Bama Rags, Inc. v. Derrick James
Claim Number: FA1311001529751
Complainant is Bama Rags, Inc. (“Complainant”), represented by Amy G. Marino of Williams Mullen, Virginia, USA. Respondent is Derrick James (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dmbcaravan.com>, registered with GoDaddy.com, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2013; the National Arbitration Forum received payment on November 13, 2013.
On November 14, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <dmbcaravan.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2013 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@dmbcaravan.com. Also on November 19, 2013, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dmbcaravan.com> domain name, the domain name at issue, is confusingly similar to Complainant’s DAVE MATTHEWS BAND, DMB and DMBCARAVAN marks.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bama Rags, Inc., is the corporate representative of the internationally renowned group of musicians and recording artists known as The Dave Matthews Band. Complainant uses its DAVE MATTHEWS BAND and DMB marks to provide musical entertainment, as well as related products such as posters, stickers, sheet music, and apparel. Complainant owns rights in the DAVE MATTHEWS BAND mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,865,013 registered November 29, 1994). In addition, Complainant owns rights in the DMB mark through registrations of the mark with the USPTO (e.g., Reg. No. 2,362,127 registered June 27, 2000). Further, Complainant also owns common law rights in the DMBCARAVAN mark through its continuous use of the mark since 2011 in connection with a series of concert festivals in 2011 headed by The Dave Matthews Band. In addition, Complainant’s agent and artist management company, Red Light, previously owned the disputed <dmbcaravan.com> domain name but inadvertently allowed its registration to lapse. The disputed domain name is identical to Complainant’s DMBCARAVAN mark and is confusingly similar to Complainant’s DMB mark.
Respondent is not commonly known as <dmbcaravan.com> and is using the <dmbcaravan.com> domain name without Complainant’s permission.
Respondent is using the disputed domain name to promote advertisements and links to third parties, some of which are direct competitors of Complainant, and is likely generating click-through revenue in the process. This use is not protected as 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). Respondent’s use of the disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) because in addition to the click-through links discussed above, the resolving website also displays the same content that was displayed when Complainant’s agent owned and operated the disputed domain name, including Complainant’s marks and logos.
Respondent has disrupted Complainant’s business and has thus demonstrated bad faith registration and use of the <dmbcaravan.com> mark pursuant to Policy ¶ 4(b)(iii). Respondent has also demonstrated bad faith pursuant to Policy ¶ 4(b)(iv) because the disputed domain name creates a likelihood of confusion with Complainant’s mark, and Respondent is commercially profiting from this confusion in the form of click-through fees. The fact that Respondent registered the disputed domain name immediately after Complainant’s agent inadvertently allowed its own registration of the disputed domain name to lapse is further evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). Respondent registered the disputed domain name with actual notice of Complainant’s rights in the DMB and DMBCARAVAN.COM marks, which demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). Respondent registered the disputed domain name on March 21, 2013.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is the corporate representative of the internationally renowned group of musicians known as The Dave Matthews Band. Complainant further alleges that it uses the DAVE MATTHEWS BAND and DMB marks to provide musical entertainment including ticket sales, as well as related products such as posters, stickers, sheet music, and apparel. Complainant owns rights in the DAVE MATTHEWS BAND mark through registrations of the mark with the USPTO (e.g., Reg. No. 1,865,013 registered November 29, 1994). Complainant similarly owns rights in the DMB mark through registrations of that mark with the USPTO (e.g., Reg. No. 2,362,127 registered June 27, 2000). A complainant establishes its rights in a mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO. See, e.g., Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Therefore, Complainant’s registrations of the DAVE MATTHEWS BAND and DMB marks with the USPTO adequately establish Complainant’s rights in these marks pursuant to Policy ¶ 4(a)(i).
