DECISION

 

Belting Bronco Merchandising Inc. v. Waqas Anwar

Claim Number: FA2403002088060

 

PARTIES

Complainant is Belting Bronco Merchandising Inc. ("Complainant"), represented by Peter Nussbaum of Chiesa Shahinian Giantomasi PC, New Jersey, USA. Respondent is Waqas Anwar ("Respondent"), Pakistan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zachbryanmerch.us>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 12, 2024; Forum received payment on March 12, 2024.

 

On March 12, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <zachbryanmerch.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On March 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2024 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@zachbryanmerch.us. Also on March 15, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 5, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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 to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 solely controlled by, and is the trademark holding company of, Zach Bryan ("Bryan"), an extremely well-known musical artist who performs and records under the name and trademark ZACH BRYAN. The mark has acquired secondary meaning and common law rights based on substantial use and promotion by Complainant. ZACH BRYAN began his extremely successful career as a musical artist in 2017 and has since published his songs, albums, and performances through his YouTube channel, the iTunes and Spotify music streaming services, an Instagram page, and a website at <zachbryan.com>. He has a released an album through the world famous record label Warner Brothers and his albums have debuted at or near the top of the US Billboard 200 chart. In addition to selling his music, Complainant offers themed merchandise for sale under the ZACH BRYAN mark.

 

The <zachbryanmerch.us> domain name was registered on August 28, 2023 and is confusingly similar to the ZACH BRYAN mark. It incorporates the entirety of the mark and only adds the generic term "merch" along with the ".us" TLD.

 

Respondent has no rights or legitimate interests in the disputed domain name as it is not commonly known by the domain name and the website to which it resolves is engaged in the sale of a substantial amount of infringing merchandise bearing or utilizing the ZACH BRYAN mark as well as images of other intellectual property that are owned by Complainant.

 

The <zachbryanmerch.us> domain name was registered and is used in bad faith based on the above-mentioned website activity which passes itself off as Complainant, disrupts Complainant's business, and seeks commercial gain based on confusion with the ZACH BRYAN mark. Further, Respondent has engaged in a pattern of bad faith conduct involving the ZACH BRYAN mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant owns trademark rights to the ZACH BRYAN mark and the <zachbryanmerch.us> domain name is confusingly similar to such mark;

-       Respondent does not have rights or legitimate interests in the disputed domain name where it is used to pass off advertised goods as those of Complainant and there is no evidence that Respondent has any relevant trademark rights or is commonly known by the domain name; and

-       The disputed domain name was registered and is used in bad faith where its website passes itself off as Complainant to either sell unlicensed goods or possibly perpetrate fraud on customers.

 

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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant claims to have common law rights in the ZACH BRYAN trademark. It is well accepted that a trademark registration is not essential and that common law trademark rights may support the threshold test of Policy ¶ 4(a)(i). See Snap Inc. v. Domain Administrator / Domain Professionals, LLC / Domain Master / Global Personals, LLC / Domain Master / Worldwide Connect Partners, LLC, FA 1933412 (Forum May 11, 2021) ("However, the UDRP does not discriminate between registered and unregistered trademarks and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights in an unregistered trademark as to deserve legal protection, based solely on its use in commerce.") In demonstrating common law rights, sufficient supporting evidence must be presented. Paragraph 1.3 of the frequently cited Overview of WIPO Panel Views on Selected UDRP Questions, ("WIPO Overview 3.0) (3d ed. 2017), titled "What does a complainant need to show to successfully assert unregistered or common law trademark rights?" offers the following guidelines:

 

To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.

 

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

 

While it is not required that all of the above-mentioned items be submitted, there must be enough evidence for a Panel to base a conclusion that the asserted mark has gained distinctiveness and is most likely recognized by the relevant consuming public as the complainant's common law trademark.

 

Here, Complainant has submitted screenshots of the following:

-       A YouTube video titled "Zach Bryan – God Speed" from "5 years ago";

-       Various albums by Zach Bryan dated from August 24, 2019 to September 22, 2023;

-       A Zach Bryan YouTube channel with 946K subscribers and 116 videos;

-       A Zach Bryan Instagram page with 3.5M followers and 345 posts;

-       A Zach Bryan Spotify page showing over 26M monthly listeners;

-       Pages from the <zachbryan.com> website showing tour dates, albums, and video links; and

-       Instagram pages for the Lollapalooza, Bonnaroo, Austin City Limits, Grand Ole Opry, and other music events in 2022 and 2023 mentioning Zach Bryant.

