The Complainant is Guitar Center, Inc., United States of America, represented by Much Shelist PC, United States of America (“United States”)
The Respondent is Contact Privacy Inc. Customer 0156291006, Canada / Nikolay CHAVDAROV, My Guitar Center, Bulgaria.
The disputed domain name <myguitarcenter.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2019. On December 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 16, 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 31, 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 amendment to Complaint on December 31, 2020.
The Center verified that the Complaint together with the amendment to 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 January 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2020. On January 18 and 22, 2020, the Respondent contacted Registrar asking about the proceeding and indicating that he wants to end the proceeding. Pursuant to the Complainant’s request, the proceeding was suspended on January 29, 2020. The Center received an incomplete settlement form signed by the respondent from an unidentified email address on January 29, 2020. On January 31, 2020, the Center requested that the Respondent send future communications through the email address confirmed by the Registrar and that if they so wished, for the Parties to submit a complete standard settlement form signed by both Parties, but no such settlement form has been received by the Center. Pursuant to the Complainant’s request, the proceeding was reinstituted on April 29, 2020, and the new response due date is May 4, 2020. On May 5, 2020, the Center notified the Parties of Commencement of Panel Appointment Process.
The Center appointed John Swinson as the sole panelist in this matter on May 11, 2020. 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 Guitar Center, Inc., a company incorporated in the United States. According to the Complaint, the Complainant sells musical instruments and related goods worldwide and has revenue “in the billions”. The Complainant has 269 stores throughout the United States and also operates the e-commerce platform at the website <guitarcenter.com>. According to the Complaint, the Complainant is extremely well known worldwide and has developed a strong reputation in the guitar and guitar-related equipment and accessories.
The Complainant is the owner of numerous trade marks for GUITAR CENTER, the earliest of which is United States registered trade mark number 1290481, registered on August 14, 1984 (the “Trade Mark”).
The Complainant has its own Wikipedia entry (of note, for example, is a section on the “Guitar Center Sessions” which showcased exclusive live performances by famous artists at the Complainant's “iconic Hollywood, CA location.”), and is furthermore active on all manner of social media, having a YouTube channel with nearly 850,000 subscribers, a presence on Facebook with over 1.7 million followers, a Twitter account with nearly a quarter of a million followers, and an Instagram account with 1.3 million followers.
The Respondent is Nikolay Chardarov, also listing “My Guitar Center” in its contact details with the Regsitrar. No formal response was received by the Respondent and therefore little information is known about the Respondent. The Respondent registered the Disputed Domain Name on November 24, 2019. The website currently resolves to a placeholder Shopify page which states inter alia “Only one step left! To finish setting up your new web address, go to your domain settings…”. The Internet Archive’s Wayback Machine shows that the page previously was blank at many captures, and e.g., in July 2013 directed to what appears to be a personal page providing apparently free guitar lessons. The Complainant has also provided evidence that following the registration by the Respondent, the Disputed Domain Name at one time resolved to a website which offered services similar to the Complainant’s services.
Identical or confusingly similar
The Complainant has established rights in the Trade Mark, and also has other trade marks registered in various jurisdictions. The Disputed Domain Name is confusingly similar to the Trade Mark. The Disputed Domain Name incorporates the entirety of the Trade Mark with the addition of the word “my”. The additional word “my” does not avoid the confusing similarity.
Rights or legitimate interests
The Respondent does not have any rights or legitimate interests in the Disputed Domain Name as the Respondent is using the Disputed Domain Name to provide services identical to the Complainant. Further, the Respondent lacks rights or legitimate interests because:
- The Complainant has not authorized the Respondent to use the Trade Mark in the Disputed Domain Name.
- There is no relationship between the Complainant and the Respondent and no licence, permission or authorization for the Respondent to use the Disputed Domain Name.
- The Respondent will not be able to provide evidence of legitimate noncommercial or fair use of the Disputed Domain Name. The Disputed Domain Name is clearly commercial as the website previously offered guitar products for sale.
- The Respondent will not be able to provide evidence of demonstrable preparations to use the Disputed Domain Name in a bona fide way. The Respondent registered the Disputed Domain Name to set up an infringing online store and is offering goods and services in bad faith.
Registered and used in bad faith
The Complainant has a well-known Trade Mark. The Complainant also has trade mark registrations in European Union that afford protection in Bulgaria, where the Respondent is located. The Respondent should have been aware of the Complainant when registering the Disputed Domain Name. The Respondent’s purpose in registering the Disputed Domain Name was to target the Complainant.
