HY IP Holding Company LLC v. Olivier Brzezicki / Goodma
Claim Number: FA1912001874428
Complainant is HY IP Holding Company LLC (“Complainant”), represented by Rémi J.D. Jaffré of Jenner & Block, US. Respondent is Olivier Brzezicki / Goodma (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hudsonyardsstudios.com>, registered with Tucows Domains 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2019.
On December 10, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <hudsonyardsstudios.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 December 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 2019 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@hudsonyardsstudios.com>.
Also on December 11, 2019, 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 January 2, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name <hudsonyardsstudios.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that itself and its affiliates are the developers of the “Hudson Yards” real estate development, on the Far West Side of Manhattan, New York. The Hudson Yards project is one of the largest real estate developments in the history of the United States, with an anticipated cost of about $20 billion. The development opened on March 15, 2019 and will ultimately include 17 million square feet of commercial and residential space, 5 state-of-the-art office towers, more than 100 shops, a collection of restaurants, approximately 5000 residences, a unique “Culture Shed,” 14 acres of open public space, a 750-seat public school, and a 175-room luxury hotel. The development is being provided by Complainant under the HUDSON YARDS trade name and mark, as well as under trade names and marks following the pattern [NUMBER] HUDSON YARDS, which correspond to the addresses of specific buildings within the Hudson Yards development.
Complainant relies on its rights in the HUDSON YARDS trademark established through its portfolio of United States registered trademarks described and listed below and at common law through the goodwill that it has developed in the mark through its use in connection with Complainant’s real estate development business.
Complainant submits that the disputed domain name is virtually identical to Complainant’s registered mark HUDSON YARDS in appearance, sound, and connotation. Complainant states that Respondent has merely added the top-level domain <.com> extension and the word “studios,” and deleted spaces between words. Complainant submits that these slight changes do not create a distinguishing difference and are without legal significance overall.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not commonly known by the disputed domain name and that a review of the WhoIs record reveals no evidence that Respondent is commonly known by the disputed domain name See, e.g., Menard, Inc. v. Domain Park Limited, FA0707001045120 (Nat. Arb. Forum Sept. 11, 2007) (finding respondent could not establish rights or legitimate interests in disputed domain name where nothing in the WhoIs record or any other evidence suggested that respondent was commonly known by the mark).
Complainant submits that any recognition of Respondent in connection with the disputed domain name is purely by virtue of its unauthorized use of Complainant’s names and marks.
Complainant further submits that Complainant has not licensed the name and mark HUDSON YARDS to Respondent; that Respondent does not have any right, authorization or permission to use the HUDSON YARDS name and mark in its domain names; that the name and mark HUDSON YARDS are well known and distinctive and it is not a mark that a third party would legitimately use unless seeking to create an impression of an association with the Complainant.
Complainant adds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate non-commercial or fair use of the disputed domain name. Instead, the disputed domain name resolves to a landing page with the logo of “Hover,” an affiliate of the registrar of the disputed domain name as shown in the screenshot of the landing page annexed to the Complaint. Complainant submits that it is well established that use of a landing page established by a domain broker does not constitute a use in connection with a bona fide offering of goods and services. See, e.g., Harpo, Inc. v. Robert McDaniel, D2013-0585 (WIPO June 17, 2013).
Complainant submits that the disputed domain name was registered and is being used in bad faith. As of December 9, 2019, according to the Registrar’s WhoIs database, the identity of the registrant of the disputed domain name was privacy protected. See, e.g., Florida Nat’l Univ., Inc. v. Registration Private, Domains By Proxy, LLC/Toby Schwarzkopf, D2017-0138 (WIPO Mar. 14, 2017) (“[U]se of a privacy protection service is evocative of a bad faith attempt to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy.”).
Complainant submits that Respondent has registered and used the disputed domain name with constructive and actual knowledge of the Complainant’s rights in the HUDSON YARDS name and mark due to the Complainant’s United States registered trademarks. According to the WhoIs record, the disputed domain name was created on October 30, 2019, over two-and-a-half years after the Complainant obtained its first registration for HUDSON YARDS and over six years after ONE HUDSON YARDS was registered.