 

This evidence speaks to the duration and nature of use of Complainant's mark, the nature and extent of advertising using the mark, and the degree of actual public recognition of the mark. The Panel finds the evidence substantial and supports the claim that the ZACH BRYAN mark has gained secondary meaning and thus functions as an indication of the source of Complainant's services. It thus satisfies the requirement to prove trademark rights (in this case, at common law) under Policy ¶ 4(a)(i).

 

Next, Complainant argues that Respondent's <zachbryanmerch.us> domain name is confusingly similar to the ZACH BRYAN mark because it fully incorporates the mark and adds the descriptive term "merch" as well as the ".us" TLD. The addition of generic or descriptive terms to a mark typically does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i) – particularly where such word directly bears on the business conducted under the mark in which case it may actually enhance confusion. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Vance Int'l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term "security" to the complainant's VANCE mark, which described the complainant's business, the respondent "very significantly increased" the likelihood of confusion with the complainant's mark). As Complainant's mark is plainly recognizable in the disputed domain name, addition of the term "merch" directly relates to Complainant's business, and the ".us" TLD adds no distinctive quality, the Panel finds that the <zachbryanmerch.us> domain name is confusingly similar to the ZACH BRYAN mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").

 

Complainant makes no mention of usDRP ¶ 4(c)(i) which states that rights or legitimate interests may be found where a respondent is "the owner or beneficiary of a trade or service mark that is identical to the domain name."¹ Nevertheless, the Panel will consider this issue for the sake of completeness. See Pepsico, Inc. v. Becky, FA 117014 (Forum Sep. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel has reviewed the USPTO database and found no evidence that anyone other than Complainant owns any trademark rights to the ZACH BRYAN mark and there is no other evidence of record relevant to Policy ¶ 4(c)(i). As such, the Panel cannot conclude that Respondent has any rights or legitimate interests in the disputed domain name under this clause.

 

The Complaint does, however, address Policy ¶ 4(c)(iii). It points to the WHOIS record for the disputed domain name and also mentions that Respondent is not authorized to use the asserted mark. WHOIS information is often referenced when considering whether a respondent is commonly known by the disputed domain name under this section of the Policy. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to [UDRP] Policy ¶ 4(c)(ii)). Additionally, lack of evidence in the record to indicate that a complainant has authorized respondent to register a domain name using an asserted mark may support a finding that a respondent does not have rights or legitimate interests in a disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per [UDRP] Policy ¶ 4(c)(ii)"). The WHOIS information for the disputed domain name, as verified to Forum by the concerned Registrar, only lists the registrant as "Waqas Anwar" and there is no evidence to otherwise identify Respondent. Further, Complainant states that "Respondent is not licensed or authorized to use Complainant's ZACH BRYAN mark or other forms of intellectual property in connection with the sale of merchandise…" Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(iii).

 

Next, the Complaint notes that the disputed domain name resolves to a website that claims to sell merchandise under Complainant's mark and thus seeks to pass itself off as a legitimate outlet for Complainant's products. Prior decisions have held that passing oneself off as a complainant and diverting users to a respondent's webpage, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Guess? IP Holder L.P. and Guess?, Inc. v. Kathrin Gerste / Martin Engel / Ulrike Schreiner / Juliane Scherer / Barbara Blau, FA 2080822 (Forum Feb. 23, 2024) ("Respondent's website purports to offer counterfeit clothing, apparel, and accessories for sale, while displaying Complainant's trademark and copyrighted images owned by Complainant. Respondent's use of the at-issue domain names to pass off in this manner constitutes neither a bona fide offering of goods or services under [UDRP] Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to [UDRP] Policy ¶4(c)(iii).") Here, Complainant provides screenshots of the resolving <zachbryanmerch.us> website which prominently displays the ZACH BRYAN mark and its graphic orange-and-white bull skull logo. Below this appear a photo of Mr. Bryan, the phrase "Zach Bryan Merch Store" and images of many items such as t-shirts, hoodies, and hats. Each of these items bears, among other things, a photo of Mr. Bryan, lyrics from one of his songs, his bull skull graphic logo, or some other reference to Mr. Bryan and his music. The Panel also notes that below each of these items appears one price in a strike-through grey font followed by a lower price in black font. At the bottom of the page appears the text "Zach Bryan Merch, Official Zach Bryan Merchandise" next to the bull skull logo and followed by various links related to shopping (e.g., "Contact Us", "Shipping Policy", "Refunds & Cancellations", etc.) and the notice "Copyright © 2023 zachbryanmerch.us." From this evidence, the Panel finds support for the conclusion that Respondent is misleading consumers by impersonating and passing itself off as Complainant and either offering unlicensed competing products, as claimed by Complainant, or perhaps perpetrating fraud by taking payments and not sending any merchandise at all. Respondent has not filed a Response or made any other submission in this case and so it provides no explanation for its activities. Thus, the Panel finds that Complainant has made a prima facie case which has not been rebutted by Respondent and that there is no evidence that Respondent is using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or that it is making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).

