DECISION

 

HY IP Holding Company LLC v. Blake Bruseloff

Claim Number: FA1906001846826

 

PARTIES

Complainant is HY IP Holding Company LLC (“Complainant”), represented by Susan J. Kohlmann of Jenner & Block, USA.  Respondent is Blake Bruseloff (“Respondent”), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hudsonyardstickets.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 7, 2019; the Forum received payment on June 17, 2019.

 

On June 10, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hudsonyardstickets.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hudsonyardstickets.com.  Also on June 18, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant offers real estate services, including real estate development, brokerage, leasing, property management, marketing, acquisitions, and sales. Complainant has rights in its HUDSON YARDS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,125,892, registered Jan. 17, 2017). See Compl. Ex. A. Respondent’s <hudsonyardstickets.com> domain name is identical and/or confusingly similar to Complainant’s mark as Respondent merely adds the generic term “tickets” and the “.com” generic top-level domain (“gTLD”).

 

2.    Respondents has no rights or legitimate interests in the <hudsonyardstickets.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as the disputed domain name resolves to a landing page with the logo of the “Shopify” website-building service.

 

3.    Finally, Respondent’s <hudsonyardstickets.com> domain name was registered and is being used in bad faith, as Respondent has knowledge of Complainant’s right’s in the HUDSON YARDS mark. Additionally, Respondent has no relationship with Complainant, is not authorized to use Complainant’s mark, and in doing so, registered the disputed domain name in bad faith. Finally, continuing to allow Respondent to keep the disputed domain name allows a continued threat of abuse by Respondent toward Complainant.

 

B.   Respondent

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <hudsonyardstickets.com> domain name is confusingly similar to Complainant’s HUDSON YARDS mark.

 

2.    Respondent does not have any rights or legitimate interests in the <hudsonyardstickets.com> domain name.

 

3.    Respondent registered or used the <hudsonyardstickets.com> domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant has rights in its HUDSON YARDS mark through registration with the USPTO (e.g. Reg. No. 5,125,892, registered Jan. 17, 2017). See Compl. Ex. A. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶

4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the HUDSON YARD mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <hudsonyardstickets.com> domain name is identical or confusingly similar to Complainant’s mark as Respondent merely add the generic term “tickets” and the “.com” gTLD. Adding a generic term and a gTLD to a complainant’s mark may not be sufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that Respondent’s <hudsonyardstickets.com> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent has no rights or legitimate interest in the <hudsonyardstickets.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, Complainant provides the WHOIS information for the <hudsonyardstickets.com> domain name, and verification shows “Blake Bruseloff” as the registrant of the disputed domain name, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the <hudsonyardstickets.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Next, Complainant argues that Respondent has no rights or legitimate interest in the <hudsonyardstickets.com> domain name as Respondent’s use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Rather, Respondent has the disputed domain name resolve to a landing page with the logo of the “Shopify” website-building service. Failure to make a demonstrable preparations to use a disputed domain name is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provides a screenshot of the resolving webpage of the <hudsonyardstickets.com> domain name, showing a page informing the user that the webpage setup has not been completed. See Compl. Ex. D. Therefore, the Panel finds Respondent has no rights or legitimate interest in the  <hudsonyardstickets.com> domain name as Respondent’s use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant argues Respondent’s <hudsonyardstickets.com> domain name was registered and is being used in bad faith, as Respondent has constructive and/or actual knowledge of Complainant’s right’s in the HUDSON YARDS mark. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel chooses to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent registered the disputed domain name two years after Complainant obtained rights in the HUDSON YARDS mark. As such, the Panel determines whether Respondent did have actual knowledge of Complainant’s mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).

 

Next, Complainant argues Respondent has no relationship with Complainant, is not authorized to use Complainant’s mark, and in doing so, registered the disputed domain name in bad faith. Bad faith may be found where use and registration of a disputed domain name in the absence of bad faith is inconceivable under Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). Additionally, bad faith can be found where respondent chose to register a well-known mark that respondent has no connection to under Policy ¶ 4(a)(iii). See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”). Here, Complainant points to the fame of the HUDSON YARDS mark and evidence that Respondent has no rights or legitimate interest in the disputed domain name. See Compl. Ex. B. Therefore, the Panel finds that Respondent has no relationship with Complainant, is not authorized to use Complainant’s mark, and in doing so, registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

Finally, Complainant argues Respondent’s <hudsonyardstickets.com>  domain name was registered and is being used in bad faith, and continuing to allow Respondent to keep the disputed domain name allows a continued threat of abuse by Respondent toward Complainant. Bad faith can be found when respondent fails to provide evidence that registration of the disputed domain name was not done in bad faith and continuing to allow respondent to use the disputed domain name would only cause more confusion under Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where the respondent failed to provide any evidence to controvert the complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with the complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present). The Panel notes Complainant does not provide any evidence that Respondent intends to use the disputed domain name at all, as it is currently inactive. Therefore, the Panel finds Respondent’s <hudsonyardstickets.com> domain name was registered and is being used in bad faith as Respondent could use the domain name abusively under Policy ¶ 4(a)(iii).

 

The Panel finds that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel therefore finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hudsonyardstickets.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

July 22, 2019