Hypebeast Hong Kong Limited v. Jose Ortiz
Claim Number: FA2302002033369
Complainant is Hypebeast Hong Kong Limited (“Complainant”), Hong Kong, represented by Jorge Arciniega of Loeb & Loeb LLP, USA. Respondent is Jose Ortiz (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hypebeastny.org>, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on February 24, 2023; Forum received payment on February 24, 2023.
On February 27, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <hypebeastny.org> 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 March 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2023 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@hypebeastny.org. Also on March 1, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant is a men’s fashion and culture blog, as well as a fashion retailer. Complainant has rights in the HYPEBEAST mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 3,575,143, which was registered on February 17, 2009). The disputed domain name is confusingly similar to the HYPEBEAST mark as it includes the entire mark with the mere addition of the geographic abbreviation “ny” and “.org” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not licensed or authorized to use Complainant’s HYPEBEAST mark. Nor did Respondent possess rights to use the HYPEBEAST mark prior to Complainant’s own use and registration. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent is using the disputed domain name to offer for sale products that compete directly with Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith by competing with Complainant’s business and attempting to attract Internet users for commercial gain. Respondent also causes confusion as to the source or association of the disputed domain name’s resolving site.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on November 20, 2022.
2. Complainant has established rights in the HYPEBEAST mark through numerous trademark registrations, including with the USPTO (e.g., USPTO Reg. No. 3,575,143, which was registered on February 17, 2009).
3. The disputed domain name’s resolving website hosts a footwear store selling sneakers under the name “HYPE BEAST” (as well as “HYPE”) with many of the same brands as Complainant.
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 set forth in a 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 claims rights in the HYPEBEAST mark through several trademark registrations, including with the USPTO (e.g., USPTO Reg. No. 3,575,143, which was registered on February 17, 2009). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). Since Complainant provides evidence of registration of the HYPEBEAST mark with the USPTO, the Panel finds that Complainant has established rights in the HYPEBEAST mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <hypebeastny.org> is confusingly similar to its HYPEBEAST mark since it uses the entire mark while merely adding the geographic term “ny” and the “.org” gTLD. When a disputed domain name wholly incorporates another’s mark, additional terms have been found insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. Given that Respondent only adds a geographic identifier and the “.org” gTLD to the HYPEBEAST mark, the Panel finds that the disputed domain name is confusingly similar to Complainant’s HYPEBEAST mark under Policy ¶ 4(a)(i).
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 disputed domain name because Respondent is not commonly known by the disputed domain name and did not use or possess rights in the HYPEBEAST mark prior to Complainant, nor has Complainant ever licensed rights to or authorized Respondent to use the HYPEBEAST mark. WHOIS information may be used to determine whether a respondent is commonly known by a mark and related disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). The unmasked WHOIS information for the disputed domain name lists the registrant as “Jose Ortiz.” There is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the HYPEBEAST mark. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent is competing with Complainant’s business. Previous panels have determined that a respondent’s use of a domain name to offer goods or services that compete with those of a complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). In this case, the disputed domain name resolves to what appears to be a footwear retail store under the name “HYPE” in the header. One of Complainant’s services is a fashion retailer, and its main website links to an online store that includes that sale of footwear. Some of the products Respondent offers are also offered by Complainant, and are Complainant’s most popular offerings (e.g., Nike, Jordans). The Panel finds that Respondent uses the disputed domain name to compete with Complainant, and thus it finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services and legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
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 name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith by operating a competing business. Panels have concluded that use of a disputed domain name to offer for sale goods or services that compete with those offered by a complainant is evidence of bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Such use has also been held to show bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As noted above, Respondent is hosting a footwear store at the disputed domain name’s resolving website with many of the same brands as Complainant. Complainant provides screenshots of the disputed domain name’s resolving website, which is an online retail store selling sneakers under the name “HYPE BEAST” (as well as “HYPE”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(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 <hypebeastny.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 26, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page