WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Resident Advisor Limited v. DomainsByProxy, LLC / Emilio Guerra
Case No. D2016-1038
1. The Parties
The Complainant is Resident Advisor Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Lewis Silkin LLP, United Kingdom.
The Respondent is DomainsByProxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Emilio Guerra of Miami Beach, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <residentadvisor.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2016. On May 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 26, 2016, 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 the Complainant on May 28, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 13, 2016.
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 June 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2016.
The Center appointed John Swinson as the sole panelist in this matter on July 15, 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 Complainant is Resident Advisor Limited, a media company founded in 2001 which operates in the field of electronic and dance music. According to the Complaint, the Complainant is a record label, an event and artist promotor, an online magazine, and an online directory of electronic and dance music news and events around the world.
The Complainant owns European Union Trade Mark number 009321803 for RESIDENT ADVISOR, registered on March 6, 2011 (the “Trade Mark”). The Complainant owns a domain name which is identical to the Trade Mark, being <residentadvisor.net>, registered on September 28, 2001, from which it operates its primary website.
The Respondent is Emilio Guerra. The Respondent did not provide a Response, but according to the Complainant it is an individual based in the United States who works with and owns a number of businesses in the music, hospitality and events industry, and has done so for a number of years.
The Disputed Domain Name was registered on March 23, 2002.
The website at the Disputed Domain Name is currently a registrar parking page. On previous occasions, it has redirected to “www.iconhospitality.com”.
5. Parties’ Contentions
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant’s Trade Mark is identical to the Disputed Domain Name. There is no text in the Disputed Domain Name other than the Trade Mark. There is nothing inherent in the Disputed Domain Name which would offset the confusion.
Rights or Legitimate Interests
Before any notice of the dispute, there has been no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Respondent is not making a legitimate or fair use of the Disputed Domain Name, and intends that it be used for commercial gain to misleadingly divert consumers.
The Complainant has not licensed or otherwise authorized the Respondent to use the Trade Mark, nor has it taken any steps to affiliate its business with the Respondent. The Respondent has no rights or legitimate interests in the Disputed Domain Name.
Registered and Used in Bad Faith
The Respondent has been involved in the music business for some time and is affiliated with a number of different marketing and hospitality companies. The Respondent and its business activities often feature in music news, including on the Complainant’s website.
The Respondent owns a number of domain names which incorporate well-known current and historical music brands.
The Respondent was aware of the Complainant at the time it became the registrant of the Disputed Domain Name, and has promoted its activities on the Complainant’s website. The Respondent knows the value of the Trade Mark, as well as the value of “.com” domain names generally.
On previous occasions, the website at the Disputed Domain Name has redirected to “www.iconhospitality.com”. The Respondent part owns “Icon Hospitality”, the business promoted via the website at that domain name.
There is no use to which the Disputed Domain Name could be put by the Respondent that would not interfere with the rights of the Complainant. Rather, such use would have the effect of creating confusion amongst Internet users, and may result in a diversion of trade away from the Complainant to the commercial benefit of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
6.1. Procedural Issues
The Complainant submitted an unsolicited supplemental filing in these proceedings on July 29, 2016, the date the decision was due to be finalized by the Panel. The Rules and the Supplemental Rules do not expressly provide for additional filings. Generally, panels will only accept supplemental filings in “exceptional” circumstances.
The Complainant’s supplemental filing corrects an error in the Complaint relating to the possible date of acquisition of the Disputed Domain Name by the Respondent. This additional information does not cause the Panel to reach a different view than that which it reached on the basis of the original Complaint. The Panel declines to accept this supplemental filing.
Failure to File a Response
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is identical to the Trade Mark. It incorporates the Trade Mark in its entirety and no further words are added.
The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. There is currently a parking page associated with the Disputed Domain Name. The Complainant has provided evidence that, on separate previous occasions, the Disputed Domain Name has been advertised for sale, and has redirected to a website at “www.iconhospitality.com”. According to the Complainant, the Respondent is a part-owner of the business associated with this website. None of these are bona fide uses of the Disputed Domain Name under the Policy in the circumstances of the present case.
The Panel accepts the Complainant’s submission that the Complainant has not licensed, authorized or otherwise given the Respondent permission to use the Disputed Domain Name.
There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation this name.
The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. Again, and in the absence of any evidence from the Respondent to the contrary, the Panel is of the view that the Respondent’s current and previous uses of the Disputed Domain Name do not amount to a bona fide use for the purpose of the Policy.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant was founded in 2001. The Complainant has provided substantial common law evidence of use of the Trade Mark since 2001 which shows that it has become an internationally-known and respected media and music brand.
The Respondent appears to have been active in the entertainment industry for two decades, and in particular, owns (or has owned) a series of nightclubs and other music and entertainment businesses.
The Complainant has provided evidence that the Respondent has used the Complainant’s website from time to time to advertise and promote its activities. Given this and the industry in which the Parties both operate, the Panel finds it highly likely that the Respondent was aware of the Complainant at the time it registered the Disputed Domain Name, and did so for the purpose of trading off the Complainant’s reputation. The Complainant has provided examples of other domain names and business names owned by the Respondent which incorporate widely known past and present music brands, which provides further support to this finding.
As stated above, there is currently a parking page associated with the Disputed Domain Name. The Panel considers that in the circumstances, a finding of bad faith is appropriate. This is based on:
It being more likely than not that the Respondent was aware of the Complainant at the time it registered the Disputed Domain Name;
In the past, the Disputed Domain Name being redirected to a website which promoted a nightclub part-owned by the Respondent;
The Respondent’s use of a privacy service following receipt of a demand letter sent by the Complainant;
The Respondent passively holding the Disputed Domain Name; and
The Respondent’s failure to file a Response or make any attempt to rebut the claims made by the Complainant. See, e.g., Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131.
Based on the information before the Panel, and taking into consideration the Respondent’s past use of the Disputed Domain Name, the Panel concludes that the Respondent registered and the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s business. The Panel also considers that the Respondent registered the Disputed Domain Name for the purpose of selling the Disputed Domain Name to the Complainant at some future time.
In the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on 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, <residentadvisor.com> be transferred to the Complainant.
Date: August 1, 2016