WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Queen Productions Limited, Duck Productions Limited, Queen Music Limited v. Daniel Stanojevic
Case No. D2011-1001
1. The Parties
The Complainants are Queen Productions Limited, Duck Productions Limited and Queen Music Limited all of London, United Kingdom of Great Britain and Northern Ireland, represented by Harbottle & Lewis LLP, United Kingdom.
The Respondent is Daniel Stanojevic of Santa Barbara, California, United States of America appearing pro se.
2. The Domain Name and Registrar
The disputed domain name <wewillrockyou.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2011. On June 14, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On June 14, 2011, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2011. The Response was filed with the Center on July 6, 2011.
The Center appointed John Swinson as the sole panelist in this matter on July 12, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The First Complainant is Queen Productions Limited, a UK registered company incorporated on September 16, 1975. The First Complainant is the registered proprietor of a number of worldwide registered trade mark applications. The first trade marks were applied for in 2002.
The Second Complainant is Duck Productions Limited, a UK registered company incorporated on November 10, 1975.
The Third Complainant is Queen Music Limited, a UK registered company incorporated on June 18, 1975. (The First, Second and Third Complainants are together known as the “Complainants”).
The Respondent is Daniel Stanojevic1.
The disputed domain name <wewillrockyou.com> was registered by the Respondent on December 1, 1997.
5. Parties’ Contentions
The Complainants make the following submissions and arguments:
Identical or Confusingly Similar
The First Complainant is the registered proprietor of a number of worldwide registered trade marks and trade mark applications for the mark WE WILL ROCK YOU.
The Complainants own and/or are licensed to use unregistered rights in the mark WE WILL ROCK YOU dating back to 1977 by virtue of its use, and that of its licensees, of the WE WILL ROCK YOU mark in respect of a wide range of goods and services. The WE WILL ROCK YOU mark has, through such use, acquired a reputation and goodwill such that members of the public associate such goods and/or services with either or all of the First, Second and Third Complainants and/or its licensees.
These unregistered rights arose as a result of the following:
- as the title of a well-known song written in 1977 by Brian May, a member of the internationally famous rock band Queen and performed by Queen;
- in connection with offering products and services relating to the band such as tour merchandise;
- in connection with the musical production of the same name which is about the rock band Queen and features songs by Queen and which first opened in the UK in 2002 (the First Complainant);
- in connection with a variety of merchandise products by the Complainants and/or its licensees relating to the musical; and
- Queen Theatrical Productions Limited, a wholly owned subsidiary of the First Complainant is the proprietor of the domain name <wewillrockyou.co.uk> which was registered on October 16, 2002.
The song “We Will Rock You” is very well known and has been performed on numerous occasions and many albums have been sold featuring the song.
The musical has also been very successful. It has been performed all over the world and is very well-known. Significant numbers of merchandise containing the WE WILL ROCK YOU mark associated with the musical have sold.
Finally, the website receives many visitors.
Therefore, the Complainants own and rely upon substantial unregistered rights in the mark WE WILL ROCK YOU which have accrued through wide-ranging, continued and long-standing use in commerce causing the mark to have become distinctive and universally identified and associated with the Complainants and/or its licensees and/or its goods and services including musical performances, CDs and records since 1977.
Both the registered and unregistered rights accruing to the Complainants may be relied upon to satisfy this element (Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322). Further, there is no requirement that a complainant’s registered trade marks pre-date registration of a disputed domain name for this element to be satisfied (AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527).
The disputed domain name is identical to the Complainants’ registered and unregistered marks and it is well established that the suffix “.com” should be disregarded (MADRID 2012, S.A. v. Scott martin-MadridMan Websites, WIPO Case No. D2003-0598). Alternatively, the disputed domain name is confusingly similar to the Complainants’ trade marks.
Rights or Legitimate Interests
There is no commercial relationship between the Complainants and the Respondent, nor have any of the Complainants licensed or authorized the Respondent to use the mark, WE WILL ROCK YOU in the disputed domain name or elsewhere.
