WIPO Arbitration and Mediation Center


LO 337 IP Holding, LLC v. John Williams, J Entertainment ATL / John Williams, J Entertainment Productions

Case No. D2019-2339

1. The Parties

Complainant is LO 337 IP Holding, LLC, United States of America (“United States”), represented by Johnson & Johnson LLP, United States.

Respondent is John Williams, J Entertainment ATL / John Williams, J Entertainment Productions, United States.

2. The Domain Names and Registrar

The disputed domain names <worldstarhitradio.com> and <worldstarmarketing.com> (the “Domain Names”) 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 September 26, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 27, 2019, 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 October 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 30, 2019.

The Center appointed Robert A. Badgley as the sole panelist in this matter on November 20, 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

In its threadbare Complaint, the Panel had to corroborate on its own some of the information Complainant would have normally been expected to provide. Complainant alleges that it is “a widely recognized and highly regarded provider of entertainment programming, advertising, marketing, information, news, commentary, and consumer goods in the field of hip hop and rap music.” Complainant asserts that its flagship website, located at “www.worldstarhiphop.com”, has operated since 2005 and “is consistently ranked in the top 1,000 most-visited websites in the world, with millions of patrons and extensive industry notoriety.”

Complainant registered the word mark WORLD STAR HIP HOP with the United States Patent and Trademark Office (“USPTO”) on January 22, 2013 (registration no. 4280316). This mark is registered in connection with “advertising and directory services, namely, promoting the products and services of others by providing a web page featuring links to the websites or products of others; all of the foregoing in the field of hip hop and urban music and culture.” This trademark registration indicates a date of first use in commerce of January 1, 2006.

The Domain Names were registered on July 8, 2013 (<worldstarmarketing.com>) and July 2, 2014 (<worldstarhitradio.com>). The Domain Names resolve to commercial websites featuring various links to news and information similar to the offerings on Complainant’s website.

According to Complainant, beginning in August 2018 Complainant was “contacted by multiple individuals who had been solicited to work for and/or do business with Respondent.” According to Complainant, these individuals stated that “Respondent was falsely holding himself out as, at various times, a co-owner, partner, employee, affiliate, or subsidiary of Complainant.” In addition, Complainant alleges, Respondent “has begun offering ‘media plans’ or ‘franchise agreements’ whereby he solicits individuals to purchase from him the purported rights to establish regional divisions of Complainant’s nonexistent ‘radio arm’…” According to Complainant, these bogus “franchise agreements” are priced at USD 60,000 and up.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under the Policy for a transfer of the Domain Names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:

(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 WORLD STAR HIP HOP through registration with the USPTO. The Panel also finds that the Domain Names are confusingly similar to Complainant’s mark WORLD STAR HIP HOP. The dominant feature of the mark, “world star,” is reflected in each of the Domain Names. The Panel finds that the substitution of the descriptive words “hit radio” and “marketing” in the respective Domain Names for the descriptive term “hip hop” does not prevent the confusing similarity between the mark and the Domain Names.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

For each Domain Name, pursuant to paragraph 4(c) of the Policy, Respondent may establish his 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 has no rights or legitimate interests in respect of the Domain Names. Respondent has not come forward in this proceeding to articulate why he registered the Domain Names or otherwise explain his bona fides. Respondent is essentially being accused of fraud in the Complaint, and one would ordinarily expect someone so accused (and wrongly) to step forward and dispute the contention.

The undisputed, though hardly robust, record in this case shows that Respondent is using the Domain Names to set up websites that mimic Complainant’s website, apparently with a view toward attracting unwitting consumers seeking Complainant’s site, and duping such consumers into believing that they are at a website controlled by or affiliated with Complainant. It is plausibly alleged, and not disputed in the record, that Respondent has held himself out to third parties as a co-owner of, partner with, or affiliate of, Complainant, and that Respondent has tried to offer such third parties bogus “franchise agreements” for a fee. Such conduct is patently illegitimate.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

For each of the Domain Names, 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 Names in bad faith under, at a minimum, the above-quoted Policy paragraph 4(b)(iv). This conclusion is based on the undisputed conduct described in the previous section.

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <worldstarhitradio.com> and <worldstarmarketing.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: December 4, 2019