WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fragrance Dynamics Limited and Pancho Music, Inc. v. Nishal Gandesha, Milestar Ltd
Case No. D2016-0966
1. The Parties
The Complainants are Fragrance Dynamics Limited of Hatfield, Hertfordshire, United Kingdom of Great Britain and Northern Ireland ("First Complainant") and Pancho Music, Inc. of Vancouver, Canada ("Second Complainant"), represented by CMS Cameron McKenna, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Nishal Gandesha, Milestar Ltd of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <michaelbublefragrance.com> and <michaelbublefragrances.com> (the "Domain Names") are registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 13, 2016. On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 15, 2016.
The Center appointed Nicholas Smith as the sole panelist in this matter on June 23, 2016. 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 Second Complainant is a Canadian company incorporated and wholly owned by the singer Michael Bublé to hold the intellectual property in his work and image. Michael Bublé is a professional singer and performer with a career that has spanned over 15 years, with sales of over 30 million albums. The First Complainant is a company registered in the United Kingdom of Great Britain and Northern Ireland that specializes in producing and selling fragrance and personal care products under the names of celebrities. On October 5, 2015 the First and Second Complainants entered into a license agreement under which the Second Complainant granted the First Complainant a license to manufacture, market, advertise, promote, distribute and sell fragrance and personal care products under the name Michael Bublé.
The Second Complainant holds numerous trade mark registrations for the name "Michael Bublé" (the "BUBLE Mark") since at least 2010. It has registered the BUBLE Mark in the United States of America ("United States") since November 2010 for audio and video recordings featuring music and artistic performances and registered the BUBLE Mark in the European Community since February 2011 for similar goods and services. In late 2015 the Second Complainant filed a number of applications to register the BUBLE Mark for "perfumes and fragrances, deodorants and body sprays, preparations for the skin, hair and face, toiletries for personal use, preparations for the bath and shower, cosmetic preparations" in various jurisdictions including the European Community, Australia, Canada and the United States. Each of these applications has been licenced to the First Complainant. The application made in the European Community has been granted, while the remaining applications are pending.
The Domain Names <michaelbublefragrance.com> and <michaelbublefragrances.com> were created on February 26, 2014. Each of them currently resolves to a site (the "Respondent's Website") that provides the contact details of the Respondent and states "Website under Construction".
5. Parties' Contentions
The Complainants make the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Second Complainant's BUBLE Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Second Complainant is the owner of the BUBLE Mark. It owns trade mark registrations for the BUBLE Mark in various jurisdictions around the world and, through the successful music career of Michael Bublé, has considerable reputation in the BUBLE Mark.
The Domain Names contain the BUBLE Mark plus the descriptive terms "fragrance" or "fragrances". The use of a registered mark along with a dictionary word does not avoid the likelihood of confusion. The Domain Names are confusingly similar to the BUBLE Mark.
The Respondent has no rights or legitimate interests in the Domain Names. The Respondent has no trade mark rights or licence to use the BUBLE Mark, nor is it commonly known by the name. The Respondent has not used or made preparations to use the Domain Names in connection with a bona fide offering of goods and services, nor is the Respondent making a legitimate noncommercial or fair use of the Domain Names. The First Complainant is the only entity that is entitled to market fragrances under the BUBLE Mark and it is therefore impossible for the Respondent to make any legitimate use of the Domain Names.
The Domain Names were registered and are being used in bad faith. The Respondent registered and used the Domain Names with full knowledge of the Second Complainant's BUBLE Mark and the fame of Michael Bublé. It is common practice for recording artists to produce and commercialize products such as fragrances. The Respondent is in the business of selling perfumes and other fragrances and registered the Domain Names in anticipation that the Second Complainant may wish to launch a fragrance brand under the BUBLE Mark. Furthermore, the Respondent has sought to sell the Domain Names for a sum well in excess of any out-of-pocket costs (GBP 2,000) that it had in registering the Domain Names. The Respondent has registered and used the Domain Names in bad faith by registering the Domain Names while being aware of the Complainants' rights and then using the Domain Names for financial gain.
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainants must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainants' trade or service mark.
The Complainants have rights in the BUBLE Mark, with the Second Complainant having registrations for the BUBLE Mark as a trade mark in the United States and various locations around the world and the First Complainant being the licensee of the BUBLE Mark in certain jurisdictions for goods relating to perfume and fragrances.
The Domain Names consist of the BUBLE Mark with the removal of the acute accent and the addition of either "fragrance" or "fragrances". The addition of the descriptive terms "fragrance" or "fragrances" does not operate to prevent a finding of confusing similarity between the BUBLE Mark and the Domain Names, especially in circumstances where the Complainants are in the process of developing a fragrance under the BUBLE Mark. Nor does the removal of the acute accent operate to distinguish the Domain Names from the BUBLE Mark. The Panel finds that the Domain Names are confusingly similar to the Complainants' BUBLE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no Trademark or service mark rights; or
(iii) you are making 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 is not affiliated with the Complainants in any way. It has not been authorized by the Complainants to register or use the Domain Names or to seek the registration of any domain name incorporating the BUBLE Mark or a mark similar to the BUBLE Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar names. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use, indeed there is no evidence of any use of the Domain Names at all or demonstrable preparations to use the Domain Names.
The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct demonstrates a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark 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) the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent's website or location or of a product or service on the Respondent's website or location.
The Panel finds that it is likely that the Respondent was aware of the Second Complainant and its reputation in the BUBLE Mark at the time the Domain Names were registered. The singer Michael Bublé has a significant global reputation in his name and mark and there is no logical explanation (and the Respondent has not chosen to provide one) for the registration of the Domain Names other than to make reference to the singer Michael Bublé. The registration of the Domain Names in awareness of the singer Michael Bublé and any rights he or any associated company (such as the Second Complainant) would have in the BUBLE Mark and the absence of rights or legitimate interests in the Domain Names amount to registration in bad faith.
The Panel finds that the Domain Names were registered and have been used to take advantage of the reputation of the Second Complainant in the event that it chose to launch a fragrance bearing the BUBLE Mark. Upon the decision being made by the Complainants to market a fragrance bearing the BUBLE Mark, the Respondent has sought to sell the Domain Names for a sum greater than its out-of-pocket costs for the registration of the Domain Names. As such the Panel finds that there are circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to the Complainants who are the owner of the trade mark for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) 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 Domain Names, <michaelbublefragrance.com> and <michaelbublefragrances.com> be transferred to the Second Complainant.
Date: June 27, 2016