WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Louis Tomlinson c/o Lee & Thompson LLP v. Whois Privacy, Private by Design, LLC / minh pham Cardinal

Case No. D2021-1542

1. The Parties

The Complainant is Louis Tomlinson c/o Lee & Thompson LLP, United Kingdom, represented by Demys Limited, United Kingdom.

The Respondent is Whois Privacy, Private by Design, LLC, United States of America / minh pham Cardinal, Canada.

2. The Domain Name and Registrar

The disputed domain name <louis-tomlinson.net> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2021, 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 May 19, 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 amended Complaint on May 19, 2021.

The Center verified that the Complaint together with the 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 May 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2021.

The Center appointed Luca Barbero as the sole panelist in this matter on June 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.

4. Factual Background

The Complainant, Louis Tomlinson, is a singer and songwriter who is best known as a member of the popular boy band One Direction. The Complainant appeared in television dramas before auditioning for the British music competition series The X Factor in 2010, during which the Complainant joined four other contestants to form One Direction.

The Complainant enjoyed great success as a member of One Direction. The group’s third album, Midnight Memories, was the best-selling album worldwide of 2013. As of 2020, the group has sold over 200 million records worldwide, making it one of the best-selling boy bands of all times.

The Complainant appeared as a judge on The X Factor, the same music competition series that propelled him to fame. In 2016, the Complainant released his debut solo single “Just Hold On”, which peaked at number two on the United Kingdom Singles Charts and was certified platinum in the United Kingdom. In 2017, the Complainant released “Back to You” which was certified platinum in the United States of America and the United Kingdom.

In the same year, the Complainant was featured on Debrett’s 2017 list of the most influential people in the United Kingdom. In 2019, the Complainant released five more singles, preceding the release of his debut album Walls in 2020. The album sold 35,000 copies upon its release and debuted at number one in Argentina, Portugal, Mexico, and Scotland, and top ten in Australia, Austria, Belgium, Canada, Poland and Spain.

The Complainant is also involved in charity work and has, inter alia, donated over GBP 2 million to Believe in Magic, an organization that supports terminally ill children.

The Complainant is the owner of several trademark registrations for LOUIS TOMLINSON, including the following, as per trademark certificates submitted as annexes to the Complaint:

- United Kingdom trademark registration n. UK00910341031, for LOUIS TOMLINSON (word mark), filed on October 14, 2011 and registered on February 22, 2012, in classes 3, 16, 25, and 28;
- European Union Trade Mark registration n. 010341031, for LOUIS TOMLINSON (word mark), filed on October 14, 2011 and registered on February 22, 2012 in classes 3, 16, 25, and 28;
- International Trademark registration n. 1398194, for LOUIS TOMLINSON (word mark), registered on June 1, 2017, in classes 09, 16, 25, and 41.

The Complainant is also the owner of the domain name <louis-tomlinson.com>, which was registered on January 16, 2017 and is used by the Complainant to promote his professional career, provide dates of his concerts and lead users to the webstore at “merch.louis-tomlinson”, where LOUIS TOMLINSON merchandise can be purchased.

The disputed domain name <louis-tomlinson.net>was registered on January 7, 2021 and resolves to a website publishing the LOUIS TOMLINSON trademark and the statement “official store” and offering for sale purported LOUIS TOMLINSON apparel products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name <louis-tomlinson.net> is confusingly similar to the trademark LOUIS TOMLINSON in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of a hyphen and of the generic Top-Level Domain “.net”.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant informs the Panel that the Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use his registered trademarks.

The Complainant also states that the Respondent has not been commonly known as “Louis Tomlinson” before or after the registration of the disputed domain name and that the Complainant could find no evidence that the Respondent owns any trademarks incorporating LOUIS TOMLINSON or that the Respondent has ever traded legitimately under the business name Louis Tomlinson.

The Complainant further asserts that the Respondent’s use of the disputed domain name cannot be construed as legitimate noncommercial or fair use, or confer rights or legitimate interests on the Respondent, given the Respondent’s misappropriation of copyrighted images taken from the Complainant’s website.

Moreover, the Complainant highlights that the disputed domain name has not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain, as the website associated with the disputed domain name has always resolved to an online shop. The Complainant submits that the goods on offer on the Respondent’s website are counterfeit as they feature the Complainant’s designs in style, color and size combinations that do not exist on the Complainant’s official web shop located at “merch.louis-tomlinson.com”.

