WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Navarone Garibaldi v. William Offset
Case No. D2011-2100
1. The Parties
Complainant is Navarone Garibaldi of Santa Monica, California, United States of America (the “United States”), represented by Seiter & Co., United States.
Respondent is William Offset of Palm Beach Garden, United States.
2. The Domain Name and Registrar
The disputed domain name <navaronegaribaldi.com> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2011. On December 1, 2011, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the Domain Name. On December 1, 2011, eNom transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2011. On December 12, 2011, prior to the formal notification of the Complaint and commencement of the administrative proceeding, Respondent transmitted an e-mail communication to the Center confirming that it would be represented in the proceeding. However, Respondent did not submit any formal response. Accordingly, the Center notified Respondent’s default on January 3, 2012.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 6, 2012. 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.
The Panel issued Procedural Direction No. 1 on January 9, 2012, seeking evidence that Complainant used the alleged mark NAVARONE GARIBALDI in commerce as a source identifier for the goods and services set forth in his trademark application, and inviting Respondent to respond to this submission. On January 19, 2012, Complainant submitted a response to Procedural Direction No. 1, submitting some additional evidence and argument. Respondent did not respond to Complainant’s submission.
4. Factual Background
Complainant is the lead singer and guitarist of the rock band THEM GUNS, which is based in the United States in the Santa Cruz, California area. The annexes to the Complaint include printouts from two websites, “www.santacruzwaves.com” and “www.reverbnation.com”. These websites feature discussions about THEM GUNS and the band’s recent activities and upcoming events. Complainant is mentioned at each website as the first member of the band. The “www.reverbnation.com” website appears to indicate that THEM GUNS ranked as 80 in “chart position” for the Santa Cruz area.
Complainant also applied for a trademark registration of NAVARONE GARIBALDI with the United States Patent and Trademark Office. The application, filed on November 3, 2011, indicates that Complainant uses the trademark (his name) in connection with musical sound recordings on CD, DVD, and MP3 files, and in connection with clothing and related gear, and live musical performances.
There is some evidence in the record that Complainant was using his name, and the name of his band, in connection with musical performances prior to the date of the Domain Name registration (December 12, 2010). The band has a Twitter account with 11 followers.
Complainant also states in the Complaint that he is the “half-brother of celebrity singer-songwriter Lisa Marie Presley” and the son of “entertainment celebrity Priscilla Presley.” The record contains a media photo montage showing Complainant with these family members, but there is no discussion therein of Complainant as a musician or celebrity in his own right. Complainant has not asserted trademark rights on the strength of being related to his better-known family members, and the record contains no evidence that these family ties have any bearing on Complainant’s asserted trademark rights.
According to the publicly available WhoIs database, the Domain Name was registered on December 12, 2010. The Domain Name resolves to a website briefly describing Complainant. It also mentions his musical activities and states that he has a history of drug abuse, he joined the Church of Scientology, and he was arrested in Glendale, California, United States. Respondent has also registered at least two other domain names containing the names of other apparent figures in the entertainment industry, Jason Toohey and Angel Porrino. The websites corresponding to these domain names also contain a smattering of personal and professional information regarding these figures.
5. Parties’ Contentions
The salient facts of this case are as set forth in the previous section. Complainant contends that all three elements required under the Policy have been met and that he is entitled to a transfer of the Domain Name.
Subsequent to the e-mail communication transmitted by Respondent to the Center on December 12, 2011 regarding Respondent’s representative, no further e-mail communications were received by the Center from Respondent. Therefore, Respondent did not formally reply to any of Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds, just barely, that Complainant has unregistered trademark rights in his name NAVARONE GARIBALDI. Even a weak and localized trademark may clear the relatively low hurdle of Policy paragraph 4(a)(i). The Domain Name is identical to the trademark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use 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 noncommercial 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 (Apr. 22, 2003), correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not effectively rebut any of Complainant’s assertions.
There is no evidence that Respondent has ever been authorized to use Complainant’s trademark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Respondent has not come forward to assert that he registered the Domain Name for some potentially legitimate purpose, such as exercising his right to free speech. Indeed, as the Panel discusses further below, the Panel finds it more likely that the Respondent registered the disputed domain name a part of a pattern of preclusive registration. As such, the Panel does not need to look behind the evidence in the record, which contains no indication that Respondent has any rights or legitimate interests in respect of the Domain Name.
In this Panel’s view, the actual content at the website to which the disputed domain name resolves is not crucial to the decision in this case. The content appears to be a smattering of neutral and unflattering comments about Complainant. Respondent has not come forward to assert that he registered the Domain Name for some potentially legitimate purpose, such as exercising his right to free speech. Nor can a desire to exercise such rights be inferred from the sparse content at the website. As such, mindful also of the Panel’s findings below concerning the preclusive registration under the third element of the Policy, the Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith” :
(i) circumstances indicating that Respondent has registered or has 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 that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location.
The Panel finds that Respondent has registered and is using the Domain Name in bad faith under paragraph 4(b)(ii) of the Policy. It is obvious to this Panel that Respondent had Complainant in mind when registering the Domain Name. By registering a Domain Name which corresponds exactly to Complainant’s name and which bears the valuable “.com” generic Top-Level Domain, Respondent has deprived Complainant of perhaps the best domain name option at Complainant’s disposal. Respondent has done essentially the same thing to at least two other apparent figures in the entertainment world. This is enough, under these circumstances, to constitute a pattern of preclusive registrations within the scope of paragraph 4(b)(ii).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <navaronegaribaldi.com> be transferred to Complainant.
Robert A. Badgley
Dated: January 30, 2012