Whit, LLC v. ZACHARY COOPER
Claim Number: FA1703001719587
Complainant is Whit, LLC (“Complainant”), represented by Rachel Dooley of Willkie Farr & Gallagher LLP, New York, USA. Respondent is ZACHARY COOPER (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whit-ny.com>, registered with eNom, Inc.
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 Forum electronically on March 1, 2017; the Forum received payment on March 2, 2017.
On March 1, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <whit-ny.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2017 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@whit-ny.com. Also on March 2, 2017, 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 April 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, Whit, LLC, is a designer and manufacturer of clothing and leather goods based in New York, USA. In connection with this business, Complainant uses the WHIT mark to promote its goods and services. Complainant has rights in the WHIT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,941,761, registered Apr. 5, 2011). See Compl., at Attached Ex. A. Respondent’s domain name, <whit-ny.com>, is confusingly similar to Complainant’s mark as it contains the mark in its entirety and adds a hyphen and the geographic term “ny” and the generic top-level domain (“gTLD”) of “.com.”
Respondent has no rights or legitimate interests in the <whit-ny.com> domain name. Respondent is not authorized or licensed to use Complainant’s mark. Respondent has failed to utilized the disputed domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, the domain name resolves to a blank page being inactively held by Respondent.
Respondent should be considered to have registered and used the disputed domain name in bad faith. Respondent’s bad faith is evidenced through their lack of promised transfer of the disputed domain to Complainant, and continued holding of <whit-ny.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was created on December 17, 2009.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration.
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 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 (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.”).
The Panel finds that the disputed domain name, <whit-ny.com>, is confusingly similar to Complainant’s valid and subsisting registered trademark, WHIT. Complainant has adequately plead its rights and interest in and to that trademark. Respondent arrives at the disputed domain name by merely adding a hyphen and “ny” to the exact trademark. This is insufficient to distinguish the disputed domain name from the trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. There is no evidence in the record that indicates Respondent is commonly known by the disputed domain name. There is also no evidence to indicate that Complainant gave Respondent permission or a license to use the disputed domain name.
Respondent’s failure to use <whit-ny.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use further evidences Respondent’s lack of rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a website being inactively held by Respondent. Failure to make an active use of a domain name that is identical to complainant’s mark is not indicative of rights or legitimate interests per Policy ¶ 4(c)(i) or (iii).
The Panel, therefore, finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel finally finds that Respondent has engaged bad faith use and registration. Complainant argues that Respondent utilizes the disputed domain name in bad faith by inactively holding it for the purpose of increased compensation from Complainant. Non-use of a resolving website that, when used, will bring about confusion pursuant to Policy ¶ 4(b)(iv) is indicative of registration and use in bad faith.
The disputed domain name was to be transferred from Respondent—an alleged former employee of Complainant—to Complainant. See Compl., at Attached Ex. F. Where respondent is a former employee of complainant and refuses to transfer the domain name at the conclusion of their business relationship, panels have found evidence of bad faith registration and use. See Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (FORUM Sept. 19, 2006) (finding bad faith registration and use where the complainant hired the respondent to register the disputed domain name and the respondent later re-registered the disputed domain name on its own behalf and refused to transfer it to the complainant once their business relationship ended).
As such, the Panel concludes that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <whit-ny.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: April 9, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page