Erica Wright v Arielle Phoenix

WIPO Case No. D2025-1188

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Erica Wright v. Arielle Phoenix

Case No. D2025-1188

1. The Parties

The Complainant is Erica Wright, United States of America (“United States”), represented by Kia Kamran

P.C., United States.

The Respondent is Arielle Phoenix, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <erykahbadu.com> 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 March 21, 2025. On March 24, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On March 24, 2025, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 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 f iled an amendment to the
Complaint on March 26, 2025.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on April 1, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2025. The Respondent sent email communications to the Center on April 8, April 25, and April 30, 2025. On April 25, 2025, the Center notified the Parties that it will proceed to Panel appointment.

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The Center appointed Assen Alexiev as the sole panelist in this matter on April 30, 2025. The Panel f inds 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 is professionally known as Erykah Badu. She has been active in the music and entertainment industries since 1997, and has received f ive Grammy awards for “Best Female R&B Vocal Performance”, “Best R&B Album”, “Best Rap Performance”, “Best R&B Song”, and “Best Melodic Rap Performance”, as well as other awards. The Complainant has toured in the United States and internationally and has given hundreds of concerts. Her official social media page on Instagram has 6.6 million followers, and the one on Facebook has 4.4 million followers, while her official page on Spotify has more than 4 million monthly listeners. The Complainant operates her of f icial online store at the domain name <baduworldmarket.com>, where of f icial music and authorized merchandise are of fered for sale.

On February 21, 2025, the Complainant filed in the United States Patent and Trademark Off ice a trademark application No.99051824 for ERYKAH BADU for goods and services in International Classes 9, 25 and 41. This application has not proceeded to registration yet.

The disputed domain name was registered on February 22, 2022. It currently resolves to a parking webpage with the heading “Erykah Badu | Official Fan Site” which displays the text “This premium domain name is available for purchase”, and a “Buy this domain” link that redirects to a Stripe payment page indicating a price of USD 9,997 for the disputed domain name. The webpage also includes links to third party websites of fering AI generators of rap lyrics, payment receipts or fake message threads.

At the time of filing of the Complaint, the disputed domain name directed to a web shop with the heading “Erykah Badu | Official Fan Site” that displayed the professional name of the Complainant followed by the text “The Godmother of Soul” and a listing of her discography, and which of fered for sale ERYKAH BADU- branded products under the heading “Official Fan Merch”, and offered the disputed domain name for sale.

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.

The Complainant maintains that she has unregistered trademark rights in her professional name Erykah Badu, which she has used in commerce since 1997 in connection with entertainment services as a musical artist and live music performer, and in connection with musical records and clothing goods. The

Complainant adds that she launched her own online store in 2020 which offers official music and authorized merchandise.

The Complainant states that the disputed domain name is identical to the unregistered trademark ERYKAH
BADU, because it reproduces the entirety of this trademark.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name because it is not commonly known by it and has not been authorized by the Complainant to use “ERYKAH BADU” as a trademark or domain name. The Complainant adds that the Respondent cannot claim any legitimate, noncommercial, or fair use of the disputed domain name, because its primary purpose is to engage in the selling of bootleg merchandise bearing the Complainant’s name, likeness, and trademark in competition with the Complainant. The Complainant points out that the Respondent’s website prominently of fers and displays for sale counterfeit goods that bear the Complainant’s name and trademark

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ERYKAH BADU. According to the Complainant, the Respondent has chosen and used the disputed domain name to misleadingly attract customers to the website at the disputed domain name for the purpose of selling them unauthorized, counterfeit versions of the of f icial merchandise sold by authorized licensees of the Complainant. The Complainant notes that the Respondent’s use of the Complainant’s trademark is not legitimate, because the Respondent is not an authorized reseller, distributor, or licensee of the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.
According to her, the Respondent registered the disputed domain name primarily to disrupt the
Complainant’s business and to sell ERYKAH BADU-branded counterfeit products in competition with the
Complainant.

The Complainant further notes that the Respondent is offering the disputed domain name for sale for the amount of USD 9,997. According to the Complainant, this shows that the Respondent has registered the disputed domain name to sell it to the Complainant for valuable consideration in excess of the Respondent’s out-of -pocket costs directly relating to the disputed domain name.

B. Respondent

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

In its April 8, 2025, informal communication to the Center, the Respondent stated:

“I paid $7000 for the domain, if I can recover that it’s f ine. But you can’t just take somebody’s domain

because you want it, it was for sale, I bought it. No need for all of this. Thanks”

6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the f irst 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 Panel f inds the Complainant has established unregistered trademark rights for the purposes of the
Policy. WIPO Overview 3.0, section 1.3.

As discussed in section 1.5.2 of the WIPO Overview 3.0, the UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to f ile a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services. As further discussed in section 1.3 of the WIPO Overview 3.0, to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.

The Complainant has shown that she has consistently used for many years both in the United States and internationally the distinctive professional name Erykah Badu in a source-identifying capacity in relation to the live and recorded musical performance entertainment services that she has personally provided in her long and distinguished musical career, that her social media and streaming services profiles under the name Erykah Badu have millions of followers and listeners, and that her professional achievements have been acknowledged by five Grammy awards, as well as other awards. Her popularity and musical status is also evident from the Respondent’s website which refers to her as “The Godmother of Soul”. This is sufficient for the Panel to conclude that the Complainant has shown that her ERYKAH BADU trademark has become a

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distinctive identif ier which consumers associate with her musical entertainment services, and that the of the Policy.

The entirety of the trademark ERYKAH BADU is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the ERYKAH BADU trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel f inds the f irst 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 of ten 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 satisf ied 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 Policy or otherwise.

The disputed domain name is identical to the Complainant’s professional name and unregistered trademark ERYKAH BADU, which carries a high risk of implied af f iliation. Section 2.5.1 of the WIPO Overview 3.0. The Complainant has submitted evidence that the Respondent has used it for a website that claimed to be the of f icial fan site of the Complainant and that of fered for sale various merchandise bearing the

Complainant’s professional name and trademark under the heading “Official Fan Merch”. The Respondent does not deny the Complainant’s allegations that its website and the merchandise of fered there have not been authorized by the Complainant, and does not submit evidence to the contrary. In these circumstances, the Panel accepts as more likely than not that the Respondent has used the disputed domain name in an attempt to mislead for commercial gain Internet users that its website and the merchandise of fered there have been of f icially authorized by the Complainant. Such an activity would not be legitimate, and this precludes a f inding that the Respondent has rights or legitimate interests in the disputed domain name.

The Panel therefore f inds 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.

As discussed in the previous section, the disputed domain name carries a high risk of implied af f iliation with the Complainant, and the Respondent has used it for a website that claimed to be an “Erykah Badu Off icial Fan Site” and offered for sale ERYKAH BADU-branded goods that were referred to as the Complainant’s “Of f icial Fan Merch”. The Respondent has not denied or disproven the Complainant’s allegations that the

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disputed domain name, the Respondent’s website, and the goods offered there have not been authorized by the Complainant. This supports a conclusion that it is more likely than not that by registering and using the disputed domain name, 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 ERYKAH BADU trademark as to the source or endorsement of its website and of the products offered there, which constitutes bad faith under the Policy.

The Panel therefore f inds that the Complainant has established the third element 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 <erykahbadu.com> be transferred to the Complainant.

/Assen Alexiev/
Assen Alexiev
Sole Panelist
Date: May 8, 2025