WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Melanie Martinez v. Michael Casasnovas
Case No. D2017-0905
1. The Parties
Complainant is Melanie Martinez of New York, New York, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is Michael Casasnovas of Henrico, Virginia, United States.
2. The Domain Names and Registrar
The disputed domain names <melaniemartinez.biz>, <melaniemartinez.com> and <melaniemartinez.info> 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 May 4, 2017. On May 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5 and 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2017. Respondent sent emails to the Center on May 9 and 11, 2017. Respondent did not submit any formal Response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on May 30, 2017.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 13, 2017. 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 asserts unregistered or common law rights in the trademarks and service marks MELANIE MARTINEZ and MELANIE MARTINEZ & design (shown below):
Complainant, Melanie Martinez, is a music composer and performer, a video artist and performer, and a consumer product developer and promoter. Over a period of approximately five years she has garnered substantial fame in the United States and other countries based on her compositions and performance art. Indicia of the fame of Complainant, Melanie Martinez, include:
1. Over 828 million cumulative views of her videos on Complainant’s YouTube channel;
2. Over 100 million views of Complainant’s performance of her song “Dollhouse” on YouTube;
3. Several additional YouTube videos created and performed by Complainant with over 50 million views, including “Pity Party”, “Pacify Her” and “Cry Baby”;
4. Certification of her album “Cry Baby” as Platinum (i.e., 1 million units) and her “Dollhouse” single as Platinum by the Recording Industry Association of America, along with three additional singles with Gold certification (i.e., 500,000 units);
5. A series of sold-out tour performances in 2015 and 2016 in the United States and other countries.
Complainant operates a commercial website at <melaniemartinezmusic.com> at which a variety of consumer products are offered and sold, including apparel and accessories, and perfume. The website is headed with a MELANIE MARTINEZ banner.
Although Complainant performed publicly (including on television) before that date, Complainant’s wide public recognition was initiated through a series of performances on the television show “The Voice” beginning in October 2012. News reports dated October 9, 2012 show Complainant advancing to the “round of 32”. A news report dated November 26 discusses Complainant’s performance of that evening, and a news report dated December 5 indicates that Complainant was eliminated from competition on December 4, 2012. She did not progress to the “round of 4”. Complainant’s coach during the competition was Adam Levine. Subsequent press discussions of Complainant’s career routinely refer to her launch as a performing artist through appearances on The Voice.
According to the Registrar’s verification, Respondent is registrant of the disputed domain names. According to that verification, the record of registration for the disputed domain name <melaniemartinez.biz> was created on February 15, 2013; the record of registration for the disputed domain name <melaniemartinez.com> was created on April 7, 2003, and; the record of registration for the disputed domain name <melaniemartinez.info> was created on February 15, 2013. The Registrar has indicated that the disputed domain name <melaniemartinez.com> has been registered to Respondent since at least December 6, 2012. This latter date is consistent with a Domain Tools Whois History furnished by Complainant which appears to show Respondent as the registrant of the disputed domain name <melaniemartinez.com> as of December 6, 2012.
Respondent offered in a September 9, 2016 email to a recording company service to sell the disputed domain names. He stated “I knew Melanie was going to be a star when she was on the Voice & and secured the domains. I see she is now on tour and will be in Richmond VA. my hometown. I will be in attendance. I would very much like to sell these domains for a reasonable sum.” Respondent had previously offered to sell the disputed domain names as a package for USD 50,000 (in 2014), and USD 25,000 (in 2015). It appears that Respondent’s first offer in 2014 to sell the disputed domain names may have been initiated by an inquiry from a recording industry service, but subsequent offers were initiated by Respondent. In response to the Complaint in this proceeding, Respondent by email dated May 9, 2017 stated to the Center “I am willing to sell the domains in question for $30,000 US”. By email dated May 11, 2017 to the Center, Respondent stated “It should be noted that I am willing to sell the domains in question. I would propose that we arrive a settlement [sic] that will prove far less costly to all parties involved.”
