Wiz Khalifa, whose real name is Cameron Thomaz just won control of 8 domain names either having his name, Wiz Khalifa or his brand Taylor Gang.
A one member UDRP WIPO panel awarded
“Complainant Cameron Thomas, professionally known as, Wiz Khalifa, is an internationally renowned recording artist and performer. Throughout his career, Complainant has released Platinum-selling singles, including the Triple-Platinum single Black and Yellow, five critically-acclaimed studio albums, and thirty-four music videos.
In 2006, Complainant was declared by Rolling Stone magazine as “an artist to watch”. Since then, his albums and songs have peaked on numerous music charts and have earned many awards, including, but not limited to, the 2012 Top New Artist Billboard Music Aware.
Complainant is also a multi-time Grammy Award-nominated artist, being nominated in several categories in 2012, 2013 and 2014.
In 2008, Complainant founded Taylor Gang Ent. with Academy Award winner Juicy J, and has since signed several notable hip hop artists, such as Chevy Woods, Berner, Courtney Noelle and Ty Dolla $ign. Among the studio albums and recordings released by Taylor Gang Ent. are Wiz Khalifa’s Star Power (2008), Flight School (2009), Kush & Orange Juice (2010), Cabin Fever (2011), Taylor Allderdice (2012), and 28 Grams (2014).
Through his company, Complainant owns United States trademark registration/applications for the marks TAYLOR GANG and WIZ KHALIFA for a variety of goods/services.
Complainant claims United States common law trademark rights in TAYLOR GANG and WIZ KHALIFA.
Complainant’s trademarks TAYLOR GANG and WIZ KHALIFA are famous trademarks.
All disputed domain names are identical or confusingly similar to Complainant’s TAYLOR GANG or WIZ KHALIFA trademarks.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and is using the disputed domain names in bad faith.
The Respondent did not reply to Complainant’s contentions.
Complainant owns at least one trademark registration for TAYLOR GANG in the United States. The registration date for this trademark is September 16, 2014, and the relevant date is the filing date for this registration (i.e., June 4, 2012).
Although not relevant for purposes of the first element, the Panel notes that Complainant established these trademark rights prior to the registration of the disputed domain names <wizkhalifa.biz> and <wizkhalifa.mobi> (i.e., both with registration dates of October 31, 2012).
A common law mark is established when a complainant’s goods or services become distinctive through the acquisition of secondary meaning. Complainant has established secondary meaning in WIZ KHALIFA through its extensive use and promotion of this mark beginning at least as early as 2006.
Evidence of record has established that Complainant has developed this trademark and maintains a strong presence in the United States and in many countries throughout the world.
The registration of the disputed domain names <taylorsgreen.com> (i.e., registration date of August 1, 2010) and <taylorclothes.com> (i.e., registration date of December 30, 2011) predate the filing date of Complainant’s only United States trademark registration.
However, this does not prevent a finding of identity or confusing similarity. See paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Additionally, the Panel finds that Complainant has submitted sufficient evidence to prove the creation of common law trademark rights in TAYLOR GANG beginning in 2008.
Complainant has alleged that the TAYLOR GANG trademark is confusingly similar to the and domain names. Complainant has alleged that “taylor” is the dominant portion of the TAYLOR GANG trademark, and that Respondent has incorporated this dominant portion of the trademark into the disputed domain names. Complainant has alleged and provided unrebutted evidence that Respondent operated a website at featuring the personality of Wiz Khalifa and products associated with the WIZ KHALIFA trademark. Complainant has alleged and provided unrebutted evidence that Respondent operated a website at that featured products associated with the TAYLOR GANG trademark.
Because Respondent has not rebutted Complainant’s allegation that the and domain names are confusingly similar to the TAYLOR GANG trademark, and because it is clear Respondent established websites associated with these two domain names that featured the TAYLOR GANG trademark and the related WIZ KHALIFA trademark, the Panel finds that Respondent most likely registered the and domain names with the express intention to target Complainant and its trademarks. The Panel holds that both the and domain names are confusingly similar to Complainant’s TAYLOR GANG trademark.
Accordingly, for all of the disputed domain names, Complainant has proven the requirement of Policy, paragraph 4(a)(i).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.Respondent has failed to file a Response, which suggests, in the circumstances, that Respondent lacks rights or legitimate interests in the disputed domain names.
By not filing a Response, Respondent has not provided any evidence that it is commonly known by any of the eight disputed domain names, or that it is commonly known by any name consisting of, or incorporating the words “taylor”, “gang”, “taylor gang”, “wiz”, “khalifa”, ” wiz khalifa”, “clothes”, “green”, “taylor clothes”, or “taylor green”, or any combination of these words.
The fact that Respondent’s domain names <taylorgang.mobi>, <taylorgang.biz>, <taylorgang.info>, <wizkhalifa.biz>, and <wizkhalifa.mobi> automatically redirect to <taylorgang.net>, a domain name which Complainant claims was formerly owned by Respondent is further evidence that Respondent does not have a right or legitimate interest in these domain names.
Complainant has provided unrebutted evidence showing that Respondent was operating websites at each of the disputed domain names that featured the personality of Wiz Khalifa or products bearing the TAYLOR GANG or WIZ KHALIFA trademarks, or which redirected to websites that did so, confusing and misleading Internet users into believing that the websites are authorized or endorsed by Complainant. The Panel holds that such use of the disputed domain names by Respondent cannot be considered a bona fide offering of goods or services or as a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
The Panel finds that Respondent registered and is using the disputed domain names in bad faith.
Respondent maintained websites associated with the disputed domain names that featured the trademarks TAYLOR GANG and WIZ KHALIFA, or the personality of Wiz Khalifa, or websites that redirected the Internet user to websites that did, creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the websites.
The misappropriation of the goodwill associated with another’s well-known trademark for the purpose of attracting unwary Internet users to a website for no other reason than for commercial gain is evidence of bad faith.
The Panel also finds that Respondent almost certainly chose the disputed domain names with full knowledge of Complainant’s rights in the TAYLOR GANG and WIZ KHALIFA trademarks.
Respondent’s awareness of Complainant’s trademarks may be inferred because of Respondent’s use of these trademarks on the websites associated with each of the disputed domain names. This activity is further evidence the disputed domain names were registered and are being used in bad faith.
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 names,<taylorclothes.com>
be transferred to Complainant.
Gary J. Nelson