DECISION

 

DD IP Holdings, LLC v. Yati binti Lanang

Claim Number: FA2501002134205

 

PARTIES

Complainant is DD IP Holdings, LLC ("Complainant"), United States, represented by Matthew S. Makover of Willkie Farr & Gallagher LLP, United States. Respondent is Yati binti Lanang ("Respondent"), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <david-dobrik.store>, registered with Dominet (HK) Limited.

 

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 January 8, 2025; Forum received payment on January 8, 2025.

 

On January 8, 2025, Dominet (HK) Limited confirmed by email to Forum that the <david-dobrik.store> domain name is registered with Dominet (HK) Limited and that Respondent is the current registrant of the name. Dominet (HK) Limited has verified that Respondent is bound by the Dominet (HK) Limited 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 January 13, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2025 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@david-dobrik.store. Also on January 13, 2025, 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 February 4, 2025, 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 intellectual property holding company for David Dobrik, an Internet personality with tens of millions of followers on YouTube, TikTok, and other social media platforms. Complainant uses DAVID DOBRIK as a brand name, as a social media handle and username, and in connection with merchandise offered for sale. Complainant states that DAVID DOBRIK has been used in this manner for more than 15 years, generating significant revenue and fame, and asserts common law trademark rights therein. Complainant also owns United States trademark registrations for marks incorporating DAVID DOBRIK, including DAVID'S PERFUME BY DAVID DOBRIK and VIEWS WITH DAVID DOBRIK & JASON NASH.

 

Respondent registered the disputed domain name <david-dobrik.store> in October 2022. The domain name is being used for a website that purports to be the "Official David Dobrik Merchandise Shop." The website and the merchandise offered for sale thereon feature Complainant's marks and Dobrik's image and likeness. Complainant states that this merchandise is unauthorized and that Respondent is not licensed or otherwise permitted to use Complainant's marks.

 

Complainant contends on the above grounds that the disputed domain name <david-dobrik.store> is identical or confusingly similar to Complainant's DAVID DOBRIK 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 identical or 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/; UDRP Perspectives on Recent Jurisprudence, §§ 0.2, 0.8 (updated Jan. 15, 2025), available at https://udrpperspectives.org/; 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 has trademark rights in DAVID'S PERFUME BY DAVID DOBRIK and VIEWS WITH DAVID DOBRIK & JASON NASH by virtue of United States trademark registrations, and asserts common law rights in DAVID DOBRIK. Common law rights are sufficient under the Policy, provided the Complainant can prove that the claimed mark has acquired secondary meaning. See, e.g., Belting Bronco Merchandising Inc. v. Fahad Bin Khalid, FA 2089309 (Forum Apr. 11, 2024) (finding common law rights in personal name of musical artist based upon evidence of use and recognition); Jeanine Amapola, Inc. v. Courtney Perkins Ferreira, FA 1891168 (Forum May 6, 2020) (finding common law rights in name of social media influencer with 2 million YouTube subscribers and 95 million views); Joanna Gaines, Magnolia IP Holdings, LLC v. WhoisGuard, Inc., WhoisGuard Protected / Raja Ali, D2017-2500 (WIPO Feb. 9, 2018) (finding common law rights in name of television personality, noting complainant's registration of a longer mark incorporating her name). Considering the evidence of extensive use and public recognition offered by Complainant along with Complainant's related trademark registrations, the Panel finds that Complainant has demonstrated sufficient rights in DAVID DOBRIK for purposes of paragraph 1(a) of the Policy.

 

The disputed domain name <david-dobrik.store> incorporates Complainant's DAVID DOBRIK mark, substituting a hyphen for the space and appending the ".store" top-level domain. Such alterations are normally disregarded for purposes of paragraph 1(a) of the Policy. See, e.g., Kendrick Lamar Duckworth & Nomo Hashimoto, LLC v. Tomas Lain et al., D2024-1805 (WIPO July 2, 2024) (finding <kendrick-lamar.store> identical to KENDRICK LAMAR); American Eagle Outfitters & Retail Royalty Co. v. Ahmed Eldomany / Arabyads, FA 2047474 (Forum June 30, 2023) (finding <american-eagle.store> confusingly similar to AMERICAN EAGLE). The Panel considers the disputed domain name to be identical 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. 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., Kendrick Lamar Duckworth & Nomo Hashimoto, LLC v. Tomas Lain et al., supra (finding lack of rights or interests in similar circumstances); Belting Bronco Merchandising Inc. v. Fahad Bin Khalid, 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 registered a domain name corresponding to 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., Kendrick Lamar Duckworth & Nomo Hashimoto, LLC v. Tomas Lain et al., supra (finding lack of rights or interests in similar circumstances); Belting Bronco Merchandising Inc. v. Fahad Bin Khalid, supra (same). The Panel so finds.

 

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 <david-dobrik.store> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David E. Sorkin, Panelist

Dated: February 4, 2025