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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pearl Jam, L.L.C. v. Domains By Proxy, LLC / J Needham / John Needham, BigStub, Inc.

Case No. D2018-2024

1. The Parties

The Complainant is Pearl Jam, L.L.C. of Seattle, Washington, United States of America (“United States”), represented by Stokes Lawrence, P.S., United States.

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / J Needham / John Needham, BigStub, Inc. of Thousand Oaks, California, United States, self-represented.

2. The Domain Names and Registrar

The disputed domain names <pearljamchicago.com>, <pearljamtickets.org>, <pearljamtourtickets.com>, and <pearljamtour2016.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 6, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 7, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not amend the Complaint.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2018. The Respondent sent an informal email communication to the Center on September 29, 2018. On October 1, 2018, the Center sent a communication regarding possible settlement to the Parties. The Complainant did not request suspension of the proceeding. On October 11, 2018, the Center notified the Parties that it would proceed to Panel appointment.

The Center appointed Lynda M. Braun as the sole panelist in this matter on October 18, 2018. 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 Complainant is governed by the four members of the musical group Pearl Jam. Pearl Jam is a popular American band widely known throughout the world. Since 1991, the band has performed and sold albums under the PEARL JAM trademark (the “PEARL JAM Mark”). The Pearl Jam band has established a significant international presence in the band’s 27-year history, during which the band has been estimated to have sold more than 60 million albums worldwide. The Complainant owns registrations in over 70 countries worldwide for trademarks incorporating the PEARL JAM Mark in connection with its musical recordings, musical performances, merchandise and other related goods and services in International Classes 9, 16, 25, 35, and 41. These trademark registrations include, but are not limited to, United States Registration No. 1,911,387 for PEARL JAM in International Class 16 (registered on August 15, 1995); United States Registration No. 1,911,524 for PEARL JAM in International Class 25; United States Registration No. 1,916,938 for PEARL JAM in International Class 41; United States Registration No. 1,952,582 for PEARL JAM in International Class 9; United States Registration No. 2,933,291 for PEARL JAM in International Class 35; United States Registration No. 3,960,535 for PEARL JAM (& Design) in International Classes 9, 16, and 25, and International Registration No. 833698 for PEARL JAM in International Classes 9, 16, 25, 35, and 41 (designating over 20 jurisdictions).

The Complainant owns the domain name <pearljam.com>, which it uses to resolve to its official website, and owns numerous other domain names, including <pearl-jam.org>, <pearljam.net>, <pearljam.us>, and <pearljams.com>, among many others.

The Disputed Domain Names were registered by the Respondent on February 1, 2013; March 25, 2008; April 15, 2010; and October 22, 2015, respectively. The Disputed Domain Names initially resolved or were redirected to the Respondent’s ticket website, on which event tickets for the Pearl Jam band were offered for sale. As of the writing of this decision, the Disputed Domain Names no longer resolve to active websites.

On August 10, 2017, the Complainant’s attorney sent a cease and desist letter to the Respondent but the Respondent did not reply, eventually claiming in his informal email referenced above that he did not receive it.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

(1) The Disputed Domain Names are identical or confusingly similar to the Complainant’s trademark;

(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(3) The Disputed Domain Names were registered and are being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not submit a substantive reply to the Complainant’s contentions. In its email communication of September 29, 2018, the Respondent stated “I consent to the remedy requested by the Complainant and agree to transfer the disputed domain name(s) to the Complainant.”

6. Discussion and Findings

Despite the Respondent’s consent to remedy, the Complainant elected not to enter into settlement negotiations with the Respondent. For the sake of completeness, the Panel has determined it appropriate to proceed to a decision on the merits.

Pursuant to paragraph 4(a) of the Policy, to prevail, the Complainant must prove each of the following elements with respect to the Disputed Domain Names:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4 (a)(i)); and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names (paragraph 4(a)(ii)); and

(iii) The Disputed Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).

A. Identical or Confusingly Similar

Under the first UDRP element, a complainant is required to prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Here, this element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the PEARL JAM Mark based on its many years of use and its registered trademarks in numerous countries worldwide. The Disputed Domain Names <pearljamchicago.com>, <pearljamtickets.org>, <pearljamtourtickets.com> and <pearljamtour2016.com> consist of the PEARL JAM Mark followed by a single descriptive word or short phrase, specifically “Chicago”, “tickets,” “tour tickets,” and “tour 2016”, followed by the generic Top-Level Domain suffixes (“gTLD”) “.com” and “.org”.

The Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s PEARL JAM Mark as the Disputed Domain Names incorporate the Complainant’s PEARL JAM Mark in its entirety. In addition, the Panel finds that the Respondent’s inclusion of the descriptive words “Chicago”, “tickets,” and “tour”, in combination with the PEARL JAM Mark does not avoid confusing similarity. As stated in section 1.8 of the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Moreover, the gTLD suffixes that the Respondent attaches to the Disputed Domain Names containing the PEARL JAM Mark, “.com” and “.org,” are irrelevant in assessing confusing similarity. See Comerica Incorporated v Domains By Proxy, LLC / G Design, WIPO Case No. D2012-1374. Since the addition of such suffixes to a domain name is technically required, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, paragraph 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its PEARL JAM Mark. The name of the Respondent has no apparent connection to the Disputed Domain Names that would suggest that they are related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Names (discussed below), the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Names.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the registration of a domain name that is identical or confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Moreover, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith. This was the case when the Complainant drafted the Complaint, since at that time the Disputed Domain Names resolved to the Respondent’s website, which offered, among other things, Pearl Jam tickets for sale. The Complainant submitted screenshots of the Respondent’s website demonstrating such prior use. Notably, the Complainant’s evidence suggests that when Internet users attempted to purchase tickets, they were redirected to a third-party ticket brokerage firm operating under the name “BigStub, Inc.” Based on the circumstances here, the Respondent registered and used the Disputed Domain Names in bad faith to target the Complainant’s PEARL JAM Mark and to drive Internet traffic seeking the Complainant’s goods and services to the Respondent’s website for commercial gain. See paragraph 4(b)(iv) of the Policy.

Second, the Panel finds that the Respondent knew or should have known of the Complainant’s rights in its PEARL JAM Mark when registering the Disputed Domain Names. As noted above, the Complainant’s PEARL JAM Mark is widely known and used and the Respondent registered the Disputed Domain Name many years after the Complainant first used and obtained its trademark registrations for the PEARL JAM Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its PEARL JAM Mark when registering the Disputed Domain Names. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.

Third, the Panel notes that the Disputed Domain Names are no longer redirected to the Respondent’s own website, but instead are now inactive since they resolve to error pages with no content. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of domain names that incorporate well-known trademarks without a legitimate Internet purpose may indicate that the Disputed Domain Names are being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No.D2000-0574. Here, the Panel considers the Respondent’s current passive holding of the Disputed Domain Names to be a further indication of bad faith.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, <pearljamchicago.com>, <pearljamtickets.org>, <pearljamtourtickets.com> and <pearljamtour2016.com>, be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: October 26, 2018

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