong c ailong xiong, Case No. FA 1571172 (Forum Sept. 5, 2014) (finding bad faith where respondent used the disputed domain name in connection with a website purportedly offering unauthorized goods of Complainant and stating that the respondent's bad faith was "apparent in that [r]espondent is profiting from the likelihood Internet users will mistakenly believe the goods sold through the domain name's website are legitimate…"); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant's products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant's products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent's selling of counterfeit products creates the likelihood of confusion as to the complainant's affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant's connection with the website by selling counterfeit products). The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

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

 

 

 

Richard Hill, Panelist

Dated: April 11, 2024