The website currently operating from the disputed domain name refers to a Californian based company by the name of WeWillRockYou.com. However, relevant searches have revealed no evidence of a company under that name. The Complainants therefore do not believe the company is legitimate or exists and as such, the Complainants submit that the Respondent is not and has never been commonly known by the disputed domain name.
Moreover, the term “We Will Rock You” is not a commonly used phrase other than in connection with the Complainants and their rights. There is no evidence the Respondent owns or has ever owned any trade mark or service mark rights in the name, “We Will Rock You”.
To the best of the Complainants’ knowledge and based on archived print-outs of the website historically resolving from the disputed domain name, between October 19, 2000 and July 16, 2010, it was not until around October 2000 that the disputed domain name resolved to a web page. In October 2000 the disputed domain name merely resolved to a holding page comprising a green background with the word “We Will Rock You” across the middle. At the bottom right hand corner was an email address, email@example.com. This holding page was present until at least September 2008.
In December 2002, prior to the launch of the musical, the Complainants first became aware of the disputed domain name and instructed a representative to contact the Respondent. The Respondent was thus definitively aware of the Complainants’ rights in the trade marks from this time. In email correspondence dated December 16, 2002, the Respondent rejected an offer made on behalf of the Complainants to purchase the disputed domain name on the basis that the offer was too low, the highest previous offer allegedly being US$18,000. Instead the Respondent offered the Complainants to use the disputed domain name to display its official logo and a link to the Complainants’ official website for an annual rent. The offer was declined.
This confirms that the Respondent was clearly aware of the value of the disputed domain name and the fact that it would attract visitors who were looking for the Complainants and/or the musical. As such, this reinforces that the Respondent had no rights or legitimate interests in the disputed domain name.
On September 3, 2008, the First Complainant’s legal representatives sent the Respondent a cease and desist letter to postal and email addresses. The disputed domain name continued to point to the holding page at this time. The letter was returned and no response was received from the email address. However, the same postal and email addresses have been used in more recent correspondence.
During the period 1997-2008, there was no evidence that the Respondent had used or had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
On July 16, 2010 the Complainants instructed their legal counsel to again write to the Respondent in relation to the disputed domain name. The Complainants had discovered that the website resolving from the disputed domain name was now displaying links to websites through which tickets for the musical in London and elsewhere could be purchased and through which other services were advertised. The services offered by the Respondent via the disputed domain name relating to the musical were unauthorized by the Complainants.
It is likely that the Respondent received remuneration for displaying these links and was knowingly trading off the goodwill and association with the Complainants’ marks in order to misleadingly attract and increase visitors to its website.
As such, during this time the Respondent was financially and/or commercially benefiting from its use of the WE WILL ROCK YOU mark as part of the disputed domain name. Therefore, the Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or generate rights in or legitimate interests in the disputed domain name.
In or around August 2010, the website resolving from the disputed domain name changed to a website displaying photographs.
The words “We Will Rock You” have no association with photographs or photography. The website changed following the letter sent by the Complaints’ legal representative on July 16, 2010 and subsequent negations.
The Complainants submit that the website was changed by the Respondent in an attempt to legitimatize the use of the disputed domain name. However, the Complainants submit that such use cannot be evidence of bona fide or legitimate non-commercial or fair use of the disputed domain name, in circumstances where the Respondent was on notice of the Complainants’ rights and the threat of this Complaint.
Registered and Used in Bad Faith
The Complainants submit that the disputed domain name was registered in bad faith. The disputed domain name was registered over 20 years after the WE WILL ROCK YOU mark was first used by the Complainants. By the time the disputed domain name was registered in 1997, the WE WILL ROCK YOU mark had acquired a distinctiveness and a very significant amount of goodwill such that the WE WILL ROCK YOU mark had become associated in the minds of the public with the Complainants and/or its licensees and their goods and/or services.
