Varoom Whoa, Inc. v Nano Techan
WIPO Case No. D2024-2338
•07-08-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Varoom Whoa, Inc. v. Nano Techan
Case No. D2024-2338
1. The Parties
The Complainant is Varoom Whoa, Inc., United States of America (“United States”), represented by Akerman
LLP, United States.
The Respondent is Nano Techan, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <paramoreshop.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 June 7, 2024. On connection with the disputed domain name. On June 10, 2024, 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 (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 12, 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 June 24, 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 June 26, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2024.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on July 24, 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.
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4. Factual Background
The following facts are undisputed.
The Complainant is the business entity that operates Paramore, an American rock band. Founded in 2004, Paramore has received critical acclaim throughout the world with numerous awards and nominations in the music industry, including winning multiple Grammy Awards. Over the last two decades, Paramore has
released six studio albums and several singles, many of which have become certified platinum in the United
States. Paramore currently consists of three band members, Hayley Williams (lead vocalist), Taylor York
(lead guitarist), and Zac Farro (drummer), and the band member’s images are closely associated with the
band, itself.
The Complainant is the owner of several trademark registrations for the word mark PARAMORE, including, but not limited to the following United States trademark registrations:
| - | PARAMORE, with registration number 3430716, registered on May 20, 2008, for services in class 41. |
| - | PARAMORE, with registration number 3507475, registered on September 30, 2008, for goods in class 25. |
The above-mentioned trademarks will hereinafter be referred to in singular as the “Trademark”.
The Complainant includes a full listing of its trademarks, including the above. All of these registrations predate the registration of the disputed domain name on April 11, 2023.
The Complainant has a widespread and continuous use of the Trademark for over two decades and would be immediately recognizable among the trade and consumers in connection with music services and related goods and to have a reputation of excellence.
The Complainant also features its Trademark on its website “ which comprises an embedded music video and links to Paramore’s official YouTube channel. The Complainant uses both the <paramore.net> and <paramoreisaband.com> domain names, which were registered in 2000 and 2024, respectively.
Currently, the disputed domain name does not resolve to an active website.
| Paramore Band, and false statements alluding to a non-existent relationship between the Complainant and | Before, the disputed domain name resolved to a website containing use of the Trademark, imaging of the purported knock-off goods. |
| 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 the following. | |
| The disputed domain name is confusingly similar to the Trademark. The disputed domain name incorporates the Trademark in its entirety. The addition of the descriptive term “shop” does not change the overall impression and does not make the disputed domain name any less confusingly similar to the Trademark. |
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The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with or connected to the Complainant in any way.
The Respondent has not used, and is not using or preparing to use, the disputed domain name in connection with bona fide offerings of goods or services. Instead, upon the Complainant’s discovery of the disputed domain name, the Complainant found that the Website contains countless uses of the Trademark, and attempts to fraudulently represent that the Website is actually a website published by, or sanctioned by, the Complainant. However, at no time has the Complainant ever licensed or authorized the Respondent to use the Trademark. Further, the Website offers knock-off goods by using the Trademark on products, such as T- shirts, sweaters, mugs and phone cases, alongside unauthorized images of the Paramore band and the band’s album cover art.
The Respondent is not commonly known as by the disputed domain name. Furthermore, there is no evidence that the Respondent might have used the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Instead, the offering for sale of knock-off merchandise does not amount to a bona fide offering of goods or services or to a legitimate noncommercial or fair use of the disputed domain name.
The Respondent’s use of the disputed domain name is the epitome of bad faith. As a general proposition, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Using the Complainant’s images and the Trademark to sell knock-
off product is certainly taking unfair advantage of or otherwise abusing the Trademark.
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 Trademark 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 terms here, “shop”, 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 Trademark 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
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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 Policy or otherwise.
Panels have held that the use of a domain name for illegal activity here, claimed as applicable to this case: sale of counterfeit goods and impersonation/passing off, 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.
In the present case, the Panel notes that the Respondent has clearly attempted to impersonate the attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark.
Panels have held that the use of a domain name for illegal activity as described above constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, which includes the fact that the Respondent failed to reply to the allegations made by the Complainant, the Panel finds the Respondent’s registration and
use of the disputed domain name constitutes bad faith under the Policy.
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 <paramoreshop.com> be transferred to the Complainant.
/Willem J. H. Leppink/
Willem J. H. Leppink
Sole Panelist
Date: August 7, 2024
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