DECISION

 

Whit Wave IP LLC v. Saratovskaya Oblast

Claim Number: FA2407002109069

 

PARTIES

Complainant is Whit Wave IP LLC ("Complainant"), represented by Peter Nussbaum of Chiesa Shahinian Giantomasi PC, New Jersey, USA. Respondent is Saratovskaya Oblast ("Respondent"), Russian Federation.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <whitneyhouston.shop>, 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 July 31, 2024; Forum received payment on July 31, 2024.

 

On July 31, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <whitneyhouston.shop> 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 August 1, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@whitneyhouston.shop. Also on August 1, 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 August 22, 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 the internationally famous, deceased musical artist Whitney Houston. Complainant is the owner of all rights in and to Whitney Houston's name, likeness, signature, rights of publicity, and trademarks, trade names, service marks, and logos associated with Ms. Houston. Whitney Houston is one of the best-selling musical artists of all time, as she sold over 200 million records worldwide. According to the 2009 Guinness Book of World Records, she is also the most awarded female act of all time, receiving 415 career awards during her lifetime, including 6 Grammy Awards, 30 Billboard Music Awards, 22 American Music Awards and 2 Emmy Awards, to name a few. All nine of her albums (seven studio albums and two soundtrack albums) have diamond, multi-platinum, platinum or gold certification. Houston's self-titled debut album, Whitney Houston was named by Rolling Stone Magazine as the best album of 1986 and was ranked amongst the publication's 500 Greatest Albums of All Time. Houston charted seven consecutive No. 1 Billboard Hot 100 hits and is the only artist to have ever done so. She is also the only female artist to have two No. 1 Billboard 200 Album awards. Her second studio Album Whitney became the first female album to receive such an award. The original soundtrack for The Bodyguard, the film in which Houston made her big screen debut as an actress, features Houston's recording of the hit single "I Will Always Love You". The single went on to win the Grammy Award for Record of the Year and became the best-selling single by a female artist in music history. The original soundtrack for The Bodyguard also received the Grammy Award that year for Best Album of Year, and consequently, Houston became the first act ever to sell more than a million copies of an album in a single week. Houston also contributed to the original soundtrack for the film The Preacher's Wife, in which she also appeared, and which album went on to be the best-selling gospel album in history. In 2020, Houston was inducted in the Rock & Roll Hall of Fame. There is no doubt that Whitney Houston is one of the greatest musical legends of our time. Complainant asserts rights in the WHITNEY HOUSTON mark through its registration in the United States in 2014.

 

Complainant alleges that the disputed domain name is confusingly similar to its WHITNEY HOUSTON mark because it wholly incorporates the mark, merely adding the ".shop" generic top-level domain ("gTLD"). Complainant cites UDRP precedents to support its position.

 

According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant's mark and is not commonly known by the disputed domain name. Respondent doesn't use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name directs to a website where Respondent is engaged in the sale of a substantial amount of infringing merchandise bearing or utilizing Complainant's WHITNEY HOUSTON 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 mark WHITNEY HOUSTON; images or representations of Whitney Houston or her likeness; and/or other forms of intellectual property owned by Complainant. Respondent's website also features numerous images of Whitney Houston as well as information about the musical artist Whitney Houston and her 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. Complainant cites UDRP precedents to support its position.

 

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to attract Internet users to its websites for commercial gain by offering competing products under Complainant's mark. Additionally, Respondent had actual knowledge of Complainant's rights in the WHITNEY HOUSTON mark. Complainant has engaged in a pattern of bad faith registration and use of domain names. Complainant cites UDRP precedents to support its position.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has registered trademarks for the mark WHITNEY HOUSTON and uses it to market a variety of goods and services, including clothing. The mark was registered in 2014.

 

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

 

The disputed domain name was registered in 2024.

 

The resolving website offers unauthorized versions of Complainant's products; it displays Complainant's mark and images of Whitney Houston. Respondent engaged in a pattern of bad faith registration and use of domain names.

 

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

The disputed domain name incorporates Complainant's WHITNEY HOUSTON mark in its entirety and merely adds the ".shop" generic top-level domain ("gTLD"). This does not distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs"); see also Abbott Labs v. Whois Svc., FA 1254682 (Forum May 14, 2009) ("the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark"); see also Twitter, Inc. v. Jie, FA 1919786 (Forum Dec. 9, 2020) ("The Panel considers the disputed domain name [<twitter.luxe>] to be identical to Complainant's registered [TWITTER] trademark."). Thus the Panel finds that the disputed domain name is identical to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Respondent is not licensed or authorized to use Complainant's WHITNEY HOUSTON mark and is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin  ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) ("The publicly available WHOIS information identifies Respondent as 'Ilyas Aslan' and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names."). Here, the WHOIS information of record lists "Saratovskaya Oblast" as the registrant of the disputed domain name. Thus the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

The resolving website displays Complainant's mark and images of Whitney Houston, and purports to offer unauthorized versions of Complainant's products. Use of a disputed domain name to offer products that compete with a complainant's business is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) ("The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)."); see also HUGO BOSS Trademark Management GmbH & Co., KG; and HUGO BOSS AG v. lupe hag / Lupe Haag, Case No. FA 1768931 (Forum Mar. 1, 2018) (finding that the respondent lacked rights or legitimate interests in or to the disputed domain name where the respondent had no permission or license to register the disputed domain name, was not commonly known by the disputed domain name, and was not making a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name because the respondent was not an authorized reseller of the complainant's goods and was offering for sale counterfeit goods); see also Fossil Group, Inc. v. wuwuima wu FA 1544486 (Forum Mar. 21, 2014) (finding the use of the Fossil mark and images of what appear to be genuine Fossil products including watches, wallets and purses established that Respondent had no rights or legitimate interests in the disputed domain name). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(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, Respondent uses the disputed domain name to pass off as Complainant in order to compete with Complainant's business. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant's business is behavior 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 Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that "duplicated Complainant's mark and logo, giving every appearance of being associated or affiliated with Complainant's business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark"); 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). The Panel therefore finds that Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).

 

Further, Respondent registered the disputed domain name with actual knowledge of Complainant's mark: the resolving website displays Complainant's mark and images of Whiney Houston. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).

 

Finally, Complainant presents evidence that Respondent has been found to have registered and used domain names in bad faith in prior UDRP cases. Prior adverse UDRP decisions can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) ("The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii)."). Thus the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(ii).

 

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

 

 

 

Richard Hill, Panelist

Dated: August 22, 2024