WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

October’s Very Own IP Holdings v. WhoisGuard Protected, WhoisGuard, Inc. / Daniel Wong

Case No. DCO2020-0093

1. The Parties

The Complainant is October’s Very Own IP Holdings, Canada, represented by D. Nashid Barrister & Solicitor, Canada.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Daniel Wong, Canada.

2. The Domain Name and Registrar

The disputed domain name <octobersveryown.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 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 December 17, 2020, 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 December 20, 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 December 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2021. The Center received several email communications from the Respondent on December 17, 18 and 26, 2020 with some containing substantive arguments relating to the dispute. The Center notified to the Parties that it was proceeding to panel appointment on January 21, 2021.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 4, 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 that enjoys registered and common law rights in the OCTOBER’S VERY OWN trademark, which is the imprint of the performing artist known as Drake, and was established in 2008 through as a blog and public diary, colloquially referred to in the media and by fans as the “OVO Blog”.

The Complainant launched its apparel and merchandising efforts in 2011 with limited-edition tour memorabilia for Drake’s fans, then expanded to e-commerce by the launch of the “www.octobersveryown.com” website, and finally opened its first permanent retail store in downtown Toronto in 2014 and a second one in Los Angeles in 2015, now boasting thirteen stores worldwide and being stocked in high-fashion shops throughout Europe and Asia.

The Complainant collaborated with the Toronto Raptors of the National Basketball Association (“NBA”) on their fan merchandise and produced and sold exclusive footwear collaborations with Nike’s Jordan brand, Timberland and Clark’s.

The Complainant is the owner of numerous trademarks throughout the world, including:

- The Canada word trademark OCTOBER’S VERY OWN No. TMA896236 registered on February 11, 2015 in international classes 9, 14, 16, 18, 21, 24, 25, 28, 35, and 41;

- The Canada word trademark OCTOBER’S VERY OWN No. TMA1035886 registered on July 4, 2019 in international classes 3, 4, 5, 8, 9, 14, 16, 20, 21, 24, 27, 28, 29, 30, 32, and 33;

- The United States of America word trademark OCTOBER’S VERY OWN No. 4894081 filed on December 11, 2012 and registered on February 2, 2016 in international classes 9, 18, 25, 35, 38, and 41;

- The European Union word trademark OCTOBER’S VERY OWN No. 013709654 filed on February 5, 2015 and registered on October 9, 2019 in international classes 9, 35, and 41;

- The United Kingdom word trademark OCTOBER’S VERY OWN No. 3245050 filed on July 20, 2017 and registered on December 22, 2017 in international classes 9, 18, 25, 35, 38 and 41;

- The Republic of Korea word trademark OCTOBER’S VERY OWN No. 4020160010706 filed on February 12, 2016 and registered on November 3, 2016 in international class 25;

- The Japan word trademark OCTOBER’S VERY OWN No. 5867144 filed on February 10, 2016 and registered on July 15, 2016 in international class 25;

- The Hong Kong, China word trademark OCTOBER’S VERY OWN No. 303683674 registered on February 12, 2016 in international class 25;

- The China word trademark OCTOBER’S VERY OWN No. 19097323 filed on February 14, 2016 and registered on March 21, 2017 in international class 25;

- The Canada word trademark OVO No. TMA912211 registered on August 24, 2015 in international classes 9, 14, 16, 18, 21, 24, 25, 27, 28, 35, and 41.

The Complainant also claims common law rights over the word mark OCTOBER’S VERY OWN.

The Complainant owns the <octobersveryown.com> domain name, which is used for its e-commerce website.

The disputed domain name <octobersveryown.co> was registered on November 30, 2018 and redirects to the Complainant’s official website.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant asserts that the disputed domain name is identical to its trademarks, since it identically reproduces the OCTOBER’S VERY OWN trademarks.

The Complainant adds that the addition of the country code Top-Level Domain (“ccTLD”) “.co” does not prevent the disputed domain name from being confusingly similar to its trademark.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent has not used the disputed domain name in order to build a legitimate website but to redirect to the Complainant’s official website and thus appear as a legitimate representative of the Complainant.

The Complainant underlines that the Respondent has not been commonly known by the disputed domain name and that at no time did the Complainant consent to the registration or use of the disputed domain name by the Respondent.

Finally, the Complainant claims that the disputed domain name was registered and is used in bad faith.

The Complainant argues that the Respondent cannot credibly argue that he did not have knowledge of the Complainant and its OCTOBER’S VERY OWN trademarks at the time of the registration of the disputed domain name, given the high distinctiveness and fame of the OCTOBER’S VERY OWN trademarks throughout the world and especially in Canada, which is at the same time the home country of Drake, the home and inspiration behind the OCTOBER’S VERY OWN identity, and the Respondent’s residence.

