The Complainant is Mr. Olufela Olufemi Anikulapo Kuti of Lagos, Nigeria, represented by Olajide Oyewole LLP, Nigeria.
The Respondent is Domain Administrator, NameFind LLC of Cambridge, Massachusetts, United States of America.
The disputed domain name, <femikuti.com> (the "Domain Name"), is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 23, 2016. On March 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 24, 2016, 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 proceedings commenced on March 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 22, 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.
The Complainant is a Nigerian musician who uses the stage name "Femi Kuti". He claims to have started out on his own in 1986, having previously performed as a member of his father's band.
The Domain Name was registered on June 10, 2004 and is connected to a pay-per-click webpage featuring links to a number of sites offering for sale the Complainant's records and/or tickets to the Complainant's concerts along with links to commercial websites offering goods such as household products unconnected to the Complainant. The page indicates that the Domain Name is for sale and invites an approach to Afternic.com.
In early January, 2016 the Complainant's manager approached Afternic.com and enquired as to the price for the Domain Name. Afternic.com responded in the capacity of a broker and, according to the Complainant (the exhibit purporting to show the pricing information does not feature a price), named a price of USD 1,799.00.
The Complainant contends that the Domain Name is identical to the Complainant's stage name, in which he claims unregistered trade mark rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The Domain Name comprises the Complainant's stage name, "Femi Kuti", and the ".com" generic Top-Level Domain ("gTLD") identifier. For the purposes of assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy it is permissible to ignore the gTLD identifier where, as here, it serves no more than a technical function.
The Complainant has no trade mark registration covering his stage name, but claims unregistered trade mark rights in respect of it having over an extensive period developed what he claims to be a substantial goodwill derived from his use of the name as a source identifier for his services as a musician. In support of his claim to unregistered trade mark rights, the Complainant cites a number of matters including nine albums issued in his name, several films upon which he has worked, the fact that he has been inducted into a prestigious Nigerian Hall of Fame and the fact that he has been nominated on four occasions for Grammy Awards.
But these claims are all bare assertions. There is very little in the way of supporting documentary evidence and it is well established that for the purpose of establishing unregistered trade mark rights under paragraph 4(a)(i) of the Policy hard supporting evidence is required. Bare assertions are not enough (see paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition). However, and very fortunately for the Complainant, the advertising links on the Respondent's own website demonstrate that the Complainant has been performing and making records under his stage name since at least 1999 and that he has achieved a sufficient standard of fame for there to be a "Femi Kuti Concert" at the Royal Albert Hall in London in about two months time from the date of this decision. One of the Respondent's advertising links is offering tickets for the event.
In light of this evidence provided through the Respondent's website, the Panel is satisfied that the Complainant is likely to have established unregistered trade mark rights in respect of his stage name for the purposes of the UDRP. The Panel notes that the Respondent is not in a strong position to challenge this given the nature of the pay-per-click links on the website to which the Domain Name connects; moreover, the Respondent has not challenged the Complainant's claim to unregistered trade mark rights.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
The Complainant has recited the sets of circumstances set out in paragraph 4(c) of the Policy, which are indicative of rights and legitimate interests in respect of a domain name, and asserts on information and belief that none of them is applicable.
The Complainant asserts that he is not associated with the Respondent and has not granted the Respondent any permission to use his stage name.
The Panel finds that the Complainant has made out a prima facie case calling for an answer from the Respondent.
In the absence of any answer from the Respondent, and the Panel being unable to conceive of any way in which the Respondent could sensibly be said to have rights or legitimate interests in respect of the Domain Name, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The unchallenged contention of the Complainant is that the Respondent is using the Domain Name (i.e. the Complainant's stage name) to attract pay-per-click revenue. On the evidence before the Panel, the Panel is unable to conceive of any other reason for the Respondent to have chosen such an unusual (perhaps unique) name for its domain name, unless of course it be to attract offers to purchase the Domain Name and thereby derive a profit. As to this latter point, the Complainant has produced evidence to show that the Respondent is using a broker to facilitate sale of the Domain Name.
In the absence of any explanation from the Respondent the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of either paragraph 4(b)(i) of the Policy or paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <femikuti.com>, be transferred to the Complainant.
Date: April 28, 2016
Stay updated! Get new cases and decisions by daily email.