Additionally, Complainant has common law rights in the DMBCARAVAN mark through its use of the mark since 2011. Policy ¶ 4(a)(i) does not require a complainant to register a mark with a government agency in order to sufficiently establish its right in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Instead, a complainant may demonstrate that it has common law rights in a mark by showing the mark is recognized by consumers and indicates the complainant as the source of a product or service. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Accordingly, Complainant has common law rights in the DMBCARAVAN mark through its continuous use of the mark since 2011 in connection with a series of live concerts by The Dave Matthews Band called “Dave Matthews Band Caravan.” The DMBCARAVAN mark has developed a secondary meaning, identifying The Dave Matthews Band, Complainant’s client, as the source of music concerts and related products. For instance, Complainant states that its agent and artist management company, Red Light, registered the <dmbcaravan.com> domain name in 2011 to serve as the primary website for information on the “Dave Matthews Band Caravan” concert series. A Wikipedia article entitled “Dave Matthews Band Caravan” lists the article’s relevant website as <dmbcaravan.com>. The Facebook page for the “Dave Matthews Band Caravan” has 63,478 “Likes” and utilizes the abbreviation DMBCARAVAN in various posts. Complainant has also submitted evidence to show that it used the Twitter handle @DMBCARAVAN to promote the concert series, and that the @DMBCARAVAN handle has 12,659 followers. Previous panels have held that a complainant demonstrates secondary meaning indicating common law rights in the mark by evidence of the manner and amount of advertising done to promote the mark. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning). Previous panels have also held that a complainant sufficiently establishes secondary by showing that it previously owned a domain name registration that was identical to the alleged mark. See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark). Here, the evidence submitted by Complainant shows that Complainant has done extensive marketing through social media outlets under the DMBCARAVAN mark. Therefore, Complainant has proven that its DMBCARAVAN mark has gained secondary meaning indicating Complainants’ common law rights in the mark. Furthermore, pursuant to Shuvah Yisrael, supra, the previous ownership of the <dmbcaravan.com> domain name by Complainant’s agent bolsters Complainant’s claim of common law rights. For the foregoing reasons, the Panel finds that Complainant owns rights in the DMBCARAVAN mark under Policy ¶ 4(a)(i) that date back to 2011.
The <dmbcaravan.com> domain name is identical to Complainant’s DMBCARAVAN mark pursuant to Policy ¶ 4(a)(i). The disputed domain name fully appropriates the DMBCARAVAN mark and merely adds the generic top-level domain (“gTLD”) “.com.” A domain name is identical to a complainant’s mark where the domain name fully incorporates the mark and merely adds a gTLD. See, e.g., Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Accordingly, the <dmbcaravan.com> domain name is identical to Complainant’s DMBCARAVAN mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
It has previously been held that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to suggest otherwise, and the complainant alleges that it did not give the respondent permission to use its mark in a domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). In this case, he WHOIS information identifies the registrant of the <dmbcaravan.com> domain name as “Derrick James,” which tends to suggest that Respondent is known by this name and not by the name of <dmbcaravan.com>. Furthermore, Complainant explicitly alleges that it has not authorized Respondent to use its DMBCARAVAN or DMB mark in a domain name. Nothing else in the record suggests that Respondent is commonly known as <dmbcaravan.com> and, accordingly, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent is using the disputed domain name to promote advertisements and links to third parties, some of which are direct competitors of Complainant. This use is not protected as 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). According to screenshots provided by Complainant, the at-issue website appears to promote various links offering products that are unrelated to Complainant, including “Whole House Water Systems,” “Holiday Inn Express Hotel,” “iTunes,” and “Home Water Filters.” Also, according to screenshots submitted by Complainant, the disputed domain name’s resolving website displays a link offering tickets to DAVE MATTHEWS BAND concerts, which redirects Internet users to the “TicketSpot” website, which is a competitor of Complainant in the offering of live concert services. Accordingly, the Panel concludes that the website resolving from <dmbcaravan.com> domain name promotes both links that are unrelated to Complainant, as well as a link to Complainant’s competitor in the music entertainment industry. A respondent’s use of a disputed domain name to promote both competing and non-competing links does not constitute 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). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Therefore, Respondent’s use of the <dmbcaravan.com> domain name to promote various links, including a link to Complainant’s competitor in the music entertainment industry, is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