In the circumstances, and given the varied and international use of the WE WILL ROCK YOU name by the Complainants and its licensees prior to 1997, it is inconceivable that the Respondent was not, at the time of registering the disputed domain name, aware of the WE WILL ROCK YOU mark and its association with the Complainants and/or its licensees, and their goods and/or services.
The email correspondence outlined above is evidence that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainants (or others) for consideration in excess of the Registrant’s out of pocket expenses and/or had intentionally intended to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainants.
The Respondent was aware of the Complainants’ rights from 2002 and it is inconceivable that the Respondent was not aware of such rights earlier.
The Complainants submit that it is clear that the Respondent registered the disputed domain name and was using it in bad faith as a blocking registration to the Complainants or its licensees.
The Respondent’s use of the disputed domain name to display links directing Internet users to third party websites, and presumably for financial reward, was done in bad faith as it created the false impression that the disputed domain name and content of and services provided through the website were those of the Complainants or that they had some connection with or were approved or endorsed by the Complainants, when that was not the case, thereby causing a likelihood of confusion. The Complainants submit furthermore that the Respondent was aware of such confusion and that the Respondent may have further benefited financially from such confusion. Such use cannot be said to be made in good faith as the Respondent was during this time clearly using the disputed domain name to intentionally attempt to attract for commercial gain Internet users to the website at the disputed domain name by creating a likelihood of confusion.
The Complainants submits that the Respondent’s use of the disputed domain name to display photographs allegedly connected to a business conducted by the Respondent in August 2010 and following correspondence from the Complainants’ legal representatives was an attempt by the Respondent to use the disputed domain name for a non-commercial or fair use to try to overcome allegations of bad faith. The Complainants contend that such use cannot be considered bona fide and the change of use is itself evidence of use in bad faith. The use of the disputed domain name in this way is a further attempt by the Respondent to attract traffic to its website by virtue of the reputation and goodwill associated with the WE WILL ROCK YOU mark and as such it cannot be said to be good faith in the circumstances of the Respondent’s registration and prior use of the disputed domain name.
In addition to the correspondence referred to above is evidence of the Respondent’s bad faith in respect of attempting to extort substantial sums of money from the Complainants for the transfer of the disputed domain name. The Respondent subsequently, during settlement discussions, offered to transfer the disputed domain name for US$250,000 and refused the Complainants’ offer of US$10,000. Such high sums of money are clearly in excess of the Respondent’s out-of-pocket expenses and as such, the Respondent cannot be said to be acting or using the disputed domain name in good faith. Further, this indicates that the Respondent’s intention in registering the disputed domain name was to benefit financially from it, either by selling it to the Complainant or another party for a significant sum, or by generating revenue through pay-per-click links by creating a likelihood of confusion with the Complainants.
Finally, the Respondent also registered the domain name, <mamamia.com>. This domain name is derived again from the title of a well-known song and which subsequently became a theatre production and a film. This domain name initially resolved to an inactive holding page and later a website displaying sponsored links to sites from which tickets to the musical could be purchased. Again, the Respondent must have been aware at the time of registration of this domain name of the rights owner’s rights in the MAMMA MIA name given the international success of the song and as such this domain name must also have been registered in bad faith. The Respondent does not appear to have any legitimate rights or interests in the domain name and it is identical and/or confusingly similar to the name, MAMMA MIA.
This indicates that the Respondent has engaged in a pattern of conduct of registering domain names to prevent rights owners from registering relevant domain names and/or in an attempt to financially benefit by creating a likelihood of confusion and/or in the hope of selling the domain names for large sums of money in excess of out-of-pocket expenses.
The Complainants request that the disputed domain name be transferred to the Complainants.
The Respondent makes the following submissions and arguments:
Identical or Confusingly Similar
The Respondent acknowledges that the disputed domain name is identical or confusingly similar to the Complainants’ trade marks. However, at the time of registering the disputed domain name, the Respondent was not aware of the Complainants’ trade marks. The Respondent only knew the term “We Will Rock You” as a positive expression. The Complainants’ first trade mark was registered in 2002, five years after the disputed domain name was registered.