The disputed domain name <melaniemartinez.biz> has not been associated with an active website. The disputed domain name <melaniemartinez.com> is associated with a search platform website with a “melaniemartinez.com” banner, and stating in the “about us” section:
“melaniemartinez.com is powered by SmartName to bring you targeted search terms designed specifically to enhance the users overall online search experience. melaniemartinez.com displays the top advertisers for and more. We’ve taken the confusion out of searching online, allowing you to find what you want in a timely manner.”
The disputed domain name <melaniemartinez.info> is associated with a GoDaddy.com sponsored advertisement parking page.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant contends that MELANIE MARTINEZ has become a distinctive identifier associated with Complainant and her music services and products, and that she has established sufficient common-law rights in the MELANIE MARTINEZ name and trademarks to maintain a proceeding under the Policy. (The Panel hereafter refers to the marks collectively as the MELANIE MARTINEZ trademark unless otherwise expressly indicated.)
Complainant contends that Respondent registered the disputed domain names on or around February 13, 2013, after seeing Complainant perform on the highly rated televised singing competition “The Voice”.
Complainant argues that the disputed domain names are identical or confusingly similar to Complainant’s trademark within the meaning of the Policy.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Complainant’s adoption and increasingly widespread use of her trademark precedes Respondent’s registration of the disputed domain names; (2) Complainant has not authorized Respondent to use the disputed domain names, and is not in any way affiliated with Respondent; (3) the disputed domain names are not legitimate names of Respondent, and Respondent has not been known by MELANIE MARTINEZ; (4) anticipatory registration done in bad faith does not establish a legitimate interest; (5) even if Respondent conceivably could be using the disputed domain names for websites that are noncommercial in nature, the use of three domain names incorporating Complainant’s mark would not be legitimate as it would tend to mislead Internet users, and; (6) Complainant is not making legitimate noncommercial or fair use of the disputed domain names.
Complainant argues that Respondent registered and is using the disputed domain names in bad faith because: (1) the disputed domain names completely incorporate and consist solely of Complainant’s exact MELANIE MARTINEZ trademark and were registered without authorization; (2) Internet users will be confused by the identical disputed domain names on the basis of initial interest confusion; (3) from Respondent’s own statements it is evident that Respondent was fully aware of Complainant’s rights in the MELANIE MARTINEZ trademark when he registered the disputed domain names and did so only for the purpose of selling them later; (4) previous panels established under the Policy have found bad faith based on advance notice of a product release, name change or other significant event involving the complainant, citing Forest Laboratories, Inc. v. Mcse Braindumps / Leif Nissen, WIPO Case D2007-1494, and; (5) Respondent has admitted that he registered the disputed domain names with intent to sell them because he believed that Complainant would be a star.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in his record of registration. Respondent subsequently communicated with the Center which indicates successful transmission and receipt. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and Respondent received adequate notification of this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(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) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant bases her Complaint on the establishment of unregistered or common law trademark and service mark rights in the word MELANIE MARTINEZ, and in a distinctive MELANIE MARTINEZ word and design (see Factual Background, supra).
Complainant has provided substantial evidence of the use of the word, and word and design, trademark and service mark MELANIE MARTINEZ in the United States (and other countries). Such usage in connection with singing performances commenced at least as early as October 2012 on the televised competition, The Voice, which since 2012 is commonly watched by more than 10 million viewers in the United States.2 Since late 2012, Complainant has written and performed a substantial number of songs and videos which have been viewed by a very large number of Internet users (e.g., more than 800 million YouTube views), she has recorded a certified platinum album, a platinum song, and a gold album and songs. Complainant advertises and sells various products, including clothing and accessories, on a commercial website.
Respondent has not challenged Complainant’s assertion of unregistered or common law rights in the MELANIE MARTINEZ trademark. While there might be potential grounds for a challenge, e.g., based on use of what may be a relatively common name as a trademark, the Panel does not consider such grounds conclusively persuasive on their face.