Complainant asserts that it has no relationship with Respondent and has not authorized Respondent to use Complainant’s HUDSON YARDS mark, and so argues that registration and use of the disputed domain name cannot have been in good faith. See also Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, D2009-0798 (WIPO Aug. 7, 2009) (finding that Respondent’s clear attempts to connect domain names with the Complainant’s mark “suggest ‘opportunistic bad faith’ in violation of the Policy” (citation omitted)).
Citing the decision of the panel in Imerys v. Unknown, D2007-0045 (WIPO Mar. 28, 2007), Complainant submits that, as in this present Complaint, where a respondent has not “been licensed or otherwise authorised by the Complainant to use [the Complainant’s] trademark . . . registration and subsequent use of the domain name cannot have been in good faith.”
Complainant further adds that because the disputed domain name is virtually identical to Complainant’s trademark, the presence of the disputed domain name in the hands of the Respondent is “an abusive threat hanging over the head of the Complainant,” whether or not Respondent is actively deriving any income from its registration of the disputed domain name. See Conair Corp. v. Pan Pin, Hong Kong Shunda Int’l Co. Ltd., D2014-1564 (WIPO Oct. 16, 2014).
Finally, Complainant submits that the fact that Respondent currently passively holds the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Michelin North America, Inc. v. Energie Media Group, FA1207001451882 (Forum Aug. 7, 2012) and Respondent’s conduct need not fit neatly into one of the examples of bad faith under paragraph 4(b) of the policy. See Expedia, Inc. v. Seocho, D2001-1088 (WIPO Nov. 4, 2001).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant and its affiliates are real estate developers, currently engaged in a development of a substantial project known as Hudson Yards, on the Far West Side of Manhattan, New York.
Complainant is the owner of several trademark registrations for the mark HUDSON YARDS for a variety of real estate and other services offered by the Complainant and its affiliates, including:
• United States trademark HUDSON YARDS, registration number 5,125,892, registered on January 17, 2017 for services in international class 36;
• United States trademark HUDSON YARDS, registration number 5,143,390, registered on February 14, 2017 for services in international class 36;
• United States trademark HUDSON YARDS, registration number 5,176,730, registered on April 4, 2017 for services in international class 35;
• United States trademark HUDSON YARDS, registration number 5,218,846, registered on June 6, 2017 for services in international class 37;
• United States trademark HUDSON YARDS, registration number 5,296,689, registered September 26, 2017 for services in international classes 38, 41,43;
• United States trademark HUDSON YARDS, registration number 5,301,812, on October 3, 2017 for services in international class 41; and
• United States trademark HUDSON YARDS, registration number 5,309,254, registered on October 17, 2017 for services in international class 35.
Complainant is also the owner of trademark registrations for the building-specific marks namely trademark ONE HUDSON YARDS, registration number 4,284,033, registered on January 29, 2013; 55 HUDSON YARDS, registration number 4,792,892, registered on August 18, 2015; 10 HUDSON YARDS, registration number 5,073,323, registered on November 1, 2016; 10 HUDSON YARDS, registration number 5,286,574, registered on September 12, 2017; FIFTEEN HUDSON YARDS, registration number 5,306,829, registered on October 10, 2017; 50 HUDSON YARDS, registration number 5,519,777, registered on July 17, 2018; 30 HUDSON YARDS, registration number 5,548,091, registered on August 28, 2018; 15 HUDSON YARDS, registration number 5,566,035, registered on September 18, 2018.
Copies of the U.S. registration certificates have been annexed to the Complaint.
Complainant and its affiliates operate a web site at <http://www.hudsonyardsnewyork.com> containing a presentation of the Hudson Yards development and a description of their services.
