TAS Rights Management, LLC v Schwartz Vaughn

WIPO Case No. D2024-0863

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TAS Rights Management, LLC v. Schwartz Vaughn

Case No. D2024-0863

1. The Parties

Complainant is TAS Rights Management, LLC, United States of America (“United States”), represented by

Venable LLP, United States.

Respondent is Schwartz Vaughn, United States.

2. The Domain Names and Registrar

The disputed domain names <taylormerch.com>, <taylorswiftmerchshop.com>, and
<taylorswiftsmerch.com> (the “Domain Names”) are registered with Domain International Services Limited

(the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2024. On February 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 29 and March 1, 2024, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondent (REGISTRANT UNKNOWN, REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to Complainant on March 1, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint in English on March 1, 2024.

Registration Agreement for the Domain Names is Chinese. On the same day, Complainant requested	On March 1, 2024, the Center informed the Parties in Chinese and English, that the language of the submission.
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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent in Chinese and English of the Complaint in English and Chinese, and the proceedings commenced on March 7, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 28, 2024.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 8, 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

Complainant is the intellectual property management company for musical artist Taylor Swift (the “Artist”) and the owner of numerous registered trademarks for the TAYLOR SWIFT mark and variations thereof, and registered trademarks consisting of the TAYLOR mark without the Artist’s last name in combination with one or more other terms (collectively, the “Marks”). The Artist is a well-known musician, songwriter, award- winner, recording artist, and performer. Complainant uses the Marks to promote the Artist as well as to offer a wide variety of products such as apparel, accessories, jewelry, etc.

Complainant owns and has registered more than 300 trademarks in various jurisdictions consisting of the

TAYLOR SWIFT mark and variations thereof, such as:

- United States registered trademark number 3,812,827 for the TAYLOR SWIFT word mark, registered

on July 6, 2010;
- United States registered trademark number 4,313,779 for the TAYLOR SWIFT word mark, registered on April 2, 2013; and

- Chinese registered trademark number 17874559 for the TAYLOR SWIFT word mark, registered on

October 21, 2016.

Complainant also owns and has registered more than 130 registrations containing TAYLOR without the
Artist’s last name, in various jurisdictions, for example:

- United States registered trademark number 5,573,329 for the TAYLOR NATION word mark, registered on October 2, 2018;

- International registered trademark number 1631158 for the TAYLOR’S VERSION word mark,

registered on June 22, 2021;

- Chinese registered trademark number 65567614 for the 1989 TAYLOR’S VERSION word mark,

registered on May 21, 2023;
- Chinese registered trademark number 65481583 for the FEARLESS TAYLOR’S VERSION word mark, registered on December 7, 2022; and

- Chinese registered trademark number 64162902 for the RED TAYLOR’S VERISON word mark,

registered on October 28, 2022.

Complainant further operates a website at “ featuring photographs, videos, and tour information, as well as links to social media accounts and a link to Complainant’s merchandise (or “merch”) store (“ for purchasing Artist merchandise.

In addition, Complainant owns a number of domain names containing the Marks, including:
<taylorswift.com>, <taylorswiftmerch.com>, <store.taylorswift.com>, and <officialtaylormerch.com>.

The Domain Names were registered on the same day, May 12, 2023, with the same Registrar. Prior to the filing of the Complaint, the record shows that as of December 2023, the Domain Names each redirected to webpages that were very similar to the look and feel of Complainant’s website, displaying Complainant’s

TAYLOR SWIFT trademark prominently at the top of the webpage in each case, and offering various

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identical products and services. The record also shows that prior to the filing of the Complaint, around
February 14, 2024, the webpages of the respective Domain Names changed their content to offer jewelry
without any reference to the Artist or the TAYLOR SWIFT trademark. At the time of the Decision, each of the

Domain Names redirects to an inactive or error page.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the Domain Names are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Names; and (iii) Respondent registered and is using the Domain Names in bad faith.

In particular, Complainant contends that it has trademark registrations for TAYLOR SWIFT, and that websites for commercial gain.

