John Middleton Co. v. dj blacknmild / Go Dj Louisiana Music Group LLC
Claim Number: FA1502001604021
Complainant is John Middleton Co. (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is dj blacknmild / Go Dj Louisiana Music Group LLC (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The Domain Name at issue is <godjblacknmild.com> (the “Domain Name”), 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.
Alan L Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 9, 2015. The Forum received payment on February 10, 2015.
On February 9, 2015, GODADDY.COM, LLC confirmed by e-mail to the Forum that the 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”) and Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
On February 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2015 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@godjblacknmild.com. Also on February 11, 2015, 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.
A timely Response was received and determined to be complete on March 2, 2015.
On March 6, 2015, Complainant’s Additional Submission was received, and was filed in a timely manner pursuant to the Forum's Supplemental Rule 7.
On March 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L Limbury as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Domain Name is confusingly similar to Complainant’s BLACK & MILD trademark.
Respondent has no rights or legitimate interests in the Domain Name because Respondent does not use it in connection with a bona fide offering of goods or services; is not making a non-commercial fair use of it; and has never been known or referred to as “godjblacknmild.com.” The Domain Name does not resolve to an active web page and Respondent is not authorized or licensed by Complainant to use its BLACK & MILD trademark or any other trademark in any form.
The initial registration of the Domain Name was in bad faith because Complainant’s rights to its BLACK & MILD trademark predate the Domain Name registration. At a minimum, Respondent had constructive knowledge of Complainant’s BLACK & MILD marks when he initially registered the Domain
Name. As such, Respondent knew or should have known of Complainant’s trademark rights, and such knowledge indicates bad faith.
Additionally, Respondent’s holding of the Domain Name without making active use of it further demonstrates bad faith pursuant to Policy ¶ 4(a)(iii). Respondent has held the Domain Name since May 2014 and has failed to make any bona fide active use of it, which clearly demonstrates Respondent’s bad faith.
Respondent’s registration of the Domain Name knowing of Complainant’s rights to its BLACK & MILD trademarks and Respondent’s subsequent holding of the Domain Name constitute bad faith registration and use of the Domain Name.
B. Respondent
The Domain Name has no affiliation to Complainant. The Respondent will not sell or distribute any of Complainant’s merchandise or any merchandise of similar value to the Complainant’s.
The Domain Name will be used for marketing and promotions to a diverse group of individuals for entertainment needs.
The Respondent, GoDJ Black and Mild [sic] and the Organization Go Dj Louisiana Music Group LLA [sic] (as an individual, business, or other organization) has been commonly known by the Domain Name for over 10 years in the city of New Orleans and surrounding states for both personal and business reasons.
Respondent is making a legitimate non-commercial 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.
The Domain Name should not be considered as having been registered and being used in bad faith. The Domain Name will be used with the utmost ethical policies. Respondent denies any of the circumstances set out in Policy ¶ 4(b) as evidence of bad faith registration and use.
C. Complainant’s Additional Submission
Respondent does not dispute that the Domain Name is confusingly similar to
Complainant’s BLACK & MILD trademark, nor that Complainant has priority with respect to that mark. The panel in John Middleton Co. v. j alvarez, FA 1412001593491 (Nat. Arb. Forum Jan. 7, 2015) found the djblacknmild.com domain name to be confusingly similar to Complainant’s BLACK & MILD trademark.
Respondent offered no “concrete” evidence in support of its Response, nor any evidence that it has rights to or legitimate interests in the Domain Name. Respondent has made no use of the Domain Name other than as a parked site.
Respondent’s statements about purported current use of the Domain Name are intertwined with statements that it “will be used for marketing and promotions to a diverse group of individuals for entertainment needs,” and “will be used with the upmost [sic] ethical policies”. These inconsistent statements are further evidence of Respondent's bad faith.
Complainant has failed to establish all the elements required to entitle it to relief.
Rule ¶ 15(a) 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."
Policy ¶ 4(a) requires Complainant to prove each of the following three elements to obtain an order that the 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.
Complainant has rights in several U.S. registered trademarks, including No. 1,177,552 issued on November 10, 1981 for the mark BLACK & MILD in connection with “cigars,” and No. 4,201,159 issued on September 4, 2012 for the mark BLACK & MILD CLUB ENJOY in connection with "Providing a website featuring information in the field of music; entertainment services, namely, providing non-downloadable pre-recorded music and information in the field of music, all online via a global computer network; entertainment services, namely, providing playback of music via a website; entertainment services, namely, providing a website enabling custom mixing of music."
The test of confusing similarity under the Policy is confined to a comparison of the Domain Name and the trademark alone, independent of the other marketing and use factors, such as the "Sleekcraft factors" – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See Energy Source Inc. v. Your Energy Source, FA 0096364 (Nat. Arb. Forum, Feb. 19, 2001). The top level domain “.com” is generally disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000‑1525.
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the Domain Name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the Domain Name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Jason Trevenio, D2007‑0648 (WIPO July 11,2007).
