The Complainant is Rhino Entertainment Company, United States of America (“United States”), represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is Registration Private, Domains By Proxy, LLC, United States/ Ryan Van Tuyl, Van Tuyl Music & Entertainment, L.L.C., United States.
The disputed domain names <rhinomusic.com>, <rhinomusic.app>, <rhinomusicgroup.com>, <rhinomusic.live>, <rhinomusic.me>, <rhinomusic.net>, <rhinomusic.org>, <rhinomuzic.com>, and <therhinomusic.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2021. On January 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 29, 2021 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 the Complaint on February 2, 2021. The Center received two informal email communications from the Respondent on January 26 and January 29, 2021.
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 February 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2021. The Respondent sent a third email communication on February 17, 2021. The Response was filed with the Center on February 22, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 22, 2021. 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 American specialty record label and music production company, a part of the Warner Music Group, founded in 1978 and organized since 1992 in its current form as a corporation under the law of the United States state of Delaware. It is headquartered in Los Angeles, California, United States. The Complainant manages the Warner Records, Atlantic Records, and Pharlophone Records music recording labels, among others. The Complainant’s extensive and varied music catalogue is reflected in the “About” page of its website at “www.rhino.com”:
“Rhino has also expanded the definition of what a catalogue music company is, as evidenced by the label’s name and likeness representation deal with Frank Sinatra, its multi-faceted relationship with the Grateful Dead, and releasing new albums by heritage artists such as Jeff Beck and Cyndi Lauper. The catalogue of more than 5,000 releases includes material by Led Zeppelin, Eagles, David Bowie, Fleetwood Mac, Aretha Franklin, The Doors, Chicago, Ray Charles, Black Sabbath, John Coltrane, Yes, Phil Collins, The Ramones, and The Monkees, among many others.”
The Complainant holds numerous trademark registrations in the United States and other countries for the word mark RHINO or for figurative marks prominently featuring the word “Rhino.” These include the following United States trademark registrations:
MARK | REGISTRATION NUMBER | REGISTRATION DATE |
|
RHINO (standard characters) |
1967102 |
April 9, 1996 |
|
RHINO (word and design) |
1967101 |
April 9, 1996 |
|
RHINO (word and design) |
1971491 |
April 30, 1996 |
|
RHINO (standard characters) |
2240911 |
April 20, 1999 |
The Complainant’s website promotes its “exclusive releases, CD, vinyl and boxsets of music, information regarding its artists, and offers apparel, accessories and books for online sale.” In addition, the Complainant holds 53 other domain names incorporating the RHINO mark.
The Registrar reports that the Domain Name <rhinomusic.com> was created on January 25, 2005. The Domain Names <rhinomusic.app>, <rhinomusicgroup.com>, <rhinomusic.live>, <rhinomusic.me>, <rhinomusic.net>, <rhinomusic.org>, <rhinomuzic.com>, and <therhinomusic.com> were all created on July 22, 2020. All nine of the Domain Names were registered in the name of a domain privacy service. After receiving notice of the Complaint in this proceeding, the Registrar identified the current registrant as the Respondent Mr. Van Tuyl, showing a postal address in California, United States. No organization was shown in the registration for the Domain Name <rhinomusic.com>, but the registrations for all of the other Domain Names list the registering organization as Van Tuyl Music & Entertainment, L.L.C. This company has its own website at “www.vantuylentertainment.com” showing the Respondent Mr. Van Tuyl as its principal and advertising “unique, fun & unforgettable live entertainment events since 2001.”
The Complaint states that a reverse WhoIs report for the Domain Name <rhinomusic.com> indicates that the Respondent acquired that Domain Name in January 2019. Archived screenshots show that for the next several months, the Domain Name resolved to a landing page with pay-per-click (“PPC”) advertising links, including those of the Complainant’s competitors. By April 2019, this Domain Name resolved to a website (the “Respondent’s website”) headed with the question, “Are you ready to unleash the Musician inside of you?” and text inviting users to sign up with their name and email address for a free trial to “Explore a New Way of Music.” By May 15, 2020, the current version of the Respondent’s website was published, offering online music instruction services under the heading “Rhino Music” followed by “Live Virtual Music Lessons. Gamified.” At the time the Complaint was filed, the Domain Name was also being offered for sale via GoDaddy Auctions for a minimum offer of USD 2,000 plus transfer costs, as well as advertised for sale on at least two domain name brokerage websites.
