WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cameron Thomaz p/k/a Wiz Khalifa and Wiz Khalifa Trademark, LLC v. Moniker Privacy Services / Kyle Lynch
Case No. D2014-1525
1. The Parties
Complainants are Cameron Thomaz p/k/a1 Wiz Khalifa and Wiz Khalifa Trademark, LLC of New York, New York, United States of America (“USA”), represented by Pryor Cashman, LLP, New York, New York, USA.
Respondent is Moniker Privacy Services of Fort Lauderdale, Florida, USA / Kyle Lynch of Lewes, Delaware, USA.
2. The Domain Name and Registrar
The disputed domain name <taylorgang.net> (the “Disputed Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2014, identifying the Registrant as Moniker Privacy Services. On September 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 2014, 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; specifically, the Registrar identified the Registrant as Kyle Lynch of Lewes, Delaware, USA. The Center sent an email communication to Complainant on September 15, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting (but not requiring) Complainant to submit an amendment to the Complaint. Complainant did not submit an amendment to the Complaint. Accordingly, the Center notified the parties on September 23, 2014 that the Center acknowledged that Complainant had confirmed its choice not to accept the invitation to file an amendment to the Complaint (or amended Complaint) in light of the Registrar-provided registrant information for the disputed domain name. As such, the Center informed Complainant that it would proceed to formal Complaint notification on this basis, noting that any resultant issues of proper Respondent identity would in any case need to be considered at the discretion of the Panel in due course. In that light, and for avoidance of doubt regarding the Center’s notification obligations under the Policy and Rules, the Center stated that it would nevertheless provide a copy of the Complaint both to the Respondent as named in the Complaint, and to the registrant contact details subsequently disclosed by the Registrar.2
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 September 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2014. On September 23, 2014 the Center received an informal communication, presumably from Respondent. Respondent did not submit any formal response. Accordingly, the Center notified the commencement of panel appointment process on October 15, 2014.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 21, 2014. 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
Complainants state, and provide a declaration in support thereof, that Wiz Khalifa is “an internationally renowned recording artist and performer” whose “albums and songs have peaked on numerous music charts and have earned many awards, including, but not limited to, the 2012 Top New Artist Billboard Music Award,” and that Wiz Khalifa was nominated “in several categories” for Grammy Awards in 2012, 2013 and 2014.
Complainants further state that Wiz Khalifa founded “Taylor Gang Ent” in 2008 with “Academy Award winner Juicy J, and has since signed several notable hip hop artists, such as Chevy Woods, Berner, Courtney Noelle and Ty Dolla $ign”.
Complainants further state that “[t]hrough his company Wiz Khalifa Trademark, LLC, Wiz Khalifa owns” two U.S. trademark applications for TAYLOR GANG, that Complainants have used the TAYLOR GANG trademark since at least December 2008, that “Complainant’s maintain an official website accessible via <taylorgangent.com>” and that “[t]hrough his dominance in the music industry, including sold-out concerts, five critically-acclaimed studio albums, Platinum-selling singles, thirty-four music videos, international public and media appearances, and the solicited and unsolicited publicity Wiz Khalifa has received, the TAYLOR GANG mark has become famous and an extremely valuable commercial asset.”
Complainants further state, and provide evidence in support thereof, that the website using the Disputed Domain Name “is dedicated to Wiz Khalifa: the site features information about Wiz Khalifa, his tour dates, artists signed to his label, his albums, the lyrics to his songs, links to a ‘Taylor Gang blog’ about Wiz Khalifa, his music videos, and Wiz Khalifa’s songs and albums are available for illegal download”.
The Disputed Domain Name was created on February 25, 2010.
5. Parties’ Contentions
Complainants contend, in relevant part, as follows:
- “There is no question that the TAYLOR GANG mark serves as a strong source identifier of Complainants’ goods and services, as evidenced by Wiz Khalifa’s success on the music charts, his substantial sales of music records and clothing, and the unsolicited media attention that Complainants receive.” Complainants further contend that the Disputed Domain Name is identical or confusingly similar to the TAYLOR GANG mark because it “consists only of Complainants’ trademark”.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has never been an authorized representative or agent of Complainant”; “Respondent engages in an obvious attempt to trade upon the goodwill associated with Complainants and the TAYLOR GANG mark”; and “Respondent uses the Disputed Domain Name to mislead Internet users searching for Taylor Gang news and clothing to its unauthorized, commercial website for the Respondent’s financial benefit.”
- Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “Respondent intentionally and fraudulently deceives <taylorgang.net> visitors into believing that [“www.taylorgang.net”] is Complainants’ official TAYLOR GANG website by falsely claiming to be Wiz Khalifa’s manager” (a contention supported by a declaration and relevant evidence); “Respondent is using the Disputed Domain Name to profit from the sale of clothing bearing the TAYLOR GANG mark and accessible for purchase from the ‘online store’ link on the website”; “Respondent offers full album music downloads from several artists, including Complainant Wiz Khalifa, on the [“www.taylorgang.net”] website, and upon information and belief, this offering of full album downloads is illegal and constitutes copyright infringement”; and “Respondent is also using the [“www.taylorgang.net”] domain for commercial purposes by providing an ‘online shop’ link to the [“www.taylorgang.spreadshirt.com”] website in order to sell clothing bearing the TAYLOR GANG mark that is not manufactured, licensed or approved by Complainants.”
Respondent did not reply to Complainants’ contentions. However, on September 23, 2014, the Center received an e-mail from a sender purportedly acting on behalf of Respondent stating, in its entirety: “Fan site. Content no different them [sic] khalifafans.com or others. Don’t post anything copyrighted and all links go to original content”.
6. Discussion and Findings
Pursuant to the Policy, Complainants are required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Where, as here, a complainant fails to provide evidence of an appropriate trademark registration, it must successfully assert common law or unregistered trademark rights. To do so, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”), paragraph 1.7 says:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition…. [A] conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required…. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence.”
Here, Complainants’ allegations of trademark rights in the TAYLOR GANG mark are supported by a declaration and reference to specific recognition. Accordingly, the Panel accepts that, for purposes of the Policy, Complainants have acquired rights in the TAYLOR GANG mark.
As to whether the Disputed Domain Name is identical or confusingly similar to the TAYLOR GANG mark, the relevant comparison to be made here is with the second-level portion of the domain name only (i.e., “taylorgang”), as it is well-established that the top-level domain name “.net” may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Here, because the Disputed Domain Name contains the TAYLOR GANG mark – and only the TAYLOR GANG mark – in its entirety, “it is self-evident that the disputed domain name is identical or confusingly similar to the Complainant’s… trademark.” SurveyMonkey Inc. v. Guanyong sun, WIPO Case No. DCO2014-0012. See also, e.g., Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Advanced Micro Devices, Inc. v. Piere Macena, WIPO Case No. D2005-0652; and RapidShare AG, Christian Schmid v. Private Registrations Aktien Gesellschaft Domain Admin, WIPO Case No. D2010-0591.
Accordingly, the Panel finds that Complainants have proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainants have argued that, inter alia, “Respondent has never been an authorized representative or agent of Complainant”; “Respondent engages in an obvious attempt to trade upon the goodwill associated with Complainants and the TAYLOR GANG mark”; and “Respondent uses the Disputed Domain Name to mislead Internet users searching for Taylor Gang news and clothing to its unauthorized, commercial website for the Respondent's financial benefit.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, and in light of the discussion that follows, the Panel is satisfied that Complainants have proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, it is apparent by viewing the website associated with the Disputed Domain Name that Internet users are likely to be confused because the website appears to be affiliated with or endorsed by Complainants. The website is much more than a “fan site,” as Respondent apparently contends, given its commercial offerings. In any event a site considered by the registrant to be a fan site is nevertheless registered and used in bad faith where it is likely to cause confusion for commercial gain, where it displays images associated with the complainant and where it has no disclaimer as to source or sponsorship. See Glasgow 2014 Limited v. Vipin Kumar, Yajas Web Solutions, WIPO Case No. D2013-1093.
Further, by apparently offering illegal downloads of Complainants’ music, Respondent also has acted in bad faith. As the panel wrote in RapidShare AG, Christian Schmid v. ivano yura / PrivacyProtect.org, WIPO Case No. D2010-0569: “The use of a complainant’s mark to generate increased Internet traffic to a website (with which that complainant has no connection) which is used to facilitate unlawful activity is, in the Panel’s view, sufficient to constitute bad faith registration and use, even if the circumstances might not fall exactly within any of the examples of bad faith registration and use which are provided at paragraph 4(b) of the Policy.”
Accordingly, the Panel finds that Complainants have proven the third element of the Policy.
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 <taylorgang.net> be transferred to Complainant Wiz Khalifa Trademark, LLC (the owner of the TAYLOR GANG mark).
Douglas M. Isenberg
Date: November 4, 2014
1 The use of “p/k/a” as used in the Complaint apparently is shorthand for the phrase “professionally known as”.
2 As indicated in the title of this decision, the Panel, in its discretion, considers both Moniker Privacy Services and the underlying registrant confirmed by the Registrar, Kyle Lynch, as Respondents in this proceeding. “Respondent” will be used throughout the decision to refer to either or both, as the case may be.