Ironstate Holdings LLC v. Nick Polemis / Ironstate Construction LLC
Claim Number: FA2005001898325
Complainant is Ironstate Holdings LLC (“Complainant”), represented by Michael H. Bunis of Choate Hall & Stewart LLP, New Jersey, USA. Respondent is Nick Polemis / Ironstate Construction LLC (“Respondent”), represented by Spencer Robbins of Robbins and Robbins LLP, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <ironstateconstruction.com> and <ironstatellc.com>, registered with GoDaddy.com, LLC.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2020; the Forum received payment on May 29, 2020.
On Jun 1, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ironstateconstruction.com> and <ironstatellc.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of June 26, 2020 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@ironstateconstruction.com, postmaster@ironstatellc.com. Also on June 2, 2020, 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 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant provides real estate construction, development, redevelopment and management services. It has rights in the IRONSTATE mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,833,901, registered Aug. 13, 2019), and has also had common-law rights in the IRONSTATE mark since 2001. Respondent’s <ironstateconstruction.com> and <ironstatellc.com> Domain Names are confusingly similar to Complainant’s mark as they incorporate that mark in its entirety, merely adding the generic terms “construction” and “llc”, as well as the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Names. He is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, as the web site resolving from them passes off as Complainant and offers competing services. Also, Respondent has not been commonly known by the Domain Names and Complainant has not licensed, authorized, or otherwise permitted Respondent to use its mark.
Respondent registered and is using the Domain Names in bad faith. He is attempting to disrupt Complainant’s business and attract Internet users for commercial gain by passing off as Complainant. Finally, Respondent had actual knowledge of Complainant’s rights in the IRONSTATE mark when he registered the Domain Names.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The IRONSTATE mark was registered to Complainant with the USPTO (Reg. No. 5,833,901) on August 13, 2019). Complaint Exhibit 3. This registration is sufficient to establish Complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). 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).”).
Respondent’s <ironstateconstruction.com> and <ironstatellc.com> Domain Names are confusingly similar to Complainant’s IRONSTATE mark as they incorporate that mark verbatim, merely adding the generic terms “construction” and “llc,” and the “.com” gTLD. These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the IRONSTATE mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent is not using them in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the web sites currently resolving from them pass off as Complainant and offer competing services, (ii) Respondent has not been commonly known by the Domain Names, and (iii) Complainant has not licensed, authorized, or otherwise permitted Respondent to use its mark. These allegations are addressed as follows:
Complainant alleges that Respondent’s web sites pass off as those of Complainant. The facts presented here require a careful analysis of what constitutes passing off or impersonation. It is not an easy case. Complaint Exhibit 11 consists of screenshots of pages of the web sites resolving from the Domain Names. These pages advertise a design and build construction firm that works on both commercial and residential buildings. The name of the firm is “Iron State Construction LLC,”[i] located in Sayerville, New Jersey. The design and construction services offered by this firm are similar to those offered by Complainant, but Complainant’s business extends beyond design and construction of specific projects to include conceptualizing and effectuating the redevelopment of underutilized or abandoned urban areas. Its web site located at <ironstate.net> states
Our developments are complex, multifaceted, and long-term. They require very tight coordination between municipalities, urban planners, community leaders, architects, designers, engineers, and more. (Complaint Exhibit 12)
Thus, while both parties operate in the construction industry in New Jersey, the scope of Complainant’s operations extends well beyond that of Respondent. The font of the textual material is substantially the same on both web sites, and one of the photos on Respondent’s web site is that of Complainant’s corporate offices located at 50 Washington Street in Hoboken, New Jersey. That photo, however, is presented as an example of the work done by Respondent (which is accurate except for the fact that Respondent did that work under the name El Greco Construction and not Iron State) and not that of its own corporate headquarters. The telephone numbers given for each entity and the cities of their respective principal offices are different. Classic cases of passing off typically involve a respondent web site that actively and affirmatively represents itself as that of the targeted complainant, using the same street addresses, names of principal employees, logos, coloring and design schemes, and similar if not identical products or services. None of that is present in this case. The only evidence of passing off consists of the similarity in the names of the two entities and the presence of both parties in the construction industry. There is no affirmative attempt on Respondent’s web sites to represent them as Complainant’s, and accordingly the Panel concludes that Complainant has not proven passing off in this case.
