Imagine getting hit with a UDRP just because your first name, Frank, is matching some other person’s stage name, while the last name is their given surname which they do not use. In the case of the domain FrankEdwin.com, the first and last name match the Respondent’s real name.
Meanwhile, the UDRP was filed by Christopher Breaux AKA Frank Ocean. It’s important to note that FRANK OCEAN is a stage name adopted by Complainant, whose given names and family name are Christopher Edwin Breaux.
As one can see, while “Edwin” is the Complainant’s middle name, their stage name is “Frank” but the combination “Fran Edwin” is not in use. Confused yet?
The Respondent’s lack of a response did not stop the Forum panelist from seeing through all this clutter, ordering the domain name FrankEdwin.com to remain with the Respondent.
The domain transfer was denied.
Christopher Breaux AKA Frank Ocean v. Frank Edwin
Claim Number: FA2408002112711
PARTIES
Complainant is Christopher Breaux AKA Frank Ocean (“Complainant”), represented by Jeffrey R. Cadwell and Evan P. Everist of Dorsey & Whitney LLP, Minnesota, USA. Respondent is Frank Edwin (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with NameCheap, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on August 26, 2024; Forum received payment on August 26, 2024.
On August 27, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 3, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@frankedwin.com. Also on September 3, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On September 24, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
FRANK OCEAN is a stage name adopted by Complainant, whose given names and family name are Christopher Edwin Breaux.
Complainant claims registered trademark rights in FRANK OCEAN mark established by his ownership of the portfolio of trademark registrations described below.
Complainant adds that he also enjoys long held and well-known common law rights in the FRANK OCEAN and FRANK marks arguing that a complainant is free to assert and demonstrate common law rights through evidence of actual use. See Belting Bronco Merchandising Inc. v. Dell Laptop, FA2403002088064 (Forum Apr. 3, 2024) (“Common law rights are sufficient under the Policy, provided the Complainant can prove that the mark has acquired secondary meaning.”).
Firstly, alleging that the disputed domain name is confusingly similar to the FRANK OCEAN and FRANK marks in which he claims rights, Complainant argues that the disputed domain name merely eliminates the term “OCEAN” from his mark and inserts his own given middle name,
Complainant contends that these changes are insufficient to differentiate the disputed domain name from Complainant and his mark, particularly considering Complainant’s rights in both his performing name and the widespread recognition of his given name. See Karen Finerman v. Ben Johnston / Bookclout, FA1606620 (Forum Apr. 7, 2015) (finding that “Complainant has presented evidence that her name, KAREN FINERMAN, has achieved widespread recognition in connection with financial, charitable and other services, such that KAREN FINERMAN has obtained secondary meaning as identifying Complainant as the source of the services she offers.).
Secondly Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name, arguing that
· Respondent does not use the disputed domain name in connection with any bona fide offering of goods and services or for a legitimate noncommercial use as contemplated under Policy ¶¶ 4(c)(i) & (iii);
· Respondent has used the disputed domain name to pass himself off as affiliated with Complainant in order to sell unauthorized products featuring Complainant’s likeness, trademarks, and copyrighted content, as shown in a screenshot of the website as of August 18, 2024; as well as a more recent screenshot of the website taken August 19, 2024, which are exhibited in an annex to the Complaint;
· Respondent’s website to which the disputed domain name resolved is not licensed by Complainant and has no affiliation with Complainant and nowhere did the website state that Respondent is not affiliated with the Complainant;
· Respondent’s use of the disputed domain name to further fraudulent passing off is not a bona fide offer of goods and services nor a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) &(iii),, as held in Christopher Breaux aka Frank Ocean v. TDA Ltd., FA2109001965209 (Forum Oct. 25, 2021) (concluding that use of domain name to pass off as Complainant and sell competing goods is not a legitimate use under the Policy);
· through Complainant’s extensive use and relative fame of the FRANK OCEAN mark, the mark has become closely associated with Complainant and the same applies for Complainant’s given name Edwin, which is not only well-established, especially in connection with Complainant’s legal transition to his performing name, but is one of the first pieces of information provided to consumers who search the name “FRANK OCEAN.” See the screenshot of Google search results for Complainant’s stage name taken August 19, 2024, which is exhibited in an annex to the Complaint;
· Respondent is not a licensee or in any way related to Complainant;
· Respondent has never been authorized to use Complainant’s FRANK or FRANK OCEAN mark nor Complainant’s given name;
· Respondent has no rights or legitimate interests in Complainant’s mark, nor Complainant’s given name;
· Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, but rather, uses it to solicit consumers by improperly and fraudulently posing a connection with Complainant, as shown in the screen captures of the website to which the disputed domain name resolves which are exhibited in an annex to the Complaint,
· while an individual normally has a right to register a domain name incorporating the his or her own legal surname, Respondent has not automatically acquired rights or legitimate interests in the disputed domain name that has been selected for the purpose of targeting and exploiting confusion with Complainant or its mark rather than because of its correspondence to Respondent’s own name. See Dow Chemical Co. v. Osama Ali, ITC, WIPO Case D2019-2608 (ordering transfer of domain name incorporating part of respondent’s surname based upon inference that domain name was selected to take advantage of similarity to Complainant’s mark).
