WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aleks Musika and Musika Brands, LLC v. Registration Private, Domains by Proxy, LLC / Davidson Petit-Frere
Case No. D2019-2667
1. The Parties
The Complainants are Aleks Musika, United States of America (“United States” or “U.S.”) and Musika Brands, LLC, United States, represented by Phillips Nizer LLP, United States.
The Respondent is Registration Private, Domains by Proxy, LLC, United States / Davidson Petit-Frere, United States.
2. The Domain Names and Registrar
The disputed domain names <aleksmusika.com>, <aleksmusika.net>, <aleksmusika.org>, <musikanyc.com>, and <musikany.com> 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 October 30, 2019. On October 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 1, 2019, 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 November 5, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 8, 2019.
The Center verified that the Complaint together with the amended 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 November 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2019.
The Center appointed William R. Towns as the sole panelist in this matter on December 16, 2019. 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 Complainants are Musika Brands, LLC (hereinafter “Complainant Musika Brands” or “Musika Brands”), a Delaware limited liability, and Aleks Musika (hereinafter “Complainant Musika” or “Musika”), who co-founded Musika Brands on July 12, 2019. The Complainant Musika is a fashion designer. The Respondent Davidson Petit-Frere (hereinafter “Respondent Petit-Frere” or “Petit-Frere”) also is a fashion designer. In 2013, Musika and Petit-Frere collaborated to form the menswear design company “Musika Frere”. The domain name <musikafrere.com> was registered, apparently by Petit-Frere, and used with the Musika Frere website.
In November 2018, the Complainant Musika and the Respondent Petit-Frere parted ways, and are now competitors. On December 27, 2018, the Respondent using a proxy service registered the disputed domain names <aleksmusika.com>, <aleksmusika.net>, <aleksmusika.org>, <musikanyc.com>, and <musikany.com>. The Respondent then formed a New York limited liability company, Frere NY LLC, operating under the fashion label “FrereNY.” The Respondent registered the domain name <frereny.com>, which resolves to the Respondent’s Frere NY website, but also has redirected the <musikafrere.com> domain name (not subject to this proceeding) to the “FrereNY” website. The disputed domain names currently resolve to parked pages provided by the Registrar.
The Complainant Musika Brands, on October 7, 2019, filed with the United States Patent and Trademark Office (“USPTO”) on an Intent To Use basis nine trademark applications for MUSIKA and MUSIKA NEW YORK, as follows:
MUSIKA – U.S. Serial Nos. 88645139, 88645156, 88645166;
MUSIKA (word plus design) – U.S. Serial Nos. 88645149, 88645127, 88645162;
MUSIKA NEW YORK – U.S. Serial Nos. 88645145, 88645171, 88645165.
The Complainant Musika submits that he has unregistered trademark rights in his personal name “Aleks Musika”. Musika states that all rights in the pending MUSIKA and MUSIKA NEW YORK marks and in the “Aleks Musika” and “Musika” name and mark have been assigned to the Musika Brands.
5. Parties’ Contentions
A. Complainant
The Complainant Musika asserts that he is an internationally famous fashion designer, having developed a large following as a co-designer at Musika Frere, and enjoys a substantial presence on Instagram with approximately 170,000 followers. Musika maintains he has been profiled in major newspapers, including The New York Times and The Philadelphia Inquirer, and featured in the popular magazine Ocean Drive. Musika also states he has appeared in interviews on CNBC and FOX5NY, and on the video network Entrepreneur.
The Complainants maintain that the disputed domain names <aleksmusika.com>, <aleksmusika.net>, and <aleksmusika.org> are identical to the Complainants’ ALEX MUSIKA mark. The Complainants assert that the disputed domain names <musikanyc.com> and <musikany.com> are confusingly similar to the ALEX MUSIKA mark, and that the inclusion of “nyc” and “ny” suggests a connection to Musika as a New York based fashion designer. The Complainants further observe that that the presence of Top-Level Domains (“TLDs”) such as “.com”, “.net”, and “.org” generally are disregarded when assessing identity or confusing similarity.
The Complainants insist that the Respondent has no rights or legitimate interests in respect of the disputed domain names. According to the Complainants, an Internet search found no websites associated with the disputed domain names, other than the parked pages provided by the Registrar with no substantive content. The Complainants thus assert that the Respondent has neither used nor made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Complainants represent that the Respondent has not been licensed or otherwise authorized to use the Complainants’ mark, and that the Respondent is not commonly known by the disputed domain names.
