Lydia K. Warren is an award-winning blues musician who has performed under her own name since as early as 2000.
In 2019, she somehow allowed the matching domain, LydiaWarren.com, to lapse. The domain was sold at the GoDaddy auctions for a mere $155 dollars.
Lydia Warren filed a UDRP at the National Arbitration Forum to reclaim it from the Indonesia-based registrant.
Respondent registered and uses the <lydiawarren.com> domain name in bad faith. Respondent uses the disputed domain name and an email associated with it (info@lydiawarren.com) to pass off as Complainant, disrupting Complainant’s business. The fact that Respondent was only able to register the disputed domain name after Complainant mistakenly allowed it to lapse also shows Respondent’s opportunistic bad faith registration of the domain.
The sole panelist ordered the domain LydiaWarren.com to be transferred to the Complainant, stating:
[…] registering a domain name which a complainant previously owned after the complainant allowed it to lapse displays bad faith […]
Full details on the decision follow:
Lydia K. Warren v. Robert Bonori
Claim Number: FA2104001941647
PARTIES
Complainant is Lydia K. Warren (“Complainant”), represented by Professor Kathryn Kleiman, IP Clinic Students Michael Blumenthal, Clemence Kim, Harrison Neidish, Adam Wasinger, District of Columbia, USA. Respondent is Robert Bonori (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lydiawarren.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on April 15, 2021; the Forum received payment on April 15, 2021.
On April 16, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lydiawarren.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2021 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@lydiawarren.com. Also on April 20, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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, the 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
Complainant, Lydia K. Warren, is an award-winning blues musician who has performed under her own name since as early as 2000. Complainant claims common law rights in her name, LYDIA WARREN, through her long-term use and recognition under her name. Respondent’s <lydiawarren.com> domain name is identical or confusingly similar to Complainant’s LYDIA WARREN mark, only differing by removing the space between the words and the addition of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <lydiawarren.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the LYDIA WARREN mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant. Additionally, Respondent does not use the disputed domain name to operate a fan site.
Respondent registered and uses the <lydiawarren.com> domain name in bad faith. Respondent uses the disputed domain name and an email associated with it (info@lydiawarren.com) to pass off as Complainant, disrupting Complainant’s business. The fact that Respondent was only able to register the disputed domain name after Complainant mistakenly allowed it to lapse also shows Respondent’s opportunistic bad faith registration of the domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant is Lydia K. Warren (“Complainant”), legally represented by individuals located in Washington, D.C., USA. Complainant claims common law rights in the disputed domain name due to her performance as a professional live musician since 2000. Complainant has consistently offered musical goods and services on a domestic and global basis since that time including live performances, and recorded albums, as well as audio and video digital streaming. Complainant is the former owner of the domain name in dispute, <lydiawarren.com> which she registered in April 2000 and renewed consistently until 2019 when it accidentally lapsed, and Respondent secured it without Complainant’s authorization.
Respondent is Robert Bonori (“Respondent”), of East Java, Indonesia. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that Respondent registered the disputed domain name on or about May 20, 2019.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted 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 asserts common law rights in the LYDIA WARREN mark as it is her name, and she has performed as a musician under it for over twenty years. Policy ¶ 4(a)(i) does not require that a mark be registered with a trademark agency if a Complainant can establish common law rights in a mark. See Bayless v. Cayman Trademark Trust, FA 648245 (Forum Apr. 3, 2006) (“The Panel concludes Complainant has proved that the RICK BAYLESS mark has become sufficiently connected to Complainant’s career as a chef and the public associates that career with Richard L. Bayless and the RICK BAYLESS mark.”). Here, Complainant provides evidence of several of her performances, her notoriety as a blues musician, along with evidence of awards she has obtained. The Panel here finds Complainant has common law rights in the LYDIA WARREN mark, thus satisfying Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <lydiawarren.com> domain name is identical or confusingly similar to Complainant’s LYDIA WARREN mark, only differing by removing the space within the mark and adding the “.com” gTLD. Previous Panels have held that such changes may not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The Panel here finds the disputed domain name is identical or confusingly similar to Complainant’s LYDIA WARREN mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <lydiawarren.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the LYDIA WARREN mark. When response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “Robert Bonori” as the registrant of the disputed domain name and no evidence is presented to dispute Complainant’s assertions. The Panel here finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <lydiawarren.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Respondent instead uses the disputed domain name to pass off as Complainant. Using an infringing domain name to attempt to pass off as Complainant may not constitute a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant provides screenshots of the resolving website, where Respondent speaks of Complainant’s music as if they own it, in particular, Respondent refers to Complainant’s music as “my music,” “my songs,” and invites Internet users to “catch me live.” The Panel here finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Additionally, Complainant argues that Respondent does not use the <lydiawarren.com> domain name as a fan site, and therefore does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Mayweather Promotions, LLC v Muhammad Umar, FA 1658437 (Forum Mar. 7, 2016) (“[The disputed domain name] does not indicate anywhere that it is attempting to be an amateur fan site and has more of an air of an official news source… As such, the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.”). Here, Respondent fails to disclose that Respondent is not Complainant, but rather attempts to pass off as Complainant. The Panel here finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Registration and Use in Bad Faith
Complainant argues that Respondent registered and uses the <lydiawarren.com> domain name in bad faith as Respondent uses both the disputed domain and an email associated with the domain to pass off as Complainant. Such use may show bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) by redirecting legitimate inquiries meant for the complainant. See Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)). Complainant provides screenshots of an archived version of the contact page for the disputed domain name, which listed the info@lydiawarren.com email address as the contact information for Complainant. The Panel here finds that Respondent’s usage of the disputed domain name and an associated email address to pass off as Complainant indicates bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant further argues that Respondent’s registration of the <lydiawarren.com> domain name after Complainant mistakenly allowed the registration to lapse displays opportunistic bad faith. Previous Panels have held that registering a domain name which a complainant previously owned after the complainant allowed it to lapse displays bad faith under Policy ¶ 4(a)(iii). See BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name). Here, Complainant provides the WHOIS record for the disputed domain name, which shows it was initially registered April 08, 2000. Additionally, Complainant provides copies of additional registration agreements it had for the disputed domain name. The Panel here finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <lydiawarren.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 27, 2021