The Complainant sent the Respondent a cease-and-desist letter on July 2, 2020, requesting transfer of the Domain Name. The Respondent replied on July 14, 2020 saying that he was open to selling the Domain Name <rhinomusic.com>. On July 22, 2020, the Respondent registered the eight additional Domain Names incorporating the RHINO trademark and parked them, or allowed them to be parked, for PPC advertising. The Complainant suggested alternate, non-infringing names and offered to purchase all nine Domain Names for USD 1,000. The Respondent counter-offered to sell them for USD 210,079 and finally rejected a later offer from the Complainant to purchase them for USD 3,000. The Respondent then publicized the story of the Complainant’s supposed “bullying” on social media and to journalists in the entertainment industry.
The Respondent sent emails to the Center identifying himself as the owner of the Domain Names and saying he would like to “explore settlement talks.” The Center advised the Parties of the procedure for suspension to pursue settlement, but the Parties did not request suspension.
The Complainant asserts that each of the Domain Names is confusingly similar to its registered RHINO trademarks.
The Complainant states that the Respondent has no permission to use the complainant’s RHINO marks and challenges the Respondent’s claims to rights or legitimate interests in the Domain Name. The Complainant observes that while the Respondent says he has been called “Rhino” since he was a child, the Respondent’s website says the Respondent “founded his first music school in 2004 under the name ‘RockStars Music Studios’, now called ‘Van Tuyl Music Academy’.” An FAQ on the Respondent’s website states that “[t]he Rhino Music Brand was officially launched in January of 2020.” This is after the Respondent’s acquisition of the first Domain Name, <rhinomusic.com>, which appears to have occurred in January 2019 based on historical WhoIs records. The Complainant points out that the Respondent does not deny prior awareness of the Complainant’s trademark, which is well-known particularly in the music industry, and argues that the Respondent does not show that the Respondent acquired that Domain Name at a time when the Respondent was known by a corresponding name or was doing business or making demonstrable preparations to do business under such a name. The other Domain Names were acquired days after the Respondent was contacted about settling a trademark infringement claim, more clearly in an effort to enhance settlement leverage than to further the Respondent’s business.
The Complainant contends that this conduct reflects bad faith. The Complainant’s RHINO trademark had been used “continuously and extensively in the music industry for several decades” before the first Domain Name was created in 2005 or likely acquired by the Respondent in 2019. This Domain Name was initially used for PPC advertising for several months and then for the Respondent’s website. The Respondent promptly registered eight more similar Domain Names after receiving the Complainant’s cease-and-desist correspondence and demanded an exorbitant sum to transfer all nine Domain Names to the Complainant, meanwhile setting the new Domain Names to generate revenue at PPC parking pages.
The Complainant argues that the Respondent registered the Domain Names for the purpose of selling them to the Complainant for a sum far in excess of registration costs. According to the Complainant, the Respondent also engaged in a pattern of bad faith conduct in registering the Domain Names to prevent the Complainant from reflecting its RHINO mark in corresponding domain names and used the Domain Names to create confusion as to source and divert traffic for commercial gain to the Respondent’s website or for PPC advertising (for its own benefit or the Registrar’s). The Complainant cites the Respondent’s negative publicity “campaign” as further evidence of bad faith in attempting to damage the Complainant’s reputation extort a settlement or prevent the Complainant from enforcing its trademark rights.
The Respondent did not submit a formal Response. The Center asked if the Respondent wanted the email dated February 22, 2021 to be treated as the Response, and the Respondent replied “Yes.” There is no certification of completeness and accuracy as required by the Rules, paragraph 5(c)(viii), which the Panel takes into account in weighing the credibility of the Respondent’s statements. The Panel also takes into consideration that the Respondent is not represented by counsel.
The Respondent’s February 22 email reads in relevant part as follows:
“We are a small music school that has been in business since 2004. We purchased the rhino domains in order to launch an online school to try and stay in business during the pandemic. I have been called Ryan ‘Rhino’ Van Tuyl since I was a kid.
The information we found on the rhino copyright did not include music lessons, we believed we were in the clear.
There are multiple domains in existence with variant spellings of rhino (rhyno, ryno) running music related businesses, which Rhino Records has not pursued.
While we simply want to keep our domain and continue operation, when the possibility of selling was discussed, Warner did not offer us a fair amount for the value of the web domain, and the cost of rebranding and loss of business.
This is a simple case of a giant corporation trying to bully a small business with a legal team (which we do not have).”
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the 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 in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Complainant holds registered RHINO trademarks. The Domain Names all incorporate this mark in its entirety, adding the dictionary word “music” or the misspelled homophone “muzic”, and in one case the additional word “the”, and in another the additional word “group”. These additions to the trademark do not prevent a finding of confusing similarity. See id. section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com,” “app,” “.live,” “.me,” “net,” or “.org” is disregarded as a standard registration requirement. See id. section 1.11.2.
The Panel concludes that the first Policy element is established on these facts.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its well-known mark, the Respondent’s use of all of the Domain Names for PPC advertising, and the Respondent’s admission of prior knowledge of the Complainant’s mark. This is sufficient to shift the burden to the Respondent to produce evidence of rights or legitimate interests.