With reference to the circumstances evidencing bad faith, the Complainant indicates that, given that his trademarks are well-known, that the Complainant’s LOUIS TOMLINSON mark is highly distinctive and that the disputed domain name has been used to sell counterfeit merchandise related to the Complainant, it is inconceivable that the Respondent did not have the Complainant firmly in mind when it registered the disputed domain name.

The Complainant emphasizes that the website associated with the disputed domain name lacks any disclaimers that would dispel the confusion regarding the disputed domain name and the associated website.

The Complainant observes in fact that the Respondent has prominently displayed a disclaimer which falsely states that the Respondent’s website is the official store for LOUIS TOMLINSON merchandise and asserts that it is highly probable that the Respondent acquired and is using the disputed domain name in bad faith for the purpose of disrupting the Complainant’s business.

The Complainant also avers that the Respondent has engaged in a pattern of abusive registrations, in that he has targeted other musicians and their official websites and webstores through the registration of corresponding domain names, and that the Complainant is part of that pattern.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii)that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark LOUIS TOMLINSON based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 7 to the Complaint.

As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

In the case at hand, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark LOUIS TOMLINSON as it reproduces the trademark in its entirety, with the mere addition of a hyphen between the terms “Louis” and “Tomlinson” and the generic Top-Level Domain “.net”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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.”

In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name and the Respondent has not provided in the Response any convincing evidence to the contrary.

Indeed, the disputed domain name has been pointed to a website which imitates the look and feel of the Complainant’s official online store at <merch.louis-tomlinson.com>, by prominently displaying the Complainant’s trademark LOUIS TOMLINSON and the statement “official store” and offering for sale apparel products which appear to be identical to the ones offered by the Complainant, thus falsely suggesting an affiliation with the Complainant. Moreover, the Respondent’s website lacks full contact details on its “About us” and “Contact us” pages and the website does not feature any form of disclaimer that would make it clear that the Respondent is in no way associated with the Complainant.

Furthermore, the Complainant submitted that the products offered for sale on the Respondent’s website are counterfeit as they feature the Complainant’s designs in style, color and size combinations that do not exist on the Complainant’s official web shop located at “merch.louis-tomlinson.com”, and the Respondent has not rebutted the Complainant’s allegations. In view of the elements provided by the Complainant and based on the Panel’s review of the Respondent’s website, the Panel finds that the products offered by the Respondent may be counterfeit products as claimed by the Complainant. Anyway, independently from the nature of such products, the Panel notes the composition of the disputed domain name, and the Panel finds that the Respondent’s website appears to have been intentionally designed to impersonate the Complainant, likely with the intent to defraud users interested in purchasing the LOUIS TOMLINSON products.

As stated in Section 2.13.1 of the WIPO Overview 3.0., “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

As to bad faith at the time of the registration, the Panel notes that, in light of the distinctiveness of the Complainant’s trademark LOUIS TOMLINSON and the identity of the disputed domain name with the Complainant’s prior trademark (if the hyphen is disregarded) and his domain name <louis-tomlinson.com>, the Respondent’s registration of the disputed domain name cannot amount to a mere coincidence.

Moreover, in view of the notoriety of the Complainant and his trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its selection by the Respondent, who has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.

Furthermore, the Respondent’s redirection of the disputed domain name to a website featuring the Complainant’s trademark and offering purported LOUIS TOMLINSON products for sale clearly demonstrates that the Respondent was actually aware of, and intended to target, the Complainant and his trademark.

The Panel also finds that, by pointing the disputed domain name to a website imitating the one of the Complainant, claiming to be the Complainant’s official store and offering for sale prima facie counterfeit LOUIS TOMLINSON apparel products, failing also to accurately and prominently disclose his lack of relationship with the trademark owner, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the trademark LOUIS TOMLINSON as to the source, sponsorship, affiliation or endorsement of its website and the products promoted therein according to paragraph 4(b)(iv) of the Policy.

The Panel further finds that the Respondent’s failure to file a Response is also an additional circumstance supporting the conclusion of the Respondent’s bad faith.

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.

7. Decision

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 <louis-tomlinson.net> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: July 6, 2021