WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guitar Center, Inc. v. CallYouNet, Claes Von Post
Case No. D2020-1084
1. The Parties
The Complainant is Guitar Center, Inc., United States of America (“USA”), represented by Much Shelist PC, USA.
The Respondent is CallYouNet, Claes Von Post, Sweden.
2. The Domain Name and Registrar
The disputed domain name <playguitarcenter.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 14 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 14, 2020.
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 the Respondent of the Complaint, and the proceedings commenced on May 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2020. The Center received a telephone inquiry from the Respondent on May 18, 2020 and wrote to the Parties the same day to remind them that all communications under the Rules are to be made in written form. No formal Response was filed with the Center. On May 18, 2020, a supplemental filing was received from the Complainant. On May 19, 2020, the Center acknowledged receipt of the same.
On June 22, 2020, the Parties were informed of the commencement of panel appointment stage.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 29, 2020. 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
The Complainant operates the largest music retailer chain in the USA under the GUITAR CENTER mark and via 269 brick-and-mortar retail locations across the USA and its ecommerce website at “www.guitarcenter.com”. The offering of guitar lessons is a significant portion of the Complainant’s business and since the Covid-19 pandemic, it has begun to offer such services online. The Complainant offers a section of its said website titled “Riffs”, which features well-known musicians performing various guitar riffs and licks.
The Complainant is the owner of a variety of registered trademarks for the GUITAR CENTER mark around the world, including for example USA registered trademark no. 1290481, registered on August 14, 1984 in international class 42 (principally retail music store services) and European Union registered trademark no. 8993206, registered on September 20, 2010 in international classes 9, 15, 35, and 41 (principally sound recording, musical instruments/retail thereof, and education in the field of music). Both of these marks feature a stylized depiction of the words GUITAR CENTER in black on a white background in a distinctive typeface, where the form of the capital letter “G” is a diagonally oriented dreadnought-shaped acoustic guitar.
The disputed domain name was registered on March 8, 2020. Little is known about the Respondent other than that it apparently has an address in Stockholm, Sweden and that it styles itself or its business as a “World entertainment influencer”. The website associated with the disputed domain name features multiple links to various embedded videos containing instruction in guitar playing and technique together with the promotion of a variety of other services including the sale of boats and domain names, and a booking service for various entertainment providers. The offered services are directed to markets around the world including the USA.
On May 18, 2020, the Respondent emailed the Complainant’s representative providing a link at which it said that the disputed domain name could be purchased and suggesting that the Complainant might contact the Respondent by telephone if it wanted to be included on a list at a particular website apparently controlled by the Respondent. Said email was followed up by a second, which corrected the link relative to the sale of the disputed domain name. This link directed to a third party domain name sales website at which the disputed domain name was offered for sale at a price of USD 900.
5. Parties’ Contentions
The Complainant asserts that it has established rights in the GUITAR CENTER mark based on its use of the mark as well as trademark registrations in various jurisdictions around the world. The Complainant notes that said mark is incorporated in its entirety within the disputed domain name and submits that this is sufficient to establish that the disputed domain name is identical or confusingly similar thereto, adding that the additional word “play” does not avoid confusing similarity as it is a generic term referring to the playing of instruments. The Complainant contends that this reinforces confusing similarity, also in the context of the Respondent’s related website.
The Complainant states that there are several indicators concerning the Respondent’s lack of rights or legitimate interests including generally the fact that the Respondent is using the disputed domain name to set up a website under an essentially identical trademark to provide identical services to those of the Complainant. The Complainant adds that there has never been any relationship between the Parties that gives rise to any license, permission, or authorization to use or register the disputed domain name, the Complainant has not authorized the Respondent to use its mark in a domain name for any purpose, the Respondent cannot show evidence of noncommercial or fair use because such use is obviously commercial, and that the Respondent will not be able to provide evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.