In addition to the click-through links discussed above, the website resolving from the <dmbcaravan.com> domain name also displays the same content that was displayed when Complainant’s agent owned and operated the disputed domain name, including Complainant’s marks and logos. Complainant thus suggests that Respondent is attempting to pass itself off as Complainant, which is further evidence that respondent’s use of the disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). According to screenshots submitted by Complainant, the disputed domain name displays a banner entitled “DAVE MATTHEWS BAND CARAVAN,” which also lists various concert dates and locations, as well as buttons entitled “Premier TRAVEL PACKAGES,” “VIP PACKAGES” and “DAVE MATTHEWS BAND CARAVAN SAMPLER FREE DOWNLAOD." It has previously been determined that a respondent’s use of the disputed domain name to attempt to pass itself off as the complainant is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent that attempts to pass itself off as the complainant online, which includes blatant unauthorized use of the complainant’s mark, is evidence that the respondent has no rights or legitimate interests in the disputed domain name). In the instant proceedings, the submitted evidence shows that Respondent is using the <dmbcaravan.com> domain name to blatantly display Complainant’s DAVE MATTHEWS BAND and DMB CARAVAN marks, as was the case in Am. Int’l Group, Inc., supra. This constitutes an attempt by Respondent to pass itself off as Complainant, and such use is not protected as 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).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s use of the disputed domain name has disrupted Complainant’s business and Respondent has thus demonstrated bad faith registration and use of the <dmbcaravan.com> mark pursuant to Policy ¶ 4(b)(iii). According to screenshots submitted by Complainant, the disputed domain name’s resolving website displays a link offering tickets to DAVE MATTHEWS BAND concerts, which redirects Internet users to the “TicketSpot” website, which Complainant alleges is a competitor of Complainant in music entertainment industry. It has previously been held that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iii) where the disputed domain name promotes links to third-party competitors of the complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Therefore, it appears that the “TicketSpot” website is a direct competitor of Complainant, and the Panel holds that the use of the <dmbcaravan.com> domain name to promote this third-party website constitutes bad faith disruption of Complainant’s business. Thus, Respondent has demonstrated bad faith registration and use of the <dmbcaravan.com> domain name pursuant to Policy ¶ 4(b)(iii).
Further, Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iv), because the <dmbcaravan.com> domain name and its resolving website create a likelihood of confusion with Complainant’s marks, and Respondent is likely commercially profiting from this confusion in the form of click-through sites. According to screenshots submitted by Complainant, the website resolving from the disputed domain name promotes links to various third-party websites. It has previously been held that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) where the disputed domain name is obviously connected to a complainant’s mark and is used for respondent’s commercial gain. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). A respondent generates commercial gain where the disputed domain name is used to promote links to competing and non-competing commercial websites. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Here, the <dmbcaravan.com> domain name creates a likelihood of confusion with Complainant’s DMBCARAVAN and/or DMB marks, because the disputed domain name is identical to the DMBCARAVAN mark and fully appropriates the DMB mark. The Panel further presumes, as the panel did in Houston Sys., supra, that Respondent is receiving referral fees in exchange for its promotion of links to various third-party websites. Thus, Respondent has demonstrated attraction for commercial gain, and has thus demonstrated bad faith registration and use of the <dmbcaravan.com> domain name pursuant to Policy ¶ 4(b)(iv).
Respondent is using the <dmbcaravan.com> domain name in an attempt to pass itself off as Complainant, which demonstrates Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). Apart from the addition of the various commercial links discussed above, the other content displayed on the at-issue website is identical to the content displayed when the disputed domain name was previously owned by Complainant’s agent, including the prominent display of Complainant’s DMBCARAVAN and DAVE MATTHEWS BAND marks. It has previously been held that a respondent demonstrates “passing off” behavior through the blatant, unauthorized display of the complainant’s mark. See Am. Int’l Group, supra (finding that passing off includes blatant unauthorized use of the complainant’s mark). Therefore, Respondent’s display of Complainant’s marks on the at-issue website is evidence that it has attempted to pass itself off as Complainant. Respondent’s use of a disputed domain name to attempt to pass itself off as the complainant demonstrates the respondent’s bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Therefore, the Panel holds that this behavior demonstrates Respondent’s bad faith registration and use of the <dmbcaravan.com> domain name under Policy ¶ 4(a)(iii).
Finally, the Panel finds that Respondent registered the disputed domain name with actual notice of Complainant’s rights in the DMB and DMBCARAVAN.COM marks, which demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). It has previously been held that a respondent demonstrates bad faith registration and use of a disputed domain name under Policy ¶ 4(a)(iii) by registering the disputed domain name with actual notice of the complainant’s rights in the appropriated mark. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Previous panels have inferred that a respondent had such actual notice of the complainant’s mark where the mark is extremely well-known. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity). Here, DMB and DMBCARAVAN marks are extremely well-known as was the case in Nintendo of Am. Inc., supra. Since these marks are extremely well-known, the Panel infers that Respondent registered the <dmbcaravan.com> domain name with actual notice of Complainant’s rights in the mark, which demonstrates Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dmbcaravan.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 20, 2013
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