Hit Factory Entertainment, Inc. v. Victoria Dixon
Claim Number: FA0708001060842
Complainant is Hit Factory Entertainment, Inc. (“Complainant”), represented by Meyer
A. Gross, of Schweitzer Cornman Gross & Bondell LLP,
292 Madison Avenue, 19th Floor, New York, NY 10017. Respondent is Victoria Dixon (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <stlouishitfactory.com>, registered with Enom, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 13, 2007.
On August 13, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <stlouishitfactory.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@stlouishitfactory.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 17, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
Complainant owns and operates music recording studios in
Complainant has been using the THE HIT FACTORY mark in connection with recording studio and other related services for over 34 years.
Complainant has become famous in the music recording and production industry, working with many world-renowned recording artists.
Complainant holds a service mark registration for its THE HIT FACTORY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,428,785, issued February 10, 1987).
Complainant also owns domain names that incorporate its THE HIT FACTORY mark.
Complainant has not authorized Respondent to use the THE HIT FACTORY mark for any purpose.
Respondent registered the disputed <stlouishitfactory.com> domain name on December 12, 2006.
Respondent’s domain name at first resolved to a website promoting recording studio services offered by Respondent which competed with the business of Complainant.
The disputed domain name now resolves to a webpage indicating that the account has been suspended and containing no other content.
Respondent’s <stlouishitfactory.com> domain name is confusingly similar to Complainant’s THE HIT FACTORY mark.
Respondent does not have any rights or legitimate interests in the domain name <stlouishitfactory.com>.
Respondent registered and uses the <stlouishitfactory.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has sufficiently established its rights in its
THE HIT FACTORY mark by virtue of its registration of the mark with the USPTO
pursuant to Policy ¶ 4(a)(i). See Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.” See also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat.
Arb. Forum Dec. 9, 2003).
Complainant alleges that
Respondent’s <stlouishitfactory.com>
domain name is confusingly similar to Complainant’s THE HIT FACTORY mark. We agree.
The disputed domain name simply omits the general article “THE” from the
beginning of the mark and adds the geographic term “stlouis,” maintaining the
overall impression of Complainant’s THE HIT FACTORY mark. These alterations to Complainant’s mark do
not negate the confusing similarity between the mark and the disputed domain
name under the Policy. Moreover, the
addition of the generic top-level domain “.com” to the disputed domain name is
without consequence, as a top-level domain is required of all domain
names. Therefore, we conclude that the <stlouishitfactory.com> domain name is confusingly similar to
Complainant’s THE HIT FACTORY mark under Policy ¶ 4(a)(i). See Mega Soc. v. LoSasso, FA
215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the
<megasociety.net> and <megasociety.com>
domain names were identical or confusingly similar to a complainant's THE
MEGA SOCIETY mark). See also InfoSpace, Inc. v. domains
It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant next alleges that Respondent lacks rights and legitimate interests in the <stlouishitfactory.com> domain name. Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case for this allegation. The burden then shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. In the instant case, Complainant has established a prima facie case under the Policy. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises the presumption that Respondent lacks rights and legitimate interests in the <stlouishitfactory.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003):
It
can be inferred that by defaulting Respondent showed nothing else but an
absolute lack of interest on the domain name.
However, we will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
In this connection, we first observe that Complainant asserts that Respondent is not commonly known by the <stlouishitfactory.com> domain name, which indicates a lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). Indeed Respondent’s WHOIS information does not indicate, and there is nothing in the record to suggest, that Respondent is commonly known by the <stlouishitfactory.com> domain name. In addition, it is undisputed on this record that Complainant has not authorized Respondent to use the THE HIT FACTORY mark for any purpose. Thus we conclude that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in the domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question).
We next note that Respondent does not deny that its <stlouishitfactory.com> domain
name, which we have found is confusingly similar to Complainant’s THE HIT
FACTORY mark, previously resolved to a website offering music recording studio
services in competition with the business of Complainant. We may presume that
Respondent profited financially from this website. This does not constitute either a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii), and further indicates Respondent’s lack
of rights and legitimate interests in the disputed domain name. See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
See also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the MSNBC mark where a respondent attempted to profit by using a complainant’s mark by redirecting Internet traffic to its own website).
Furthermore, it is likewise undisputed that Respondent is not currently making any affirmative use of the <stlouishitfactory.com> domain name. This failure affirmatively to use the disputed domain name is, in the circumstances, additional evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found where a respondent fails to use disputed domain names in any way); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where a respondent failed to submit a response to a complaint and made no use of the domain name in question).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
Finally, Complainant alleges that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned previously, we presume that Respondent
benefited commercially from its website that previously resolved from the confusingly
similar <stlouishitfactory.com> domain
name. This indicates that Respondent was
taking advantage of the likelihood that Internet users seeking Complainant’s
business, would be confused as to the possible source of the disputed domain
name and Complainant’s affiliation with it.
We conclude that this is further evidence of Respondent’s bad faith
registration and use of its domain name pursuant to Policy ¶ (b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003):
As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).
See also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that a respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because that respondent used the confusingly similar domain name to attract Internet users to its commercial website).
In addition, Respondent’s current lack of affirmative use of the <stlouishitfactory.com> domain name further indicates, in the circumstances here obtaining, that Respondent registered and uses the disputed domain name in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000):
[I]t
is possible, in certain circumstances, for inactivity by the Respondent to
amount to the domain name being used in bad faith.
See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <stlouishitfactory.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 1, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum