DECISION

 

Goldenvoice, LLC v. Rhonna Leigh Mac Knight / OmniCorps

Claim Number: FA2311002072607

PARTIES

Complainant is Goldenvoice, LLC ("Complainant"), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Rhonna Leigh Mac Knight / OmniCorps ("Respondent"), Missouri, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <ingoldenvoice.com>, <ingoldenvoice.info> and <ingoldenvoice.net>, registered with NameSilo, LLC.

 

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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 28, 2023. Forum received payment on November 28, 2023.

 

On November 28, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <ingoldenvoice.com>, <ingoldenvoice.info> and <ingoldenvoice.net> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 4, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 25, 2023 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@ingoldenvoice.com, postmaster@ingoldenvoice.info, postmaster@ingoldenvoice.net. Also on December 4, 2023, 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 earlier received a standard automatic 4 day extension of time to respond, on January 2, 2024, Respondent requested an extension of time of 20 Calendar days to respond to the Complaint, based on extenuating circumstances. On January 3, 2024, Forum granted an extension until January 22, 2024 to submit the response.

 

An informal response was received by Forum on January 23, 2024.

 

Having received no formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 23 and 24, 2024, unsolicited informal Additional Submissions were received by Forum, correcting a sentence in the informal Response, explaining why the informal Response was unsigned, and elaborating on the informal Response.

 

On January 23, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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 formal response from Respondent.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: DEFICIENT RESPONSE

Respondent's informal Response is deficient as it was unsigned and did not certify, as required by Rule 5(c)(vii), "that the Response was complete and accurate."  However, the Panel considers that, in the circumstances of this case, it is appropriate to take into account Respondent's informal Response as set out below.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Goldenvoice, LLC, produces live music events and manages numerous entertainment venues. Some of the largest and most successful music festivals in the world are produced by Complainant, which has common law and registered rights to its GOLDENVOICE trademark and service mark, which it and its predecessor-in-interest have used in connection with live music production, music festivals and concert venue management services for over 30 years.

 

Respondent's <ingoldenvoice.com>, <ingoldenvoice.info> and <ingoldenvoice.net> domain names are confusingly similar to Complainant's trademarks.

 

Respondent has no rights or legitimate interest in the domain names. Respondent is not known by the domain names and is not making a bona fide offering of goods or services at the domain names nor a legitimate noncommercial or fair use, since the domain names redirect to a commercial parking page displaying "relevant searches" links, including terms that are related to Complainant's business, such as "Festival Schedule," "Festival," and "Concert Tickets." Further, Complainant has not given Respondent permission to use its GOLDENVOICE marks.

 

Respondent has registered and is using the confusingly similar domain names in bad faith to redirect to a commercial parking page displaying "relevant searches" links, including terms that are related to Complainant's business. In addition, registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner  suggests bad faith.

 

Complainant sent a cease-and-desist letter to Respondent, and Respondent replied that it does not intend to stop using Complainant's GOLDENVOICE marks. Thus, since at least the receipt of Complainant's letter, Respondent has had actual knowledge of Complainant's GOLDENVOICE marks and has continued willfully to use them in the domain names, which is further evidence of bad faith.

 

Given the use of the GOLDENVOICE marks in the domain names in connection with concert-related terms on the websites at the domain names, and the widespread consumer recognition of the GOLDENVOICE marks in connection with concerts and music production services, Respondent likely registered the domain names with actual knowledge of the GOLDENVOICE marks, further evidencing bad faith. Moreover, there is no conceivable use of the domain names by Respondent that would be legitimate.

 

B. Respondent

As noted, Respondent failed to submit a formal Response in this proceeding. However, in summary, Respondent's informal Response stated that she chose the NameSilo parking page for the domain names and was surprised to learn from the Complaint that the domain names no longer point to the NameSilo parking page but instead resolve to a Sedo parking page, where the links identified by Complainant appear.

 

Respondent says she immediately sought an explanation from the NameSilo Customer Support Team as to why her domain names' parking pages were not those she chose and asked how to get them back. NameSilo explained that the change of parking page was the result of an in-house decision its personnel made some months previously.

 

"Evidently there was need to ease the load on their servers at the time, and they figured a good way to achieve that would be to change their default name servers from pointing to their own Name Silo parking pages, to instead point to Sedo-provided ones. And it's either Sedo's bots or a 3d-party's that Sedo partners with, that considers the content on my domains' parking pages "Relevant"."

 

NameSilo is helping Respondent return all her domain names (including others not relevant to this proceeding) to the NameSilo parking page but the process is taking a long time.

 

FINDINGS

Complainant has failed to establish all the elements entitling it to relief.

 

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.

 

Identical and/or Confusingly Similar

Complainant has shown that it has rights in the GOLDENVOICE service mark through registration with the USPTO (Reg. No. 2,251,493, registered on June 8, 1999 for musical sound recordings, in Class 9 and for management of performing artists and musical groups; promoting the concerts of others, in Class 35).

 

The Panel finds Respondent's <ingoldenvoice.com>, <ingoldenvoice.info> and <ingoldenvoice.net> domain names to be confusingly similar to Complainant's mark, only differing by the addition of the word "in", which does nothing to distinguish the domain names from the mark. The inconsequential ".com", ".info" and ".net" generic top-level domains ("gTLDs") may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

 

Complainant has established this element.

 

Rights or Legitimate Interests

In light of the Panel's findings in relation to the third element below, it is unnecessary to consider this element.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, 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 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;

(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.

There is no evidence that Respondent registered the domain names for any of the purposes set out in Paragraph 4(b)(i), (ii) or (iii) of the Policy.

 

While the domain names are confusingly similar to Complainant's mark,

the Panel considers the words "in golden voice" themselves to be descriptive of a way of speaking and therefore capable of use in a domain name in a way that does not infringe Complainant's mark. Having regard to the descriptive nature of the domain names and Respondent's reply to the cease-and-desist email, the Panel finds that Complainant has not shown that Respondent was aware of Complainant or its mark when registering the domain names nor that Respondent did so in bad faith.

 

The <ingoldenvoice.com>, <ingoldenvoice.info> and <ingoldenvoice.net> domain names were all registered on July 25, 2023, many years after Complainant has shown that its GOLDENVOICE mark had become well-known in relation to live music. They resolve to websites showing, as "Relevant searches", pay-per-click links that are related to Complainant's business, including "Festival Schedule", "Festival", Wicked Tour", "Venues Nearby", Pantages Tickets" and Concert Tickets". At the foot of each website home page is the statement: "NameSilo This domain is registered at NameSilo…". This is followed by a statement in fine print: "This webpage was generated by the domain owner using Sedo Domain Parking.  Disclaimer: Sedo maintains no relationship with third party advertisers. Reference to any specific service or trade mark is not controlled by Sedo nor does it constitute or imply its association, endorsement or recommendation."

 

The Panel accepts Respondent's explanation that she chose to park the domain names with the Registrar, NameSilo LLC, which did not display Sedo advertising links, and that she was unaware until receiving the Complaint that NameSilo had redirected the domain names to Sedo parking pages, where the pay-per-click links appeared. No mention of the Sedo pay-per-click links was made in Complainant's cease-and-desist email, and Respondent replied that the email was the first she had heard of Complainant's existence, ownership of the GOLDENVOICE mark and its use in connection with producing music events.

 

As to whether Respondent should be held responsible for the advertising links to which the domain names resolve, the WIPO Jurisprudential Overview 3.0 provides at section 3.5:

 

"Can third-party generated material "automatically" appearing on the website associated with a domain name form a basis for finding bad faith?

 

Particularly with respect to "automatically" generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).

 

Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.

 

While a respondent cannot disclaim responsibility for links appearing on the website associated with its domain name, panels have found positive efforts by the respondent to avoid links which target the complainant's mark (e.g., through "negative keywords") to be a mitigating factor in assessing bad faith."

 

In the unusual circumstances of this case, the Panel finds that, by choosing to direct the domain names to the NameSilo parking page, Respondent, at the time unaware of Complainant or its mark, sought positively to avoid the kind of advertising links provided by Sedo on its parking pages.

 

Contrary to the statement by Sedo: "This webpage was generated by the domain owner using Sedo Domain Parking", it was NameSilo that decided, without informing Respondent, to change their default name servers from pointing to their own Name Silo parking pages, to point instead to Sedo-provided ones. 

 

Accordingly, the Panel finds that Respondent is not responsible for the Sedo-generated pay-per-click links and has not used the domain names in bad faith.

 

Complainant has failed to establish this element.

 

DECISION

Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <ingoldenvoice.com>, <ingoldenvoice.info> and <ingoldenvoice.net> domain names REMAIN WITH Respondent.

 

 

 

Alan L. Limbury, Panelist

Dated: January 25, 2024