'Attempt' to attract internet users for commercial gain sufficient under UDRP
In a recent case under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organisation (WIPO), a panel has ordered the transfer of a domain name to an American rap singer and his company.
The complainant was Cameron Thomaz (professionally known as Wiz Khalifa, an American rap singer) and Wiz Khalifa Trademark LLC, an American company founded by Wiz Khalifa. The complainant had owned trademark rights in the term ‘Taylor Gang’ since September 2014 in the United States, and claimed that the said term was first used in commerce in December 2008. The trademark designated, in particular, clothing, electronic smoking vaporisers and electronic cigarettes. The complainant conducted its activities via the websites ‘www.wizkhalifa.com’ and ‘taylorgangent.com’.
The respondent was the company Taylor Gang Enterprises LLC and Ken Warner, established in the United States. At the time of the decision, Taylor Gang Enterprises was no longer active, and so the panel decided that Ken Warner should be deemed to be the respondent in the dispute, as he had acted as principal in all correspondence between the respondent and the WIPO Arbitration and Mediation Centre.
The disputed domain name was ‘taylorgang.com’. It was registered on December 15 2008 by the respondent and was pointing, at the time that the UDRP proceedings were initiated, to a Godaddy.com parking page that included links to sponsored listings, including various websites offering clothing in particular.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at Paragraph 4(a):
- the domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
With regard to the first part of the UDRP, the panel found that the domain name was identical to the trademark given the complainant's trademark registration.
The complainant also successfully evidenced that he owned common law rights in the trademark as early as September 2008, approximately four months before the registration of the domain name. In this regard the panel found that, whilst the term ‘Taylor Gang’ may now perhaps be descriptive of a lifestyle or group, it would not have been so identified by the public when it was first used by the complainant, and that there was no evidence that the term described a particular thing (or group) prior to its adoption by the complainant. The panel pointed out that, according to the Urban Dictionary, the top definition of ‘Taylor Gang’ was as follows: "Lifestyle, originated by Wiz Khalifa out of Pittsburgh, Pennsylvania. A lifestyle that contains getting high off marijuana, drunk off alcohol, and getting money."
In addition, the panel highlighted that the number three definition in the Urban Dictionary also read:
"Taylor Gang is Wiz Khalifa’s gang/crew that he runs with. The name Taylor Gang originated from group members always wearing Chuck Taylors. Others say it came from his hometown high school, Taylor Allderdice (Pittsburgh, PA). Now-a-days, Taylor Gang is more then just a crew. It’s a lifestyle, aka Taylor Gang Life$tyle. If you’re a fan of Wiz Khalifa, then you’re a Taylor. People who love to have a good time and take it up or get wasted, just chill people who party hard."
With regard to the second limb of the three-prong test, the complainant argued that the respondent had no rights or legitimate interests in the domain name for the following reasons:
- he had never been an authorised representative of the complainant;
- the date of first use of the trademark by the complainant pre-dated the registration of the domain name; and
- the respondent knew of the distinctiveness and fame of the trademark prior to registering the domain name.
In addition, the complainant contended that the respondent was using the domain name to profit from click-through advertising and that he was not commonly known under either the trademark or the names ‘Wiz Khalifa’ or ‘Taylor’.
The respondent argued that he had used the domain name for a good-faith offering of services. Indeed, he asserted that, at the time that he registered the domain name, he was not aware either of Wiz Khalifa or the trademark and had chosen it after consideration of trending keywords on the Internet. He stated that he had used the domain name in connection with an active social network for hip-hop fans and marijuana enthusiasts, and did not offer clothing or similar goods or music for download. In the documentation he submitted as part of the case, he asserted that he registered the domain name with a view to finding a commercial agreement with the complainant and also to prevent third parties from registering the domain name. The respondent stated that he was indirectly protecting the complainant's interests and therefore claimed that he had rights or legitimate interests in the domain name.
However, the panel considered that the respondent did not have any rights or legitimate interests in the domain name. The panel rejected the respondent's argument relating to the social networking content of the website to which the domain name was initially pointing, due to the lack of evidence of the said content. Indeed, the respondent did not provide the panel with any screenshots or concrete evidence of the social networking website or its content, despite the panel's request.
Concerning the respondent's argument relating to his intention to protect the complainant's interests when registering the domain name, the panel observed that the respondent's subjective intention to protect the complainant could not have evidenced, as such, any rights or legitimate interests. The panel also held that, if the respondent's real intention was to protect the complainant's interests, he could have then transferred the domain name to the complainant when asked to do so. In light of this, the panel considered that the respondent had failed to rebut the complainant's prima facie showing of lack of rights or legitimate interests in the domain name.
With regard to the third limb of the three-prong test under the UDRP, the complainant argued that the respondent had registered the domain name after the complainant had started to use the trademark whilst being aware of the valuable goodwill and reputation of the trademark. In addition, the complainant asserted that the respondent's offer to sell the domain name (initially for $200,000, then for $300,000) was excessive in comparison with the initial purchase price of the domain name, which the respondent stated to be $500.
The respondent argued that he had acted in good faith and had no intention to take unfair advantage of the complainant. Indeed, he repeated that he had registered the domain name with the intention of entering into a commercial agreement with the complainant. He even admitted that he had initially used the domain name in connection with click-through advertisements to generate revenues, but this it had never been successful. He admitted also that, at the time of registration of the domain name, he was aware of the link between the trademark and the complainant, as he was a dedicated follower of the complainant.
The panel found that the complainant had met its burden under Paragraph 4(a)(iii) of the UDRP and decided that the respondent had registered the domain name whilst being aware of the complainant's rights. Indeed, the panel considered that registering the domain name with the expectation of entering into a commercial agreement with the complainant could be considered as constituting evidence of registration and use of the domain name in bad faith. In addition, the panel rejected the respondent's argument relating to the fact that he did not earn any money from the click-through advertisements on the website, as the "attempt" to attract internet users for commercial gain - and not the actual commercial success - already constituted evidence of bad faith. The panel therefore ordered the transfer of the domain name.
David Taylor and Jane Seager, Hogan Lovells LLP, Paris
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