Complainant is Beyoncé Knowles of California, United States of America, represented by Keats McFarland & Wilson, LLP, United States of America.
Respondent is Sonny Ahuja of Wisconsin, United States of America.
The disputed Domain Name <beyoncefragrance.com> is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2010. On August 26, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed Domain Name. On August 27, 2010, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2010. On September 15, 2010, Respondent contacted the Center by email requesting a 15-day extension of time to answer the Complaint.
The Center contacted Complainant for Complainant’s response to the request. On September 20, 2010, Complainant declined to agree to an extension of time to answer. The Center, having found no exceptional circumstances for the request (Rules, paragraph 5(d)) denied the same. Respondent was notified of this fact on September 20, 2010 and was given until September 21, 2010 to submit a Response. No formal Response was filed.
The Center appointed Barbara A. Solomon as the sole panelist in this matter on October 1, 2010. 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.
Upon review of the case file, the Panel, in the interest of fairness, issued an Administrative Procedural Order on October 4, 2010 giving Respondent an opportunity to file a Response by October 9, 2010. No Response was filed by Respondent.
Complainant is Beyoncé Knowles a well-known recording artist, actress and spokesmodel who has had significant commercial success and fame over the last decade or more. Complainant began her career as a singer in the late 1990’s as part of the R&B group Destiny’s Child. In 2003 she became a solo artist and has been recognized as the most successful female artist of the 2000s decade, the top radio artist of the decade and the top certified artist of the decade. Complainant’s fame as a singer has allowed her to expand into other areas including films such as the movie version of the Broadway musical Dreamgirls. Complainant also has worked as a spokeswoman for fashion and fragrances and has developed her own fragrance Beyoncé Heat. Complainant owns at least two United States registrations for the mark BEYONCÉ.
Respondent registered the disputed Domain Name (the “Domain Name”) on November 21, 2008. At the time of the Panel’s decision, the Domain Name resolved to a website containing sponsored links all of which appear to relate to fragrances.
Complainant’s submissions can be summarized as follows: (a) Complainant has rights in the mark BEYONCÉ by virtue of existing United States Federal trademark registrations for said mark; (b) Complainant, by extensive commercial use of her own name in the entertainment industry including as a recording artist, actress and spokesmodel, has acquired common law trademark rights in the name Beyoncé; (c) the Domain Name includes the entirety of Complainant’s BEYONCE mark and is identical or confusingly similar to Complainant’s BEYONCÉ mark; (d) Respondent is not commonly known by the name “beyoncefragrance.com”, and is not authorized or licensed by Complainant to use Beyoncé in or as part of any mark or Domain Name; (e) Respondent cannot claim any legitimate, noncommercial or fair use of the Domain Name; (f) Respondent is using the Domain Name for his commercial benefit, specifically for an ad farm which contains pay-for-click and sponsored listings; (g) use of the Domain Name is intended to divert consumers to Respondent’s site for the purpose of generating revenues from sponsored listings; (h) registration of the Domain Name is intended to attract Internet users to Respondent’s website for Respondent’s commercial gain by creating a likelihood of confusion with Complainant.
While Respondent did not put in a further or formal response following the Panel’s Procedural Order, in emails submitted to the Center dated September 15, 16 and 22, Respondent advised of the following: (a) Respondent has been in the perfume business for 13 years and sells Beyoncé fragrance in his stores and through online websites; (b) Respondent intended to sell the Beyoncé fragrance on the website “www.beyoncefragrance.com”; (c) Respondent purchased the Domain Name in order to sell Complainant’s fragrance; (d) Respondent has not sought to sell the Domain Name.
Under paragraph 4(a) of the Policy, the burden of proof lies with Complainant to show each of the following three elements: (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 by Respondent in bad faith.