The Respondent has used the Disputed Domain Name in bad faith to publish a website that offered identical services to those of the Complainant. The Respondent’s trade mark infringement is enough to demonstrate bad faith use. Further, the Respondent has sought to conceal its identity and location by using a privacy service.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 in bad faith.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the word “my” at the beginning. Where a domain name incorporates the entirety of a trade mark, 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 (see section 1.7 the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to at least make out a prima facie case showing that the Respondent lacks rights or legitimate interests which then shifts the burden of production to the Respondent.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name currently resolves to a placeholder Shopify page and previously resolved to a website which offered services similar to the Complainant’s services.
- The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The website at the Disputed Domain Name currently resolves to a placeholder Shopify page and previously resolved to a website which offered services similar to the Complainant’s services.
The Panel notes that the Disputed Domain Name consists of the words “my guitar center” which is the Complainant’s Trade Mark, and which component parts are individually dictionary words or together potentially a common phrase.
The Panel also acknowledges that holding domain names consisting of dictionary words or common phrases can be bona fide under the Policy. The Panel is mindful that “my guitar center” comprises common dictionary words. However, for the Respondent to rely on the fact the Disputed Domain Name is composed of dictionary words to ground the Respondent’s claim to rights or legitimate interests in it (see section 2.10 of the WIPO Overview 3.0), certain conditions must be met.
In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trade mark rights (see Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). The Disputed Domain Name cannot be used to target a third-party trade mark. Complicating this aspect of the case is the fact that the Complainant’s Trade Mark, while apparently quite well-known or even famous, is also descriptive.
The Complainant provided evidence to show that the Respondent previously used the Disputed Domain Name to provide a website which sold guitar products. This could have demonstrated that the Respondent was using the Disputed Domain Name in connection with the common meaning of “my guitar center”. However, aside from engaging in settlement discussions with the Complainant, the Respondent has not replied to the Complaint nor provided any arguments or information in this respect. At the time of the Complaint and this decision, the Disputed Domain Name resolves to a placeholder Shopify page.
The Respondent had the opportunity to provide such evidence of its use of the Disputed Domain Name in connection with a legitimate purpose but did not do so. If the Respondent was able to demonstrate that it registered and was using the Disputed Domain Name in order to take advantage of the generic or descriptive meaning, then the Respondent may well have a legitimate interest for the purposes of the Policy. However, the Respondent did not do so and it is open to the Panel to decide that the intention was to take advantage of the Complainant’s business.
Further, the Complainant has provided evidence that the Trade Mark has a strong reputation and there is a likelihood of confusion between it and the Disputed Domain Name. As discussed in respect of the third element below, the Panel finds that it is more likely than not that the Respondent was aware of the Complainant’s rights when registering the Disputed Domain Name; the Panel notes in this respect that in addition to the Complainant’s claim to a certain level of fame, the Respondent has removed the prior (in the abstract, potentially legitimate) content, and that the parties were engaged in settlement talks and yet the Respondent did not reply to the Complaint.
As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or used the Disputed Domain Name in bad faith.
The Panel accepts the Complainant’s submissions that the Trade Mark and the Complainant are well known internationally, having been in operation since the 1960s. The Complainant has developed a significant reputation in the Trade Mark and claims to be famous world-wide, including in Europe, where the Respondent is located. The Complainant’s registration of the Trade Mark predates the registration of the Disputed Domain Name by 35 years.
Given that the Disputed Domain Name is almost identical to the Trade Mark and without the benefit of a response from the Respondent, based on the facts discussed above, the Panel infers that the Respondent either knew that her registration would be identical or confusingly similar to the Complainant’s Trade Mark.
The particular circumstances of this case which lead to a conclusion of bad faith use are:
- the Trade Mark has a strong reputation and is apparently widely known throughout the world, as evidenced by numerous trade mark registrations worldwide and the Complainant’s evidence of its reputation and size and social media following;
- the Disputed Domain Name resolves to a placeholder Shopify page only after previously resolving to a website which offered services similar to the Complainant’s services;
- the Respondent has not submitted a response or provided any evidence of actual or contemplated good-faith use; and
- the Respondent has taken active steps to conceal its true identity through a privacy service (see section 3.6 of WIPO Overview 3.0); if the Respondent would have been engaging in bona fide commercial objectives related to the meaning of the domain name, one would expect the Respondent to openly provide its contact information to the trading public (this is notably different than a corporate registration portfolio managed by a corporate registrar).
In light of the above, the Panel finds that the Complainant has succeeded on the third element of 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, <myguitarcenter.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: May 25, 2020