The disputed domain name was registered on October 30, 2019 and resolves to an inactive parking page.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs, and the Registrar’s response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding. Respondent availed of a privacy service to conceal his identity on the Registrar’s public WhoIs.
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 based on 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. This Panel is entitled to accept all reasonable allegations set forth in the Complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided convincing evidence of its rights in the HUDSON YARDS trademark established through its portfolio of United States trademark registrations described and listed below and at common law through the goodwill that it has developed in the mark through its use in connection with Complainant’s real estate development business and other services.
The disputed domain name <hudsonyardsstudios.com> consists of Complainant’s trademark in its entirety, together with the descriptive word “studios” and the gTLD <.com> extension. The only distinctive element of the disputed domain name is Complainant’s mark and this Panel accepts that it is confusingly similar to Complainant’s registered mark HUDSON YARDS in appearance, sound, and connotation.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not commonly known by the disputed domain name; that a review of the Registrar’s WhoIs record reveals no evidence that Respondent is commonly known by the disputed domain name; that any recognition of the Respondent in connection with the disputed domain name is purely by virtue of its unauthorized use of the Complainant’s name and mark; that Complainant has not licensed the name and mark HUDSON YARDS to Respondent; that Respondent does not have any right, authorization or permission to use the HUDSON YARDS name and mark in its domain names; that the name and mark HUDSON YARDS are well known and distinctive and it is not a mark that a third party would legitimately use unless seeking to create an impression of an association with Complainant; that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate non-commercial or fair use of the disputed domain name; but instead the disputed domain name is being passively held resolving to an inactive landing page.
In such circumstances the burden of production shifts to Respondent to establish his rights or legitimate interests. Respondent has failed to discharge this burden and so this Panel finds on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
On the evidence adduced, it is improbable that the disputed domain name was registered for any reason except to reference Complainant’s business and its real estate development. Complainant is engaged in an enormous development which is well known and according to the registration details disclosed by the Registrar in the course of this proceeding, Respondent resides in New York where Complainant is providing its services and the HUDSON YARDS development is located.
The disputed domain name is being passively held, by Respondent who has undoubtedly chosen the disputed domain name to specifically refer to Complainant’s real estate development. The development undertaken by Complainant is so large and extensive that HUDSON YARDS could be classified as a geographical place name which makes this an unusual case.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) addresses this issue in relation to a complainant’s standing to bring a complaint under the first element of the test in Policy ¶ 4(a)(i) and states that geographical terms used only in their ordinary geographical sense, except where registered as a trademark, would not as such provide standing to file a UDRP case. An earlier version of the Overview noted a consensus among panelists that geographical terms can be protected under the UDRP, if the complainant has shown that it has rights in the term and that the term is being used as a trademark.In the present case Complainant owns the abovementioned portfolio of trademark registrations for HUDSON YARDS.
Complainant has exclusive rights in its abovementioned HUDSON YARDS registered trademark number 5,143,390 specifically in class 36: “Real estate management and leasing services; Real estate management, residential real estate brokerage and leasing of commercial and business offices; real estate leasing of residential condominium units and leasing of space in retail shopping centers.” The additional word “studios” can refer to a small residential apartment.
In the absence of any Response or argument from Respondent, this Panel finds that the disputed domain name was registered and is being used in bad faith because it incorporates Complainant’s service mark in its entirety in combination with a reference to a type of residential apartment when Complainant has registered trademark rights for leasing residential property.
While passive holding and the use of a proxy service are not in themselves objectionable, in certain circumstances they can be indicative of bad faith registration and use. In the present case Respondent is passively holding the disputed domain name and availed of a proxy service, but in addition he has put forward no arguments to defend his right to the registration. In such circumstances this Panel takes an inference that the disputed domain name has been registered and is being passively held in bad faith.
On the balance of probabilities therefore this Panel finds that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and entitled to be granted the reliefs sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED..
Accordingly, it is Ordered that the <hudsonyardsstudios.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________
James Bridgeman SC
Panelist
Dated: January 3, 2020
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