As an initial matter, Complainant must first establish rights in BEYONCÉ as a mark. Regardless of how famous the Complainant may be, this does not lessen Complainant’s burden of proof, a burden that requires Complainant to prove trademark rights through appropriate evidence. In the case of Complainant, there should be a plethora of supporting evidence. Unfortunately, Complainant, through counsel, failed to provide such evidence, leaving the Panel with little actual evidence on which to base its opinion. For example, Complainant’s evidence consists in significant part of a printout from Wikipedia.org and “www.beyonceonline.com” (annex C to Complainant’s submission). Courts have hesitated to give any weight to Wikipedia references given that the listings on Wikipedia can be created by individuals and are not subject to any fact checking. See, e.g., June 23, Letter from INTA to Commissioner Lynne Beresford objecting to use of Wikipedia to establish rights because “anyone can alter the content of Wikipedia at any time, casting doubt on the validity of the information contained therein”; Campbell v. Sec’y of Health and Human Science, 69 Fed. Cl. 775, 781 (Ct. Cl. 2006) (criticizing Wikipedia as source of evidence); In re IP Carrier Consulting Group, 84 U.S.P.Q.2d 1028, 1032-1033 (T.T.A.B. 2007) (noting that better practice is to corroborate information with other sources). Complainant has not offered any other evidence to support or corroborate most of the claims made in the third party Wikipedia account or in the Complaint.
Complainant also refers to the website “www.beyonceonline.com”. However, Complainant has failed to identify who owns “www.beyonceonline.com” and who is responsible for the content on that website. Further, Complainant has not bothered to indicate when “www.beyonceonline.com” actually went live or to indicate whether the registration of the url “www.beyonceonline.com” or the availability of the website predates the registration of the Domain Name. In addition, it does not appear that anything from the “www.beyonceonline.com” website references any use of BEYONCÉ as a name or a mark prior to the November 21, 2008 registration of the disputed Domain Name.
Another concern about Complainant’s evidentiary submission is its failure to provide either copies of the United States Registrations for the BEYONCÉ trademarks relied on or printouts from the official website of the United States Patent and Trademark Office showing current status of and title in the pleaded registrations. Complainant instead provided printouts from the Trademark Electronic Search System which provides no such information directly but which, based on the information contained therein, allowed the Panel to verify the publicly-available status of United States Registration Numbers 2879852 and 3734682 and to determine that based on the official record of the United States Patent and Trademark Office these Registrations are valid and subsisting and remain in effect.
Although a proper evidentiary showing likely would establish extraordinarily strong common law rights in BEYONCÉ as a mark, on the record presented the Panel cannot make such a finding. However, this is not necessary given that Complainant owns United States Registrations for the BEYONCÉ trademark which establish rights in the BEYONCÉ mark prior to the registration date of the Domain Name.
Having determined that Complainant has rights in the mark BEYONCÉ, the next issue is whether the Domain Name is identical or confusingly similar to Complainant’s mark. The Domain Name adds to the name BEYONCÉ the generic word “fragrance.” It is well settled that adding a generic term to a mark is not sufficient to avoid confusion. Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521 (including a generic term with a famous mark aggravates rather than diminishes the likelihood of confusion); Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615 (domain name that wholly incorporates registered trademark establishes confusing similarity); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (domain name with addition of generic term found legally identical to complainant’s mark). In this case, the Domain Name clearly is dominated by Complainant’s BEYONCÉ mark and the source identifying and distinctive element of the Domain Name and Complainant’s mark are identical. The fact that Complainant was not offering any fragrances under her name prior to the registration of the Domain Name is of no consequence. It is well known that celebrities often lend their name or image to ancillary products such as fragrances; witness Britney Spears, Jennifer Lopez, Sean Combs, Elizabeth Taylor, and Sarah Jessica Parker to name just a few. Combining this industry custom with Complainant’s history of being a spokesperson, the Domain Name inevitably would be associated with Complainant.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied and notes that in the informal submissions by Respondent, Respondent has not suggested otherwise or argued to the contrary.
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use the BEYONCÉ mark for any purpose. This then shifts the burden to Respondent to show by concrete evidence that he has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy his burden by demonstrating any of the following: (i) before any notice of the dispute, 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if he has acquired no trademark or service mark rights; or (iii) 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.
