WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gibson Brands, Inc. v. Super Privacy Service LTD c/o Dynadot. / Wills Eldren
Case No. D2021-3656
1. The Parties
Complainant is Gibson Brands, Inc., United States of America (“United States” or “U.S.”), represented by Bates & Bates LLC, United States of America.
Respondent is Super Privacy Service LTD c/o Dynadot., United States / Wills Eldren, United States.
2. The Domain Name and Registrar
The disputed domain name <gibson-guitars.club> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2021. On November 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 4, 2021, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 5, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 5, 2021.
The Center verified that the Complaint together with the amendment to 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 November 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 30, 2021.
The Center appointed John C. McElwaine as the sole panelist in this matter on December 13, 2021. 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 engaged in the business of developing, manufacturing, and selling musical instruments, including electric guitars, acoustic guitars, basses, mandolins, and other stringed instruments.
Complainant is the owner of the GIBSON trademark in multiple countries, including the following registrations in the United States most relevant to this proceeding:
- GIBSON (stylized), U.S. Reg. No. 0510594, registered on June 7, 1949 in International Class 15;
- GIBSON, U.S. Reg. No. 1545311, registered on June 27, 1989 in International Class 15; and
- GIBSON, U.S. Reg. No. 3877181, registered on November 16, 2010 in International Class 9.
Collectively, the GIBSON word marks and stylized marks are referred to herein as the “GIBSON Mark”.
On August 17, 2021, Respondent registered the Domain Name with the Registrar. For a period of time, the Domain Name resolved to a website offering for sale electric guitars. The Domain Name currently does not resolve to a functioning website.
5. Parties’ Contentions
As background, Complainant contends that for over a century it has used the GIBSON Mark in connection with the manufacturing and sale of musical instruments. Complainant alleges that its products are offered throughout the world, and that Complainant’s name and instruments have gained worldwide recognition and reputation. Complainant further alleges that in addition to its trademarks, it owns a number of GIBSON domain names, including, but not limited to, <gibson.com>.
Complainant asserts Respondent has hidden its identity and that before the Domain Name ceased resolving to an active website, this website was making unauthorized use of Complainant’s GIBSON Mark, both in the Domain Name and on the website. In fact, Complainant contends Respondent was advertising and selling counterfeit GIBSON-branded musical instruments and related products, namely guitars and basses. Complainant asserts that Respondent is not a partner, licensee, or authorized retailer of GIBSON-branded products nor does Respondent have Complainant’s consent to use the GIBSON Mark, or any other trademarks owned by Complainant, to advertise and sell Respondent’s products.
With respect to the first element of the Policy, Complainant alleges that the Domain Name incorporates Complainant’s GIBSON Mark entirely and merely adds the term, “guitars”, with a hyphen in between. Thus, Complainant contends that the Domain Name is confusingly similar to the GIBSON Mark.
With respect to the second element of the Policy, Complainant points out that Respondent has not received any license, authorization, or permission to use its GIBSON Mark or any of Complainant’s other trademarks currently being used, or previously used, as a part of the website that was accessible from the Domain Name. Complainant further contends it does not have any type of business relationship with Respondent. Complainant concludes that Respondent has no rights or legitimate interests in such a confusingly similar Domain Name.
With respect to the third element of the Policy, Complainant asserts Respondent registered and used the Domain Name in bad faith, as evidenced by the fact that: (1) it is using Complainant’s famous GIBSON Mark in its entirety without authorization, (2) Respondent has hidden its true identity, and (3) Respondent was attempting to trade off the goodwill Complainant has established in the GIBSON Mark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0”), section 1.2. Here, Complainant alleged that it is the owner of multiple trademark registrations in a chart detailing registrations of the GIBSON Mark in multiple countries. The Panel verified that the three United States registrations for the GIBSON Mark were existing registrations and owned by Complainant. WIPO Overview section 4.8 (a panel may undertake limited factual research into matters of public record, including “accessing trademark registration databases”.) Thus, the evidence submitted by Complainant is sufficient to establish valid trademarks rights and, accordingly, standing to bring this proceeding.
It is well-established, and the Panel agrees, that the addition of a word to a trademark in a domain name does not avoid a finding of confusing similarity. See WIPO Overview 3.0, Section 1.8; Mastercard International Incorporated v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158; DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans, WIPO Case No. D2010-0097. The Domain Name contains Complainant’s GIBSON Mark in its entirety, as a dominant element. The addition of the word “-guitars” does not serve to distinguish the Domain Name from the GIBSON Mark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s GIBSON Mark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of proof of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
In this matter, Complainant contends Respondent developed a website at the Domain Name using Complainant’s trademarks and images of Complainants products to sell counterfeit products. Section 2.13.2 of the WIPO Overview 3.0 provides the following guidance concerning such allegations, even when the respondent is in default:
“Evidence that the goods are offered disproportionately below market value, that the goods are only sold under license or through a prescription (especially with pharmaceutical products), that the images of the goods prima facie suggest (e.g., where the relevant logo is distorted) that they are not genuine, that the respondent has misappropriated copyrighted images from the complainant’s website, that the goods are extremely rare, that the goods have prompted consumer complaints, or that a respondent has improperly masked its identity to avoid being contactable, have each been found relevant [to proving a lack of legitimate interest based upon illegal activity].”
