DECISION

 

Epiphany Music, LLC v. lidong / huanglidong

Claim Number: FA2404002093530

PARTIES

Complainant is Epiphany Music, LLC ("Complainant"), represented by Jeffrey R. Cadwell of Dorsey & Whitney LLP, Minnesota, USA. Respondent is lidong / huanglidong ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alanismorissettemerch.com>, registered with Xin Net Technology Corporation.

 

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 April 16, 2024; Forum received payment on April 16, 2024.

 

On April 17, 2024, Xin Net Technology Corporation confirmed by e-mail to Forum that the <alanismorissettemerch.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 April 19, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of May 9, 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@alanismorissettemerch.com. Also on April 19, 2024, the Chinese and English 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 in Chinese and English.

 

On May 10, 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.

 

PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING

The Complaint was submitted in English. Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:

 

"Pursuant to verification received from the Registrar, the Registration agreement is in Chinese. You have two options: 1. Translate the Complaint and Table of Contents into Chinese, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English."  

 

Complainant elected to provide submissions as to why Respondent is capable of understanding English and why the proceedings should be conducted in English. It stated that all content at the website resolving from the disputed domain name is in English. The Panel notes that this is so and observes the (false) English language claim that the resolving website is Complainant's "official website".

 

The Panel has a discretion to allow the proceeding to go forward in a language other than that of the registration agreement. See CW Brands LLC v. zhang meng ni, FA 2080510 (Forum Feb. 16, 2024). The Panel considers that the resolving website required a working understanding of English and so the Panel determines, pursuant to Rule 11(a), that the proceedings should be conducted in English. See Zappos.com, Inc. v. Zufu aka Huahaotrade, D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where "the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English"); Beauty Holding LLC v. 郑振富, FA 2078436 (Forum Feb. 7, 2024) (holding that the proceeding could be conducted in English where website, in English, "attempts to pass itself off as a site maintained by Complainant"); see also Franklin Resources, Inc. v. Tammy Bailey / lu limei, FA 2078869 (Forum Feb. 8, 2024).

 

PARTIES' CONTENTIONS

A.       Complainant

Complainant asserts trademark rights in ALANIS MORISSETTE.  Complainant holds a national registration for that trademark.  Complainant submits that the disputed domain name is confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent has no trademark rights of its own; has no legitimate business of its own; and that there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith. Complainant alleges that Respondent knew of the trademark when it registered the disputed domain name and has used the name in bad faith by re-directing Internet users looking for Complainant's official website to an online location selling counterfeit goods.

 

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.       Complainant holds the trademark rights of Alanis Morissette, an internationally-known singer, songwriter, and performer;

2.       those rights include United States Patent & Trademark Office ("USPTO") Reg. No. 2345140, issued April 25, 2000, for the trademark ALANIS MORISSETTE;

3.       Complainant sells music and clothing through a website at <alanis.com>;

4.       the disputed domain name was registered on August 19, 2022 and is no longer active, but prior to April 11, 2024 it was used to pass itself off as affiliated with Complainant in order to sell products featuring the performer's likeness and 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.

 

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.  

 

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.

 

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, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights as it provides proof of its registration of the trademark ALANIS MORISSETTE with the USPTO, a national trademark authority.

 

For the purposes of comparison of the disputed domain name with the trademark the gTLD, ".com", can be disregarded (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). So, too, the descriptive term "merch" is insufficient to differentiate the domain name from the trademark. The Panel finds the domain name to be confusingly similar to the trademark (see, for example, Belting Bronco Merchandising Inc. v. Dell Laptop, FA2403002088064 (Forum Apr. 3, 2024) finding <zachbryanmerch.net> confusingly similar to complainant's ZACH BRYAN mark).

 

The Panel therefore 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.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which 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, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of the underlying domain name owner as disclosed by the Registrar does not carry any suggestion that Respondent might be commonly known by the domain name. Complainant states that it has not authorized use of the trademark and there is no evidence that Respondent has any trademark rights of its own. Finally, the domain name resolves to a website from which Respondent commercially benefits from the sale of goods bearing the trademark. Complainant infers those goods are counterfeit but it matters none since the Panel accepts on the evidence that the sale of the goods is unauthorized. 

 

The Panel finds that a prima facie case has been made that Respondent has no rights or interest in the domain name (see, for example, Baylor University v. Yu Ying Guo, FA2403002086441 (Forum Mar. 28, 2024) ("Respondent uses the at-issue domain name to address a website that sells counterfeit apparel featuring BAYLOR related marks without permission and in a manner that is likely to cause consumers to mistakenly believe that Respondent's online BAYLOR apparel offerings are licensed by Complainant when they are not.").

 

The onus shifts to Respondent. In the absence of a Response, the Panel finds that Respondent has not discharged the onus and finds the Respondent has no rights or interests.

 

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.'

 

Complainant argues for the application of paragraph 4(b)(iv) and the Panel is in agreement. The Panel has already found the disputed domain name to be confusingly similar to Complainant's trademark. Absent a Response, the Panel may draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel draws the reasonable inference that the domain name was registered in bad faith since the trademark is a distinctive term and there is no plausible reason to think that Respondent could have a legitimate expectation to register it.  Likewise, the Panel is entitled to accept all reasonable allegations set forth in the Complaint and the Panel accepts that Complainant's contention that Respondent is making a commercial gain by way of the sale of unauthorized goods.

 

The Panel finds that Complainant has satisfied the third and final element of the Policy (see, for example, Baylor University v. Yu Ying Guo, op. cit., ("Respondent registered and used the at-issue domain name to deceive internet users into falsely believing that the domain name and its referenced website and merchandise are sponsored or licensed by Complainant. Respondent's use of the confusingly similar domain name to capitalize on the confusion Respondent created to drive internet traffic to the domain name's website where Respondent offers BAYLOR related merchandise shows Respondent's bad faith registration and use of the <baylorbears.top> domain name under 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 <alanismorissettemerch.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Debrett G Lyons, Panelist

Dated: May 16, 2024