Respondent has been given ample opportunity to present a Response to the Complaint and to establish his rights or legitimate interests in the Domain Name. He has not come forward with any such evidence. Indeed notwithstanding the claims made by Respondent in his emails, the only evidence that exists is the actual website that is associated with the Domain Name. That website contains nothing more than sponsored links to a variety of third party sites that sell third-party fragrances. Respondent undoubtedly collects referral fees for these links. Prior UDRP decisions have made it clear that such use does not constitute a legitimate use of a Domain Name or the legitimate offering of goods or services. PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162. Respondent has not submitted any materials to overcome this finding of illegitimacy.
The fact that Respondent is in the fragrance business does not allow Respondent to register the Domain Name at issue. Several WIPO panels have ruled that a re-seller, even an authorized re-seller, cannot use another mark in a Domain Name without the express consent of the mark owner, consent that obviously does not exist here. See, e.g., The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113; Avon Products, Inc. v. Jongsoo Lee, WIPO Case No. D2001-0272.1 Similarly, the fact that Respondent may desire to sell BEYONCÉ fragrance does not give him an absolute right to take <beyoncefragrance.com> as a domain name. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.3. Under the majority view, for a re-seller to make a bona fide use of a protected term in a domain name, Respondent must, inter alia, accurately disclose the respondent’s relationship with the trademark owner. In this case, Respondent has not satisfied this requirement. Indeed, other than asserting in an email that his intention in registering the Domain Name was to establish a website that sold BEYONCÉ fragrance, there is no evidence that this was the purpose.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Complainant suggests that there is evidence of bad faith because Respondent attempted to sell the Domain Name. The exhibits annexed to the Complaint, however do not support this conclusion. There is no evidence that Respondent registered the Domain Name for the sole purpose of selling it. Further, no offer was made for sale upon acquisition of the Domain Name or even shortly thereafter. Any discussion of sale was initiated by or on behalf of Complainant. Further, Complainant appears to have continued to push the issue of sale by sending a steady stream of emails to Respondent asking him to sell the Domain Name. These include emails dated December 17 2009, February 12, 2010, February 17, 2010, March 17, 2010, March 24, 2010, and April 2, 2010. These emails do not show that Respondent took the Domain Name for the purpose of selling it, only that Complainant made repeated efforts to try and buy it. Certainly, this evidence does not support a claim of bad faith under the UDRP. Puky GmbH v. Ignatius Agnello, WIPO Case No. D2001-1345.
Complainant must show both bad faith registration and bad faith use. A. Nattermann & Cie GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800. As to bad faith registration, given the statements made by Respondent, it is clear that Respondent knew of Complainant at the time he registered the Domain Name. Indeed, Respondent all but admits that the Domain Name was registered because of his knowledge of and to create an association with Complainant. In addition, Respondent knew at the time he registered the Domain Name that he was not authorized to sell any of Complainant’s fragrances and that he was not a licensed re-seller of the fragrances. Accordingly, there is sufficient evidence to find that the Domain Name was registered in bad faith.
It is also clear from the evidence that the Domain Name is being used in bad faith. The website to which the Domain Name currently resolves contains sponsored ads to various websites that sell third-party fragrance. As such, Respondent is trading on consumer interest in Complainant and her fragrance in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the website. Respondent clearly derives commercial advantage in the form of referral fees. This constitutes bad faith. Fox News Networks, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128. The Panel therefore finds that Respondent has registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <beyoncefragrance.com>, be transferred to Complainant.
Barbara A. Solomon
Sole Panelist
Dated: October 15, 2010
1 The Complaint states that Complainant’s fragrance Beyoncé Heat is available at the websites”www.beyoncefragrances.com” and “www.beyonceparfums.com”. Complainant, however, has failed to indicate whether she owns these websites, whether these websites are associated with Complainant, or whether Complainant has authorized the use of the Beyoncé name in connection with these websites.