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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Curtis Jackson v. Meadow Point productions

Case No. D2006-0394

 

1. The Parties

Complainant is Curtis Jackson, United States of America, represented by Moritt Hock Hamroff & Horowitz LLP, United States of America.

Respondent is Meadow Point productions, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <g-unityfoundation.biz>, <g-unityfoundation.com>, <g-unityfoundation.net>, and <g-unityfoundation.org> are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2006. On March 30, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On March 30, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 24, 2006.

The Center appointed Andrew Mansfield as the sole panelist in this matter on May 3, 2006. 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

Complainant, Curtis Jackson, is an internationally known recording artist who performs professionally under the name “50 Cent” with a musical group known as “G-Unit.” Complainant has achieved multi-platinum success and sold approximately 22 musical albums worldwide. “G Unit” (without a dash) is also the name of Complainant’s music label.

Complainant is the owner of two relevant trademarks registered with the United States Patent and Trademark Office. The first is Registration Number 2787451, registered November 25, 2003. The second is Registration Number 2992615, registered September 6, 2005. Both are for the word mark G-UNIT. The first concerns goods and services related to pre-recorded music, logo-based clothing, and live musical performances. The latter concerns goods embodied in printed matter and publications, such as posters, newsletters, and stickers.

Complainant has two pending trademark applications before the United States Patent and Trademark Office. Serial Number 78338216 was filed on December 9, 2003. Serial Number 78690694 was filed on August 11, 2005. The pending applications concern goods such as jewelry, magazines and calendars, travel bags, bags, wallets, and books.

 

5. Parties’ Contentions

A. Complainant

Complainant claims that he owns the federally registered trademark G-UNIT concerning the goods and services described in Registration Numbers 2787451 and 2992615. Complainant also claims common law trademark rights in G-UNITY.

Complainant alleges that the trademark G-UNIT was first used in commerce in October 2002. Since that time, this mark has been associated with musical performances, clothing, books, music videos, DVDs, CDs, posters, and jewelry.

Complainant alleges that the common law mark G-UNITY was first used in public on March 9, 2005, when Complainant announced that his non-profit charitable foundation had renamed itself “G-Unity Foundation.” The change in name occurred on March 7, 2005.

Complainant states that Respondent registered <g-unityfoundation> in four top-level domains on March 9, 2005. Respondent registered <g-unityfoundation.com>, <g-unityfoundation.org>, <g-unityfoundation.net>, and <g-unityfoundation.biz> (hereinafter collectively referred to as “the Domain Names.”) The registration of the Domain Names occurred on the same day on which Complainant announced the new name of his foundation.

Complainant further claims that the Domain Names currently resolve to “parked” web pages which display no information other than the name of the registrar.

Complainant argues that the Domain Names are identical or confusingly similar to his trademarks G-UNIT and G-UNITY.

Complainant informs the Panel that Respondent is not a licensee or authorized user of the trademarks. Further, Complainant has no information that suggests Respondent has any rights or legitimate interests in respect to the Domain Names. Complainant argues that a lack of use of a domain name may be a sufficient ground upon which to find that Respondent has no rights or legitimate interests in the Domain Names.

Based on the registration of the Domain Names on the same day as the public announcement of the new name of Complainant’s foundation, Complainant alleges that the Domain Names were registered and are being used in bad faith. Complainant bolsters this claim by referring again to the fact that the Domain Names have not been used since registration.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

In order to succeed in its Complaint Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names were registered and are being used by Respondent in bad faith.

Even when a respondent defaults, as is the case here, the complainant must establish and carry the burden of proof on each of the three elements identified above with regard to each of the disputed domain names. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.

The Panel proceeds to deal with each of these elements in turn.

A. Identical or Confusingly Similar

The possession of U.S. Federally registered trademark rights by Complainant meets the threshold requirement of possessing trademark rights sufficient to satisfy paragraph 4(a)(i) of the Policy. Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661. In addition to demonstrating U.S. Federal trademark registrations, Complainant asserts common law trademark rights. As to the alleged common law trademark, Complainant must show that the mark had become a distinctive identifier associated with Complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322.

The Panel does not find that Complainant had a common law trademark in G-UNITY on March 7, 2005 or on March 9, 2005. The name “G-Unity” was announced to the public for the first time on the former date. There is no claim that it was used in commerce prior to the announcement. While it may now satisfy the requirements for recognition as a common law trademark, insufficient evidence has been presented to the Panel to make a determination concerning its secondary meaning. This is not fatal to Complainant’s case, however, as described below.

In reviewing whether each of the Domain Names is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Panel is mindful of the fact that common words in the domain name should be eliminated for purposes of the comparison. See, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.), WIPO Case No. D2003-0696. In addition, generic terms, occurring within a domain name in conjunction with a trademark, should not be considered for purposes of comparison. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888.

Although four domain names (one each in four top-level domains) are the subject of this Complaint, the important portion of each domain name for purposes of assessing whether they are identical or confusingly similar to Complainant’s trademarks is the same in each. The Panel must compare “g-unityfoundation” to the trademark G-UNIT. The Panel drops the term “foundation” for purpose of comparison because it is a common or generic term. The Panel is therefore comparing “G-Unit” to the remaining portion of the Domain Names, “g-unity,” under Paragraph 4(a)(i).

Obviously, the trademark G-UNIT and “g-unity” are not identical. The term “g-unity” contains an extra letter, namely, “y.”

The question then turns to whether “g-unity” is confusingly similar to “G-Unit.” “G-Unit” is distinctive and does not, in itself, have meaning in English. In addition, G-Unit is incorporated in whole, including the use of the dash, into the term “g-unity.”

The trademark G-UNIT and the term “g-unity” are confusingly similar. Both are unusual terms with no generic meaning. Considering the full term “g-unityfoundation” for purposes of the domain name does not help Respondent. The Panel finds that the addition of the generic term “foundation” to “g-unity” actually increases the confusing similarity because Complainant is operating a foundation of that name that is associated with his trademark G-UNIT.

The Panel finds that the Domain Names and the trademark G-UNIT are confusingly similar. Complainant has satisfied Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant informs the Panel that Respondent is not a licensee or authorized user of the trademarks. Further, Complainant has no information that suggests Respondent has any rights or legitimate interests in respect to the Domain Names. Finally, Complainant indicates that the Domain Names have been “parked” and inactive since the date of their registrations.

The Complainant has made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Domain Names. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website 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 website or location or of a product or service on your website or location.”

The fact that the Domain Names were registered on the same day as the public announcement of the new name of Complainant’s foundation is strongly indicative of bad faith. As mentioned above, “G-Unit” and “g-unity” are unusual phrases without common meaning. The Panel finds that it was not an accident that the registration occurred on the same day. Hearing of the new name of Complainant’s foundation, the Panel reasonably concludes that Respondent sought to acquire domain names corresponding to the new name and confusingly similar to G-Unit in order to profit from its registrations.

Supporting this finding of bad faith, the Panel notes that Respondent provided inaccurate information with the registrar or has otherwise failed to keep its registration records current.

Further supporting the finding of bad faith, the Panel notes that Respondent has made no use whatsoever of the Domain Names since their registration over one year ago. In a number of cases, and in certain circumstances, mere passive holding has been held to constitute use of the domain name in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574).

Complainant has satisfied Paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <g-unityfoundation.biz>, <g-unityfoundation.com>, <g-unityfoundation.net>, and <g-unityfoundation.org> be transferred to the Complainant.


Andrew Mansfield
Sole Panelist

Dated: May 17, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0394.html

 

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