DECISION

 

Belting Bronco Merchandising Inc. v. Muhammad Altaf Hussain Hali / Eventurous 365

Claim Number: FA2503002147125

 

PARTIES

Complainant is Belting Bronco Merchandising Inc. ("Complainant"), represented by Peter Nussbaum of Chiesa Shahinian Giantomasi PC, New Jersey, USA. Respondent is Muhammad Altaf Hussain Hali / Eventurous 365 ("Respondent"), Portugal.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zachbryanmerchus.net>, registered with Tucows Domains 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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 26, 2025; Forum received payment on March 26, 2025.

 

On March 27, 2025, Tucows Domains Inc. confirmed by e-mail to Forum that the <zachbryanmerchus.net> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 28, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2025 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@zachbryanmerchus.net. Also on March 28, 2025, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On April 18, 2025, 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 a formal response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: CONSENT TO TRANSFER

On March 29, 2025, Respondent wrote to Forum stating, "I have no clue what's happening as my details were used for it. I am ready to transfer it to you unconditionally."   It follows that both parties have asked for the domain name to be transferred to Complainant.  However, there is nothing to indicate that Complainant has consented to the transfer of the name without a decision on the merits. Taking account of the evidence which follows, the Panel is concerned that Respondent's consent to transfer constitutes a bad faith attempt to avoid a determination that would expose its cybersquatting. For this reason, the Panel will determine the case on its merits (see, for example, Coulter Ventures, LLC d/b/a Rogue Fitness v. Justin Wood, FA 2017532 (Forum Nov. 7, 2022) ("[T]he "consent-to-transfer" approach is but one way for cybersquatters to avoid adverse findings against them…. Therefore, the Panel decides to analyze the case under the elements of the UDRP."); World Wrestling Entertainment, Inc. v. Patricki Chites, FA 1972033 (Forum Nov. 17, 2021) ("The Panel also notes that consent to transfer is often an attempt by cybersquatters to avoid adverse findings against them. The Panel determines that it will analyze the case under the elements of the UDRP."); and State Farm Mutual Automobile Insurance Company v. David Espinoza, FA 1958096 (Forum Aug. 31, 2021) ("The Panel also notes that the "consent-to-transfer" approach is one way for cybersquatters to avoid adverse findings against them. The Panel will decide this case on the merits.").

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in ZACH BRYAN, and alleges that the disputed domain name is "virtually identical and confusingly similar" to the trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

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.    Zach Bryan is an American professional musician;

 

2.    the disputed domain name was registered on May 21, 2024;

 

3.    the domain name resolves to a website that offers for sale merchandise bearing the name ZACH BRYAN and/or bearing images of Zach Bryan; and

 

4.    there is no commercial agreement between the parties and Respondent is not authorized to use the trademark or to register any domain name incorporating the trademark.

 

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.

 

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, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) ("Complainant's registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).")).  Complainant relies on, inter alia, United States Patent and Trademark Office Reg. No. 7,468,555 for ZACH BRYAN, filed August 17, 2023, and registered August 6, 2024. Complainant therefore has rights since it provides proof of its registration of the trademark with a national trademark authority.  The Panel notes here for the sake of completeness (albeit not strictly relevant to Policy ¶ 4(a)(i)), that the disputed domain name was created before Complainant's mark was registered, but the priority date of at least Reg. No. 7,468,555 is earlier and takes precedence.

 

As stated above, Complainant submits that the domain name is virtually identical and confusingly similar to the trademark.  Virtual identity is not the language of the Policy. Since the compared terms are not identical the only question is whether the domain name is confusingly similar to ZACK BRYAN and, for the purposes of comparison, it is well established that the gTLD, ".net", can be disregarded. Further, the other added matter, "merchus", is readily understood as shorthand for the words, merchant/ merchandise united states", descriptive matter of no distinctive value (see, for example, 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).").

 

The Panel finds that the domain name is confusingly similar to the trademark and so finds that Complainant has established the first element 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 Respondent was shielded by a privacy service. Once revealed in consequence of these proceedings as Muhammad Altaf Hussain Hali, nothing indicates that Respondent might be commonly known by the domain name (see, for example, Tercent Inc. v. Lee Yi, FA 0139720 (Forum Feb. 10, 2003) stating "nothing in [the respondent's] WHOIS information implies that [the respondent] is 'commonly known by' the disputed domain name" as one factor in determining that Policy ¶ 4(c)(ii) does not apply.").

 

There is no evidence that Respondent has any trademark rights.  Complainant states that there is no association between the parties.  The use of the disputed domain name has been to assist Respondent to pass off the resolving site as an official website of Complainant (by means including deceptive expressions such as "Why You Should Support Zach Bryan's Merch" and "Connection with the Artist") for the purpose of offering for sale unauthorized merchandise featuring the name and image of Zach Bryan. 

 

The use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate non-commercial or fair use.  The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name (see, for example, Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant's mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name)). 

 

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, op. cit.).  Absent a Response that onus is not met and so the Panel finds that 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.'

 

The Complaint argues for the application of paragraphs 4(b)(iii) and (iv) above but the Panel finds that paragraph 4(b)(iv) is, on the evidence, clearly dispositive of the matter. The Panel has already found the domain name to be confusingly similar to the trademark.  The resolving website exists for commercial gain. In terms of the Policy, the Panel finds that Respondent registered the domain name primarily for the purpose of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and used the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

The Panel finds that the third and final element of the Policy is satisfied.

 

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 <zachbryanmerchus.net> domain name be TRANSFERRED to Complainant.

 

 

 

Debrett G. Lyons, Panelist

Dated:  April 20, 2025