Hit Factory Entertainment, Inc. v.
Bernard Beard
Claim
Number: FA0502000417303
Complainant is Hit Factory Entertainment, Inc. (“Complainant”),
represented by Fritz L. Schweitzer of Schweitzer Cornman Gross and Bondell LLP, 292 Madison Avenue, 19th Floor, New York, NY 10017. Respondent is Bernard Beard (“Respondent”), Yelm Highway, Yelm, WA 98597.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <hit-factory.info>,
registered with NameSecure.com, 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.
Hon.
Ralph Yachnin.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 10, 2005.
On
February 9, 2005, NameSecure.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <hit-factory.info> is
registered with NameSecure.com, Inc. and that Respondent is the current
registrant of the name. NameSecure.com, Inc. has verified that Respondent is
bound by the NameSecure.com, 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
February 14, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 7, 2005 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@hit-factory.info by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
March 11,2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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." 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:
1. Respondent’s <hit-factory.info>
domain name is confusingly similar to Complainant’s THE HIT FACTORY mark.
2. Respondent does not have any rights or
legitimate interests in the <hit-factory.info> domain name.
3. Respondent registered and used the <hit-factory.info>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Hit
Factory Entertainment, Inc., owns and operates several recording studios using
THE HIT FACTORY mark in New York City and Miami. Many world-famous recording artists have used Complainant’s
studios to record such songs as “Born in the U.S.A.” by Bruce Springsteen and
“Graceland” by Paul Simon, along with many others.
Complainant has
continuously used and applied THE HIT FACTORY mark since 1970 for recording
studio services. Complainant registered
THE HIT FACTORY mark with the United States Patent and Trademark Office (Reg.
No. 1,428,785 issued November 18, 1986).
Complainant has similar registrations in Canada, Great Britain, Japan,
Australia, Cuba, Italy and Mexico.
Complainant’s
websites are operated at the domain names <thehitfactory.com>,
<hitfactory.com>, and many others containing the words, “hit” and
“factory.”
Respondent
registered the <hit-factory.info> domain name on November 13,
2004. Respondent is merely using the
website at the domain name to offer the domain name registration for sale.
Complainant
corresponded with Respondent requesting transfer of the disputed domain
name. Respondent offered to sell the
domain name registration to Complainant, at first for $27,500.00, then lowered
the price to $4,300.00.
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.
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.
Complainant
established with extrinsic proof in this proceeding that it has rights to THE
HIT FACTORY mark as evidenced by the registration with the United States Patent
and Trademark Office and through continued use of its mark in commerce over the
last thirty-five years. See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.); see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require complainant to demonstrate ‘exclusive rights,’ but only that
complainant has a bona fide basis for making the Complaint in the first place).
The <hit-factory.info>
domain name registered by Respondent is confusingly similar to Complainant’s
THE HIT FACTORY mark because the domain name incorporates Complainant’s mark
and simply deletes “the,” adds a hyphen and the generic top-level domain
(“gTLD”) “.info.” The deletion of the
word “the,” and the addition of a hyphen and the gTLD fail to sufficiently
differentiate Respondent’s domain name from Complainant’s mark. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding
that the “addition of a hyphen to the registered mark is an insubstantial
change. Both the mark and the domain name would be pronounced in the identical
fashion, by eliminating the hyphen"); see also Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO
Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar
Complainant’s GAME BOY mark, even though the domain name is a combination of
two descriptive words divided by a hyphen); see also Blue Sky Software Corp. v. Digital Sierra,
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to Complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to contest Complainant’s assertion that Respondent lacks rights and
legitimate interests in the disputed domain name. Because Complainant’s evidence and arguments are unopposed, the Panel
is permitted to accept all reasonable inferences made in the Complaint as
true. See 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.”); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do);
see also Desotec N.V. v. Jacobi
Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that complainant’s allegations are true unless
clearly contradicted by the evidence).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent.
Respondent’s failure to fulfill its burden means that Respondent has
failed to invoke any circumstances that could demonstrate rights or legitimate
interests in the domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once complainant asserts that respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to respondent
to provide credible evidence that substantiates its claim of rights and
legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that respondent
has no rights or legitimate interests in the domain name because respondent
never submitted a response or provided the Panel with evidence to suggest
otherwise).
Respondent is
not authorized or licensed by Complainant to use THE HIT FACTORY mark in the
domain name. Moreover, no evidence
before the Panel suggests that Respondent is commonly known by the domain name
pursuant to Policy ¶ 4(c)(ii).
Therefore, Respondent has no rights or legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail"); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where respondent was not commonly
known by the mark and never applied for a license or permission from
complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) respondent is not a licensee of complainant; (2) complainant’s rights
in the mark precede respondent’s registration; (3) respondent is not commonly
known by the domain name in question).
Furthermore, the
<hit-factory.info> domain name is confusingly similar to
Complainant’s THE HIT FACTORY mark and is used to direct Internet users to a
website that offers the domain for sale.
Such offers have consistently been found to be neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb.
Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when
one has made no use of the websites that are located at the domain names at
issue, other than to sell the domain names for profit); see also Mothers
Against Drunk Driving v. Shin, FA
154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances,
respondent’s apparent willingness to dispose of its rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name); see also Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding respondent’s
conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
manifested an intent to sell the disputed domain name registration as the
website declares, “This domain is for sale.”
Given the long-standing use of THE HIT FACTORY mark, it is more likely
than not that Respondent’s future sale of the domain name registration is aimed
at the deep pockets of Complainant’s business or Complainant’s
competitors. Even though Complainant
contacted Respondent, Respondent demanded $27,500 to transfer, then lowered its
price to $4,300. Without the benefit
of a response, the Panel finds that the circumstances sufficiently indicate
that Respondent acquired the domain name primarily to sell the registration to
Complainant or Complainant’s competitors for a value in excess of out-of-pocket
expenses directly related to the domain name pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES
Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
("What makes an offer to sell a domain [name] bad faith is some
accompanying evidence that the domain name was registered because of its value
that is in some way dependent on the trademark of another, and then an offer to
sell it to the trademark owner or a competitor of the trademark owner."); see
also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that respondent used the domain name in bad faith because he offered
to sell the domain name for valuable consideration in excess of any
out-of-pocket costs).
Additionally,
Respondent’s registration of the disputed domain name, a domain name that
incorporates Complainant’s mark and simply adds a hyphen and deletes “the,”
suggests that Respondent knew of Complainant’s rights in THE HIT FACTORY
mark. Furthermore, Complainant’s
registration of its mark with the United States Patent and Trademark Office confers
constructive knowledge on anyone attempting to use the mark. Thus, the Panel finds that Respondent chose
the <hit-factory.info> domain name based on the distinctive
qualities of Complainant’s mark, which evidences bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that
Respondent had actual and constructive knowledge of Complainant’s EXXON mark
given the worldwide prominence of the mark and thus Respondent registered the
domain name in bad faith); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <hit-factory.info> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice Supreme Court, NY (Ret.)
Dated: March 25, 2005
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