Billy Strings, LLC v Vu Thanh Hai

WIPO Case No. D2025-2377

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Billy Strings, LLC v. Vu Thanh Hai

Case No. D2025-2377

1. The Parties

The Complainant is Billy Strings, LLC, United States of America, represented by Ferguson Case Orr

Paterson LLP, United States of America, and Solex IP PLLC, United States of America.

The Respondent is Vu Thanh Hai, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <billystringsmerchandise.com> is registered with Unstoppable Domains Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2025. connection with the disputed domain name. On June 25, and June 26, 2025, 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 (Intershore Consult (BVI) LTD) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 26, 2025, 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 30, 2025.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 1, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2025.

page 2

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on July 24, 2025. 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 in this administrative proceeding is Billy Strings, LLC. Billy Strings is the stage name of
William Lee Apostol (Apostol), an American musician. To date, Billy Strings has released four studio albums
which have received significant public recognition and critical acclaim, including two Grammy Awards for
Best Bluegrass Album. Apostol and his band tour internationally and regularly sell out large stadium
venues, such as the Moody Center in Austin, Texas. Apostol has licensed and/or assigned intellectual
property rights in connection with his name, image, and likeness to the Complainant. In addition to offering
award-winning and internationally acclaimed music, the Complainant sells, inter alia, clothing and
accessories online and through physical outlets, for example, at pop-up merchandise stores at venues where
Apostol performs.

The Complainant owns the BILLY STRINGS trademarks, which enjoy protection through several registrations.

The Complainant is, inter alia, the owner of:

United States Trademark Registration number 5845713 for the BILLY STRINGS (word) trademark, registered on August 27, 2019. Class 41: Entertainment services in the nature of live musical performances.

United States Trademark Registration number 5844257 for the BILLY STRINGS (word) trademark, registered on August 27, 2019. Class 38: Streaming of video material on the Internet.

United States Trademark Registration number 5844256 for the BILLY STRINGS (word) trademark, registered on August 27, 2019. Class 25: Bandanas; Hats; Jackets; Shirts; Sweatshirts.

The disputed domain name was registered on October 26, 2022, and resolves to an inactive website. From
the Complainant’s submission it appears that previously the disputed domain name resolved to a website
displaying the Complainant’s trademark and purported BILLY STRINGS-branded goods. On the
Respondent’s website the following statement was also displayed: “Billy Strings Merchandise Store is the

OFFICIAL Merchandise Store for Billy Strings fans.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the addition in the disputed domain name of the term “merchandise” does not avoid confusion between the disputed domain name and the Complainant’s trademark; that the Respondent’s use of the disputed domain name to host a commercial website displaying the Complainant’s trademark and purported BILLY STRINGS-branded goods under the Complainant’s trademark, in an attempt to impersonate the Complainant or at least to appear to be associated with the Complainant, does not give rise to rights or legitimate interests; and that bad faith registration and use should be found, since the Respondent has registered the disputed domain name and used on the corresponding website the Complainant’s BILLY STRINGS trademark while aware of the Complainant’s trademark rights, with the intent to take advantage of and capitalize on the Complainant’s well-known trademark.

page 3

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:

(i) the disputed domain name 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 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

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds the BILLY STRINGS mark is incorporated entirely and recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “merchandise”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the

page 4

Policy or otherwise.

The Panel notes that the composition of the disputed domain name, incorporating the Complainant’s trademark and the term “merchandise”, carries a risk of implied affiliation. Furthermore, noting the Respondent’s statement, claiming to be “the OFFICIAL Merchandise Store for Billy Strings fans”, the impersonating nature of the disputed domain name is reinforced and as such, the disputed domain name cannot qualify as fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1.

Panels have held that the use of a domain name for illegitimate activity, here claimed impersonation, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel notes that, as discussed below, it is highly likely that the Respondent was aware of the Complainant’s trademark registrations and rights to the BILLY STRINGS trademark when it registered the disputed domain name.

The disputed domain name contains, in its entirety, without any authorization or approval, the Complainant’s registered BILLY STRINGS trademark.

Given the use of the disputed domain name to sell purported BILLY STRINGS branded goods and the claim to be an official merchandise store for Billy Strings fans displayed on the Respondent’s website, it is at the least very unlikely that the Respondent was not aware of the existence of the Complainant, or of the Complainant’s trademark and domain name, when registering the disputed domain name.

It thus appears that the Respondent registered the disputed domain name to misleadingly attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and products, and this shows bad faith registration and use of the disputed domain name.

In addition, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

Further, by using the disputed domain name, the Panel notes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. Such use constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith.

page 5

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 <billystringsmerchandise.com> be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: July 30, 2025