The Complainant also points out that OCTOBER’S VERY OWN trademarks predate the registration of the disputed domain name by over a decade.

The Complainant adds that the Respondent used disputed domain name in efforts to impersonate the Complainant, notably as part of a fraudulent email scheme whereby the Respondent asserted baseless claims of Intellectual Property infringement on social media websites.

The Complainant suspects that the Respondent may have a competing Instagram account, reselling the Complainant’s goods and merchandise, and has unjustly profited as a result of its fraudulent email campaign aimed at eliminating competing Instagram users.

The Complainant then underlines that the Respondent’s use of a privacy service to hide its true identity is further evidence of bad faith and malicious intention.

Finally, the Complainant considers that by redirecting the disputed domain name to the Complainant’s official website, the Respondent retains control over the redirection thus creating a real or implied ongoing threat to the Complainant, underlining that third parties contacted by “[…]@octobersveryown.co” have accepted the Respondent as a legitimate representative of the Complainant as a result of this redirection to the Complainant’s official website.

For all these reasons, it is requested that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. However, the Respondent sent several emails to the Center, amongst which an email in which he presents himself as a “collector” of the OVO Brand and asserts that he does not resell the Complainant’s goods nor have any Instagram account. He submitted screen pictures of clothing with the OVO logo.

The Respondent claims that he has been a fan since 2017, and he has collected OVO items going back to 2015, and he had no intention of misuse or “bad faith”. He also claims that he bought the domain name in December for USD 8,000.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(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. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights in the OCTOBER’S VERY OWN trademark.

Then, the Panel notices that the disputed domain name <octobersveryown.co> is composed of (i) the OCTOBER’S VERY OWN trademark and (ii) the ccTLD “.co”.

The applicable ccTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Regarding the disputed domain name, the Panel notes that it is exclusively composed of the OCTOBER’S VERY OWN trademark in its entirety.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

(i) before any notice of the dispute, the 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) the respondent (as an individual, business, or other organization) has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Indeed, no use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services has been demonstrated, and it is established that the Respondent has not been commonly known by the disputed domain name.

Additionally, according to prior UDRP panel decisions, for purposes of assessing fair use under UDRP paragraph 4(c)(iii), a respondent’s fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant site. Even where a domain name which is identical to a trademark is being used in relation to a genuine noncommercial fan site, panels have tended to find that a general right to operate a fan site (even one that is supportive of the mark owner) does not necessarily extend to registering or using a domain name that is identical to the complainant’s trademark, particularly as the domain name may be misunderstood by Internet users as being somehow sponsored or endorsed by the trademark owner. In such cases, where the domain name is identical to the trademark, UDRP panels have also noted that this prevents the trademark holder from exercising its rights to the mark and so managing its presence on the Internet, including through a corresponding email address (See section 2.7 of the WIPO Overview 3.0).

In the present case, the disputed domain name redirects to the Complainant’s official website and it wholly and exclusively reproduces the Complainant’s trademark, so that the disputed domain name may be misunderstood by Internet users as being somehow sponsored or endorsed by the Complainant, and the Complainant is prevented from exercising its rights to its trademarks and so managing its presence on the Internet.

Furthermore, the Respondent did not officially reply to the Complainant’s contentions and has not submitted relevant evidence that his intention was to use the disputed domain name as a true and genuinely noncommercial fan site. It rather seems it is primarily a pretext for cybersquatting or commercial activity.

Consequently, the Panel considers that the Complainant has demonstrated that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.”

First, the Panel finds that it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name.

Then, the Panel finds that, given the reputation of the Complainant’s trademark and the fact that the disputed domain name reproduces the OCTOBER’S VERY OWN trademark in its entirety, the Respondent knew, or should have known, that its registration would be confusingly similar to the Complainant’s trademark.

Furthermore, the Respondent presented himself as a collector of the Complainant’s brand in the email he sent to the Center on December 26, 2020, so that this knowledge is demonstrated.

Also, the Panel finds that the disputed domain name was used in order to impersonate the Complainant to third parties, as part of a fraudulent email scheme whereby the Respondent asserted baseless claims of Intellectual Property infringement on social media websites.

The confusion thus created by the Respondent is emphasized by the fact the disputed domain name resolves to the Complainant’s official website, leading third parties to accept the Respondent as a legitimate representative of the Complainant.

Finally, this situation in which the Respondent retains control over the redirection of the disputed domain name prevents the Complainant from exercising its rights to the OCTOBER’S VERY OWN trademarks and so managing its presence on the Internet.

Consequently, in view of all the circumstances of this case, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to 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 disputed domain name <octobersveryown.co> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: February 18, 2021