NYP Holdings, Inc. v. Eysana ali / nyposta
Claim Number: FA2105001944152
Complainant is NYP Holdings, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Eysana ali / nyposta (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nyposta.com>, registered with DreamHost, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2021. The Forum received payment on May 6, 2021.
On May 7, 2021, DreamHost, LLC confirmed by e-mail to the Forum that the <nyposta.com> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, 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 May 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2021 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@nyposta.com. Also on May 12, 2021, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, NYP Holdings, Inc., is a global news provider. Complainant has rights in the NEW YORK POST mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <nyposta.com> domain name is confusingly similar to Complainant’s mark.
Respondent lacks rights and legitimate interests in the <nyposta.com> domain name as it is not commonly known by the domain name and Complainant has not licensed or authorized Respondent to use the NEW YORK POST mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the domain name pass itself off as Complainant and direct Internet users to Respondent’s competing news website.
Respondent registered and uses the <nyposta.com> domain name in bad faith. Respondent uses the domain name to disrupt Complainant’s business and attract users to Respondent’s own website where it passes itself off as Complainant and offers competing news services. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the NEW YORK POST mark based on the fame of the mark, as well as Respondent’s efforts to pass itself off as Complainant and offer competing news services.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 formal 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”).
Complainant has shown that it has rights in the NEW YORK POST mark based on numerous registrations of the mark with the USPTO, including Reg. No. 1,526,818 registered Feb. 28, 1989. The Panel finds Respondent’s <nyposta.com> domain name to be confusingly similar to Complainant’s mark since it merely abbreviates the geographic element “New York” as “NY” and adds the letter “a”, which together do not sufficiently distinguish the domain name from the mark. See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta); see also Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”)
The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <nyposta.com> domain name was registered on February 15, 2021, many years after Complainant has shown that its mark had become famous. When the Complaint was filed, the domain name resolved to a website featuring Complainant’s NEW YORK POST mark and copyright-protected news articles, while displaying the copyright notice “© 2021 NEW YORK POST” at the foot of the home page. The Panel notes that the “NY” abbreviation of “New York” is used by Complainant for its own domain name <nypost.com>.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so. Instead, Respondent has informally communicated to the Forum that Respondent is prepared to sell the domain name to Complainant.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous NEW YORK POST mark and its <nypost.com> domain name when Respondent registered the <nyposta.com> domain name and that Respondent registered and has used the domain name in bad faith to masquerade as Complainant and offer competing news services. This demonstrates bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii).
Complainant has also shown that, while using the domain name, Respondent benefited commercially through commissions from advertisements provided by Google’s advertising network displayed on Respondent’s website. This demonstrates use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nyposta.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: June 4, 2021
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