WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

inMusic Brands, Inc. v. PrivacyGuardian.org / Domain Protection, LLC, L Katz

Case No. D2019-3112

1. The Parties

Complainant is inMusic Brands, Inc., United States of America (“United States”), represented by Hinckley, Allen & Snyder, LLP, United States.

Respondent is PrivacyGuardian.org,United States / Domain Protection, LLC, L Katz, United States.

2. The Domain Name and Registrar

The disputed domain name <ranedj.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2019. On December 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 9, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 10, 2020.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on January 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on February 5, 2020.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on February 14, 2020. 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

Complainant, incorporated in the United States, is the owner of a group of brands operating in the music, professional sound, and consumer electronics industries. In 2016, Complainant acquired Rane Corporation, a manufacturer of equipment for DJ and the professional sound markets. Rane Corporation was founded in 1981. Complainant states that the RANE brand today generates over USD 10 million in annual sales.

Complainant is the proprietor of a large portfolio registrations for the RANE mark in numerous countries, including United States Registration no. 1584386 for RANE (stylized mark), registered on February 27, 1990 in class 9, claiming a date of first use of February 5, 1982, and United States Registration No. 5203444 for RANE (word mark), registered on May 16, 2017 in class 9, claiming a date of first use of February 5, 1982.

Complainant operates websites at several domain names, including <rane.com>, <dj.rane.com>, and <ranecommercial.com>.

The disputed domain name was registered by Respondent on November 2, 2005 using a proxy service. It resolves to a website displaying sponsored pay-per-click (PPC) links related to audio recording and DJ equipment and services.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant alleges that the RANE mark and entity, which it acquired in 2016, has acquired considerable goodwill in the DJ and professional sound market, especially among those DJs seeking “turntablism”, or the sounds created when vinyl records are scratched. The RANE marks have been duly registered around the world, and have been extensively promoted by Complainant and its predecessor in right, including by sponsoring the annual DMC World DJ Championship and through advertising. The disputed domain name is confusingly similar to Complainant’s mark because it consists solely of Complainant’s mark followed by the descriptive term “dj” and the generic Top-Level Domain (“gTLD”) “.com.” The term “dj” is directly linked with Complainant’s product offerings. Further, the disputed domain name is virtually identical to Complainant’s domain <dj.rane.com>. Accordingly, the disputed domain name is confusingly similar to Complainant’s trademark.

Under the second element, Respondent registered the domain name decades after Complainant’s RANE mark was first used in commerce. To Complainant’s knowledge, Respondent is not authorized to use the RANE mark for any purpose and does not use the disputed domain name in connection with any bona fide offering of goods or services. The disputed domain name resolves to a website featuring pay-per-click links, some of them resolving to websites of Complainant’s competitors. Such conduct misleads consumers for commercial gain, and therefore is not a bone fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. There is no legitimate basis for Respondent’s registration or use of the disputed domain name.

Under the third element, Respondent knowingly registered the disputed domain name because it is confusingly similar to the well-known RANE mark, seeking to trade on the RANE reputation and to capitalize on consumer recognition of the RANE mark, which is apparent from the hosting of links to Complainant’s competitors. The RANE mark is unique and arbitrary such that it is unlikely that Respondent devised the disputed domain name for any legitimate purpose. Respondent is using the domain name containing Complainant’s RANE mark to intentionally attract for commercial gain internet users to its website by creating a likelihood of confusion with Complainant’s marks as the source of the website or of a product or service on that website. Respondent uses Complainant’s RANE mark to redirect users to “Related links” for which it presumably receives click-through fees. The structure of Respondent’s website is such that the user, when clicking on a link, is taken to a further page containing three sponsored links, including those to websites of entities including Complainant’s competitors such as Hercules.com. Such use diverts Internet users, including actual and potential customers of Complainant, away from Complainant’s websites to Respondent’s website for wrongful commercial benefit. Finally, Respondent is using a privacy shield. Such circumstances indicate that Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed 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 disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the RANE mark through registrations in jurisdictions around the world, including the United States, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s RANE mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with the RANE mark, since the disputed domain name contains the mark in its entirety. The addition of the dictionary term “dj” in the disputed domain name does not prevent a finding of confusing similarity as Complainant’s Mark is clearly recognizable within the disputed domain name.

Section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

It is the well-established view of UDRP panels that the addition of the gTLD to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable 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; or

(ii) Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The circumstances stated in the Complaint and evidence in support set forth in the Annexes indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, adding the dictionary term “dj” to Complainant’s RANE mark, cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the RANE mark with permission of Complainant. Rather, the record supports Complainant’s claim that such permission does not exist. Complainant’s rights in the RANE mark predate the registration of the disputed domain name by more than two decades. The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to timely file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the similarity between Complainant’s distinctive RANE mark and the disputed domain name, the fact that Respondent offers paid links through its website, and that said links are connected to Complainant’s competitors, there can be no finding or rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

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 the disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed 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 disputed domain name; or

(ii) that Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online 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 bad faith under Policy paragraph 4(b)(iv). The record in the case demonstrates that Respondent chose the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the RANE mark significantly predate the registration of the disputed domain name. The RANE mark is distinctive in respect of the services for which it is registered and used. The disputed domain dame contains Complainant’s RANE mark in its entirety, with the addition of a dictionary term that strengthens the association with Complainant. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.

Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use in the pay-per-click website and the fact that the links lead to the websites of Complainant’s competitors.

Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use, and the circumstances do not make any such use plausible.

In the view of the Panel, such circumstances, taken together, clearly indicate that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online 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. Respondent thereafter sought commercial gain from website visitors that clicked on sponsored links. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.

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 name <ranedj.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: February 28, 2020