John C. Peyton v. Robert Walker
Claim Number: FA2205001998236
Complainant is John C. Peyton on behalf of John C. Peyton, John Muhich and Hot Pie Media LLC (“Complainant”), Texas, USA. Respondent is Robert Walker (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hotpiemedia.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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 27, 2022; the Forum received payment on June 7, 2022.
On May 31, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hotpiemedia.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 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2022 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@hotpiemedia.com. Also on June 13, 2022, 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 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 made the following contentions
Complainant, John C. Peyton, on behalf of himself, John Muhich and Hot Pie Media LLC (“the Complainant parties”) all have rights in the HOT PIE MEDIA mark based upon registration of the mark by Hot Pie Media LLC with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 6,719,567, registered May 3, 2022) and the business arrangement between the Complainant parties. See Compl. Supporting Document 1. Respondent’s <hotpiemedia.com> domain name is identical to Complainant’s mark because it contains the HOT PIE MEDIA mark in its entirety, merely adding the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <hotpiemedia.com> domain name. Respondent is not licensed or authorized to use Complainant’s HOT PIE MEDIA mark and is not commonly known by the disputed domain name. Respondent is a former employee of Complainant. On 30 October 2019 Respondent was authorized by John C. Peyton, on behalf of himself, John Muhich and Hot Pie Media LLC to acquire and register the disputed domain name on behalf of Hot Pie Media LLC prior to its incorporation in February 2020 and for the benefit of Hot Pie Media LLC. Upon the incorporation of the company he was obligated to transfer the registration of the domain name to the company which he did not do and, instead, the domain name was registered in the name of Respondent himself. Subsequently, when the domain name was renewed for registration it was not registered in the name of the company although the renewal fees were paid for by a credit card issued by the company. On 25 January 2022 Respondent’s employment was terminated by notice in writing. Since then Respondent has wholly failed and refused to transfer the control and registration of the domain name to Hot Pie Media LLC despite being requested to do so. On 17 March 2022, Respondent renewed the registration of the disputed domain name by means of a proxy which was not authorized by Hot Pie Media LLC or anyone on its behalf. Contrary to his obligations Respondent has perpetuated the wrongful control and registration of the domain name.
Respondent registered and uses the <hotpiemedia.com> domain name in bad faith. Respondent holds the disputed domain name under false and incorrect WHOIS information and contrary to the instructions of his former employee and his obligations under the law. The registration of the domain name, its renewal and use by Respondent are therefore in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is in a business relationship with John Muhich and Hot Pie Media LLC and is authorized to bring this proceeding on their and his own behalf.
2. Complainant, John C. Peyton, on behalf of himself, John Muhich and Hot Pie Media LLC (“the Complainant parties”) all have rights in the HOT PIE MEDIA mark based upon registration of the mark by Hot Pie Media LLC with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 6,719,567, registered May 3, 2022) and the business arrangement between the Complainant parties.
3. Respondent registered the <hotpiemedia.com> domain name on October 30, 2019.
4. Respondent’s employment with Complainant was terminated by letter dated January 25, 2021, negating any right or legitimate interest or other entitlement that Respondent may have had to register or use the domain name.
5. The evidence shows that Respondent has no rights or legitimate interests in the disputed domain name.
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”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s HOT PIE MEDIA mark. Complainant argues that Respondent’s <hotpiemedia.com> domain name is identical to Complainant’s mark because it contains the HOT PIE MEDIA mark in its entirety, merely adding the gTLD “.com” to form the disputed domain name. When a disputed domain name consists of a mark followed by a gTLD, it is considered identical to that mark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); see also Cards Against Humanity, LLC v. sri winarti, FA 1736823 (Forum July 31, 2017) (“The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.”). Therefore, the Panel finds the disputed domain name to be identical to the HOT PIE MEDIA mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s HOT PIE MEDIA mark and to use it in its domain name;
(b) Respondent registered the domain name on October 30, 2019;
(c) Respondent was formerly an employee of Complainant but had no authority to register, renew the registration of or use, the disputed domain name other than for the benefit of Complainant;
(d) Respondent has wholly failed and refused to transfer the registration of the domain name from himself to Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent does not have rights or legitimate interests in the <hotpiemedia.com> domain name because Respondent is not licensed or authorized to use Complainant’s HOT PIE MEDIA mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Robert Walker.” See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant notes that Respondent is a former employee of Complainant’s. Registrants of domain names who previously served as employees of complainants are not authorized or licensed to register or use domain names that incorporate that Complainant’s mark, and thus lack rights or legitimate interests in the domain name containing the Complainant’s mark. See Dominic Vetere v. DAVE CARRIER / DC FINANCE INC, FA 1707259 (Forum Jan. 24, 2017) (holding that “former employees of a company no longer hold any rights or legitimate interests in the company’s mark”); see also Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark). Here, Complainant has provided its letter of termination to Respondent, dated January 25, 2021, as evidence. See Compl. Supporting Document 5. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the evidence shows that Respondent registered the domain name on October 30, 2019. He was was formerly an employee of Complainant but had no authority to register, renew the registration of or use, the disputed domain name other than for the benefit of Complainant. Subsequently he was terminated but he has refused to transfer the registration of the domain name to Complainant. It will be noticed that the domain name was registered prior to the registration of the trademark. However, the conduct of Respondent from the inception of the business relationship between the Complainant’s shows that Respondent was not acting properly from that early stage. Thus the Panel finds that Respondent both registered and used the domain name in bad faith.
Secondly, Complainant submits that Respondent registered and uses the <hotpiemedia.com> domain name in bad faith because Respondent holds the disputed domain name under false WHOIS information. Use of false WHOIS information, including the use of a privacy shield, suggests bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”); see also Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the HOT PIE MEDIA mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hotpiemedia.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: July 12, 2022
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