The Complainant asserts that its trademark is well-known due to longstanding use and its registration around the world, including in the European Union where the Respondent is located, adding that the European Union trademark predates registration of the disputed domain name and that it is implausible that the Respondent was not aware of the GUITAR CENTER mark when it registered the disputed domain name. The Complainant contends that the Respondent is engaged in blatant trademark infringement, having used the disputed domain name in connection with a website which offers services identical to those of the Complainant, adding that the Respondent is attempting to trade off of the well-known status of the Complainant by generating and publishing content similar to that which the Complainant publishes in the “Riffs” portion of its website.
The Complainant contends that the Respondent’s use of a privacy service is also indicative of bad faith in that the Respondent concealed its identity in such a way that the service of documents directly to the person or entity of the Respondent would be delayed or impossible, and verification of service would likewise be impossible.
In its supplemental filing, the Complainant requests that the Panel consider what it contends to be additional evidence of registration and use in bad faith, namely that the Respondent has done what paragraph 4(b) of the Policy countenances in that, after obtaining the attention of the Complainant, the Respondent offered to sell the disputed domain name for an amount many more times the sum that the Respondent paid to register it. The Complainant produces the email correspondence received from the Respondent as outlined in the factual background section above and asserts that this evidence is pertinent and proves the Respondent’s bad faith registration and use of the disputed domain name in addition to the submissions and evidence provided in the amended Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied in respect of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
A. Preliminary Issue: Complainant’s supplemental filing
The Panel considers whether, in the circumstances of this case, it should admit the Complainant’s supplemental filing, which was received by the Center on May 18, 2020, and whether, if so, it should order any additional procedural steps to be taken before proceeding to a decision.
In terms of paragraph 12 of the Rules, the Panel may request, in its sole discretion, any further statements or documents from the Parties which it may deem necessary to decide the case. Paragraph 10 of the Rules provides, inter alia, that the Panel has authority to determine the admissibility, materiality and weight of the evidence. As noted in section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) supplemental filings are generally discouraged, unless specifically requested by the panel. UDRP panels have repeatedly affirmed that a party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.
In the present case, the Complainant’s supplemental filing explains that the Complainant’s representative received two email communications from the Respondent on May 18, 2020, by virtue of which the Respondent offered to sell the disputed domain name to the Complainant for an amount many times the sum of its likely registration costs (evidence provided). At the point when it filed the amended Complaint on May 14, 2020, the Complainant could not have anticipated this, given that the email contact occurred some four days later and three days after notification of the Complaint to the Respondent. The Panel also notes that the circumstances described are highly relevant to the outcome of the proceedings in that, as discussed further below, they appear to shed light on the Respondent’s motivation for registering the disputed domain name.
Accordingly, in all of the above circumstances, the Panel will admit the Complainant’s supplemental filing. Section 4.6 of the WIPO Overview 3.0, further states that depending on the content of any admitted supplemental filing, the Panel may issue further instructions to the Parties, including a rebuttal/reply opportunity to the non-initiating party. In the present case, the Panel considers that it is unnecessary to allow any reply opportunity to the Respondent for two reasons. First, the Complainant’s supplemental filing was received only three days after notification of the Complaint to the Respondent and more than two weeks before the due date for filing the Response, such that the Respondent has had ample time to consider and respond thereto and likewise would have been able incorporate any comments within the Response itself. As subsequently transpired, the Respondent did not file a Response at all. Secondly, the matters disclosed in the supplemental filing were initiated by the Respondent and are therefore entirely within its knowledge and control already. The Complainant’s further comments are not of a nature that the Respondent could not reasonably have anticipated these (i.e., had it filed a Response) and they can be expected to have been entirely within the Respondent’s likely contemplation.
In all of the above circumstances, the Panel does not consider that any prejudice results to the Respondent by the Panel accepting the Complainant’s supplemental filing for consideration and proceeding directly to a decision in this matter.
