WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roraj Trade LLC v. Moses Perkins
Case No. D2018-2874
1. The Parties
Complainant is Roraj Trade LLC of Los Angeles, California, United States of America, represented by Holland & Knight LLC, United States of America.
Respondent is Moses Perkins of Carson, California, United States of America, represented by Olman Valverde, United States of America.
2. The Domain Name and Registrar
The disputed domain name <fentyentertainment.com> (the “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 December 17, 2018. On December 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 18, 2018, 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 January 3, 2019. In accordance with the Rules, paragraph 5, the extended due date for Response was January 27, 2019. The Response was filed with the Center on January 27, 2019.
On January 31, 2019, Complainant submitted an unsolicited Reply to Response and annexes which the Panel, in its discretion, has considered. Under paragraphs 10 and 12 of the Rules, the Panel has decided to consider the supplemental filing of Complainant because of the relevance of the submission in view of this rather complex case.
The Center appointed Robert A. Badgley as the sole panelist in this matter on February 1, 2019. 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 Roraj Trade LLC owns and manages the intellectual property rights of Robyn Rihanna Fenty, a world-famous singer known as Rihanna (hereinafter “Rihanna”). Rihanna owns Complainant company. Rihanna has been famous since 2005, and she has sold more than 230 records worldwide.
Complainant has also used FENTY as a trademark in association with cosmetics, perfumes, eyewear, jewelry, clothing, and other items. Complainant’s FENTY 88 mark was registered in the European Union under registration number 012133641 on February 5, 2014. Complainant also holds various trademark registrations of marks including Rihanna’s surname FENTY in the United States of America (FENTY BEAUTY, FENTY BEAUTY BY RIHANNA, FENTY GLOW) and several other countries.
Respondent Moses Perkins, and Ronald Fenty (“Ronald”), who is Rihanna’s father, claim that they formed a business partnership called “Fenty Entertainment” in June 2015. According to the declaration (not notarized) of Ronald submitted with the Response, Fenty Entertainment (now Fenty Entertainment LLC, hereinafter the “LLC”) was formed “to develop a reality television show and to promote my career, business activities, personal branding and name recognition in the entertainment industry and as a celebrity.” According to Ronald’s declaration, he and Respondent have been working toward “developing reality television shows, assisting writers and filmmakers obtain financing for film projects, and pursuing real estate development projects”. Ronald states further that he and Respondent “have been using ‘Fenty Entertainment’ as our business name at all times”.
Respondent does not annex to his Response any documentary evidence of Ronald’s alleged “celebrity”, nor any evidence of the LLC’s use of the name Fenty Entertainment in connection with any pursuit of a reality TV show, or film financing project, or real estate deal. Indeed, the Response is not accompanied by any documentary evidence that the LLC has even pursued any of these activities at all, under any name.
The Domain Name was registered on November 29, 2015. Ronald states in his declaration that Respondent registered the Domain Name with his knowledge and approval. Ronald states further that he is not involved in his daughter’s business activities. Finally, Ronald states that, at the time the Domain Name was registered, he had “no knowledge of the trademarks or business activities of [Complainant] Roraj Trading LLC”.
Complainant asserts that Rihanna is estranged from her father Ronald.
The Domain Name currently does not resolve to an active website. From September 2017 to September 2018, however, the Domain Name resolved to a website which featured the FENTY word mark above the words “ENTERTAINMENT – TALENT DEVELOPMENT.” According to a screenshot submitted by Complainant into the record, below those words appears a link entitled “SUBMISSIONS.”
Complainant also submitted into the record a December 4-5, 2017 email exchange among various parties including Ronald and Respondent, in which exchange it was represented by Respondent that Ronald had secured the commitment by his daughter Rihanna to perform in a 15-date concert tour in Latin America for USD 15 million. Complainant denies that Rihanna had ever agreed to such a tour.
Complainant also introduced into the record a March 30, 2018 press release in which the LLC announced that “Ronald Fenty, father of superstar recording artist Rihanna, today announced the launch of Fenty Entertainment with his daughter Robyn ‘Rihanna’ Fenty.” Again, Complainant denies that Rihanna had ever agreed to such a venture with Ronald.