 

Considering all of the above, the Panel finds, by a preponderance of the presented evidence, that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

Complainant asserts that Respondent registered the <zachbryanmerch.us> domain name with knowledge of Complainant's rights in the ZACH BRYAN mark based on the mark's reputation and Respondent's use of the disputed domain name to provide services that compete with Complainant. Actual knowledge of a complainant's trademark rights may form a solid foundation upon which to establish bad faith and may be inferred when a respondent uses an identical disputed domain name to pass itself off as a complainant. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) ("[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.") As noted above, Complainant provides screenshots of pages from Respondent's website and these clearly show an attempt at impersonating Complainant and passing itself off as an outlet for its official merchandise. From this, and Complainant's submitted evidence of its widespread trademark reputation, the Panel finds that Complainant's ZACH BRYAN mark had become well-known and that Respondent had actual knowledge of the mark at the time that it registered the disputed domain name.

 

Next, Complainant asserts that Respondent registered and uses the <zachbryanmerch.us> domain name in bad faith because Respondent passes itself off as Complainant by disrupting its business and confusing would-be customers into thinking that they are dealing with a website that is a source for Complainant's genuine products. Such conduct is indicative of bad faith per Policy ¶ 4(b)(iv). See Tesla Inc. v. Ultimate / Jonathan Littlewood, FA 2052426 (Forum Aug. 2, 2023) (finding bad faith where "Respondent has attempted to commercially gain or otherwise benefit by fraudulently impersonating Complainant to entice shoppers to purchase on Respondent's website."); Jarrow Formulas, Inc. v. Boyan Kabakov / Triping EOOD, FA 2080725 (Forum Feb. 15, 2024) (bad faith found where Respondent's website "uses the Complainant's mark and logo as a masthead and the Complainant's copyright materials…") Complainant asserts that the ZACH BRYAN mark is used without permission and that the products displayed by the Respondent are unauthorized but identical in nature to items sold by Complainant. The Panel again references the submitted screenshots which show Respondent's multiple uses of Complainant's mark and graphic logo, the claim of offering "Official Zach Bryan Merchandise", and the offering for sale of products that directly reference Mr. Bryan but supposedly at substantially discounted prices. The evidence presented gives the clear impression that Respondent's website originates with Complainant and is improperly seeking commercial gain based on confusion with its mark. It is thus targeting the mark and seeking to compete with Complainant. For its part, Respondent has not participated in these proceedings and so has not offered a plausible explanation for its actions. As such, the Panel finds firm ground upon which to conclude that Respondent both registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv) and thus under ¶ 4(a)(iii).

 

Finally, Complainant asserts that Respondent has engaged in a pattern of conduct involving the targeting of its trademark. Where a respondent is found to have engaged in a pattern of bad faith conduct, such as through previous adverse UDRP proceedings against it, and prevented a complainant from reflecting its mark in a corresponding domain name, Panels have found bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA 1464477 (Forum Nov. 30, 2012) (finding that, where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants, this established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, Complainant cites a recent case that it pursued against Respondent which resulted in a transfer decision under very similar circumstances to that of the present case. Belting Bronco Merchandising Inc. v. Waqas Anwar, FA 2081290 (Forum Feb. 21, 2024) (bad faith found where <zachbryanmerchandise.shop> "resolve[s] to a website that falsely asserts that it provides official merchandise associated with Complainant/Zach Bryan but actually offers unauthorized products in direct competition with the Complainant's official merchandise.") Based on the above, the Complainant's assertion is well-founded and the Panel finds that Respondent has engaged in a pattern of bad faith conduct which has prevented Complainant from reflecting its mark in a corresponding domain name pursuant to Policy ¶ 4(b)(ii).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <zachbryanmerch.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Steven M. Levy, Esq., Panelist

Dated: April 8, 2024