Complainant notes that it has no affiliation with Respondent. Complainant further contends that Respondent is using the Domain Names to deceive Internet users who would expect to find a website that is affiliated with or sponsored by Complainant, and that Respondent has no rights or legitimate interests in the registration

and use of the Domain Names. Further, Complainant contends that Respondent has acted in bad faith in

acquiring and setting up the Domain Names, when Respondent clearly knew of Complainant’s rights.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Complainant submitted its original Complaint in English. In its amendment to the Complaint, Complainant submitted its request that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreements for the Domain Names is Chinese.

Complainant submits that English should be the language for the current proceeding mainly because: Respondent is located in the United States; each of the Domain Names is composed of Latin characters including Complainant’s English language trademarks with the addition of an English term, “merch” and in one case the addition of “shop”; each of the websites featured complete sentences in English. Complainant further submitted that if the proceeding were conducted in Chinese, Complainant would have to incur significant translation expenses, which would add considerable costs to Complainant, cause undue burden on Complainant.

In exercising its discretion to use a language other than that of the Registration Agreements for the Domain Names, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.

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The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel also notes that the Domain Names do not have any specific meaning in the Chinese language, and that the Domain Names contain the English term “merch” or “shop” or both, and that the Domain Names redirected to the websites in the English language; all of which indicate that Respondent understands English. The Panel further notes that the Center notified the Parties in Chinese and English of the language of the proceeding as well as notified Respondent in Chinese and English of the Complaint. Respondent chose not to respond to the language of the proceeding, nor did Respondent choose to file a Response in Chinese or English.

The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-
effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into
Chinese and to conduct the proceeding in Chinese.

Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding.

6.2. Substantive Issues

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i)        the Domain Names are identical or confusingly similar to a trademark or service mark in which

Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii)      the Domain Names were registered and are being used in bad faith.

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself
mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an

admission that the complainant’s claims are true.

Thus, although in this case, Respondent has failed to respond to the Complaint, the burden remains with evidence.

A. Identical or Confusingly Similar

Ownership of a trademark registration prima facie satisfies that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence of its rights in the TAYLOR SWIFT trademarks, as noted above under section 4. Complainant has also submitted evidence which supports that the TAYLOR SWIFT trademarks are widely known and a distinctive identifier of Complainant’s products and services. Further, Complainant has submitted as evidence, a number of registered trademarks with TAYLOR in combination with other terms, such as TAYLOR NATION, TAYLOR’S VERSION, 1989 TAYLOR’S VERSION, FEARLESS TAYLOR’S VERSION, RED TAYLOR’S VERSION, as noted in section 4 above.

With Complainant’s rights in the TAYLOR SWIFT trademark established, the remaining question under the
first element of the Policy is whether each of the Domain Names, typically disregarding the Top-Level
Domain (“TLD”) in which it is registered (in this case is, “.com”), is identical or confusingly similar to
Complainant’s trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph
Gross, WIPO Case No. D2010-0842.

Here, each of the Domain Names <taylorswiftmerchshop.com> and <taylorswiftsmerch.com> is confusingly similar to Complainant’s TAYLOR SWIFT trademark. The use of Complainant’s trademark in its entirety, with the addition of the term “merchshop” or “smerch” in the respective Domain Name, does not prevent a

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finding of confusing similarity between the respective Domain Name and the TAYLOR SWIFT trademark.

See WIPO Overview 3.0, section 1.8.

Regarding the Domain Name <taylormerch.com>, the Panel notes it incorporates the initial term of
Complainant’s TAYLOR SWIFT trademark and the term “merch” which is short for “merchandise”. This
Domain Name previously resolved to a website, prominently displaying Complainant’s TAYLOR SWIFT
trademark at the top of the website, and offering various identical products and services. It is clear to the
Panel that the website at this Domain Name trades off Complainant’s reputation, which confirms that
Respondent was seeking to target Complainant’s TAYLOR SWIFT trademark through this Domain Name.
This is particularly the case considering Respondent registered another two Domain Names incorporating
the TAYLOR SWIFT trademark in its entirety. The Panel finds that the circumstances of the case support a
finding of confusing similarity between the Domain Name <taylormerch.com> and Complainant’s TAYLOR
SWIFT trademark. See WIPO Overview 3.0, sections 1.7 and 1.15. See also: Fenix International Limited v.
Jean Valjean, WIPO Case No. D2023-3488, Furla S.p.A v. mike kruger; Ssandra Nagel; Christina
Ackermann; Shawn Thurin; Nico Eberhart; Brian Presley; Patricia Arvizu; Name Redacted; and Client
Care, Web Commerce Communications Limited, WIPO Case No. D2024-0283, and Jacques Bermon

