WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

October’s Very Own IP Holdings v. MakParty

Case No. D2013-0763

1. The Parties

The Complainant is October’s Very Own IP Holdings of Canada, represented by Moritt Hock & Hamroff LLP, United States of America.

The Respondent is MakParty of Brampton, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <ovofest.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2013. On April 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2013.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 30, 2013. 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 as a music production company and record label, associated with an internationally recognized performing artist known as Drake. The Complainant has used the marks “October’s Very Own” and “OVO” to market Drake’s music, performances and merchandise (“OVO” being the acronym for “October’s Very Own”). In April 2008 the Complainant created and promoted a blog under the name “October’s Very Own.” On October 6, 2008 the Complainant registered the domain name <octobersveryown.net>. In July 2010 the Complainant began using the OVO FEST mark to market and promote, what has become, an annual summer concert in Toronto, Ontario, Canada. The OVO Fest concert is highly publicized and well known, particularly in Canada.

The Respondent is an unknown entity. The disputed domain name <ovofest.com> was registered on December 7, 2011. At the time the Complaint was filed, the disputed domain name led to a parked page that only displayed links to product and service pages of the registrar NameCheap.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar

The Complainant argues that the disputed domain name <ovofest.com> is identical and confusingly similar to the Complainant’s common law trademark, OVO FEST.

The Complainant claims common law trademark rights in OVO FEST because of the mark’s wide use in connection with the Complainant’s summer concert, as well as with Drake’s music, performances, marketing, promotions and merchandising, beginning in July 2010. The Complainant has provided evidence of the reputation of OVO FEST, by way of search results in the AOL search engine, and through searches on Instagram, Tumblr and YouTube.

The Complainant argues that the disputed domain name <ovofest.com> is essentially identical to the Complainant’s common law trademark, OVO FEST, except for the addition of the “.com” designation. Therefore, the Complainant claims that the disputed domain name is confusingly similar to the Complainant’s trademark.

(b) Rights or Legitimate Interests

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name, <ovofest.com>. The Respondent has no trademark or service mark rights in OVO FEST. The Complainant argues that the Respondent is not a licensee of the Complainant, does not have a relationship with the Complainant, and is not authorized to use the Complainant’s trademark. There is no indication that the Respondent has ever used OVO FEST as its name, or that it is commonly known as OVO FEST.

The Complainant contends that there is no evidence to suggest that the Respondent has used the disputed domain name in connection with any bona fide offering of goods or services. Instead, it claims that the Respondent has parked the domain without content, except for links to product and service pages of the registrar NameCheap.

The Complainant also submits that since the name “ovofest.com” is essentially identical to the Complainant’s distinctive trademark, a finding of no rights or legitimate interests is warranted.

(c) Registered and Used in Bad Faith

The Complainant submits that the Respondent registered and is using the disputed domain name, <ovofest.com>, in bad faith. In support of this claim, the Complainant argues that the Respondent must have known of its OVO FEST trademark at the time it registered the disputed domain name. Furthermore, it contends that the Respondent has not actively used <ovofest.com> since it was registered.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(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 interest 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 Panel is satisfied that the first requirement of paragraph 4(a) of the Policy has been met. For the reasons set out below, the Panel finds that the Complainant holds common law trademark rights over OVO FEST, and that the disputed domain name, <ovofest.com>, is identical to that protected mark.

As OVO FEST is not a registered trademark, the Panel must first determine whether the Complainant successfully established common law trademark rights in the name. Such common law rights exist if the Complainant can prove sufficient reputation in the mark, and an association between the mark and itself (Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322).

Upon review of the uncontested evidence, the Panel accepts that, since 2010, OVO FEST has gained a substantial reputation in relation to the Complainant’s business, and the OVO Fest concert in particular. The mark was used in that capacity for over a year before the Respondent registered <ovofest.com>. Online searches of the mark consistently deliver results related to the concert, and Drake’s music, performances, marketing, promotion and merchandising. In all the circumstances, the Complainant has successfully established common law trademark rights over OVO FEST.

The Panel also finds that the disputed domain name, <ovofest.com>, is identical to the Complainant’s alleged common law trademark, OVO FEST. The addition of the “.com” suffix is insufficient to distinguish a disputed domain name from a trademark (Blue Sky Software Corp. v Digital Sierra Inc. and Abdullah Khan, WIPO Case No. D2000-0165).

B. Rights or Legitimate Interests

The Panel is satisfied that the second requirement of paragraph 4(a) of the Policy has been met.

As part of the second requirement, the Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once this burden is met, the onus shifts to the Respondent to rebut the presumption (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270). Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights or legitimate interests in the disputed domain name if:

(i) Before notice of the dispute, the Respondent uses, or demonstrates preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) The Respondent has been commonly known by the disputed domain name; or

(iii) The Respondent makes a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Upon review of the uncontested evidence, the Panel is satisfied that the Complainant has discharged its burden. The Complainant showed that the Respondent prima facie lacks any rights or legitimate interests in <ovofest.com>.

The evidence demonstrates that the disputed domain name has been parked with links to a registrar’s product and service pages since it was registered on December 7, 2011. UDRP panels have held that “to register domain names and park them to earn rental revenue by allowing a third party to use the domain name itself is not a bona fide use” (Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093). The Panel is satisfied that the Respondent never used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services.

There is also no evidence that the Respondent has ever been known by the disputed domain name, or that it made a legitimate noncommercial or fair use of it. Furthermore, OVO FEST is a distinctive mark and would not likely be chosen as a domain name by the Respondent other than for the illegitimate purpose of creating an association with the Complainant (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Complainant also affirms that the Respondent is not its licensee, and that the Complainant has no relationship with the Respondent. It is clear from what has been presented to the Panel that the Respondent is not and has never been authorized to use the OVO FEST mark.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in <ovofest.com>. Consequently, the burden is shifted to the Respondent to rebut the presumption. As the Respondent failed to file any evidence and did not respond to the Complaint, the Complainant has satisfied the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel is satisfied that the third requirement of paragraph 4(a) of the Policy has been met.

Paragraph 4(a) of the Policy requires proof that the Respondent registered and continues to use the disputed domain name in bad faith (Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003). A claim of bad faith registration and use may be supported by, but is not limited to, proof of the factors set out in paragraph 4(b) of the Policy.

In all the circumstances, the Panel finds that the Respondent must have known of the Complainant’s mark when it registered the disputed domain name. Three factors support this conclusion (1) the OVO FEST mark is well known, particularly in the Ontario area; (2) the Respondent is actually located in that area (Ontario) where the Complainant’s reputation is well established; (3) the Complainant’s trademark is an unusual highly distinctive coined term, that appears to have no meaning other than the Complainant’s event. In these circumstances, the Panel finds that the Respondent’s conduct in registering the disputed domain name, when and where it did, constitutes an abusive registration.

The Panel is satisfied that the uncontested evidence supports a finding of bad faith under paragraph 4(b)(iv) of the Policy. The Respondent registered and used <ovofest.com> with the intention of attracting Internet users for commercial gain. This point is established by the fact that NameCheap advertises on the parked website. UDRP panels have held that commercial gain may not be required to be personally derived by the registrant (Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912). Therefore, it is inconsequential that the Respondent is not personally gaining from NameCheap’s advertising on its page. It is enough that it passively allows NameCheap to do so. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is also proven by the fact that the disputed domain name is essentially identical to the Complainant’s OVO FEST trademark.

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 <ovofest.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: June 11, 2013