DECISION

 

Guitar Center, Inc. v. rong huo

Claim Number: FA2406002104239

PARTIES

Complainant is Guitar Center, Inc. ("Complainant"), represented by Gina Carrillo of CORSEARCH, Texas, USA. Respondent is rong huo ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <usaguitarcenter.com>, registered with Dynadot 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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 27, 2024; Forum received payment on June 27, 2024.

 

On June 28, 2024, Dynadot Inc confirmed by e-mail to Forum that the <usaguitarcenter.com> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 July 8, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 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@usaguitarcenter.com. Also on July 8, 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 July 30, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant is an American musical instrument retailer chain. It is the largest company of its kind in the United States, with 294 locations. As the world's largest musical instrument retailer, Complainant now ships globally to over 100 countries, including China. Complainant has spent substantial time, effort, and money advertising and promoting the GUITAR CENTER marks and has thus developed substantial goodwill. Through such widespread and extensive efforts, the GUITAR CENTER mark has become distinctive and is uniquely associated with its goods and services. Complainant has rights in the GUITAR CENTER mark, inter alia, through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,280,874, registered September 28, 1999). The disputed domain name is confusingly similar to Complainant's GUITAR CENTER mark as it incorporates the mark in its entirety while adding a geographic term and the ".com" generic top-level domain ("gTLD").

 

ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its GUITAR CENTER mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passed itself off as Complainant while offering competing products.

 

iii) Respondent registered and used the disputed domain name in bad faith. Respondent disrupts Complainant's business and sells competing goods while attracting users for commercial gain by passing itself off as Complainant. Respondent's bad faith is evident given that Respondent had actual knowledge of Complainant's rights in Complainant's marks.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on May 31, 2024.

 

2. Complainant has established rights in the GUITAR CENTER mark, inter alia, through its registration with the USPTO (e.g., Reg. No. 2,280,874, registered September 28, 1999).

 

3. Respondent is prominently using the GUITAR CENTER trademark on the website and offering competing products at significantly reduced prices which creates a strong impression of affiliation with Complainant.

 

4. The disputed domain name's resolving website copies the GUITAR CENTER + stylized shape guitar trademark and is located at the top left side of the website, mimicking Complainant's website.

 

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 rights in the GUITAR CENTER mark, inter alia, through its registration with the USPTO (e.g., Reg. No. 2,280,874, registered September 28, 1999). Registration of a mark with the USPTO is generally sufficient in establishing rights in the mark. Since Complainant has provided evidence of trademark registration with the USPTO, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues the disputed domain name <usaguitarcenter.com> is confusingly similar to Complainant's GUITAR CENTER mark. Under Policy ¶ 4(a)(i), adding a geographic term along with the ".com" gTLD is insufficient in differentiating from the mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i)."); see also Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as "[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i)."). The disputed domain name incorporates Complainant's mark in its entirety and adds the geographic term "USA." Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant's GUITAR CENTER mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant asserts Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its GUITAR CENTER mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. The WHOIS information identifies Respondent as "rong huo." There is nothing in the records to suggest that Respondent is commonly known by the disputed domain name. Thus, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant further contends Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Complainant provides a screenshot of the resolving webpage, which mimics Complainant's website and offers competing products while displaying Complainant's mark and images. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant is not a bona fide offering of goods or services, nor any noncommercial or fair use. See hipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) ("The resolving webpages between Complainant's and Respondent's websites are virtually the same. Respondent's use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii)."); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002) ("Respondent's use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant's [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)."). The Panel therefore finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant's business and attracting users for commercial gain while offering competing products at significantly reduced prices for sale. Under Policy ¶¶ 4(b)(iii) and (iv), offering counterfeit or competing items in disruption of a complainant's business while attracting users for commercial gain is evidence of bad faith registration and use. See Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA 1587466 (Forum Dec. 13, 2014) ("The Panel finds that Respondent's use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant's business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii)."); 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 notes that Complainant provides screenshots of the disputed domain name's resolving website, showing Respondent prominently using the GUITAR CENTER trademark and offering competing products at significantly reduced prices. This creates a strong impression of affiliation with Complainant by copying the GUITAR CENTER + stylized shape guitar trademark and placing it at the top left side of the website, mimicking Complainant's website. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).

 

Complainant further contends that Respondent had knowledge of Complainant's rights in the GUITAR CENTER marks at the time of registering the disputed domain name. To support this assertion, Complainant points to Respondent's explicit use of the GUITAR CENTER mark in the disputed domain name and on the website, and the creation of a website offering competing products. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name, that Respondent had knowledge of Complainant's rights in the GUITAR CENTER mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).

 

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 <usaguitarcenter.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq, Panelist

Dated: July 30, 2024