HY IP Holding Company LLC v. Digital Marketing / link growth
Claim Number: FA1807001796112
Complainant is HY IP Holding Company LLC (“Complainant”), represented by Susan J. Kohlmann of Jenner & Block, New York, US. Respondent is Digital Marketing / link growth (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hudsonyardscafe.com>, registered with NameSilo, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 10, 2018; the Forum received payment on July 16, 2018.
On July 11, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <hudsonyardscafe.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 July 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@hudsonyardscafe.com. Also on July 18, 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 August 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, HY IP Holding Company LLC, is an industry leader in the business of real estate services. Complainant has rights in the HUDSON YARDS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,125,892, registered January 17, 2017). Respondent’s <hudsonyardscafe.com> domain name is confusingly similar to Complainant’s HUDSON YARDS mark, as the name is merely a combination of the mark, a generic term, and generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <hudsonyardscafe.com> domain name. Respondent is not commonly known by the domain, nor has Complainant authorized Respondent to use the HUDSON YARDS mark. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate or fair use. Rather, Respondent uses the name to host a blog offering real estate, interior decorating, and business advice – thus diverting Internet users away from Complainant’s business to unrelated content.
Respondent registered and is using the <hudsonyardscafe.com> domain name in bad faith. Respondent uses a privacy shield to conceal its identity. Respondent, without authority, incorporated Complainant’s mark in its entirety into the disputed domain name. Finally, Respondent had both constructive and actual knowledge of Complainant’s rights in the HUDSON YARDS mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <hudsonyardscafe.com> domain name.
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 claims rights in the HUDSON YARDS mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). See 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 provides a copy of its registration of the mark with the USPTO to support this claim (e.g. Reg. No. 5,125,892, registered January 17, 2017). The Panel finds that Complainant’s registration of the HUDSON YARDS mark with the USPTO establishes rights in that mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <hudsonyardscafe.com> domain name is confusingly similar to the HUDSON YARDS mark, as the domain name is merely a combination of the mark, a generic term, and a gTLD. The addition of a generic term and a gTLD to a mark in the creation of a domain name is not sufficient to distinguish the domain from the mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Complainant asserts that Respondent merely added the generic word “cafe” and the “.com” gTLD to Complainant’s HUDSON YARDS mark in creating the disputed domain name. The Panel finds that the <hudsonyardscafe.com> domain name is confusingly similar to the HUDSON YARDS mark for the purposes of Policy ¶ 4(a)(i).
Complainant has proved this element.
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 argues that Respondent has no rights or legitimate interests in the <hudsonyardscafe.com> domain name as Respondent is not commonly known by the name, nor has Complainant authorized Respondent to use the HUDSON YARDS mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies Respondent as “Digital Marketing / link growth”, and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <hudsonyardscafe.com> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <hudsonyardscafe.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that the name is being used to misrepresent an association between the Respondent and the Complainant, and to divert Internet users away from the Complainant’s business to unrelated content. Use of a domain name to divert Internet users away from a complainant’s own page is not indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the disputed domain name’s resolving webpage which hosts a blog offering real estate, interior decorating, and business advice. The Panel finds that Respondent has no rights or legitimate interests in the <hudsonyardscafe.com> domain name.
Complainant has proved this element.
Complainant contends Respondent’s bad faith is indicated by its inclusion, without permission, of the entirety of Complainant’s HUDSON YARDS mark in the disputed domain name. Where a mark is strongly linked with a complainant and its products, its inclusion in a domain name by a respondent who has no connection with the complainant is evidence of bad faith under Policy ¶ 4(a)(iii). See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” it’s very use by someone with no connection to these products can evidence opportunistic bad faith). Complainant asserts that it has no relationship with Respondent and that it has not authorized Respondent to use Complainant’s HUDSON YARDS mark. From Complainant’s uncontested allegations and evidence, the Panel finds that Respondent registered and uses the <hudsonyardscafe.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant contends that Respondent registered the disputed domain name with constructive and actual knowledge of Complainant’s rights in the HUDSON YARDS mark. 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 finds from Complainant’s uncontested allegations and evidence that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <hudsonyardscafe.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 17, 2018
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