In Brother Records, Inc. v. David J. Roberts, Good Vibrations, WIPO Case No. D2017-2287 (John Swinson, January 10, 2018), the Panel transferred the domain beachboys.org to the recording company that owns the intellectual property rights relating to the famous band "The Beach Boys." Respondent is a tribute band that performs songs by "The Beach Boys." Despite the fact that it registered the disputed domain name way back in 2002 and included a disclaimer on its website negating affiliation with The Beach Boys, there was no "Fun Fun Fun" for Respondent in this "Wipe Out" against Respondent.
As with all UDRP cases, the Panel examined the three factors necessary for a UDRP complainant to prevail. First, as to whether the disputed domain is identical or confusingly similar to a mark in which Complainant owns trademark rights, the Panel readily found similarity, noting that the absence of "The" in the disputed domain name does not differentiate the domain from THE BEACH BOYS trademarks in which Complainant has extensive rights.
Second, in determining whether Respondent has rights or legitimate interests in the disputed domain, the Panel quickly concluded that it did not, as the services offered by Respondent were not bona fide. "While the Panel does not doubt that the Respondent is a legitimate tribute band, the Respondent’s use of the Disputed Domain Name in connection with those services is not bona fide." Expanding on that conclusion, the Panel noted "Respondent’s use of the Trade Mark in the Disputed Domain Name is, on balance, likely an attempt by the Respondent to divert Internet users seeking a website relating to The Beach Boys to the Respondent’s website. As the Respondent’s use of the Trade Mark in the Disputed Domain Name is unauthorized, in these circumstances, such use cannot be considered bona fide."
Finally, as to the third factor, namely, whether the disputed domain was registered and used in bad faith, the Panel concluded that "[a]s the Respondent is a tribute band for The Beach Boys, it is clear that the Respondent registered the Disputed Domain Name with the Trade Mark in mind. The Respondent’s likely intention was to attract Internet users who are fans of The Beach Boys to the Respondent’s website at the Disputed Domain Name." Continuing, "[t]he Panel considers that, by registering and using the Disputed Domain Name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship or affiliation." The Panel rejected any contention that the disclaimer on Respondent's website somehow negated Respondent's culpability: "[D]espite the disclaimer appearing on the website at the Disputed Domain Name, the Respondent’s use of the Trade Mark in the Disputed Domain Name creates an implied affiliation with the Complainant." And the Panel appeared to accept Complainant's argument that "the Disputed Domain Name creates initial interest confusion. Although the website at the Disputed Domain Name contains a disclaimer, the initial interest confusion has already occurred."
And thus, the Panel ordered the transfer of the domain name. The Panel did seem to endorse the new domain adopted by Respondent for its tribute activities: "Respondent could have selected another term which would not have carried the same implied affiliation, and which made the Respondent’s position as a tribute band more clear from the outset (and has apparently done so recently with the registration of <surfin-usa.co.uk>)." Personally, it would be hard for me to want to give a "tribute" to an entity that just whooped me in a UDRP proceeding, but to each their own. Maybe the parties can hug it out one day in "Kokamo."
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