WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Stefani Germanotta and Ate My Heart Inc. v. Nancy Faralisz, The Michigan Initiative LLC

Case No. D2016-0298

1. The Parties

The Complainants are Stefani Germanotta and Ate My Heart Inc. of New York, New York, United States of America, represented by Pryor Cashman, LLP, United States of America.

The Respondent is Nancy Faralisz, The Michigan Initiative LLC of Clarkston, Michigan, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ladygaga.mobi> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 12, 2016. On February 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 22, 2016. On March 9, 2016, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Center extended the due date for Response to March 17, 2016. The Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on March 18, 2016.

The Center appointed William R. Towns as the sole panelist in this matter on March 24, 2016. 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 Stefani Germanotta, popularly known as Lady Gaga ("Lady Gaga"), is an internationally known recording artist and performer. The Complainant Ate My Heart Inc. ("AHM") is her company, through which she owns multiple United States trademark registrations for the LADY GAGA mark, covering a variety of goods and services, as well as LADY GAGA and LADY GAGA-formative marks in other countries around the world. Lady Gaga and AHM hereinafter are referred to as the "Complainant".

The Respondent registered the disputed domain name <ladygaga.mobi> on January 15, 2016. The Complainant on January 28, 2016 sent a cease and desist letter to the Respondent, demanding the transfer of the disputed domain name. On February 5, 2016, the Respondent left a message for the Complainant, stating that she was "looking for money", and attempting to solicit an offer from the Complainant to purchase the disputed domain name.

5. Parties' Contentions

A. Complainant

The Complainant asserts that LADY GAGA is a strong and protectable trademark in which the Complainant has rights around the world, and that LADY GAGA has been recognized as a well-known mark, citing Stefani Germanotta and Ate My Heart Inc. v. Deborah Allen, WIPO Case No. D2015-2353; and Stefani Germanotta and Ate My Heart Inc. v. Rola Dowens, WIPO Case No. D2013-1506. The Complainant submits that the disputed domain name wholly incorporates the Complainant's LADY GAGA mark, is confusingly similar to the Complainant's mark, and is likely to cause confusion, mistake or deception among the consuming public.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not been authorized to use the LADY GAGA mark and has not been commonly known by the disputed domain name. The Complainant asserts that the Respondent must have been aware of Lady Gaga and the LADY GAGA mark when registering the disputed domain name. According to the Complainant, it is obvious from the record that the Respondent's primary objective in registering the disputed domain name was to trade upon the goodwill associated with the Complainant's mark by attempting to sell the disputed domain name for a profit. The Complainant submits this does not constitute use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name.

The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent, well-aware of the valuable goodwill and reputation symbolized by the LADY GAGA mark, registered the disputed domain name almost a decade after Lady Gaga became a household name. According to the Complainant, the conclusion that the Respondent has intentionally attempted to profit from its bad faith registration of the disputed domain dame is inescapable. The Complainant reiterates that the LADY GAGA mark is a valuable commercial asset because of its worldwide reputation, that the Respondent is using the disputed domain name in an attempt to profit from its sale, even admitting "I'm looking for money", and that the Respondent solicited the Complainant to make an offer to purchase the disputed domain name.

The Complainant also explains that further investigation reveals that the Respondent has registered a number of domains incorporating famous individuals' names, famous trademarks, and famous company names, including <rollingstones.mobi>; <joemontana.mobi>; <parsonsschoolofdesign.mobi>; <noraroberts.mobi>; <5aday.mobi>; <kitkat.mobi>; <scjohnson.mobi>; <gvsu.mobi>; and <wmu.mobi>. The Complainant asserts that the Respondent is acting in bad faith in stockpiling domain name reflecting the well-known marks of others for subsequent sale.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant's LADY GAGA mark, with respect to which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Applying this standard, the disputed domain name is confusingly similar to the Complainant's mark. Disregarding the generic Top-Level Domain ("gTLD") ".com", the disputed domain name is identical to the Complainant's LADY GAGA mark.²

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent without the Complainant's authorization or consent has registered the disputed domain name, which is confusingly similar and virtually identical to the Complainant's LADY GAGA mark, and which the Respondent has attempted to sell to the Complainant.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.

Based on the record in this proceeding, the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant's LADY GAGA mark when registering the disputed domain name, which the Respondent then attempted to sell to the Complainant. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant's mark. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774. The record before the Panel does not reflect the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor, in the circumstances of this case, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. It is undisputed that the Respondent has not been commonly known by the disputed domain name for purposes of paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iv) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant's mark in mind when registering the disputed domain name. The Panel further considers that the Respondent's primary aim in registering the disputed domain name and offering it for sale was to profit from and exploit the Complainant's rights. See Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044. This constitutes bad faith registration and use within the contemplation of paragraph 4(a)(iii) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <ladygaga.mobi> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: April 7, 2016

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.2.

² Although gTLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.