Ronica Holdings Ltd v Nano Techan

WIPO Case No. D2025-0301

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Ronica Holdings Ltd v. Nano Techan

Case No. D2025-0301

1. The Parties

The Complainant is Ronica Holdings Ltd, British Virgin Islands, United Kingdom, represented by Russ

August & Kabat, United States of America.

The Respondent is Nano Techan, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <deadmau5.store> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2025.
On January 27, 2025, 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 provided by Withheld for Privacy) and contact
information in the Complaint. The Center sent an email communication to the Complainant on January 30,
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 a Complaint on February 3,

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 February 7, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 27, 2025. The Respondent did not submit any response.

Accordingly, the Center proceeded to notified the Respondent’s default on March 5, 2025.

The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on March 11, 2025. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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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 Ronica Holdings Ltd, a private company limited by shares (prc) organized under the laws of the British Virgin Islands, United Kingdom.

The Complainant is owned and controlled by Joel Zimmerman, professionally known as deadmau5
(“deadmau5”).

Deadmau5 is a highly successful and internationally recognized electronic dance music artist, performer, and producer. His stage name and trademark DEADMAU5 has become widely recognized by fans and industry professionals alike.

The Complainant’s DEADMAU5’S rise to fame began in the early 2000s, when he began producing and releasing electronic dance music tracks on various online platforms.

Since the year 2000, the Complainant has amassed a substantial fan base and has been credited with popularizing the “progressive house” sub-genre of electronic dance music. He and his music have been featured in video games, movies, television shows, and he has won numerous awards for his work, including seven Grammy Award nominations and JUNO Awards for Dance Recording of the Year.

According to the Recording Industry Association of America (RIAA), he has earned multiple gold and platinum certifications for his music in the United States of America.

The Complainant “deadmau5” has performed at some of the world’s most prestigious music festivals, such as “Coachella”, “Lollapalooza”, and “Ultra Music Festival”. He has also headlined his own tours, including the “Meowingtons Hax” and “Cube V3” tours, which were both critically acclaimed and commercially

successful.

In addition to his music career, “deadmau5” has also been involved in various business ventures, including the creation of his own record label and merchandise line featuring his DEADMAU5 mark.

Deadmau5 has also been involved in numerous philanthropic efforts, including working alongside the Make-
A-Wish Foundation and raising tens of thousands of dollars for various charities.

The success of these ventures has further cemented deadmau5’s status as a highly respected and influential figure in the music industry. His influence and impact are widely recognized, and he continues to be a major force in the world of music and entertainment.

The Complainant is the owner of the following trademarks:

Trademark	Country	Registration	Registration date	Class
number
DEADMAU5	Australia	1330113	November 5, 2009	9, 12, 16, 18, 25, 28, 30, 32, 41
DEADMAU5	Australia	1673960	October 4, 2022	20
DEADMAU5	Australia	1330114	November 5, 2009	9, 12, 16, 18, 25, 28,
and design	30, 32, 41
DEADMAU5	Canada	TMA863906	October 29, 2013	9, 16, 18, 25, 28, 30, 32 and 41
DEADMAU5	Canada	TMA865467	November 19, 2013	9, 16, 18, 25, 28, 30,
and design	32 and 41

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DEADMAU5 China 17504226 September 21, 2016 41

DEADMAU5	China	17504227	September 21, 2016	35
DEADMAU5	China	17504228	September 21, 2016	25
DEADMAU5	China	17504229	September 21, 2016	9
DEADMAU5	European Union	1673960	April 28, 2022	20
DEADMAU5	European Union	8131476	May 31, 2010	9, 16,25, 41
DEADMAU5	European Union	8561193	September 16, 2010	12,18, 28, 30 and 32
DEADMAU5	European Union	8561284	April 26, 2010	12,18, 28, 30 and 32
and design
DEADMAU5	European Union	12292793	April 1, 2014	9, 16, 18, 25, 28, 30,
and design	32, 41
DEADMAU5	India	1290640	August 31, 2015	9, 16, 25, 28, 41
DEADMAU5	Japan	5402847	April 1, 2011	9, 12, 16, 18, 25, 28, 30, 32, 41
DEADMAU5	Japan	5402879	April 1, 2011	9
DEADMAU5	Japan	5402849	April 1, 2011	9, 12, 16, 18, 25, 28,
and design	30, 32, 41
DEADMAU5	Japan	5402880	April 1, 2011	9
and design
DEADMAU5	Peru	190644	August 15, 2012	9
and design
DEADMAU5	Peru	00232511	December 18, 2015	25
and design
DEADMAU5	Peru	72955	August 15, 2012	41
and design
DEADMAU5	Republic of Korea	45-75011	August 14, 2017	9, 25, 28 and 41
DEADMAU5	Republic of Korea	45-75012	August 14, 2017	9, 25, 28 and 41
and design
DEADMAU5	United Kingdom	2501900	March 27, 2009	9, 16, 25 and 41
DEADMAU5	United Kingdom	UK009-08131476	May 31, 2010	9, 16, 25 and 41
and design
DEADMAU5	United Kingdom	UK009-08561193	September 16, 2010	12, 18, 28, 30, 32
DEADMAU5	United Kingdom	UK009-08561284	April 26, 2010	12, 18, 28, 30, 32
and design
DEADMAU5	United Kingdom	UK009-12292793	April 1, 2014	9, 16, 18, 25, 28, 30,
and design	32 and 41
DEADMAU5	United States of	3836647	August 24, 2010	9, 16, 25 and 41
America
DEADMAU5	United States of	3930481	March 15, 2011	18 and 28
America
DEADMAU5	United States of	4887529	January 19, 2016	9, 16,18, 25, 28 and 41
and design	America
DEADMAU5	United States of	6924489	December 13, 2022	20
America
DEADMAU5	International	1290640	August 31, 2015	9, 16, 25, 28 and 41
DEADMAU5	International	1673960	April 28, 2022	20