As evidence of unlawful behavior, Complainant submitted evidence and arguments that the website displayed at the Domain Name was purportedly offering Complainant’s guitars at discounts ranging from 90 per cent to 94 per cent off of list prices. In addition, by comparing Complainant’s website with Respondent’s website in Annex 6, Complainant provided evidence that Respondent copied product names, used substantially similar images from Complainant’s website, as well as used Complainant’s stylized GIBSON mark on the header of each page. Complainant contends that it did not authorize registration of the Domain Name or development of Respondent’s website, which contains no other indicators of source and appeared to intend to convince visitors that it is Complainant’s website when it is not. Lastly, Respondent masked its identity through a privacy/proxy service. Respondent has been properly notified of the Complaint by the Center; however, Respondent failed to submit any response concerning these serious accusations. As such, Complainant has established a prima facie case that Respondent lacks legitimate rights or interests in the Domain Name.
Although Complainant has satisfied its burden, Respondent may establish rights or legitimate interests in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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 Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.
As an initial matter, there is no evidence that Respondent is commonly known by the Domain Name, as the WhoIs information lists Respondent as “wills eldren”. Respondent cannot rely upon paragraph 4(c)(ii) of the Policy.
Also, the Panel finds that Respondent’s use is not a legitimate use of the Domain Name. Respondent was using the Domain Name to resolve to a website allegedly engaged in unlawfully selling infringing or counterfeit goods. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”) In addition, the use of the Domain Name to divert Internet traffic to an infringing or misleading webpage is not a bona fide offering of goods or services. See Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nikolay Korobeynikov, WIPO Case No. D2016-0654 (finding no legitimate interest in a website resolving from the disputed domain name, which mirrored, and purported to be, the website of “CME Group” and which provided information relating to the trading of futures and options).
Lastly, Respondent’s use of the Domain Name is not noncommercial or fair use under paragraph 4(c)(iii) of the Policy, given that Respondent is allegedly selling counterfeit or competing products from an infringing online retail website. Such activity does not amount to a fan site, criticism, or other activity that may be considered as noncommercial or fair use. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
The fact that the Domain Name does not currently resolve to an active infringing website does not obviate the Panel’s finding of lack of legitimate rights or interest. Passive holding of a disputed domain name incorporating a third-party, well-known mark does not normally amount to a bona fide use. It is well established that inaction or passive holding can, in certain circumstances, constitute bad faith use. See CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242. Such passive holding of the Domain Name, without more (and noting prior bad faith use), does not create rights or legitimate interests.
Accordingly, for the reasons detailed above, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent had the opportunity to put forth evidence of its rights or legitimate interests yet provided no substantive response as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response and combined with the factors as detailed above, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. As detailed above, Respondent registered the Domain Name which is confusingly similar to the GIBSON Mark. There is no explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed.
As discussed herein, Respondent registered the Domain Name and linked it to a website using Complainant’s GIBSON Mark, including a reproduction of Complainant’s stylized GIBSON mark, and images and product names of Complainant to allegedly sell counterfeit electric guitars at steep discounts. This amounts to bad faith use of the Domain Name by Respondent. See Identigene, Inc. v. Genetest Labs, WIPO Case No. D2000‑1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The fact that Respondent may have ceased its infringement and is passively holding the Domain Name does not remedy its bad faith use of the Domain Name. See WIPO Overview 3.0, Section 3.3; Take-Two Interactive Software, Inc. v. Fundacion Private Whois, WIPO Case No. D2013-0586 (Although the domain name is not currently in use, respondent’s past conduct indicates that it could do nothing legitimate with the domain name and a finding of current use in bad faith is justified); National Westminster Bank plc v. Steve Mart, WIPO Case No. D2012-1711 (“A finding of bad faith use arising from just passive holding may ordinarily require an interval of more than just a few months to elapse during which a respondent merely holds a domain name and does not use it to resolve to an operational website. … Nevertheless, the prior actions of a respondent in actually using the domain name in bad faith may taint the ensuing passive holding period and label that period as simply a continuation of the prior bad faith use. This is particularly so here where Respondent’s prior use of the disputed domain name is so egregious and injurious to Complainant and to its customers as to likely incur criminal liability – let alone where a good likelihood exists that should Respondent retain the disputed domain name then, at some point in the near future, he will either repeat his prior illicit use of the disputed domain”).
As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name was to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the GIBSON Mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Thus, the Panel holds that Complainant has met its burden of providing sufficient evidence that Respondent registered and is using the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name, <gibson-guitars.club>, be transferred to Complainant.
John C. McElwaine
Date: December 27, 2021