WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Estate of Alberto Aguilera Valadez v. Web Enterprises, Inc.
Case No. D2017-1236
1. The Parties
Complainant is The Estate of Alberto Aguilera Valadez of Miami, Florida, United States of America (“United States”), represented by Shutts & Bowen LLP, United States.
Respondent is Web Enterprises, Inc. of Walnut, California, United States, represented by Law Office of Olman Valverde, United States.
2. The Domain Name and Registrar
The disputed domain name <juangabriel.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2017. On June 27, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On June 29, 2017, the Registrar transmitted by e-mail 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 July 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2017. On July 28, 2017, Respondent requested an automatic four-day extension of the deadline to file a Response. The Center granted the requested extension and confirmed that the new deadline for Response was August 3, 2017. The Response was filed with the Center on August 3, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on August 9, 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 is the Estate of Alberto Aguilera Valadez, a deceased singer and recording artist who performed under the pseudonym Juan Gabriel beginning in the 1970s. According to the Complaint, Juan Gabriel recorded 30 albums that sold more than 100 million copies worldwide. The decedent registered numerous United States and Mexican trademarks for the name JUAN GABRIEL. The trademarks placed into the record of this case were registered on various dates between 2011 and 2014.
The Domain Name was registered on August 3, 1998. At various points in time, the Domain Name resolved to a website featuring Juan Gabriel’s songs and videos, and as of October 4, 2016, the website included links to “www.amazon.com”, where Juan Gabriel’s songs could be purchased.
According to Respondent, from 1998 to 2000 the Domain Name was used to host a fan tribute site related to Juan Gabriel, and from 2000 to 2002, the Domain Name was used to host a website “dedicated to Saint Juan Gabriel Perboyre”, described by Respondent as a priest who served as a missionary in China in the mid-19th Century.
Complainant alleges that it did not learn of Respondent’s use of the Domain Name until December 2016. On December 16, 2016, Complainant sent Respondent a cease-and-desist letter. Respondent did not respond to the letter, but the website content was changed from that described above to a blank website stating that it was “either experiencing problems, or is undergoing routine maintenance.” Complainant sent Respondent a follow-up cease-and-desist letter on April 27, 2017. Respondent did not answer that letter, and the Domain Name continues to resolve to an inactive website.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent raises a number of arguments in opposition to the Complaint, some of which are not worthy of comment and others of which will be addressed below in the context of the three elements under the Policy.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark JUAN GABRIEL through registration and use, and through evidence in the record that Complainant has succeeded to the decedent’s trademark rights by operation of law. The Domain Name is identical to the JUAN GABRIEL mark.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. With respect to Respondent’s contention that from 1998 to 2000 that it had a legitimate interest to use the Domain Name to erect a Juan Gabriel fan site, the Panel notes that the site appears to contain commercial hyperlinks for the purchase of Juan Gabriel concert tickets and Juan Gabriel recordings. According to the Response, Respondent “has never used the website to sell products or services of Respondent or any third party”. This assertion, coupled with the content of the 1998-2000 website, permits the reasonable inference that Respondent was selling goods or services related to Complainant. It is undisputed that Respondent was not authorized to do so. In the Panel’s view, Respondent had no right or legitimate interest in using the Domain Name to host a fan site with commercial activity on the site. The Panel finds that it is primarily a pretext for commercial activity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 2.7.
Respondent also argues that the Complaint should fail because Complainant had no registered trademark rights until 2011, long after Respondent registered the Domain Name. This argument is unavailing. It is a commonplace that unregistered, common law trademark rights are recognized under the Policy as a legitimate basis for a complaint to proceed. In this case, Respondent’s argument about unregistered trademark rights is particularly dubious, since Respondent’s fan site is tantamount to an admission that Respondent was well aware of the JUAN GABRIEL mark at the time the Domain Name was registered.
Finally, the Panel views it as suspicious that, following Complainant’s first cease-and-desist letter in December 2016, in which Complainant alleged that Respondent was making commercial use of the Domain Name by means of “content and links” at the website, the website was altered to remove virtually all content.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
For essentially the same reasons as are set forth above in the context of “rights or legitimate interests”, the Panel concludes that Respondent has registered and is using the Domain Name in bad faith. First, it is clear that Respondent had Complainant’s JUAN GABRIEL mark in mind when registering the Domain Name. As stated above, while Complainant’s trademark was registered in 2011, the evidence submitted in the record shows that Complainant had unregistered/common law trademark rights to JUAN GABRIEL back in 1999 when Respondent registered the Domain Name. With respect to bad faith use of the Domain Name, the Panel concludes on this record that Respondent was seeking to attract, for commercial gain, Internet users to its website by means of consumer confusion surrounding the JUAN GABRIEL mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <juangabriel.com>, be transferred to Complainant.
Robert A. Badgley
Date: August 15, 2017