That said, it is clear that Respondent is using the confusingly similar Domain Names to compete with Complainant’s construction services, and using a confusingly similar domain name to offer products and services that compete with a complainant’s business has often been held not a to be a bona fide offering of goods or services within the meaning of Policy ¶¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(iii). Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Moreover, in an affidavit submitted as Complaint Exhibit 7, Complainant’s General Counsel states that in 2006 Complainant engaged Respondent Nick Polemis and his construction company, El Greco Construction, to build its corporate headquarters building located at 50 Washington Street, in Hoboken, and paid him in excess of seven million dollars for that project. Respondent Polemis and El Greco Construction worked on several other projects for Complainant both before and after the headquarters building project and Respondent Polemis always did business under the El Greco name, never Iron State Construction. Id. In September 2016 Mr. Polemis organized the Respondent Iron State Construction LLC in the State of New Jersey (Complaint Exhibit 9) and registered the Domain Names that same month (Complaint Exhibit 2). Complaint Exhibit 14 is a copy of the Facebook Page Transparency and Facebook Page History, which shows that Mr. Polemis had amended the El Greco Construction Facebook page, including its name and pre-2016 posts to remove references to El Greco Construction so as to make it appear that he had only ever done business as Iron State Construction LLC. This demonstrates that Respondent was well aware of the existence of Complainant and its IRONSTATE mark as early as 2006, and that he changed the name of his company, or organized a new one, to assume a name almost identical to that of Complainant. This similarity, coupled with the fact that both entities are generally in the same industry, strongly suggests an effort, targeting Complainant, to create confusion about the identity of Respondent’s firm; this conduct is not consistent with the bona fide requirement in Policy ¶ 4(c)(i) or the concept of fairness in Policy ¶ 4(c)(iii). Respondent’s web sites may not impersonate or pass off as those of Complainant in the strictest sense, but an Internet user visiting any of Respondent’s sites could well believe, at least initially, that he or she had reached Complainant’s site, and using the confusingly similar Domain Names in this manner does not qualify as using them in connection with a bona fide offering of goods or services or as a noncommercial fair use.
The WHOIS record submitted as Complaint Exhibit 2 lists the registrant of the Domain Names as “Nick Polemis / Ironstate Construction LLC.” The second of these names, while not precisely identical to either Domain Name, is almost so. Nevertheless, as discussed above, Respondent’s appropriation of the IRONSTATE mark for its business entity was no more lawful or fair than its appropriation of that mark for the Domain Names. Augusta National, Inc. v. Ryan Carey, FA1711001758547 (Forum Dec. 21, 2017) (“If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(ii) by the simple expedient of incorporating the complainant’s mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated. Respondent’s appropriation of Complainant’s GREEN JACKET mark for his Domain Name was wrongful, and it was equally wrongful for him to use it in the name of his company. It would defy the obvious intent of the Policy to permit any respondent to benefit from this type of manipulation.”). The Panel finds that Respondent has not been commonly known by either of the Domain Names for the purposes of Policy ¶ 4(c)(ii).
Complainant states that Respondent is not associated or affiliated with it and that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Names to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Also, by registering and using confusingly similar Domain Names to attract Internet traffic to Respondent’s own web sites, where it offers the same types of services offered by Complainant, Respondent is disrupting the business of Complainant. This fits within the circumstances articulated by Policy ¶¶ 4(b)(iii) and (iv) and is clear evidence of bad faith registration and use. Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum July 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”), Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”), Dell Inc. v. Prashant Chhibber, FA 1785651 (Forum June 1, 2018) (“Respondent offers support services related to Complainant’s products that are in direct competition with the services Complainant offers. The Panel finds that Respondent registered and used the domain names in bad faith per Policy ¶ 4(b)(iii).”).
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when he registered the Domain Names. Respondent Nick Polemis, acting through his El Greco Construction company, worked for Complainant over the course of 24 months on its headquarters building in Hoboken and on several other projects before and after the headquarters project (Complaint Exhibit 7). In is indisputable that he knew of Complainant and its rights in the IRONSTATE mark when he registered the Domain Names in September of 2016 (Complaint Exhibit 2 gives creation date). Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in the incorporated mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons first set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ironstateconstruction.com> and <ironstatellc.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
July 8, 2020
[i] The Respondent LLC is identified as Ironstate Construction LLC in the Whois report submitted as Complainant Exhibit 2 and as reported to the FORUM by the Registrar. Its official name as recorded in the Certificate of Formation filed in the Office of the State Treasurer of the State of New Jersey is Iron State Construction LLC.
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