The Complainants submit that the Respondent registered and is using the disputed domain names in bad faith. The Complainants note that the parked pages provided by the Registrar suggest the disputed domain names may be for sale and encourage inquiries from interested parties. The Complainants opine that “Aleks Musika” is a highly distinctive name with a unique spelling, and that the only reason for the Respondent to register the Complainants Musika’s name in a domain name would be for cybersquatting. The Complainants allege that the Respondent has registered multiple domain names in order to prevent the Complainants from registering domain names reflecting the Complainants’ marks, and have engaged in a bad faith pattern of conduct. The Complainants also maintain that the Respondent’s use of a privacy or proxy service when registering the disputed domain names was undertaken in bad faith.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of the abusive registration of domain names, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id., at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel initially addresses the question of whether the Complainant Aleks Musika has established unregistered/common law trademark or service mark rights in his personal name. As noted by the UDRP panel in Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540, in cases involving entertainers, authors, professional athletes, and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another’s goods or services, or for direct commercial purposes in the marketing of the complainants’ own goods or services. See, e.g., Freddy Adu v. Frank Fushille, WIPO Case No. D2004-0682; David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO Case No. D2000-1459; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210.
A personal name used in trade or commerce may give rise to common law or unregistered rights in the personal name, provided that the name is used in commerce as a distinctive identifier of the complainant’s goods or services. See WIPO Overview 3.0, section 1.5.2, and cases cited therein. Merely having a “famous” name, however, is not sufficient to establish common law trademark or service mark rights. See Margaret C. Whitman v. Domains For Sale, WIPO Case No. D2008-1534. Accordingly, to be protected as an unregistered/common law mark a famous personal name ordinarily must be shown to have acquired secondary meaning. See, e.g., E C Eden Group LLC v. Registration Private, Domains by Proxy, LLC / Alon Shemesh, XoRi Tech, WIPO Case No. D2018-2934.
On the basis of the evidence presented by the Complainants in this case as outlined above, the Panel concludes that Complainant Musika’s personal name “Aleks Musika” and “Musika” have come to be recognized by a relevant segment of the consuming public as a distinctive identifier of Complainant Musika’s goods and services. Accordingly, the Panel finds that Complainant Musika has established UDRP-relevant rights in ALEKS MUSIKA and MUSIKA, and holds that the Complainants have standing to assert such trademark rights in this proceeding. The Panel further considers the Respondent’s targeting of the Complainants further indication that the Complainants’ mark has achieved significance as a source identifier. See WIPO Overview 3.0, section 1.3 (stating: “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.”), and relevant decisions cited therein.
The Panel finds that the disputed domain names <aleksmusika.com>, <aleksmusika.net>, and <aleksmusika.org> are identical to the Complainants’ ALEKS MUSIKA mark, in which the Complainants have established rights. The Panel further finds that the disputed domain names <musikanyc.com> and <musikany.com> are confusingly similar to the Complainants’ ALEKS MUSIKA mark. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this case, the Complainants’ ALEKS MUSIKA mark is recognizable in the disputed domain names.2 When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 TLDs generally are disregarded when evaluating the identity or confusing similarity of the Complainants’ mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The Respondent, by all appearances is now a competitor of the Complainants, and it is undisputed that the Respondent has not been authorized to use the Complainants’ ALEKS MUSIKA mark. The Respondent notwithstanding has registered multiple domain names identical or confusingly similar to the Complainants’ mark, and the Respondent has redirected the previously registered <musikafrere.com> domain name to the Respondent’s FrereNY website.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes from the record that the Respondent was aware of the Complainants and had the Complainants’ ALEKS MUSIKA (or MUSIKA) mark in mind when registering the disputed domain names. The Respondent, faced with direct competition from the Complainants, most likely registered the disputed domain names with the intention of disrupting the Complainants’ business. As noted earlier, the Respondent already has redirected the <musikafrere.com> domain name to the FrereNY website. The Respondent could just as easily redirect the disputed domain names to the Respondent’s FrereNY website in order to create further Internet user confusion. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008‑0774.
In light of the foregoing, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain names for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainants’ name and mark, and there is no indication that the Respondent has been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants (the owner of the trademark or service mark) or to a competitor of that Complainants, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes from the record that the Respondent registered and has used the disputed domain names primarily for the purpose of disrupting the business of the Complainants. The Panel further considers it is likely that the Respondent has engaged in the bad faith use of a proxy or privacy protection service in an attempt to evade enforcement of legitimate third-party rights or obstruct proceedings commenced under the Policy; at the very least, the Respondent has not appeared in this proceeding to answer the claims against it. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
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 <aleksmusika.com>, <aleksmusika.net>, <aleksmusika.org>, <musikanyc.com>, and <musikany.com> be transferred to the Complainants Aleks Musika and Musika Brands, LLC.
William R. Towns
Sole Panelist
Date: December 30, 2019
1 See WIPO Overview 3.0, section 1.7.
2 See WIPO Overview 3.0, section 1.8 and cases cited therein.
3 Id. Hence the inclusion of the terms “ny” and “nyc”, obvious geographic references to New York in this context, would not prevent a finding of confusing similarity.
4 See WIPO Overview 3.0 , section 1.11 . The meaning of a particular gTLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, sections 1.11.2, 2.14, and cases cited therein. See also WIPO Overview 3.0, section 1.8.