The disputed domain name was registered on July 29, 2024.

Currently, the disputed domain name is not in use but according to the evidence presented in this case, the website previously resolved to a merchandise shop describing itself as the “OFFICIAL Merchandise Store for deadmau5 fans”. The website offered a number of goods for sale featuring the Complainant’s trademark and logo.

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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 disputed domain name is identical or confusingly similar to the
Complainant’s DEADMAU5 trademark since the disputed domain name incorporates in its entirety the
Complainant’s trademark with the generic Top-Level Domain (gTLD) “.store”.

The Complainant claims that the Respondent lacks any rights or legitimate interests concerning the disputed domain name. The Complainant asserts that there is no fair or legitimate use of the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

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 entirety of the DEADMAU5 mark is reproduced within the disputed domain name. Accordingly, the
disputed domain name is identical or confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Indeed, the Panel finds that the gTLD in the present case “.store”, may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark, as it is, in this case, a technical requirement of registration. WIPO Overview 3.0, section 1.11.1.

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 their 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. Therefore, where a complainant makes out a “prima facie” case showing the respondent lacks rights or legitimate interests, the burden of proof on this element shifts to the respondent to come forward

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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 Policy or otherwise.

According to the Complaint, the Complainant has not authorized or granted the Respondent to use its any way, nor is the Respondent commonly known by the disputed domain name.

The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, in the present case, no evidence demonstrated that the Respondent was preparing to use the disputed domain name corresponding to it in connection with a bona fide offering of goods or

services prior to receiving notice of the dispute. The Respondent is also not making any legitimate
noncommercial or fair use of the trademark, without intent for commercial gain to misleadingly divert

consumers or to tarnish the Complainant’s DEADMAU5 mark.

The evidence shows that the disputed domain name has been used in connection with the unauthorized
offering of goods and services and in connection with the unauthorized use of the DEADMAU5 marks, due to
the fact that the disputed domain name <deadmau5.store> has been used to misleadingly divert users to its
website and to tarnish the DEADMAU5 trademark. This disputed domain name has been linked to
fraudulent activities such as selling counterfeit apparel merchandise prominently featuring the DEADMAU5
mark and related logos available for sale without the authorization of the Complainant. Panels have held that
the use of a domain name for illegal activity here, claimed the sale of counterfeit goods,
impersonation/passing off, or other types of fraud 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

In the present case, the Panel notes that the disputed domain name is identical or confusingly similar to the
Complainant’s trademark, which was registered prior to the registration of the disputed domain name.

Given the well-established reputation of the Complainant’s DEADMAU5 marks in respect for many products and services, it is unlikely that the Respondent selected the disputed domain name by chance. Therefore, the Panel finds that it is inconceivable that the Respondent was unaware of the existence of the Complainant and its trademark at the time of registering the disputed domain name. The Complainant provided direct and compelling evidence that establishes the Respondent’s fraudulent impersonation scheme. The disputed domain name was connected to a website impersonating the Complainant and selling counterfeit products.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of 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.

By using the disputed domain name, the Respondent intends for its own commercial gain to attract users and/or consumers to the Respondent’s website by creating confusion, deception, and/or mistake with the DEADMAU5 marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website,

or of a product or service the Respondent provides or intends to provide on its website.

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Moreover, in the present case, the Panel has reviewed the evidence presented by the Complainant where the disputed domain name was indeed used in connection with fraudulent activities such as selling counterfeit products or apparel merchandise prominently featuring the DEADMAU5 marks and related logos available for sale without authorization from the Complainant, and it has been determined by panels that the use of a domain name for illegitimate activity or illegal activity including offering of counterfeit products, impersonation/passing off, or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4.

Having reviewed the record, the Panel has determined that the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

For all the foregoing reasons, the Panel finds that the disputed domain name was registered and has been used in bad faith.

The Panel finds 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 <deadmau5.store> be transferred to the Complainant.

/Ada L. Redondo Aguilera/
Ada L. Redondo Aguilera
Sole Panelist
Date: March 24, 2025