WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tidal Music AS v. Registration Private, Domains By Proxy, LLC / Mario Yagobi
Case No. D2016-1395
1. The Parties
Complainant is Tidal Music AS of Oslo, Norway, represented by Pryor Cashman, LLP, United States of America (the "United States").
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Mario Yagobi of New York, New York, United States.
2. The Domain Names and Registrar
The disputed domain names, <tidallivemusic.com>, <tidallivestream.com>, and <tidalmusic.tv>, 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 July 8, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 9, 2016, 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 Complainant on July 15, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on the same date.
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 Respondent of the Complaint, and the proceedings commenced on July 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 9, 2016.
The Center appointed Timothy D. Casey as the sole panelist in this matter on August 22, 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
Complainant is a provider of music and video services, and editorial content, in more than 46 countries. Complainant owns trademark registrations for the mark TIDAL (the "Mark") in the United States, including United States Registration No. 4830066, registered on October 13, 2015, in classes 9, 35, 38 and 41, each related to software, retail store services, transmission, and provision of websites related to music, video and other content, as well as an International Registration for the Mark, registered on September 3, 2014, in classes 9, 35, 38, 41, 42 and 45, which has been extended into the European Union and elsewhere. Numerous third-party publications indicate that Complainant is known for providing music, video and other content under the Mark.
The disputed domain names were registered on April 3, 2015, using a privacy service that does not disclose Respondent's identity. The disputed domain names, <tidallivemusic.com>, <tidallivestream.com>, and <tidalmusic.tv>, resolve to websites providing information about different boxers, boxing, and the development of prize fighters. The websites direct Internet traffic to "www.boxing360.com". BOXING 360 is a registered trademark in class 35, personal management services for boxers, and class 25, clothing, that are owned by Boxing 360 Promotions LLC of New York, New York, United States. Respondent Mario Yagobi, is listed as President and CEO of Boxing 360 Promotions LLC.
5. Parties' Contentions
Complainant contends that Respondent registered the disputed domain names on April 3, 2015, without authorization of Complainant and that the disputed domain names incorporate the Mark entirely, are confusingly similar to the Mark, and are likely to cause confusion, mistake and/or deception among the consuming public. Complainant contends that the addition of generic Top-Level Domains (gTLDs) in the disputed domain names is irrelevant with regard to confusing similarity, and that the disputed domain names include terms that are descriptive of Complainant's goods and services and/or are otherwise related thereto, (i.e., "live music", "music" and "live stream"), which does nothing to reduce the confusing similarity between the Mark and the disputed domain names.
Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain names, and that Respondent registered and is using the disputed domain names in bad faith.
Complainant alleges that Respondent's use of the disputed domain names to promote "Boxing360" is not a good faith, bona fide offering of goods and services because such use merely serves to confuse and divert Internet users to an unaffiliated, third-party commercial website.
Complainant further alleges that Respondent's registration and use of the disputed domain names occurred in bad faith. Respondent's registrations of the disputed domain names postdate Complainant's use of the Mark and that because the disputed domain names incorporate terms that are descriptive of Complainant's goods and services, that Respondent must have had full knowledge of Complainant's Mark. Respondent's further use of the disputed domain names to then promote unaffiliated goods and services and to divert Internet traffic thereto also constitutes bad faith use.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
In view of Respondent's failure to reply to Complainant's contentions, the Panel will treat Complainant's contentions as true and undisputed unless it is unreasonable or unnecessary to do otherwise.
A. Identical or Confusingly Similar
Complainant owns a number of registrations for the Mark in the United States and elsewhere for goods and services associated with providing music, video and other content through software, retail stores, transmissions and websites. Accordingly, the Panel finds that Complainant has trademark rights in the Mark.
The disputed domain names incorporate the entirety of the Mark. While the disputed domain names incorporate other terms, such as "livemusic," "livestream" and "music," the additional terms do nothing to distinguish the disputed domain names from the Mark because the incorporated terms only serve to associate "tidal" with the goods and services offered by Complainant in association with the Mark. As such, the disputed domain names are confusingly similar to the Mark. The addition of different gTLDs also does not change the fact that the disputed domain names are otherwise confusingly similar to the Mark.
The Panel finds that the disputed domain names are confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the dispute domain names. Respondent does not appear to be commonly known by the disputed domain names. Complainant has not licensed the Mark to Respondent and has not otherwise authorized Respondent to use or register the disputed domain names. While Respondent's websites are linked to a legitimate business promoting boxing and providing management services to boxers, the disputed domain names do not appear to have any reasonable connection to Respondent's business or its websites. Accordingly, the Panel does not view Respondent's use of the disputed domain names to draw traffic to Respondent's websites and then divert that traffic to Respondent's business as creating any rights or legitimate interests in the disputed domain names.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Given the timing of Complainant's registration of the Mark and use of its goods and services, and the timing of Respondent's subsequent registration of the disputed domain names, using terms that are clearly associated with Complainant's goods and services, registration of the disputed domain names was more likely than not in bad faith. The disputed domain names will more likely than not attract users to Respondent's websites thinking the websites are somehow associated with Complainant's goods and services, only to result in the users being diverted to Respondent's boxing-related content and boxing-related website. Further, Respondent's failure to reply and contend otherwise, and the lack of any evidence of possible good faith use leaves the Panel with no choice but to find the disputed domain names were registered and used in bad faith.
The Panel concludes that the disputed domain names were registered and used in bad faith.
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, <tidallivemusic.com>, <tidallivestream.com>, and <tidalmusic.tv>, be transferred to Complainant.
Timothy D. Casey
Date: September 6, 2016