Therefore, the Respondent could not have known of the Complainants’ trade marks at the time of registration of the disputed domain name and thus necessarily cannot have registered the disputed domain name with the primary intent of selling, renting or otherwise transferring the disputed domain name to the Complainants.
Also, the Respondent did not contact the Complainants to offer to sell the disputed domain name. The Respondent has not attempted to sell the disputed domain name or other domain names to other interested parties. Thus the Respondent has no history of engaging in the conduct of selling domain names for a profit.
Rights or Legitimate Interests
The Complainants contacted the Respondent many times via emails and letters in July 2010 through their legal representatives. The Complainants wrongly accused the Respondent and there was such a large volume of correspondence and short deadlines imposed by the Complainants that this conduct indicated an intent to scare and bully the Respondent into transferring the disputed domain name.
In 1997 the Respondent registered four domain names (the disputed domain name, <mamamia.com>, <whywhywhy.com> and <donotgiveup.com>). These domain names were registered because they were a creative play on words devised by the Respondent and not intentional trade mark infringement.
As a result of the aggressive approach taken by the Complainants, the Respondent was forced to take unpaid leave from his job and engage a lawyer to deal with the accusations and correspondence.
Further, the Respondent acknowledges that there is no company WeWillRockYou.com because the Respondent does not believe it prudent to register such a company until he can ensure that it is safe for him to do so. Given the way in which the Complainants have attacked the Respondent’s registration of the disputed domain name, the Respondent does not want to proceed with registering the company. The Respondent is not currently in a position to register the company. The reference to a “Californian based company” on the website resolving from the disputed domain name merely indicates that the website owner resides in California and the Respondent’s intention to register the company in California.
The Complainants cannot rely on the Respondent’s refusal to accept the initial offer to sell the disputed domain names as bad faith or an absence of rights or legitimate interests. The Respondent did not entertain the offer of US$18,000 by a third party prior to the Complainants’ offer. As noted previously, the Respondent has no previous history of selling or trying to sell his domain names. The Respondent’s response to the Complainants’ correspondence and offer stated that the Respondent had previously been contacted by third parties on many occasions and had no intention of selling the disputed domain name. The Respondent merely indicated the highest offer previously received and did not initiate negotiations to sell the disputed domain name, thus evidencing his determination to use the disputed domain name for his own purpose.
The mere fact that there is a small percentage of visitors to the website resolving from the disputed domain name intending to buy tickets to the We Will Rock You musical or for some other purpose does not deprive the Respondent of any right to use the disputed domain name.
The Respondent submits that the Complainants’ actions are tantamount to reverse domain name hijacking given that the Complainants established their website in 2002.
Moreover, most Internet users locate a website via a Google or similar search. If one were to search “We Will Rock You” in a search engine, the disputed domain name does not appear in the search results. The Complainants’ website is the first retrieved result when the term is searched on Google. This further indicates that the Complainants’ actions in pursuing and attacking the Respondent are excessive and unjustified. Furthermore, there are other domain names that incorporate the term “We Will Rock You” that appear unconnected with the Complainants.
Around 2002 the Respondent began receiving emails from visitors to the site requiring information about the musical and ticket purchases. In order to assist the Complainants and ensure that they did not lose customers, the Respondent offered to redirect Internet users to the Complainants’ website via a banner on its website for a fee. The Complainants declined the offer. Therefore, it is clear that the Respondent is not attempting to sell the disputed domain name to the Complainant and is legitimately attempting to assist the Complainants.
Finally, while the website resolving from the disputed domain name did contain links to ticket sales in or around 2009, the Respondent provided those links in order to assist the Complainants and in the belief that they redirected Internet users to the official ticket sale sites for the musical. The Respondent was under this belief as the sites contained the official logo. The Respondent received no financial reward from providing these links or re-directing customers to these sites. When the Respondent was made aware that these sites were not the official sites, the Respondent immediately removed the links.
