The Complainant is ROAR, LLC of Beverly Hills, California, United States of America (“United States”), represented by Kinsella Weitzman Iser Kump & Aldisert, LLP, United States.
The Respondent is Jonathan Shalit, ROAR Global Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Sheridans, United Kingdom.
The disputed domain name, <roarglobal.com> (“Disputed Domain Name”), is registered with 123-Reg Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2016. On the same date, the Center received an amended Complaint. On August 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 8, 2016, 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 Registrar transmitted by email to the Center further clarifications on August 18, 2016. On the same date, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed a second amended Complaint on August 23, 2016.
The Center verified that the Complaint, together with the amended Complaint and second 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 August 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2016. The Response was filed with the Center on September 14, 2016.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on September 20, 2016. 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.
The Complainant is a company established in the United States, which provides talent management services in the United States. The Complainant holds registered rights in the ROAR trade mark in the United States, United Kingdom and European Union (the earliest of which was registered on November 15, 2005).
The Respondent registered the Disputed Domain Name on April 14, 2009. The Respondent is the founder of the company, Roar Global Limited (“Respondent’s Company”), which was established in the United Kingdom. The Respondent, through the Respondent’s Company, provides talent management services. The Respondent’s Company changed its name from “Smith Baker Limited” to “Roar Global Limited” on February 19, 2010. The Respondent holds rights in the ROAR GLOBAL trade mark registered in the United Kingdom on January 1, 2016.
The Complainant’s contentions can be summarized as follows:
(a) The Complainant is a talent management company that has been conducting business under the ROAR trade mark since 2000. The Complainant has offices throughout the United States, and conducts business globally. The Complainant claims to represent Grammy Award winning musicians and also award winning actors that appear in television and film productions distributed globally, including The Hunger Games and The Avengers.
(b) The Complainant has held common law rights in the ROAR trade mark since 2000, and also has registered trade mark rights in the United States (registered on November 15, 2005), and the European Union, Japan and Singapore. The Complainant also has pending trade mark applications in Israel and Canada. The Complainant owns the websites “www.roar.la” and “www.roarasiapacific.com”, which it uses for its talent management business. The Complainant’s ROAR trade marks are known worldwide.
(c) The Respondent represents talent in the music, film and television industry, and formerly operated his business under the name Shalit Global. The Respondent changed the name of his company in 2009 to “Roar Global Limited”. Even though the Respondent and the Respondent’s Company’s principal place of business is in the Untied Kingdom, they have conducted business in the United States using the ROAR trade mark and/or have promoted their services in the United States under the ROAR trade mark.
(d) The Respondent’s use of the ROAR trade mark in the Disputed Domain Name in connection with the same services that the Complainant provides is likely to cause confusion and may result in users believing that the Disputed Domain Name is connected to the Complainant.
(e) The Disputed Domain Name is confusingly similar to the Complainant’s ROAR trade mark. Given the Complainant’s longstanding use of its ROAR trade mark in the United States and globally, the Respondent cannot have any legitimate interest or right to use the ROAR trade mark in the Disputed Domain Name in connection with talent management services. The Respondent changed the name of his business to “Roar Global Limited” nine years after the Complainant began using its ROAR trade mark, and the Complainant claims that the Respondent did so in order to confuse users and capitalize on the goodwill of the Complainant. The Complainant alleges that the Respondent registered the Disputed Domain Name to disrupt the Complainant’s business and divert clients from the Complainant to the Respondent by creating confusion.
The Respondent’s contentions can be summarized as follows:
(a) The Respondent’s Company has been trading under the name “Roar Global Limited” since 2009. The Respondent officially changed the name of the Respondent’s Company in February 2010. The Respondent and the Respondent’s Company are a well-known United Kingdom centric talent agency, which manages the interests of clients from the broadcasting, music, sports and literary industry.
(b) The Respondent has carried out operations in the talent management industry for over 25 years, and was made an Officer of the Most Excellent Order of the British Empire (“OBE”) by Her Majesty the Queen of England, for his services to the entertainment industry.
