HY IP Holding Company LLC v. Hudson Yards Consulting
Claim Number: FA1708001745643
Complainant is HY IP Holding Company LLC (“Complainant”), represented by Susan J. Kohlmann of Jenner & Block, New York, USA. Respondent is Hudson Yards Consulting (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hudsonyardsconsulting.net>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 22, 2017; the Forum received payment on August 23, 2017.
On August 23, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hudsonyardsconsulting.net> 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 August 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@hudsonyardsconsulting.net. Also on August 23, 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 September 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant provides real estate-related goods and services in New York City. Complainant uses the HUDSON YARDS mark in conjunction with its business practices. Complainant registered the HUDSON YARDS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,143,390, registered Feb. 14, 2017), with first use in commerce on May 29, 2012.
2. Respondent’s <hudsonyardsconsulting.net>[1] domain name is confusingly similar to Complainant’s HUDSON YARDS mark because it incorporates the mark in its entirety, eliminating spaces, incorporating the generic term “consulting,” and adding the “.net” generic top level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in <hudsonyardsconsulting.net>. Respondent is not commonly known by the domain name. Complainant has not authorized or licensed Respondent to use the HUDSON YARDS mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.
4. Respondent’s <hudsonyardsconsulting.net> domain name resolves to a parked webpage containing click-through links to products and services unrelated to Complainant.
5. Respondent registered and is using <hudsonyardsconsulting.net> in bad faith. The domain name attracts internet users to Respondent’s webpage for commercial benefit.
6. Respondent registered <hudsonyardsconsulting.net> with actual knowledge of Complainant and its rights to the HUDSON YARDS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HUDSON YARDS mark. Respondent’s domain name is confusingly similar to Complainant’s HUDSON YARDS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <hudsonyardsconsulting.net> domain name and that Respondent registered and uses 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(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.”).
Complainant provides real estate-related goods and services in New York City. Complainant uses the HUDSON YARDS mark in conjunction with its business practices. Complainant registered the HUDSON YARDS mark with USPTO (e.g. Reg. No. 5,143,390, registered Feb. 14, 2017). USPTO registration is sufficient to show rights in a mark. Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Complainant asserts that Respondent’s <hudsonyardsconsulting.net> is confusingly similar to Complainant’s HUDSON YARDS mark because it incorporates the mark in its entirety, eliminating spaces, incorporating the generic term “consulting,” and adding the “.net” gTLD. The addition of a generic term and gTLD is insufficient in distinguishing a domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016). Moreover, the elimination of spaces between terms does not establish distinctiveness from a complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007). Thus, the Panel concludes that Respondent’s <hudsonyardsconsulting.net> is confusingly similar to Complainant’s HUDSON YARDS mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <hudsonyardsconsulting.net> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in <hudsonyardsconsulting.net>. In support of its assertion, Complainant has shown that Respondent is not commonly known by the domain name. WHOIS information identifies Respondent as “Hudson Yards Consulting.” However, Respondent’s Facebook “Reviews” page identifies Respondent as “Anson” and “Anson Business Services.” Despite the WHOIS listing, there is no other information in the record indicating that Respondent is commonly known by the domain name. Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015); see also AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). Therefore, the Panel determines that Respondent is not commonly known by <hudsonyardsconsulting.net>.
Complainant states it has not authorized or licensed Respondent to use the HUDSON YARDS mark in any regard, nor is Respondent affiliated with Complainant. Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. To support its argument, Complainant has shown that Respondent’s <hudsonyardsconsulting.net> resolves to a parked webpage containing click-through links to products and services unrelated to Complainant. The respondent’s use of the domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee does not evidence rights or legitimate interests in the domain name. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Forum June 24, 2002). Thus, the Panel finds that Respondent lacks rights and legitimate interests in <hudsonyardsconsulting.net> pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant maintains that Respondent registered and is using <hudsonyardsconsulting.net> in bad faith. Complainant has provided evidence from which the Panel can conclude that the domain name attracts internet users to Respondent’s webpage for commercial benefit. A respondent acts in bad faith under Policy ¶ 4(b)(iv) where it uses a domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gains. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015). The Panel concludes that Respondent’s use of <hudsonyardsconsulting.net> is in bad faith under the Policy.
Finally, Complainant asserts that Respondent registered <hudsonyardsconsulting.net> with actual knowledge of Complainant and its rights to the HUDSON YARDS mark. Complainant argues that due to its extensive use and marketing of the HUDSON YARDS mark, Respondent had full knowledge of Complainant and its rights in the mark. "That [r]espondent proceeded to register a domain name identical to, and with prior knowledge of [c]omplainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)." Therefore, because the circumstances indicate that Respondent had actual knowledge of Complainant's HUDSON YARDS mark when it registered <hudsonyardsconsulting.net>, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hudsonyardsconsulting.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: September 18, 2017
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