B. Identical or Confusingly Similar
There are two parts to the inquiry under this element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark. The Panel is satisfied that the Complainant has rights in its GUITAR CENTER trademark by virtue of the various registered trademarks cited in the Complaint, including those noted in the factual background section above. To the extent that such registered marks contain a figurative or graphical element, the Panel is satisfied that for present purposes this may be severed from the words contained in the mark, leaving the latter to be compared to the disputed domain name (see section 1.10 of the WIPO Overview 3.0).
The comparison under this element of the Policy typically proceeds on the basis of a straightforward side-by-side analysis and, where this is done in the present case, it may be seen that the Complainant’s GUITAR CENTER trademark is fully recognizable within the disputed domain name, the only differences being that the disputed domain name also contains the prefixed word “play”, together with the absence of spaces and the addition of the generic Top-Level Domain (gTLD) “.com”. Both the absence of spaces and the presence of the gTLD can be ignored for the purposes of the comparison as these are merely technical requirements of the domain name system. The presence of the additional word “play” does not serve to distinguish the disputed domain name from the Complainant’s said mark, nor does it therefore prevent a finding of confusing similarity (see, for example, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s GUITAR CENTER mark and thus that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present matter, the Panel is satisfied that the Complainant has established the requisite prima facie case. Such finding is based on the Complainant’s submissions that the Respondent is using the disputed domain name to set up a website under an essentially identical trademark to provide identical services to those of the Complainant, that there has never been any relationship between the Parties that gives rise to any license, permission, or authorization to use or register the disputed domain name, that the Complainant has not authorized the Respondent to use its mark in a domain name for any purpose, that the Respondent cannot show evidence of noncommercial or fair use of the disputed domain name because its use is commercial, and that the Respondent is likely to be unable to provide evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services which do not trade off of the Complainant’s mark.
The Complainant having established a prima facie case under this element of the Policy, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests in the disputed domain name. However, the Respondent has chosen not to engage with the present proceeding and has provided neither submissions nor evidence which might have supported any claim of rights or legitimate interests. Nevertheless, the Panel is mindful of the fact that the disputed domain name is comprised of several dictionary words joined together and that conceivably, taken together, these might be said to represent a common phrase. Furthermore, while there is evidence before the Panel, which indicates that the Complainant’s mark is well-known internationally, it does itself have something of a descriptive quality.
Where a domain name consists of dictionary words forming a common phrase, is used in connection with the generally accepted meaning of such phrase, and has not been registered or used in order to trade off third party trademark rights, this can constitute a legitimate interest for the purposes of the Policy. The question of whether the Respondent may have intended to trade off the Complainant’s rights is further complicated somewhat in the present matter by the descriptive quality of the Complainant’s trademark. Similar considerations arose in another case under the Policy involving the Complainant, namely Guitar Center, Inc. v. Contact Privacy Inc. Customer 0156291006 / Nikolay CHAVDAROV, My Guitar Center, WIPO Case No. D2019-3092. In that case, the facts were broadly analogous to those before the Panel. The domain name concerned was <myguitarcenter.com>. As with the disputed domain name, this is made up of several dictionary words joined together and arguably may be viewed as having a descriptive quality. Likewise, the domain name concerned had been used in connection with a guitar-related website and, beyond attempting to commence settlement discussions, the respondent did not engage with the administrative proceeding.
The panel in said UDRP decision noted the fame of the Complainant’s mark and the fact that the respondent had failed to take up the opportunity to provide any evidence of its use of the domain name concerned in connection with a legitimate purpose. In those circumstances, the panel determined that it was open to it to decide that the respondent’s intention was to take advantage of the Complainant’s business and to find that the respondent had no rights or legitimate interests in the domain name concerned. The Panel adopts the same reasoning in the present case, which is fortified here by the fact that, shortly after notification of the Complaint, the Respondent attempted to sell the disputed domain name to the Complainant for a substantial sum. Furthermore, rather than confining the use of the disputed domain name to any potential dictionary meaning, the Respondent also incorporated the sale of domain names, boats, and various entertainment agency services. The Panel therefore has no hesitation in concluding that the Respondent intended to target the Complainant’s mark rather than to make any legitimate use of the disputed domain name.