(c) The Respondent chose to use the ROAR GLOBAL trade mark in 2009, independently and without consideration of the Complainant’s business. The name was not chosen with any intent to trade off the goodwill or reputation of the Complainant or its ROAR trade mark. The Respondent chose to utilize ROAR as it was an acronym for “Rights Ownership and Artist Representation”.
(d) The Respondent has held common law rights in the ROAR GLOBAL trade mark since 2009, and obtained registered rights in the ROAR GLOBAL trade mark in the United Kingdom on January 1, 2016. No opposition was made to the Respondent’s application of his ROAR GLOBAL trade mark. The Respondent’s registration of the Disputed Domain Name and common law rights pre-date the Complainant’s registration of its ROAR trade mark in the European Union in 2012.
(e) The Complainant is not well known worldwide, particularly in the United Kingdom. Any reputation the Complainant has is limited to the United States. This is allegedly supported by the Complainant’s “www.roar.la” website, which provides no information on the Complainant and instead simply lists the Complainant’s office address in five cities in the United States. The Complainant’s “www.roarasiapacific.com” website also illustrates the United States-specific expertise of the Complainant, e.g., the contact details listed are for an office in the United States. There is no evidence of any kind that the Complainant has been providing services or has any operations in the United Kingdom or Europe.
(f) The Respondent denies that he has sought to deliberately create confusion with the Complainant’s ROAR trade mark in order to benefit from the Complainant’s reputation. Any travel to the United States that the Respondent’s representatives have made for the purposes of business was only in accordance with the needs of those whom the Respondent represents in the United Kingdom or Europe, and the Respondent has not misrepresented any association with the Complainant. The Respondent claims to have never made any intimation of a connection with the Complainant.
(g) The Respondent has been using the Disputed Domain Name for a bona fide offering of talent management services. He did not register it with the intent to disrupt the Complainant’s business. The Complainant has no substantial operations in the United Kingdom, and so the Parties are not actual competitors. The Respondent has been in the talent management business for over 25 years, and has acquired his own reputation in connection with the ROAR GLOBAL trade mark.
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.
The Complainant alleges to have made use of its ROAR trade mark and to have common law rights in the ROAR trade mark since 2000, and that it holds registered rights in the ROAR trade mark in the United States, European Union, Japan and Singapore. However, the Complainant has failed to provide any evidence of such common law rights or any of its registered trade marks. Due to the Complainant’s failure to provide any supporting documents (despite filing two further amended Complaints), the Panel found it necessary to exercise its powers under paragraph 10(a) of the Rules to determine whether or not the Complainant has registered trade mark rights. Following the Panel’s online search of the United States Patent and Trademark Office and TMView, the Panel accepts that the Complainant has registered rights in the ROAR trade mark based on its United States trade mark registration (registered on November 15, 2005), its United Kingdom trade mark registrations (the earliest of which was registered on October 25, 2012) and its European Union trade mark registration (the earliest of which was registered on May 16, 2012).
The Disputed Domain Name incorporates the Complainant’s ROAR trade mark in its entirety, the only difference being the addition of the word “global”. The word “global” is a generic word, and it is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088).
The Panel finds that “roar” is the distinctive component of the Disputed Domain Name and the addition of “global” does little to distinguish it from the Complainant’s trade mark.
It is also a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain, in this case “.com”, may generally be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel notes that the Respondent has registered rights in the ROAR GLOBAL trade mark, which is identical to the Disputed Domain Name. Whilst this is not relevant for the purposes of determining the first element, it may be relevant when considering the second and third element.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the ROAR trade mark before the Disputed Domain Name was registered and has never authorised the Respondent to use its ROAR trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that he has rights or legitimate interests in the Disputed Domain Name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him 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 has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark 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 trade mark or service mark at issue.