Complainant has also alleged rights in a MELANIE MARTINEZ word and design combination, perhaps anticipating potential difficulty with Complainant’s name standing alone. The Panel need not address the question of rights in the word and design combination.
The Panel considers that Complainant has provided sufficient evidence of use in commerce of the name MELANIE MARTINEZ and of Internet user association of that term with Complainant such as to give Complainant rights in the unregistered trademark MELANIE MARTINEZ.
The disputed domain names are identical to Complainant’s trademark within the meaning of the Policy.
The Panel determines that Complainant has established rights in the trademark MELANIE MARTINEZ and that the disputed domain names are identical to that trademark.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in Section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint other than to propose to the Center a sale of the disputed domain names, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain names in connection with (1) a search webpage, (2) a parking page with sponsored advertisements, and (3) no association, does not establish rights or legitimate interests in the disputed domain names. Respondent’s use of the disputed domain names does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), 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 a domain name in bad faith”. These include: “(i) circumstances indicating that [the respondent has] registered or [the respondent 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 respondent’s] documented out-of-pocket costs directly related to the domain name; (ii) [the respondent 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 respondent has] engaged in a pattern of such conduct;” or “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Respondent has stated that he registered the disputed domain names after viewing Complainant on a widely-watched televised singing contest and anticipating her future success. He offered to sell the disputed domain names to a recording company service and to Complainant for an amount presumed to be substantially in excess of his out-of-pocket expenses in connection with the disputed domain names. Respondent’s acknowledgment that he registered the disputed domain names to profit from Complainant’s success and name recognition evidences that he registered and is using the disputed domain names in bad faith.
Additionally, the Panel notes that Respondent has also prevented Complainant from registering the disputed domain names identical to her trademark. Since Respondent registered three disputed domain names incorporating Complainant’s trademark this may be viewed as a pattern of conduct. Complainant has also used at least one of the disputed domain names to attract Internet users to a search website, presumably for commercial gain.
The remaining question is whether at the time Respondent registered the disputed domain names Complainant had established rights in her trademark. Complainant has argued that Respondent registered the disputed domain names on February 15, 2013 and the Registrar’s verification supports that date for two of the disputed domain names. However, it appears from the Registrar’s verification and from a Domain Tools Whois History furnished by Complainant that the disputed domain name <melaniemartinez.com> was registered on or about December 6, 2012.
The December 6, 2012 date closely follows the widely viewed and reported episode of The Voice on December 4, 2012 on which Complainant was eliminated from the competition. In light of the substantial public attention focused on Complainant and her singing performances on or before December 4, 2012, the Panel concludes that Complainant established unregistered or common law rights as of that date and had acquired sufficient rights in her trademark prior to December 6, 2012, when Respondent registered <melaniemartinez.com>.2 It follows that the other two disputed domain names also were registered by Respondent after the date on which Complainant acquired rights in the MELANIE MARTINEZ trademark. By Respondent’s own admission he recognized the trademark value in Complainant’s name and by registering the disputed domain names he sought to unfairly capitalize on Complainant’s mark.
The Panel determines that Complainant has established that Respondent registered and is using the disputed domain names in bad faith within the meaning 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 names, <melaniemartinez.biz>, <melaniemartinez.com> and melaniemartinez.info>, be transferred to Complainant.
Frederick M. Abbott
Date: June 23, 2017
1 See, e.g., Mitchell O’Connell, TV Ratings: ‘The Voice’ Tops Monday With Most-Watched Episode Since 2012, The Hollywood Reporter, Feb. 25, 2014 “www.hollywoodreporter.com/live-feed/tv-ratings-voice-tops-monday-683248”, Panel visit of June 22, 2017.
2 As of December 4, 2012, there was sufficient public recognition of MELANIE MARTINEZ to establish rights in that term for Complainant.