Thirdly Complainant alleges that the disputed domain name was registered and is being used in bad faith, arguing that in light of Complainant’s extensive use of and relative fame of the FRANK OCEAN and FRANK marks and the widespread recognition of Complainant’s given name before registration of the disputed domain name, Respondent clearly had actual or constructive knowledge of Complainant’s mark and given name at the time of registration of the disputed domain name.
Additionally, Complainant contends that Respondent registered the disputed domain name years after Complainant began offering goods and services under the marks FRANK OCEAN and FRANK, and years after Complainant’s given name was publicized.
Complainant argues that this strongly suggests that Respondent knew of Complainant’s trademark and given name and registered the subject domain name with bad faith intent to unfairly capitalize on and pass off of Complainant’s trademark rights and identity. See Baylor University v. Yu Ying Guo, FA2403002086441(Forum March 28, 2024) (“Respondent registered and used the at-issue domain name to deceive internet users into falsely believing that the domain name and its referenced website and merchandise are sponsored or licensed by Complainant. Respondent’s use of the confusingly similar domain name to capitalize on the confusion Respondent created to drive internet traffic to the domain name’s website where Respondent offers BAYLOR related merchandise shows Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iv).”)
Complainant submits that registration of the disputed domain name with actual or constructive knowledge of Complainant’s mark is evidence of bad faith pursuant to Policy ¶ 4(b). See The Prudential Ins. Co. v. Bigxa Co., Ltd, FA000800095487 (Forum Oct. 6, 2000) (finding bad faith registration and use where respondent knew or should have known of complainant’s marks).
It is further alleged that Respondent’s use of his marks within the disputed domain name in bad faith, is confirmed by the content of the website to which the disputed domain name resolves, which clearly relates to Complainant, because it repeatedly features his name, image, and likeness as well as presenting counterfeit products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant is a singer and songwriter performing under the stage name FRANK OCEAN and is the owner of a large international portfolio of trademarks and service marks including
· United States registered trademark, registration number 4,764,110 registered on the Principal Register on June 30, 2015, for goods in international class 9;
· United States registered trademark, registration number 4,830,241 registered on the Principal Register on October 13, 2015, for goods in international class 25;
· EUTM registration number 1572397, registered on June 16, 2021, for goods in international class 25.
Complainant has an established Internet presence and markets its FRANK OCEAN branded goods on his website at . The disputed domain name was registered on 2024-07-20 and resolves to a website that purports to offer inter alia casual wear bearing the FRANK brand.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by Forum for details of the disputed domain name for the purposes of this proceeding.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant has provided uncontested convincing evidence of his rights in the FRANK OCEAN trademark established by his ownership of and use of the abovementioned international portfolio of trademark registrations.
Complainant has also provided evidence of extensive use of the mark BLOND and BLONDED on his website and on his merchandise which may well establish common law trademark rights in those marks.
Complainant’s full name is CHRISTOPHER EDWIN BREAUX as evidenced by his Wikipedia entry which has been exhibited in an annex to the Complaint, however he has not shown any trademark use of his original name or any element of it. He has shown that his original name is disclosed on his Wikipedia entry, but unlike his use of his adopted stage name, the disclosure of his original name on Wikipedia, is not use of the name in connection with the sale of goods or the provision of services.
It is well established that where a domain name at issue contains the mark relied upon by the complainant in its entirety the first element of the test in Policy ¶ 4(a)(i).
However, in this proceeding Complainant’s registered trademark FRANK OCEAN is not contained in the disputed domain name in its entirety.
Additionally, there is no evidence that Complainant has used the name “Frank” as a trademark. Neither is there any evidence that Complainant has established trademark rights in the name “Edwin”.
Neither has Complainant provided any evidence that he has any trademark rights, whether registered or at common law, in the combination of the names “Frank” and “Edwin”.
There is undeniably a commonality between the disputed domain name and Complainant’s registered trademark insofar as both contain the element “frank”.
However that commonality is not sufficient to establish that the disputed domain name is confusingly similar to Complainant’s mark, because the name “Frank” is a widely used name usually as a familiar version of the popular name Francis.
It is in fact claimed by Respondent as his given name. Respondent has not filed a timely Response or engaged with this proceeding in any way, so there is no evidence that his name is in fact FRANK EDWIN as claimed.
In conclusion as this Panel finds that the disputed domain name is not confusingly similar to any of the marks in which Complainant has rights, and Complainant has therefore failed to establish the first element of the test in Policy ¶ 4(a)(i).
This Complaint must therefore fail.
Rights or Legitimate Interests
As Complainant has failed to establish the first element of the test in Policy ¶ 4(a)(i), it is unnecessary and would be inappropriate for this Panel to proceed to consider the second element of the test in Policy ¶ 4(a)(ii),
Registration and Use in Bad Faith
As Complainant has failed to establish the first element of the test in Policy ¶ 4(a)(i), it is unnecessary and would be inappropriate for this Panel to proceed to consider the third element of the test in Policy ¶ 4(a)(iii).
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.
_____________________________________________
James Bridgeman SC, Panelist
Dated: September 25, 2024