5. Parties’ Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. In a nutshell, Complainant’s case is set forth in one paragraph in the Reply to Response:
“Without exaggeration, Respondent has used the ‘Fenty Entertainment’ business and domain name in a fraudulent effort to solicit millions of dollars from unsuspecting third parties in exchange for the false promise that he [Perkins] and Ronald Fenty were authorized to act on Rihanna’s behalf, and/or that Rihanna would perform at various locations throughout the world. This conduct comprises trademark infringement of the most egregious variety.”
Respondent essentially contends that he and his business partner Ronald have a legitimate interest in the Domain Name, as their business pursuits are not related to the activities of Complainant’s owner, Rihanna. Respondent also states that his business partner, Ronald, was unaware of Complainant’s owner’s business activities under the FENTY and FENTY-formative marks at the time the Domain Name was registered. Ronald also states that he was not involved in any way with the business activities of his estranged daughter.
Respondent also asserts that Complainant’s FENTY-formative marks were not registered in the United States of America at the time the Domain Name was registered.
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 FENTY through registration and use. The Panel also finds the Domain Name to be confusingly similar to the mark. The dominant portion of the Domain Name is the FENTY mark, and the additional word “entertainment” does nothing to diminish the confusing similarity between the mark and the Domain Name.
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 Respondent of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is 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 has no rights or legitimate interests in respect of the Domain Name.
The Panel notes first that, despite Ronald’s declaration, there is not a shred of evidence annexed to the Response to corroborate the claim that Respondent and Ronald have used their purported name Fenty Entertainment in connection with any pursuit of a reality TV show, or film financing project, or real estate deal.
The only documentary evidence of Respondent’s business activities were put into the record by Complainant, and they are not supportive of a claim of legitimacy on Respondent’s part. On the contrary, the March 2018 press release and the December 2017 email exchange discussed above indicate nefarious, if not fraudulent, activity on the part of Respondent and/or Ronald.
This is an unusual case in which Respondent’s business partner Ronald cannot legitimately use his own surname in a domain name, because the surname is also used by his famous daughter and the daughter is engaged in the entertainment industry. This conclusion is reinforced by the fact that the record is devoid of the slightest evidence that the father has any standing of his own in the entertainment field. As will be discussed more fully in the context of bad faith, it is clear from this record that Respondent and Ronald registered and used the Domain Name in order to profit from the fame of Ronald’s famous and estranged daughter. That is not a legitimate interest.
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 online 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.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel finds it far more likely than not that Respondent and/or his business partner Ronald (who, according to his declaration, said that Respondent registered the Domain Name with his knowledge and permission) were well aware that Rihanna was using the FENTY mark as a source identifier for cosmetics, perfumes, eyewear, jewelry, clothing, and other items. It defies common sense that the father of a world-famous singer would be ignorant of this fact. This conclusion appears even more inescapable when one considers Ronald’s implicit claim that he is a celebrity in his own right. The Panel’s conclusion that Ronald’s denial of knowledge of Rihanna’s use of the FENTY-formative marks is false is that Ronald lacks credibility. He states in his declaration that he is not involved in the business activities of his daughter, and yet the emails from December 2017 and the March 2018 press release suggest otherwise.
The Panel observes that the record contains no evidence of Respondent’s efforts to use the name “Fenty Entertainment” in connection with the activities purportedly envisaged by Respondent (reality TV show, film financing, real estate development). There is, by contrast, evidence that Respondent and his business partner Ronald were seeking to use the Domain Name as part of a scheme to induce third parties to enter into contracts for concert appearances by Ronald’s daughter, the famous Rihanna, for commercial gain. The March 2018 press release and the December 2017 email exchange discussed above appear consistent, to say the least, with this conclusion.
The Panel finds on this record that Respondent has registered and used the Domain Name in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(iv).
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 <fentyentertainment.com> be transferred to Complainant.
Robert A. Badgley
Date: February 10, 2019