Registered and Used in Bad Faith
In 1997 the term “We Will Rock You” was merely the name of a song to the Respondent’s knowledge. The Respondent is not aware of any laws prohibiting the registration of a domain name where it is identical or confusingly similar to the name of a song.
The Complainants refer to 20 years of goodwill associated with the name “We Will Rock You” prior to 1997. However, the Complainants did not register any domain names incorporating this term during that time. Further, it was another five years after the Respondent registered the disputed domain name before the Complainants registered a domain name incorporating the phrase.
The Complainants are not individuals or small companies and as such cannot rely on a lack of resources or funds as an excuse for failing to register a domain name incorporating the term sooner. As such, it is clear that the term “We Will Rock You” was merely the title of a song and nothing more prior to the concept of the musical being devised.
Therefore, it is clear that the Respondent did not register the disputed domain name with intent to deprive the trade mark owner from reflecting the mark in a corresponding domain name. The trade mark did not exist and did not exist for another five years.
The Respondent has registered four domain names in 1997 as discussed above. The Respondent registered these domain names with the intention to develop commercial and non-commercial websites. For example, the Respondent initially intended to create a pizza order website for <mamamia.com>. However, the web technologies at the time were limited. Therefore, the Complainant moved to the United States of America to study the latest internet technologies so that he could bring his websites to fruition.
In 2001 the Respondent created a web portal for real estate at this domain name, however the web technologies were still very limited and due to a variety of factors the website was not complete until 2006.
The Respondent next focused on the website resolving from the disputed domain name. After receiving the correspondence from the Complainants’ solicitors, the Respondent decided to put up a website that reflected the intention for the website. The Respondent’s intention for this website was to connect artists and the industry providing a professional level of quality for both. The underlying web application that will power this website is still in development. The Respondent intends that the website will focus on photography initially and will eventually expand to other art forms. The Respondent notes that due to the nature of start-up businesses, financing is an issue and the Respondent has been working on this and intends to now focus on develop this website.
Therefore, a variety of circumstances such as a lack of resources, inadequate technology, time constraints and competing projects, has resulted in the Respondent being delayed in preparing the final websites for these domain names registered in 1997, including the disputed domain name. This rebuts the Complainants’ arguments regarding bad faith.
The Respondent’s registration and use of the domain name <mamamia.com> is not evidence of a consistent course of conduct. The phrase “mama mia” is an extremely popular expression in Italy and in other countries to express awe. This is the reason the term was chosen for this particular domain name and when devising uses for the domain name the Respondent thought of creating a pizza ordering service given many Italian restaurants contain the name “Mama Mia”. In 1997, to the Respondent’s knowledge, those were the only two known uses of the phrase. The Respondent had not heard of the ABBA song “Mamma-Mia”.
Further at the time of registration of these domain names, the concept for the relevant musicals had not been devised and as such, the Respondent could not have known of them.
Again, the Respondent reiterates that the Respondent has clearly demonstrated throughout the years, and with respect to the different domain names owned by him, that he has not attempted to sell his domain names. The Respondent has invested US$250,000 in developing the website resolving from the disputed domain name. It is for this reason that the Respondent offered this as a starting point in settlement discussions, however the Complainants would not offer anything over US$10,000. The Respondent was willing to accept a substantially lower figure than his initial offer, this was merely a starting point. Further, during those discussions, the Respondent offered to provide a direct free link to the Complainants’ official website as a gesture of goodwill, however the Complainants showed no interest.
Therefore, the Respondent has acted in good faith.
The Respondent requests that the Panel make a finding of reverse domain name hijacking.
6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainants.