Webster II and La Flame Enterprises v. Mian Mian, WIPO Case No. D2024-0813,

Thus, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes out a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, Complainant asserts that Respondent is not an authorized reseller and is not related to Complainant. Respondent is also not known to be associated with the TAYLOR SWIFT trademarks and there is no evidence showing that Respondent has been commonly known by the Domain Names.

In addition, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, prior to the filing of the Complaint, the record shows that as of December 2023, the Domain Names each redirected to webpages that were very similar to the look and feel of Complainant’s websites, displayed Complainant’s TAYLOR SWIFT trademark prominently at the top of the webpage in each case, and offered various identical products such as the “1989 (Taylor’s Version) Cardigan”, “Taylor Swift The Eras Tour Black Tote Bag”, “Taylor Swift 1989 Seagull Necklace”, and “Taylor Swift The Eras Tour US Dates Black T-Shirt”, among other goods and services. The webpages also displayed numerous other trademarks owned by Complainant such as the names of the albums owned by the Artist, the TAYLOR’S VERSION trademarks, etc., and each website included the same copyright notice at the bottom of the respective website with a minor change to match the name of each of the Domain Names. The record also shows that prior to the filing of the Complaint, around February 14, 2024, the webpages of the respective Domain Names changed their content to offer jewelry without any reference to the Artist or the TAYLOR SWIFT trademark. At the time of the Decision, the Domain Names each redirects to an inactive or error page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Names. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875.

Accordingly, Complainant has provided evidence supporting its prima facie case that Respondent lacks any rights or legitimate interests in each of the Domain Names. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Names.

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Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain

Names, and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain
Names in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration

in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your website or other online location, by creating a likelihood of confusion with the complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or
service on your website or location.”

The Panel finds that Complainant has provided evidence to show that registration and use of the TAYLOR SWIFT trademarks long predate the registration of the Domain Names. The Artist is also well established and known. Indeed, the record shows that Complainant’s TAYLOR SWIFT trademarks and related products

and services are widely known and recognized. Therefore, particularly considering the prior use of the
TAYLOR SWIFT trademark on the websites at the Domain Names, the Panel finds that Respondent was
aware of the TAYLOR SWIFT trademark when it registered the Domain Names which suggests bad faith.
See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods
Limited, WIPO Case No. D2016-1973.

Moreover, the evidence provided by Complainant indicates that prior to the filing of the Complaint, in Swift The Eras Tour US Dates Black T-Shirt”, among other goods and services. The webpages also displayed numerous other trademarks owned by Complainant such as the names of the albums owned by the Artist, the TAYLOR’S VERSION trademarks, etc., and each website included the same copyright notice at the bottom of the respective website with a minor change to match the name of each of the Domain Names. The record also shows that prior to the filing of the Complaint, around February 14, 2024, the webpages of the respective Domain Names changed the content to offer jewelry without any reference to the Artist or the TAYLOR SWIFT trademark. The Panel finds that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s webpages by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites.

December 2023, the Domain Names each redirected to webpages that were very similar to the look and feel
of Complainant’s websites, displayed Complainant’s TAYLOR SWIFT trademark prominently at the top of the
webpage in each case, and offered various identical products such as the “1989 (Taylor’s Version)

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At the time of the Decision, the Domain Names each redirects to an inactive or error page. Considering the circumstances of this case, such use does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3.

Further, the Panel also notes the failure of Respondent to submit a Response.

Accordingly, the Panel finds that Respondent registered and is using the Domain Names in bad faith and

Complainant succeeds under the third element of paragraph 4(a) 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 Domain Names <taylormerch.com>, <taylorswiftmerchshop.com>, and

<taylorswiftsmerch.com> be transferred to Complainant.

/Kimberley Chen Nobles/
Kimberley Chen Nobles
Sole Panelist
Date: April 22, 2024