The Respondent has been operating an entertainment business in Southern California since 2001 and music schools since 2004. Despite the Respondent’s claim that he has been called “Rhino” since he was a boy, these businesses were not known by that name until, according to the Respondent’s website, the “Rhino Music Brand was officially launched in January of 2020” for the music school, which uses the first Domain Name, <rhinomusic.com>, for its website. There is no record of a trademark or trade name application for Rhino Music, however, and the online database of the California Secretary of State lists no registered business by that name. It seems that the name appears only on the website. The Respondent’s commercial website antedates the current dispute, but it cannot be said to be used in connection with a “bona fide” commercial offering if the evidence indicates that the Domain Name was likely chosen at least partly to take advantage of the Complainant’s well-known musical trademark. Those facts are better addressed in the following section on bad faith.
With respect to the other eight Domain Names, the Respondent registered all of them shortly after notice of the dispute, following receipt of the cease-and-desist letter from the Complainant and the beginning of settlement negotiations, so these registrations do not fall within the example of paragraph 4(c)(i). Moreover, these eight Domain Names were used only for PPC advertising, including links for companies competing with the Complainant. This does not reflect a legitimate interest of the Respondent (see WIPO Overview 3.0, section 2.9).
The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint with respect to eight of the nine Domain Names and reserves, until the discussion of the facts in the next section, the conclusion on the first Domain Name, <rhinomusic.com>.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or …
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant suggests that these examples apply and also refers to the Respondent’s negative and “false” publicity campaign as an instance of bad faith. The Panel does not find it necessary to address the latter point.
It is undisputed that the Respondent was aware of the Complainant’s well-known RHINO mark (although the Respondent refers to it as “copyright” rather than trademark) when registering and using the Domain Names. The Respondent is in the music business, and the Respondent is advertising to train aspiring musicians. The Respondent does not deny prior knowledge of the Complainant but says this:
“The information we found on the rhino copyright did not include music lessons, we believed we were in the clear.”
Domain names, of course, cannot be limited to a particular trademark class of goods or services, and the Policy recognizes that Internet users may be confused as to source or affiliation when they view a domain name that incorporates a trademark or that is very similar to a trademark. Here, the Domain Names incorporate the Complainant’s trademark in its entirety and add “music” or “muzic,” which only serves to reinforce the apparent connection to the Complainant, as it is a leading music company. An implied association with the Complainant could be a powerful endorsement and promotional tool. By the same token, the Complainant has the right to protect its reputation associated with the RHINO mark against dilution or impairment.
The Respondent may have been ignorant of the full legal significance of its actions, but the Respondent was admittedly aware of the Complainant’s mark and clearly recognized its value.
The Respondent remained responsible for the use of the Domain Names and allowed all of them to be parked for PPC advertising, including links to the Complainant’s competitors. Ignorance does not excuse the Respondent’s careless treatment of confusingly similar Domain Names exploiting the Complainant’s trademark to attract Internet users.
The Complainant is well known in the music industry, and the Respondent acknowledges conducting some sort of research before selecting the “rhino” Domain Names. The Complainant is prominently featured in search engine results and has no fewer than 54 domain names incorporating the RHINO mark, so it would be virtually impossible for the Respondent to miss the Complainant while searching for “rhino” domain names.
The Panel finds that it is more probable than not that the Respondent selected the first Domain Name, <rhinomusic.com>, at least partly because of its value in attracting consumers familiar with the Complainant’s reputation in the music industry. As for the other eight Domain Names, it is abundantly clear from the timing that they were registered for additional settlement leverage, when the Respondent was attempting to persuade the Complainant to pay more than USD 200,000 to transfer related Domain Names, clearly an amount far in excess of direct, out-of-pocket domain name costs. This is not so much a pattern of “depriving” the Complainant of corresponding domain names as attempting to extort a settlement, which is also indicative of bad faith. This conduct, and the PPC parking for months, support an inference of bad faith with regard to all of the Domain Names, as the Respondent shows a disregard for the trademark rights of others and a willingness to exploit them.
The Panel concludes that the Complainant has established the third element of the Complaint, bad faith in the registration and use of all of the Domain Names.
The Panel concludes as well on these facts that the Complainant has established the second element of the Complainant concerning the Domain Name <rhinomusic.com>, which was reserved from the discussion in the preceding section on rights or legitimate interests.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <rhinomusic.com>, <rhinomusic.app>, <rhinomusicgroup.com>, <rhinomusic.live>, <rhinomusic.me>, <rhinomusic.net>, <rhinomusic.org>, <rhinomuzic.com>, and <therhinomusic.com>, be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: April 5, 2021