A. Procedural Issues
The Complainants delayed in bringing these proceedings. Although, delay in filing proceedings does not of itself prevent a complainant from succeeding, delay does make a case on the merits more difficult to establish in relation to the second and third elements (see e.g. Board of Trustees of the University of Arkansas v. FanMail.com, WIPO Case No. D2009-1139). Here, the Panel does not find that delay is a determinative factor, but notes that it has indeed made it more difficult for the Complainants to establish the second and third elements. Further, the Complainants do not explain why it took so long to bring these proceedings. However, lack of such information, although possibly helpful, does not impact the ultimate outcome of this dispute.
B. Identical or Confusingly Similar
The Complainants own several worldwide registered trade marks for the term WE WILL ROCK YOU, with applications first being made in 2002.
Further, the Complainants have put forward extensive evidence to suggest unregistered trade mark rights in the term WE WILL ROCK YOU from as early as 1977. In order to establish unregistered trade mark rights, the Complainants must show that the name has become a distinctive identifier associated with the Complainants or its goods and services. The decision in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123 is instructive when considering whether “secondary meaning” has been established and sets out the factors to consider such as, inter alia, length and amount of sales under the trade mark, nature and extent of advertising and media recognition. The Panel finds that the Complainants do have unregistered trade mark rights in the term, given extensive and comprehensive use of the term as the title of an extremely well-known and popular song and on merchandise over a lengthy period of time and later with respect to the musical by the same name.
Due to the registered trade marks and use of the term for merchandise, the Panel does not need to decide whether a song title per se is sufficient to demonstrate unregistered trade mark rights for the purposes of the Policy.
For the Complainants to succeed in this element, it must show that the disputed domain name is identical or confusingly similar to the Complainants’ trade marks.
As stated above, the Complainants have trade mark rights in the term WE WILL ROCK YOU. The disputed domain name is <wewillrockyou.com>. As such, the Panel finds that the disputed domain name is clearly identical or confusingly similar to the Complainants’ trade marks. The “.com” suffix does not render the disputed domain name sufficiently different from the Complainants’ marks.
The Panel notes that the timing of registration or existence of trade mark rights is not relevant to this element and is only relevant to the element of bad faith (see e.g., Reckitt Benckiser Plc v. Eunsook Wi, WIPO Case No. D2009-0239). As such, even though the registered trade mark rights accruing to the Complainants arose after the registration of the disputed domain name, this is not a relevant factor to consider with respect to this element. In any event, the unregistered trade mark rights accrued prior to the disputed domain name being registered.
Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
The Policy provides that a complainant must establish a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name. The Respondent must then rebut this presumption. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
Here, the Complainants have succeeded in establishing a prima facie case that the Respondent has no rights or legitimate interests in a disputed domain name (refer to Section 5.A, above).
The Respondent has been unsuccessful in rebutting this prima facie case. Importantly, the Respondent has not used, or demonstrated preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, before any notice of the dispute. The disputed domain name operated as a holding page for many years and it was not until being contacted by the Complainants that the Respondent indicated an intention to use the disputed domain name in connection with a business.
Moreover, the Respondent claims that he intends to register a business name by the name WeWillRockYou.com and to operate a business under this name and from the disputed domain name. However, merely establishing a business name and registering a domain name to trade off another’s reputation does not suffice to establish a right or legitimate interest safe harbor for the purpose of the Policy. Madonna Ciccone p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 is instructive on this issue. In that case, it was found that use is not legitimate if no reasonable explanation for the selection of the domain name can be proffered. Even if the domain name and business name have an ordinary meaning or are generic, where it cannot be shown that the name was selected for these reasons, this cannot be a bona fide offering of goods and services. As stated in that case, “[t]o conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy”.
As discussed further below, the Respondent has proffered no reasonable or compelling explanation for selecting this precise business and disputed domain name and as such, it cannot be said that the disputed domain name will be used in connection with a bona fide offering of goods or services to entitle the Respondent to rights or legitimate interests in the disputed domain name. Moreover, despite owning the disputed domain name for a significant period of time, the Respondent has provided no tangible proof of his business plans to use the disputed domain name in a business venture.
