The Complainant is Sweetwater Sound, Inc., United States of America, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
The disputed domain name <sweetwatermusic.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2020. On October 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2020, 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 for the disputed domain name.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2020.
The Center appointed Alistair Payne as the sole panelist in this matter on November 30, 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 an online retailer of musical instruments and professional audio equipment founded in 1979. It is the largest music instrument and pro audio retailer in the United States and one of the largest in the world today. It operates both through retail premises and its website at “www.sweetwater.com” which had a monthly average of 12.61 million visitors between March and August 2020 and it has a very substantial social media presence on Facebook, Youtube and Instagram. The Complainant owns various United States and Canadian trade mark registrations that incorporate its SWEETWATER mark, including in particular, United States trade mark registration 2995458 registered on September 13, 2005 for a combined device and word mark that incorporates SWEETWATER MUSIC GROUP, United States trade mark registration 3652255 registered on July 7, 2009 for SWEETWATER underlined in a combined device and word mark and Canadian word mark registration TMA762812 for SWEETWATER registered on March 29, 2010.
The disputed domain name was registered on March 21, 2007 and resolves to a Sedo domain name parking page featuring pay-per-click links to various online music and musical instrument stores and a link offering the disputed domain name for sale.
The Complainant submits that it owns registered trade mark rights in the SWEETWATER and SWEETWATER MUSIC GROUP marks as noted above and that the disputed domain name is either identical or confusingly similar to the dominant element in each of these registrations.
It says that it has not licensed, authorised, or permitted the Respondent to use its trade marks in any manner including in the disputed domain name and that the Respondent is not sponsored by or affiliated with the Complainant in any way and is not commonly known by the disputed domain name. In this regard, the Complainant notes that a privacy service is the owner and registrant of the disputed domain name which is inconsistent with the Respondent being commonly known by, or having any entitlement to use the SWEETWATER mark or the disputed domain name.
It says that the fact that the Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business does not amount to a bona fide offering of goods or services that would give rise to the Respondent owning rights or legitimate interests in the disputed domain name. The Complainant further notes that the Respondent has demonstrated a lack of rights and legitimate interests in the disputed domain name through the posting of the “Buy this domain” link at the bottom of the disputed domain name’s website. Clicking on this link takes an Internet user to “Sedo.com” where the disputed domain name is being offered for sale at a minimum offer price of USD 500 and the user is able to submit information to the Respondent, including a “Your Offer” amount for the disputed domain name. It says that posting this link to the Respondent’s website and exhibiting a willingness to accept solicitations to purchase the disputed domain name strongly suggests that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The disputed domain name was registered on March 21, 2007, but to the best of the Complainant’s knowledge the Complainant says that it only transitioned to the current registrant (the Respondent), between January 15, 2018 and March 4, 2018. This, says the Complainant is a date range that falls significantly after the Complainant filed for the registration of its SWEETWATER MUSIC GROUP trade mark with the United States Patent and trademark Office (“USPTO”) in 2000, and also significantly after the Complainant’s registration of its <sweetwater.com> primary domain name on December 5, 1994.
The Complainant submits that its SWEETWATER trade marks are known internationally, with trade mark registrations across numerous countries. The Complainant says that it has marketed and sold its goods and services using the SWEETWATER MUSIC GROUP trade mark since 1977, which is well before the original registration date of the disputed domain name on March 21, 2007 and significantly before it believes that the Respondent assumed control of the disputed domain name between January 15, 2018 and March 4, 2018.
By registering a domain name that is almost identical to the Complainant’s SWEETWATER MUSIC GROUP trade mark, the Complainant says that the Respondent has created a domain name that is confusingly similar to the Complainant’s trade mark, as well as its own <sweetwater.com> domain name. As such, says the Complainant, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business and the composition of the disputed domain name makes it illogical to believe that the Respondent registered the disputed domain name without specifically targeting the Complainant. The Complainant notes that evidence submitted as to the degree of renown attaching to its trade mark and says that it is “not possible to conceive of a plausible situation in which the Respondent could have been unaware of” the Complainant’s brands at the time that the disputed domain name was registered.
