WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MGLM Holdings B.V. v. Yungu Jo, DOMAIN-FOR-SALE---
Case No. D2021-3826
1. The Parties
The Complainant is MGLM Holdings B.V., Netherlands, represented by LegalMatters.com, Netherlands.
The Respondent is Yungu Jo, DOMAIN-FOR-SALE---, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <garrix.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2021. On November 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2021, the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain name;
(b) the language of the registration agreement is English; and
(c) the 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 the Respondent of the Complaint, and the proceedings commenced on November 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 22, 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
The Complainant is a company based in the Netherlands associated with Martijn Gerard Garritsen who is a performer and DJ known professionally as “Martin Garrix”.
Mr. Garrix was ranked No. 1 in DJ Mag’s Top 100 DJs in each of 2016, 2017, and 2018 and who has performed at a numerous international festivals since his international debut in 2014.
The Complainant has registered a number of trademarks for MARTIN GARRIX for a range of goods and services in International Classes 9, 25, and 41:
a) European Union Trade Mark No. 013106091 (EUTM) which was filed on September 2, 2014 and registered on January 28, 2015;
b) United Kingdom Trade Mark No. UK00913106091 which is also taken to have been filed on September 2, 2014 and registered on January 28, 2015; and
c) International Registration No. 1255134 designating Australia, Switzerland, China, India, Norway, Russian Federation, Turkey, and the United States of America which was filed on February 4, 2015 based on the filing and registration of the EUTM.
The Respondent registered the disputed domain name on November 2, 2015.
Since around that time it has resolved to a parking page type website with pay-per-click (PPC) links and a headline banner, this domain is for sale.
In October 2021, one of the PPC links was a link for the name “Martin Garrix” apparently offering tickets for performances by Mr. Garrix but under a banner or heading “This DOMAIN NAME FOR SALE – Make Offer to [redacted]”.
Since at least 2016, the disputed domain name has also been used with a sub-domain <martin.garrix.com> which redirects to the <garrix.com> landing page described above.
In October 2021, a representative of the Complainant contacted the address nominated by the This DOMAIN NAME FOR SALE banner offering a price of USD 250. The reply received in response in the name of the Respondent as President of “SebinTech DomainAgent Inc., Domain for sale company”, stated he would be prepared to transfer the disputed domain name for USD 10,000.
5. Discussion and Findings
No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. The courier attempting delivery of the Written Notice was unable to complete delivery. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for MARTIN GARRIX identified in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the Top-Level Domain (“TLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” TLD, the disputed domain name consists only of the surnominal element of the Complainant’s registered trademark.
The Complaint does not indicate whether “Garrix” is a name or surname in use by other people apart from its use as the stage name of Mr. Garrix. At least the first three pages of a Google search on “Garrix" produce results only for the DJ known as Martin Garrix and not any other people or places known as or by “Garrix”.
In these circumstances, it appears that “Garrix” is an invented or coined term and a distinctive component of the Complainant’s trademark.
Furthermore, as mentioned in section 4 above, the disputed domain name has been used with a sub-domain which is in effect the whole of the Complainant’s stage name and registered trademark. Somewhat analogous to the approach taken in “spanning the dot” cases when the second-level portion of a domain name and the TLD contain the whole of a complainant’s trademark (see e.g., WIPO Overview 3.0, section 1.11.3), the Panel considers it is appropriate to have regard to the reflection of the whole of the Complainant’s trademark in the sub-domain of the website to which the disputed domain name resolves. That indicates that the Respondent is targeting the Complainant’s trademark through the disputed domain name.
Further, WIPO Overview 3.0, section 1.15 notes that a finding of confusing similarity may be affirmed where an examination of the website to which a domain name resolves indicates that the complainant’s trademark is being targeted.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Respondent registered the disputed domain name after the Complainant had registered its trademark in at least the European Union and the United Kingdom and also after Mr. Garrix began performing on the international stage.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it or Mr. Garrix in any way.
The disputed domain name is not derived from the Respondent’s name or his business or company name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
The use of the disputed domain name to offer it for sale and, pending that sale, to generate revenue through PPC links does not qualify as a legitimate noncommercial or fair use for the purposes of paragraph 4(c)(iii) of the Policy.
In addition, it does not qualify as a good faith offering of goods or services for the purposes of paragraph 4(c)(i) especially where “Garrix” appears to be an invented or coined term and the Respondent appears to be targeting the Complainant’s trademark.
While almost six years have passed since the Respondent registered the disputed domain name, mere delay in bringing the Complaint is not in itself sufficient to bar the Complaint and confer rights or a legitimate interest on the Respondent. See e.g. WIPO Overview 3.0, section 4.17.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As the term “Garrix” appears to be an invented or coined term and not descriptive, it appears that the Respondent has adopted the disputed domain name because of its trademark significance. That inference is reinforced by the Respondent’s creation and use of the sub-domain <martin.garrix.com> shortly after registering the disputed domain name. In the absence of explanation from the Respondent, therefore, the Panel finds the Respondent has registered the disputed domain name in bad faith.
On the basis that “Garrix” is not a descriptive or dictionary term, the use of the disputed domain name to generate revenues through PPC links while offering it for sale appears to take advantage of the trademark significance of the name. The Respondent also appears to be targeting the trademark significance of the name “Garrix” at least by offering to sell the disputed domain name for USD 10,000, which is far in excess of the ordinary out-of-pocket expenses for registration of a domain name in the “.com” TLD. Accordingly, the Panel finds that the Respondent has also used the disputed domain name in bad faith.
Accordingly, the Complainant has established all three requirements under 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 disputed domain name <garrix.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: January 7, 2022