WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LO 337 IP Holdings LLC v. Privacy Protected / LVM MEDIA LLC / Pablo Reyes
Case No. D2014-0873
1. The Parties
The Complainant is LO 337 IP Holdings LLC of Los Angeles, California, United States of America ("U.S."), represented by Cozen O'Connor, U.S.
The Respondent is WhoIs Guard Protected of Panama, Panama / LVM Media LLC of Apatzingan, Mexico / Pablo Reyes of Dallas, Texas, U.S., the latter self-represented.
2. The Domain Name and Registrar
The disputed domain name <worldstarmexico.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 23, 2014. On May 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2014, 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 30, 2014 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 June 4, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2014. The Response was filed with the Center on June 3, 2014. The Center inquired as to whether this submission could be considered the Respondent's complete and final response, given the early date of its filing, and informed the Respondent that if no further communication was received by the Response due date, the Center would regard the submission as the Respondent's complete Response and proceed to appoint the Panel. As nothing further was heard from the Respondent, the Center notified the Parties of the commencement of the panel appointment process on June 26, 2014.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 3, 2014. 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 provides online entertainment content, news and videos for the music industry, particularly in the hip hop genre and culture. The Complainant has provided these services under the trademarks WORLD STAR and WORLD STAR HIP HOP since its inception in 2005.
The Complainant owns several trademark registrations for the trademark WORLD STAR HIP HOP, including the following U.S. Registrations:
U.S. Registration No. 4,000,717 for WORLD STAR HIP HOP registered July 26, 2011; and
U.S. Registration No. 4,280,316 for WORLD STAR HIP HOP registered January 22, 2013
The Complainant also operates several websites including "www.worldstarhiphop.com", "www.worldstarmatch.com", "www.worldstarcandy.com", "www.worldstarhoneys.com" and "wwwworldstarcandylive.com" all of which incorporate the "world star" name and were registered prior to the disputed domain name <worldstarmexico.com>.
The Complainant's websites attract more than 70 million visits a month. The Complainant's websites average 2-3 million vistors per day. The "www.worldstarhiphop.com" website is ranked as No. 128 for volume of internet traffic in the U.S., exceeding websites such as "www.oprah.com", "www.cbs.com", "www.mtv.com", "www.vh1.com" and "www.bet.com". The Complainant's websites have a significant following of Spanish speaking people in the U.S. and Mexico, receiving almost 1 million unique visitors a day from Mexico and approximately 30 million unique visitors per month from California, Texas, Florida and New York.
The Complainant has made efforts to market, advertise and promote its WORLD STAR and WORLD STAR HIP HOP marks, names, and products and services through the Complainant's websites.
The Respondent registered the disputed domain name on November 12, 2013, and at the time the Complaint was filed, the disputed domain name reverted to a website which posted and displayed entertainment videos and other related content.
5. Parties' Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant submits that it owns trademark registrations for the trademark WORLD STAR HIP HOP in the U.S., namely U.S. Registration Nos. 4,000,717 and 4,280,316, and common law rights in WORLD STAR.
The Complainant contends that the disputed domain name <worldstarmexico.com> is confusingly similar to the WORLD STAR common law mark and the WORLD STAR HIP HOP registered trademark, except for the addition of the geographic designation "Mexico" and the generic Top-Level Domain (gTLD) ".com". The geographic designation "Mexico" does not distinguish the disputed domain name from the Complainant's common law mark WORLD STAR and the dominant first element of the Complainant's registered WORLD STAR HIP HOP mark. Furthermore, the gTLD ".com" does not distinguish the disputed domain name from the Complainant's trademark.
Rights and Legitimate interests
The Complainant contends that the Respondent was never authorized or licensed to use the Complainant's WORLD STAR common law mark and the Complainant's WORLD STAR HIP HOP registered trademark. The Respondent is not commonly known by that name. The Complainant contends that the disputed domain name is not being used in association with a bona fide offering of goods and services. The disputed domain name <worldstarmexico.com> resolves to a web page which posts and displays videos and music content identical to the Complainant's website.
Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent must have been aware of the Complainant's WORLD STAR common law mark and WORLD STAR HIP HOP registered trademark. The Respondent registered and is using the disputed domain name to interfere with the Complainant's business and is attempting to trade on the goodwill of the Complainant's reputation. The disputed domain name reverts to a website which posts and displays video and music content identical to Complainant's website. The Respondent, after receiving the Complainant's cease and desist letter, refused to transfer the disputed domain name arguing that the website functions as a parody site. However, Complainant submits that there is nothing indicated on the website at the disputed domain name to convey to consumers that the site is a parody.
B. Respondent
The Respondent submits that the disputed domain name is being used for purposes which ought to be protected by the U.S. First Amendment. The disputed domain name and associated website is alleged to be a parody based site and a form of art, which pokes fun at the Complainant's trademark and website. The Respondent claims that it is fair use of copyrighted materials for a limited and "transformative" purpose, such as to comment upon, criticize or parody a copyrighted work, and that such use can be done without the copyright owner's permission. Accordingly, the Respondent's use of the disputed domain name is not in bad faith and that there is a right or legitimate interest in the disputed domain name <worldstarmexico.com>.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) 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 owns registered trademark rights in the trademark WORLD STAR HIP HOP by virtue of the U.S. trademark registration nos. 4,000,717 and 4,280,316. The Panel also finds that the Complainant has common law rights in the mark WORLD STAR, by virtue of the extensive use of the mark through the Complainant's websites and associated products and services.
The Panel further finds that the disputed domain name <worldstarmexico.com> is confusingly similar to the Complainant's common law trademark WORLD STAR and registered trademark WORLD STAR HIP HOP. The disputed domain name is similar to the Complainant's common law and registered trademarks except for the addition of the geographic word "Mexico" and the gTLD ".com". The addition of the gTLD ".com" does not serve to distinguish the disputed domain name from the Complainant's trademark. Furthermore, the addition of a geographic word also does not serve to distinguish the disputed domain name from the Complainant's trademark. The Complainant has submitted evidence that its trademarks and websites are well-known to the Spanish speaking population in both the U.S. and Mexico, and this fact was not contested by the Respondent. Accordingly, the geographical designation only serves to increase the likelihood of confusion in these circumstances.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds, on the evidence filed by both parties, that the Complainant's trademark is well known in the U.S. and Mexico. The Respondent must have been aware of the Complainant's trademark rights in the WORLD STAR common law mark and the WORLD STAR HIP HOP registered trademark when it registered the disputed domain name. The Respondent was never authorized or licensed to use the Complainant's trademark.
The Respondent has submitted that the disputed domain name reverts to a website which functions as a parody to comment or criticize the Complainant's trademark and websites. However, the Respondent did not provide any evidence to support this contention. The Complainant has submitted 3 pages from the Respondent's website which do not show any clear evidence that the website is a parody site commenting on the Complainant's products and/or services. The Panel notes that the website at the disputed domain name is no longer active and the Panel was unable to review the current contents of the website. Based on the limited evidentiary record which is available, the Panel can only find that the disputed domain name reverted to a website which posted and displayed videos and music, which were similar to the Complainant's products and services. There is no evidence to dispute the Complainant's contentions on this point.
Accordingly, the Panel finds that the Respondent is not using the disputed domain name <worldstarmexico.com> in association with a bona fide offering of goods and services, or a legitimate non-commercial or fair use.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent was clearly aware of the Complainant's trademark when it registered and used the disputed domain name. When the Respondent states in its submissions that the disputed domain name reverts to a website which is a parody site, meant to comment on the Complainant's products and services, it is clear that the Respondent must have been fully aware of the Complainant's rights when it registered the disputed domain name.
However, nothing else in the evidentiary record supports the conclusion that the Respondent's website actually functions as a parody or commentary site. In fact the evidence shows that the disputed website posted and displayed videos and music content, which are very similar to the Complainant's wares and services.
Accordingly, in the absence of any evidence to the contrary, the Panel finds that the disputed domain name reverts to a website which features content, which is effectively identical to the Complainant's website, all for the purposes of monetary gain or interference with the Complainant's business. The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
The Panel finds that the Complainant has satisfied the requirement under 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 <worldstarmexico.com> be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Date: July 16, 2014