The Complainant asserts that the Respondent has used the disputed domain name in bad faith in terms of paragraph 4(b)(iv) of the Policy by diverting Internet users to a website featuring pay-per-click links which reference both the Complainant and its competitors. In addition, says the Complainant, the Respondent has fulfilled the requirements of paragraph 4(b)(i) of the Policy by offering the disputed domain name for sale for a consideration in excess of its out of pocket costs. The fact that the Respondent employed a privacy service to hide its identity and failed to respond to the Complainant’s cease and desist letter is further evidence of the Respondent’s bad faith according to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has demonstrated that it owns various trade mark registrations that incorporate the term or mark “Sweetwater” or “Sweetwater Music”. In particular, United States trade mark registration 2995458 registered on September 13, 2005 for a combined device and word mark incorporates SWEETWATER MUSIC GROUP. The Complainant also owns United States trade mark registration 3652255 registered on July 7, 2009 for SWEETWATER in a combined device and word mark and Canadian word mark registration TMA762812 for SWEETWATER registered on March 29, 2010.
The disputed domain name is confusingly similar to the Complainant’s trade mark registrations in that they contain the highly distinctive and/or dominant element SWEETWATER. The omission of the common English term “music” on the one hand or the common English word “group” on the other does not prevent a finding of confusing similarity for the purposes of this element of the Policy.
The Complainant has submitted that it has not licensed, authorised, or permitted the Respondent to use its trade marks in any manner including in the disputed domain name and that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has also submitted that the Respondent is not commonly known by the disputed domain name and in this regard the Complainant notes that a privacy service is the owner and registrant of the disputed domain name which is inconsistent with the Respondent being commonly known by, or having any entitlement to use the SWEETWATER mark or the disputed domain name.
The Complainant has also submitted that the Respondent is using the disputed domain name to redirect Internet users to a website that feature links to third-party websites, some of which directly compete with the Complainant’s business. This says the Complainant is not a bona fide offering of goods or services that would give rise to the Respondent owning rights or legitimate interests in the disputed domain name and the offer to sell the disputed domain name on the website is also not consistent with the Respondent making a bona fide use of the disputed domain name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent has failed to rebut this case, the Panel finds that for this reason and also for the reasons noted under Part C below, the Complaint succeeds under this element of the Policy.
The Complainant has since 1977 developed a very substantial business in connection with its SWEETWATER trade marks. It operates not only through retail premises in the United States but offers online sales though its website at “www.sweetwater.com” which appears to have a very large following and in addition the Complainant has submitted evidence of a very substantial social media presence on Facebook, Youtube and Instagram. It has submitted that the Respondent acquired the disputed domain name in early 2018 a very long time after the initial registration date of the disputed domain name in 2007. This is consistent with the historical WhoIs records put in evidence and the Respondent has not challenged this assertion. If correct, then based upon the substantial reputation and following that appears to be enjoyed by the Complainant’s business under the SWEETWATER marks it appears more likely than not that the Respondent was aware of the Complainant’s business and use of the SWEETERWATER marks upon its acquisition of the disputed domain name.
In any event the Panel finds that the Complainant has made out its case under paragraph 4(b)(iv) of the Policy which is alone evidence of registration and use of the disputed domain name in bad faith. The disputed domain name resolves to a domain name parking website that features pay-per-click links not only to the Complainant’s website also but to those of its competitors. It is more likely than not that the Respondent obtains some kind of commercial gain from these pay-per-click links. This amounts to the Respondent having intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves by creating a likelihood of confusion with the Complainant's SWEETWATER marks as to the source, sponsorship, affiliation, endorsement of that website and fulfils the requirements of paragraph 4(b)(iv) of the Policy.
In addition, the Respondent has offered the disputed domain name for sale for a minimum offer price of USD 500 a consideration that is likely to be in excess of its out of pocket costs of acquisition. Further, it has employed a privacy service to hide its identity and it has also failed to respond to the Complainant’s cease and desist letter or follow-up reminders. All of these factors amount to additional evidence that reinforces an inference that the Respondent has both registered and used the disputed domain name in bad faith.
In these circumstances the Panel finds that the disputed domain name has been registered and used in bad faith and the Complaint also succeeds under this 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 <sweetwatermusic.com> be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: December 2, 2020