The Domain Name presently under consideration, <godjblacknmild.com>, differs from Complainant’s BLACK & MILD trademark by reason of the “go” and “dj” prefixes, the “n” instead of an ampersand (which is technically unavailable for a domain name) while having the same meaning, and the inconsequential “.com” gTLD. I find that these differences do not sufficiently distinguish the Domain Name from Complainant’s mark. Just as the Panel in John Middleton Co. v. j alvarez, FA1593491 (Nat. Arb. Forum Jan. 7, 2015) found the domain name <djblacknmild> to be confusingly similar to Complainant’s BLACK & MILD mark and for the same reasons, I find that the Domain Name is confusingly similar to that mark.
Complainant has established this element.
Respondent registered the Domain Name on May 7, 2014. It resolves to a GoDaddy parking page featuring advertising links unrelated to Complainant’s tobacco products or entertainment services and inviting offers from the public to buy the Domain Name.
Complainant’s assertions that Respondent does not use the Domain Name in connection with a bona fide offering of goods or services, is not making a non-commercial fair use of the Domain Name, has never been known as “godjblacknmild.com” and is not authorized to use Complainant’s BLACK & MILD trademark are sufficient to constitute a prima facie showing of absence of rights or legitimate interests on the part of Respondent. Accordingly, the burden is on Respondent to provide evidence of its rights or legitimate interests under Policy ¶ 4(c): see See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate its rights to or legitimate interests in the Domain Name for purposes of Policy ¶ 4(a)(ii), i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Respondent claims that each of these circumstances is applicable here but provides no evidence in support of any of them.
Allowing the Domain Name to resolve to a GoDaddy parking page featuring commercial advertising links unrelated to Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use within ¶ 4(c)(i) or (iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) and WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003).
As to ¶ 4(c)(ii), Respondent claims that both the Registrant and Go Dj Louisiana Music Group LLA [sic] have been commonly known by the Domain Name for over 10 years in the city of New Orleans and surrounding states. However, Respondent has offered no evidence in support of this claim. Further, while the Registrar’s verification shows the Registrant as “dj blacknmild”, the Response is signed “Go Dj Black N Mild”. This difference between the name of the Registrant as recorded by the Registrar and the name under which the Response was signed, coupled with the absence of any evidence, leave me unable to find that Respondent (as an individual, business or other organization) has been commonly known by the Domain Name.
Accordingly, I find that Respondent has failed to rebut Complainant’s prima facie case and that Complainant has established this element.
Registration and Use in Bad Faith
Policy ¶ 4(b) sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Name in bad faith for purposes of Policy ¶ 4(a)(iii), i.e.
(i) circumstances indicating that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) 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) 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 its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
Complainant relies on the offer for the sale of the Domain Name to the public appearing on the GoDaddy parking page to which the Domain Name resolves. However, this does not establish that the Domain Name was registered by Respondent with Complainant or its trademarks in mind, nor that it was registered primarily for one of the purposes set out in ¶ 4(b)(i).
Complainant does not claim that Respondent’s conduct falls within ¶ 4(b)(ii),(iii)or (iv) but claims Respondent has engaged in other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii), namely that Respondent’s registration of the Domain Name knowing of Complainant’s rights to its BLACK & MILD trademarks and Respondent’s subsequent holding of the Domain Name without making active use of it constitute bad faith registration and use of the Domain Name.
Citing several early domain name decisions, Complainant argues that due to Complainant’s numerous trademark registrations for the BLACK & MILD mark that predate Respondent’s registration of the Domain Name, Respondent had actual or at least constructive knowledge of Complainant’s rights in the mark.
Despite the earlier decisions on which Complainant relies, constructive knowledge is nowadays generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) and Kellwood Company v. Onesies Corporation, D2008-1172 (WIPO Sept. 22, 2008) and the cases there cited.
There is no evidence to support Complainant’s bare assertion that Respondent had actual knowledge of any of Complainant’s marks. The mere fact that Complainant’s trademark rights pre-date Respondent’s registration of the Domain Name does not prove bad faith registration.
Since the GoDaddy parking page to which the Domain Name resolves displays advertising links that are unrelated to Complainant or its goods and services, it is not appropriate to infer actual knowledge of Complainant or its marks on the part of Respondent when Respondent registered the Domain Name.
Absent evidence of actual knowledge or from which actual knowledge may be inferred, I am unable to find that the Domain Name was registered and is being used in bad faith, despite my finding that Respondent’s use of the Domain Name has not been bona fide use, since lack of bona fide use on its own is insufficient to establish bad faith. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001).
Complainant submits Respondent’s statements regarding its current and intended use of the Domain Name are inconsistent and constitute further evidence of Respondent’s bad faith. I do not find Respondent’s statements to be inconsistent. They merely claim the current use (resolving to a parking page) is legitimate non-commercial or fair and that Respondent intends to use the Domain Name for marketing and promotions to a diverse group of individuals for entertainment needs. I have not accepted the contention that Respondent’s current use is legitimate non-commercial or fair and there is no evidence to support Respondent’s claimed intentions. It does not follow that Respondent’s statements demonstrate bad faith.
I am not satisfied that any of the circumstances listed in Policy ¶ 4(b) are present here, nor any additional circumstances that would justify a finding of bad faith registration and use.
Complainant has failed to establish this element.
Complainant having failed to establish all three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <godjblacknmild.com> Domain Name REMAIN WITH Respondent.
Alan L Limbury, Panelist
Dated: March 24, 2015
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