Kickstarter, Inc. v. Tobey Hubbard / Blackstar Capital Partners
Claim Number: FA1501001600831
Complainant is Kickstarter, Inc. (“Complainant”), represented by Marc J. Rachman of Davis & Gilbert LLP, New York, USA. Respondent is Tobey Hubbard / Blackstar Capital Partners (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kickstarter.nyc>, registered with Blue Razor Domains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2015; the National Arbitration Forum received payment on January 21, 2015.
On January 20, 2015, Blue Razor Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <kickstarter.nyc> domain name are registered with Blue Razor Domains, LLC and that Respondent is the current registrant of the name. Blue Razor Domains, LLC has verified that Respondent is bound by the Blue Razor Domains, 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 January 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2015 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@kickstarter.nyc. Also on January 22, 2015, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kenneth L. Port as Panelist.
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" 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 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
Complainant contends that it uses KICKSTARTER to identify its online platform to fund and launch creative projects. Complainant has registered KICKSTARTER with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,440,542, registered Nov. 26, 2013. The <kickstarter.nyc> domain name incorporates the mark in full and affixes the top-level domain (“TLD”) “.nyc,” which results in a domain name that is identical to Complainant’s trademark envisioned by Policy ¶ 4(a)(i).
Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name as none of the articulated circumstances in Policy ¶ 4(a)(ii) apply. Respondent is not commonly known by the <kickstarter.nyc> name. Further, Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. In fact, Respondent has made no active use of the disputed domain name.
Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent has a pattern of infringing domain registrations, which supports a finding of bad faith under Policy ¶ 4(b)(ii) at present. Further, Respondent’s bad faith is demonstrated by Respondent’s failure to make an active use of the <kickstarter.nyc> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
As the Respondent has failed to file a Response, the Panel accepts as true Complainant’s allegations. As such, the Panel finds the domain name <kickstarter.nyc> to be identical to Complainant’s trademark, that Respondent has no rights or legitimate interests in or to the domain name and that Respondent registered and is using the domain name 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."
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(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 the 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.”).
Complainant uses the trademark KICKSTARTER to identify its online platform to fund and launch creative projects. Complainant has registered KICKSTARTER with the USPTO (e.g., Reg. No. 4,440,542, registered Nov. 26, 2013). Such registration satisfies the requirements of Policy ¶ 4(a)(i). The Panel agrees that Complainant’s valid trademark registration with the USPTO sufficiently demonstrates Complainant’s rights in the KICKSTARTER mark for purposes of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
The <kickstarter.nyc> domain name is confusingly similar to the KICKSTARTER trademark. Complainant alleges that the domain name incorporates the mark in full and affixes the gTLD “.nyc,” which results in an identical domain name as the trademark as envisioned by Policy ¶ 4(a)(i). Complainant notes that the addition of the “.nyc” gTLD only serves to increase the likelihood of confusion as Complainant is based in New York City. The <kickstarter.nyc> domain name is effectively identical to the KICKSTARTER mark, which is wholly incorporated in the name. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD “.menu”, the combination of the “dunkin” element with the “.menu” gTLD extension adds further to the confusing character of the domain in issue in the present case.”).
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name as none of the articulated circumstances in Policy ¶ 4(a)(ii) apply. Specifically, Complainant claims that Respondent is not commonly known by the <kickstarter.nyc> name. The Panel notes that the WHOIS information identifies “Tobey Hubbard / Blackstar Capital Partners” as the registrant of record. As Respondent has failed to rebut any of these allegations, the Panel determines that there is insufficient basis to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Further, Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Complainant claims that Respondent has made no active use of the disputed domain name. However, the Panel sees that the disputed domain name actually resolves to a parked webpage promoting sponsored links, which panels consider an active use. See Compl., at Attached Ex. E. The Panel notes that the landing page features links unrelated to Complainant’s offerings, such as “Date A Biker,” “Free Obituary Search,” and “Less Sheep, More Sleep.” See id. The Panel agrees that Respondent’s use of the disputed domain name in furtherance of unrelated hyperlinks amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use as described by Policy ¶ 4(c)(i) and (iii), respectively. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant argues that Respondent has a pattern of infringing domain registrations, which supports a finding of bad faith under Policy ¶ 4(b)(ii). To support this claim, Complainant points to other registrations that appear to infringe on third-party marks not presently at issue, such as <citibikenyc.nyc> and <trump.nyc>. See Compl., at Attached Ex. F. As these allegedly infringing domain names have not been subjected to judicial scrutiny and are not presently at issue, the Panel declines to find evidence of pattern bad faith based merely on these allegations.
Further, Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s failure to make an active use of the <kickstarter.nyc> domain name. See Compl., at Attached Ex. E. The Panel notes that the disputed domain name resolves to a parked website featuring sponsored links including, “Date A Biker,” “Free Obituary Search,” and “Less Sheep, More Sleep.” See id. As such, the Panel determines that there is an active use of the domain name, and that the promoted content is attributable back to Respondent despite being parked. Panels have found evidence of bad faith pursuant to Policy ¶ 4(b)(iv) in similar cases. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked’ . . . for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees . . .”); Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel finds evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv) as Respondent has merely parked the <kickstarter.nyc> domain name in furtherance of unrelated hyperlinks.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <kickstarter.nyc> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: February 21, 2015
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