The Respondent has been using the Disputed Domain Name to resolve to a website advertising his talent management services (“Respondent’s Website”). The Disputed Domain Name was registered by the Respondent on April 14, 2009, and reflects the name of the Respondent’s Company. The Respondent began trading under his ROAR GLOBAL trade mark since 2009, and officially changed the name of the Respondent’s Company to “Roar Global Limited” in February 2010.
The Complainant alleges that the Respondent registered and is using the Disputed Domain Name in order to take advantage of the Complainant’s reputation and to confuse users into believing that the Complainant is affiliated with the Disputed Domain Name. However, the Panel notes that the Complainant has failed to provide any evidence whatsoever in support of these allegations. In particular, it has not provided any evidence of its reputation or well-known status, both inside and/or outside the United States. The only documents provided by the Complainant in support of the Complaint are a copy of the WhoIs results for the Disputed Domain Name and the registration agreement relating to the Disputed Domain Name.
The Complainant had multiple opportunities to file evidence to support its allegations, having filed two amended versions of the Complaint (i.e., three versions in total). As the Complainant chose not to do so despite several opportunities, the Panel has decided not to exercise the Panel’s power to request further evidence from the Complainant. As stated in Viacom International Inc. and MTV Networks Europe v. Rattan Singh Mahon, WIPO Case No. D2000-1440, “it would, and should, be in exceptional cases only that supplementary submissions are requested by a Panel. If requesting supplementary submissions were to become unexceptional, the dispute resolution procedure under the Uniform Policy and Rules would most likely become significantly more resource-consuming to all the actors (i.e. the parties, the dispute resolution service provider, and the Administrative Panel) than is currently the case, as the unfolding scenario in this case demonstrates. Such an outcome seems contrary.” It is the Complainant’s responsibility to present a complete case to the Panel, and it made the decision to rely on bare allegations with no evidentiary backing.
In contrast, the Respondent has provided evidence that he and the Respondent’s Company are known in the talent industry and have represented many celebrities in the United Kingdom, such as Kate Silverton and Kelly Brook. The Respondent claims that he started using the brand ROAR, as it was an acronym for “Rights Ownership and Artist Representation”. This is supported by the article published by Broadcast, and submitted by the Respondent as part of the Response. The Respondent has been in the talent management business for 25 years, and has even been awarded an OBE for services to the entertainment industry.
The Panel decided to exercise its powers under paragraph 10(a) of the Rules in order to visit the Complainant’s “www.roar.la” and “www.roarasiapacific.com” websites. The Complainant’s main website (i.e., “www.roar.la”) does not advertise or refer to the services provided by the Complainant, and instead consists of a single webpage which lists the locations of the Complainant’s offices in the United States. The Complainant’s “www.roarasiapacific.com” website also only provides an office address in the United States, and advertises a range of services not directly related to talent management (e.g., corporate strategy, mergers and acquisition management, business development, legal consultation, etc.).
Further, the Complainant registered its ROAR trade mark in the United Kingdom (where the Respondent is based) on October 25, 2012, and in the European Union on May 16, 2012. This is after the Disputed Domain Name was registered in 2009 and after the Respondent began trading under the “Roar Global” brand, and lends support to the argument that the Complainant had little or no operations in the United Kingdom and was not well known at the time the Respondent registered the Disputed Domain Name.
Based on the above, the Panel is unable to find that the fame of the Complainant and its ROAR trade mark was such that the United Kingdom-based Respondent was more likely than not aware, or had knowledge, of the Complainant’s trade mark at the time of registering the Disputed Domain Name, and did so for the purpose of misleading users into believing that the Disputed Domain Name is connected with the Complainant. As such, the Panel accepts that the Respondent has been using the Disputed Domain Name in connection with a bona fide offering of services.
The Panel therefore finds that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy.
As the Panel finds that the Complainant has failed to discharge its burden of proof under paragraph 4(a)(ii) of the Policy, it considers it unnecessary to proceed to consider the satisfaction or otherwise of the requisite elements regarding bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Sole Panelist
Date: October 4, 2016