Hypebeast Hong Kong Limited v. Nicholas Ulrich
Claim Number: FA2307002055581
Complainant is Hypebeast Hong Kong Limited (“Complainant”), represented by Jorge Arciniega of Loeb & Loeb LLP, California, USA. Respondent is Nicholas Ulrich (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hypebeastco.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on July 31, 2023; Forum received payment on July 31, 2023.
On August 2, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <hypebeastco.com> 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 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@hypebeastco.com. Also on August 7, 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.
A timely Response was received and determined to be complete on August 28, 2023.
On August 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s states that its history dates back to 2005, when Complainant’s founder, a journalist and businessman Kevin Ma, started a “Hypebeast” blog originally catering towards the world of sneakers and streetwear. The blog has subsequently expanded into a world-famous website and one of the leading online destinations for men’s contemporary fashion and culture. Complainant is particularly known for its promotion, study, critique and endorsement of action footwear. The Hypebeast Website has diversified itself to include features and interviews that profile designers and brands; a full-fledged video platform offering a unique cinematic outlook; a guest blogger section that features the lives and insights of industry insiders; and a community where users can interact and connect. The website attracts a vast and diverse readership from around the globe with over 12 million visitors a month. Complainant’s social media pages have 32.4 million followers with 820 million social media reach. In addition to the Hypebeast Website, which is available in multiple languages, Complainant also operates an online retail store under the brand name HBX, which consumers can reach through the Hypebeast Website. Complainant asserts rights in the HYPEBEAST mark through its registration in the United States in 2009.
Complainant alleges that the disputed domain name is confusingly similar to its mark because it incorporates the mark in its entirety and merely adds the descriptive/generic term “co” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark and Respondent is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an online store called “HYPE BEAST STREETWEAR” which offers competing goods that are identical or similar to those offered by Complainant.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith, because it resolves to an online store that displays Complainant’s mark and offers competing goods for sale.
B. Respondent
Respondent states, in pertinent part: “If you would like for me to transfer the [disputed] domain … I would be willing to do so …”
Respondent also states that, upon receipt of the Complaint, it took immediate action to ensure that there is no confusion or association with Complainant’s mark. Specifically, the disputed domain name no longer resolves to Respondent’s online store, and Respondent has updated its logo to eliminate any similarity to the visual identity of Complainant’s mark.
Further, states Respondent: “I want to emphasize that I had no intention to imitate or infringe upon your brand name. It was a genuine mistake and I would like to rectify the situation and prevent any misunderstandings.”
For the reasons set forth below, the Panel will not make any findings of fact.
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.
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."
The Panel interprets Respondent’s email to the Forum as consent to transfer the disputed domain name. Thus, in the present case, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
Given the common request of the Parties, it is Ordered that the <hypebeastco.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 28, 2023
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