In all of these circumstances, the Panel finds that the Complainant’s prima facie case on rights and legitimate interests has not been rebutted by the Respondent. The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In the present matter, the Complainant initially focuses on the embedded video content on the Respondent’s website and the fact that this appears calculated to mimic the “Riffs” feature of the Complainant’s website. The Complainant’s position is that, prior to the creation of the disputed domain name, the Respondent knew of the Complainant’s GUITAR CENTER trademark and intended to benefit unfairly from this by drawing traffic to its own website using a confusingly similar domain name and there offering similar goods and services. The Respondent has remained silent and has not responded to this allegation.
In the particular circumstances of this case, the Panel is satisfied on the balance of probabilities that the Respondent knew of the Complainant’s rights and had the intent to target these when it registered and used the disputed domain name. The Complainant’s GUITAR CENTER mark has a particularly long history (see, for example, the observations of the panel on this topic in Guitar Center, Inc. v. Contact Privacy Inc. Customer 0156291006 / Nikolay CHAVDAROV, My Guitar Center, supra) and is well-known internationally. The Complainant owns a corresponding European Union registered trademark which is in force in Sweden, being the territory where the Respondent is based. As mentioned in the second element discussion above, there is no suggestion before the Panel that the Respondent merely stumbled on the disputed domain name by way of any more descriptive connotations, such as the use of the generic phrase “play guitar” coupled with the word “center” (which does not have a normal linguistic cohesion) versus what strikes the Panel as the much more obvious reading/connotation, namely “play” coupled with “guitar center” (which latter formulation plainly seeks to trade off of the Complainant’s mark) and, even had there been, it is doubtful that any such allegation would have been made out in the face of the well-known nature of the Complainant’s mark and the fact that the Respondent has used the disputed domain name not only in relation to guitar playing (in which case the addition of the word “center” would benefit from an explanation) but also to promote a variety of services unrelated to any such potential descriptive phrase. It is therefore more likely than not that the Respondent sought to benefit from an association with the Complainant’s established brand and from the additional Internet traffic which it could expect to generate by the adoption of the Complainant’s well-known trademark within the disputed domain name.
The above conclusions are sufficient for the Panel to find registration and use in bad faith on the basis of paragraph 4(b)(iv) of the Policy. In addition, the emails issued to the Complainant’s representative by the Respondent following upon notification of the Complaint give rise to a further indication of bad faith on the Respondent’s part. These emails are the only written communications issued by the Respondent following notification of and/or in connection with the Complaint, and they lend considerable force to the proposition that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for an amount considerably in excess of the related out of pocket costs. These circumstances are consistent with a finding of registration and use in bad faith on the basis of paragraph 4(b)(i) of the Policy.
As to the fact that the Respondent also sought to communicate with the Complainant regarding possible linking or listing proposals, the Panel considers it reasonable to infer that the Respondent may have also registered the disputed domain name as a pretext to gain commercial advantage by means of extracting some form of business cooperation from the Complainant in return for its transfer. Furthermore, the Respondent’s concealment of its organization behind a privacy service is also suggestive of bad faith in the particular circumstances of this case. It is reasonable to infer that the Respondent may have intentionally put such an arrangement in place in order to prevent, frustrate or delay service of documents upon it, or verification of the same.
The Respondent has not engaged with the administrative proceeding and has provided no submissions or evidence which address the Complainant’s contentions or which might in any event support the proposition that the disputed domain name was registered and has been used in good faith. In the absence of any such contribution, the Panel notes that the present record does not appear to suggest any potential actual or contemplated good faith motivation that the Respondent might reasonably have put forward.
In all of these circumstances, the Panel finds on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 name <playguitarcenter.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: July 13, 2020