Jacques Bermon Webster II aka Travis Scott, LaFlame Enterprises, Inc. v; Umair Iqbal

WIPO Case No. D2024-0815

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Jacques Bermon Webster II aka Travis Scott, LaFlame Enterprises, Inc. v.
Umair Iqbal

Case No. D2024-0815

1. The Parties

The Complainants are Jacques Bermon Webster II aka Travis Scott (the “First Complainant”) and LaFlame
Enterprises, Inc. (the “Second Complainant”), United States of America (“United States”), represented by Kia

Kamran P.C., United States.

The Respondent is Umair Iqbal, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <travisscotthoodie.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2024. On February 23, 2024, 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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Privacy service) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 26, 2024, 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 amendment to the Complaint on March 4, 2024.

The Center verified that the Complaint together with the amendment to 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 6, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was March 26, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 27, 2024.

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The Center appointed Linda Chang as the sole panelist in this matter on April 9, 2024. 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 First Complainant is a famous recording artist, and has achieved four number-one hits on the Billboard
Hot 100, and won a Billboard Music Award, Latin Grammy Award, and MTV Video Music Award.

The Second Complainant is the owner of the following, amongst others, TRAVIS SCOTT trademark registrations:

(I) United States Trademark Registration No. 5918744, registered on November 26, 2019, in Classes 9,

16, 25, and 41;

(II)	United States Trademark Registration No. 6366019, registered on May 25, 2021, in Class 14;
(III)	United States Trademark Registration No. 6901495, registered on November 15, 2022, in Classes 18

and 21; and

(IV) International Trademark Registration No. 1634937, registered on August 16, 2021, in Classes 9, 14,

16, 18, 21, 25, and 41, designating to multiple jurisdictions including Australia, Canada, China, European
Union, India, Türkiye and United Kingdom.

The disputed domain name was registered on June 14, 2023. Presently, it does not resolve to an active webpage but at the time of the filing of the Complaint, it resolved to an online shopping website providing TRAVIS SCOTT-branded products.

5. Parties’ Contentions

A. Complainant

The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainants contend that the disputed domain name includes the entirety of the TRAVIS
SCOTT trademark and the mere addition of the generic word “hoodie” does not eliminate any confusion.
The disputed domain name is therefore identical and confusingly similar to the Complainants’ trademarks.

The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and has not been authorized or licensed to use the TRAVIS SCOTT trademark. Furthermore, the Respondent is

intending to divert consumers for commercial gain by creating a likelihood of confusion with the
Complainants.

The Complainants finally contend that the Respondent registered the disputed domain name primarily for the purpose of disrupting the Complainants’ business by selling counterfeit products branded as Travis Scott, and the use of the disputed domain name is intended to misdirect consumers to the Respondent’s website and inducing them into believing that the Respondent’s products are associated with or authorized by the Complainants.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

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6. Discussion and Findings

6.1. Procedural Issues – Consolidation of Complainants

The Complainants have filed one single Complaint together against the Respondent.

The First Complainant owns the Second Complainant, which is the owner of multiple TRAVIS SCOTT trademark registrations.

The Panel is convinced that the First Complainant and Second Complainant share a common grievance and legal interests in the TRAVIS SCOTT trademark, and their rights are both targeted by the Respondent’s conduct of registering and using the disputed domain name.

Accordingly, the Panel determines that it would be equitable and procedurally efficient to give permission to the Complainants’ request for consolidation in this administrative proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.

6.2 Substantive Issues

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 3.0, section 1.7.

The Complainants have 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 entirety of the mark is reproduced 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 term “hoodie” 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.

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Having reviewed the available record, the Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainants’ 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 was resolving to a Travis Scott online shop providing allegedly counterfeit TRAVIS SCOTT-branded products and purporting to be the First Complainant in the copyright notice at the bottom of the website. By registering a domain name incorporating the TRAVIS SCOTT trademark and purporting to be the First Complainant on the website, the Respondent is attempting to impersonate the Complainants and divert traffic to its own website. The Panel determines that the Respondent’s use of the disputed domain name can in no way amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.

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.

The Panel holds that the Respondent must have been well aware of the Complainants at the time of registration but deliberately chose the TRAVIS SCOTT trademark to register the disputed domain name. By dominantly displaying the TRAVIS SCOTT trademark on the website, the Respondent is attempting to pass off the disputed domain name as the Complainants’ online shop and cause confusion among Internet visitors. The Respondent is intentionally attempting to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with the TRAVIS SCOTT trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Bad faith can be inferred from the Respondent’s registration and use of the disputed domain name.

The Panel finds that the Complainants have 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 <travisscotthoodie.com> be transferred to the Complainants.

/Linda Chang/ Linda Chang Sole Panelist Date: April 23, 2024