Further, even though operation of a pay-per-click (“PPC”) website does not necessarily deny a respondent rights or legitimate interests in a domain name, in circumstances such as this, where it appears the disputed domain name was selected for the sole purpose of profiting from the Complainants’ trade marks, no rights or legitimate interests can be found (see e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).
Finally, the Respondent acknowledged that he had not yet registered WeWillRockYou.com as his company name and as such he cannot rely on this as evidence of a right or legitimate interest in the disputed domain name.
Therefore, the Panel concludes that the Respondent does not have any rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith. However, these factors are not exhaustive.
The Panel does find that the name of the Complainants’ unregistered trade marks were sufficiently well-known that the Respondent, most likely, purposefully registered the disputed domain name for the purposes of attracting customers by creating a likelihood of confusion in their minds with the Complainants’ trade marks. The Panel refers to Asian World of Martial Arts Inc. v. Texas International Property Associates, supra and finds here, as there, that “[i]t defies common sense to believe that Respondent coincidentally selected [the] precise domain [name] without any knowledge of Complainant and its […] Trade marks”. (See also, F. Hoffmann-La Roche AG v. MFS Holdings, WIPO Case No. D2010-0307.)
Further, the passive use by the Respondent, which he engaged in for many years, even in the absence of attempting to sell or contact the Complainants, does not prevent a finding of bad faith. The Panel must examine all the circumstances, including the reputation of the Complainants and trade marks (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). As stated above, the Panel finds that the Complainants’ unregistered trade marks were sufficiently well known.
The Respondent asserted he intended to operate a website from the disputed domain name in order to connect artists and industry professionals. In the absence of persuasive evidence in support of that claim, and given the apparently rather nebulous connections between such a business or operation and the ordinary meaning of the disputed domain name, the Panel finds it rather more likely on the present record that the Respondent is attempting to trade off the goodwill and reputation of the Complainants and the trade marks.
Therefore, the Panel finds these factors taken together are indicative of bad faith on the part of the Respondent.
In addition, for a period of time the disputed domain name was used as a PPC website. While a PPC website is not use in bad faith in and of itself, here, given the strong reputation of the term “We Will Rock You”, it appears that the Respondent intentionally selected the disputed domain name and used it in order to create confusion in the mind of Internet users as to the association between the disputed domain name and the Complainants’ trade marks and thereby generate PPC revenue. The Panel finds that the Respondent is attempting to divert Internet traffic to its website in order to generate “pay-per-click revenue” (see e.g., BAB, Inc. v. Eighty Business Names, WIPO Case No. D2010-0478; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Hayward Industries, Inc. v. WebQuest.com, Inc., WIPO Case No. D2009-1493).
The Panel also notes that if the links that redirected to competitor sites of the Complainants did generate revenue for the Respondent, then this would provide even stronger evidence of bad faith, however the Respondent claims he did not generate revenue from these links and the Panel does not make a finding on this point.
There is insufficient evidence for the Panel to make a finding that the Respondent registered the disputed domain name for the primary purpose of selling, renting or otherwise transferring the disputed domain name to the Complainants for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name.
The Panel also does not finally decide that the Respondent registered the disputed domain name in order to prevent the Complainants from reflecting their marks in a corresponding domain name. Before the Panel can make such a finding there must be evidence of a pattern of conduct. While, the Respondent did register four domain names that incorporated titles of songs, no evidence that trade mark rights existed with respect to each of those domain names.
In any event, the Panel finds on the present record that the disputed domain name was registered in bad faith.
D. Reverse Domain Name Hijacking
In view of the findings above in favour of the Complainants, the Panel makes no finding of reverse domain name hijacking.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <wewillrockyou.com> be transferred to the First Complainant.
Dated: July 27, 2011
1 The name of the Respondent in the Complaint and the reply to the Request for Registrar Verification is Daniel Stanojevic, but the name in the Response is Danijel Stanojevic.