HY IP Holding Company LLC v. Living Group LLC Limited Liability Company
Claim Number: FA1803001774694
Complainant is HY IP Holding Company LLC (“Complainant”), represented by Susan J. Kohlmann of Jenner & Block, New York, USA. Respondent is Living Group LLC Limited Liability Company (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hudsonyardsconcierge.com>, <hudsonyardsfurniture.com> and <hudsonyardstyle.com>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2018; the Forum received payment on March 7, 2018.
On March 7, 2018 and Mar 14, 2018, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <hudsonyardsconcierge.com>, <hudsonyardsfurniture.com> and <hudsonyardstyle.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. 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 March 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2018 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@hudsonyardsconcierge.com, postmaster@hudsonyardsfurniture.com, postmaster@hudsonyardstyle.com. Also on March 19, 2018, 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 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, HY IP Holding Company LLC, through its affiliates, is an industry leader in the business of real estate services, including real estate development, brokerage, leasing, property management, marketing, acquisitions, and sales. Complainant uses its HUDSON YARDS mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,125,892, registered Jan. 17, 2017). See Compl. Ex. A. Respondent’s <hudsonyardsconcierge.com>, <hudsonyardsfurniture.com> and <hudsonyardstyle.com> domain names are confusingly similar to Complainant’s marks because each merely appends a generic term to Complainant’s HUDSON YARDS mark, or a shortened version of Complainant’s mark, and each domain name removes the space between the terms in the mark.
ii) Respondent does not have rights or legitimate interests in the <hudsonyardsconcierge.com>, <hudsonyardsfurniture.com> and <hudsonyardstyle.com> domain names. Complainant has not licensed or otherwise authorized Respondent to use its HUDSON YARDS mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Living Group LLC Limited Liability Company” as the registrant. See Amend. Compl. Ex. B. Respondent is not using the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to resolve to parked web pages that display hyperlinks that are unrelated to Complainant’s business.
iii) Respondent registered and is using the domain names in bad faith. Respondent registered the domain names with actual and constructive knowledge of Complainant’s rights in the HUDSON YARDS mark. The registrant of the disputed domain names is privacy protected. Use of an ‘identity shield’ by Respondent constitutes evidence of bad faith. Complainant has no relationship with the Respondent, and has not authorized Respondent to use Complainant’s HUDSON YARDS mark. Thus, registration and use of the disputed domain names cannot have been in good faith. The presence of the disputed domain names in the hands of the Respondent is “an abusive threat hanging over the head of Complainant,” whether or not Respondent is actively deriving any income from its registration of the disputed domain names. The passive holding of a domain name that incorporates a well known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy. The potential for harm to the Complainant stems from Respondent’s abusive use of Complainant’s trade/service marks in devising the disputed domain names constitutes abusive conduct within the categories of bad faith conduct under UDRP.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant established rights in its HUDSON YARDS mark through registration with the USPTO (e.g., Reg. No. 5,125,892, registered Jan. 17, 2017).
2. Respondent registered the <hudsonyardsfurniture.com> and <hudsonyardstyle.com> domain names on October 8, 2017 and the <hudsonyardsconcierge.com> domain name on December 27, 2017.
3. Due to the sheer scale and publicity of the Hudson Yards project, the Complainant’s marks have become well known.
4. The websites linked to the disputed domain names remain inactive.
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 contends it established rights in its HUDSON YARDS mark through registration with the USPTO (e.g., Reg. No. 5,125,892, registered Jan. 17, 2017). See Compl. Ex. A. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel holds that Complainant has established rights in the HUDSON YARDS mark under Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <hudsonyardsconcierge.com>, <hudsonyardsfurniture.com> and <hudsonyardstyle.com> domain names are confusingly similar to Complainant’s mark because each merely appends a generic term to Complainant’s HUDSON YARDS mark, or a shortened version of Complainant’s mark, and each domain name removes the space between the terms in the mark. The Panel also notes that the disputed domain names add the generic top-level domain (“gTLD”) “.com.” Removal of a space or single letter and the addition of a term and a gTLD generally do not negate confusing similarity. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); see also Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”); see also Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”). Accordingly, the Panel concludes that Respondent’s <hudsonyardsconcierge.com>, <hudsonyardsfurniture.com> and <hudsonyardstyle.com> domain names are confusingly similar to Complainant’s mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain names. Complainant claims it has not licensed or otherwise authorized Respondent to use its HUDSON YARDS mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <hudsonyardsconcierge.com>, <hudsonyardsfurniture.com> and <hudsonyardstyle.com> domain names list “Living Group LLC Limited Liability Company” as the registrant. See Amend. Compl. Ex. B. Therefore, the Panel concludes that Respondent is not commonly known by the <hudsonyardsconcierge.com>, <hudsonyardsfurniture.com> and <hudsonyardstyle.com> domain names under Policy ¶ 4(c)(ii).
Further, Complainant alleges that Respondent is not using the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant argues that Respondent uses the domain name to resolve to a parked webpage that displays hyperlinks that are unrelated to Complainant’s business. Use of a domain name to feature unrelated hyperlinks may not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii). See Priceline.com LLC v. levesque, bruno, FA1506001625137 (Forum July 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel notes that Complainant did not provide any screenshots or other evidence that indicates the domain names resolve to websites featuring unrelated hyperlinks. As a result of the Panel’s visiting the websites linked to the disputed domain names in order to obtain more information about the use of the disputed domain names and of the Panel’s consulting historical resources, i.e., the Internet Archieve (www.archive.org) in order to obtain an indication of how the disputed domain names may have been used in the past, the Panel finds that the disputed domain names remain inactive and concludes that Respondent’s use fails to confer rights and legitimate interests in the disputed domain names.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel may note that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent registered the disputed domain names with actual and constructive knowledge of Complainant’s rights in the HUDSON YARDS mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Actual knowledge of a complainant's rights in a mark prior to registering the disputed domain name can evidence bad faith registration under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel notes that Complainant claims Respondent knew of Complainant’s rights based on its USPTO trademark registration, and because Complainant contacted Respondent regarding its infringing use of the <hudsonyardsfurniture.com> and <hudsonyardstyle.com> domain names two weeks prior to when Respondent registered the <hudsonyardsconcierge.com> domain name on December 27, 2017. See Amend. Compl. Ex. B. The Panel agrees and infers due to the notoriety of Complainant's mark that Respondent had actual knowledge of Complainant’s HUDSON YARDS mark when it registered the domain names, and thus the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant also claims that Respondent’s inactivity on the resolving domains show bad faith under Policy ¶ 4(a)(iii). Complainant contends that Respondent uses the disputed domain names to resolve to a parked webpage that displays hyperlinks that are unrelated to Complainant’s business. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant, through its affiliates, is an industry leader in the business of real estate services, including real estate development, brokerage, leasing, property management, marketing, acquisitions, and sales.
Due to the sheer scale and publicity of the Hudson Yards project, the Complainant’s marks have become well known, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hudsonyardsconcierge.com>, <hudsonyardsfurniture.com> and <hudsonyardstyle.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 16, 2018
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