DECISION

 

ESRT Empire State Building, L.L.C. v. Domain Privacy/ Domain Name Privacy Inc.

Claim Number: FA2401002078242

PARTIES

Complainant is ESRT Empire State Building, L.L.C. ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Domain Privacy/ Domain Name Privacy Inc. ("Respondent"), Cyprus.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <empire-state-building.info>, registered with CommuniGal Communication Ltd..

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 8, 2024; Forum received payment on January 8, 2024.

 

On January 15, 2024, CommuniGal Communication Ltd. confirmed by e-mail to Forum that the <empire-state-building.info> domain name is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication Ltd. 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 January 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2024 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@empire-state-building.info. Also on January 16, 2024, 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 February 6, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant ESRT Empire State Building, L.L.C. with its affiliates is the owner of the iconic and world-renowned Empire State Building in New York City. As one of the tallest building in the world, the Empire State Building soars above the New York City skyline, attracting millions of visitors to its legendary observation decks, which have been featured in notable and classic films.

 

Complainant has used the EMPIRE STATE BUILDING mark since as early as 1931 and Complainant owns multiple United States trademark registrations for such mark. Respondent at-issue <empire-state-building.info> domain name is confusingly similar to Complainant's EMPIRE STATE BUILDING mark. The domain name incorporates EMPIRE STATE BUILDING in whole while adding hyphens in place of the mark's spaces and concluding with the irrelevant top-level ".info".

 

Respondent lacks rights and legitimate interests in the at-issue domain name. Complainant has never authorized Respondent to use the EMPIRE STATE BUILDING mark and has no relationship with Complainant. Respondent's domain name is not used for any legitimate or fair use. Instead, Respondent uses the domain name to address a webpage that asks internet users to confirm that they are not a robot. When responded to by clicking a check box the responding party unwittingly installs malware or adware on his or her computer; The webpage also may phish for personal information. Further, Respondent offers the at-issue domain name for-sale for $3,000.00, which also is neither a bona fide offering of goods or services nor a legitimate use of the domain name. The only plausible use of the domain name by Respondent is to take advantage of Complainant's trademark. Use of the domain name causes initial interest confusion and Respondent had actual or constructive knowledge of Complainant's trademark when it registered the domain name.

 

Respondent registered and uses the at-issue domain name in bad faith. Respondent was aware of Complainant's trademark when it registered the <empire-state-building.info> domain name and cannot provide a legitimate explanation for registering the at-issue domain name. Respondent uses the domain name to engage in phishing and offers the domain name for sale at Afternic. By causing initial interest confusion the at-issue domain name is disruptive to Complainant's business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in the EMPIRE STATE BUILDING mark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at-issue domain name after Complainant acquired rights in the EMPIRE STATE BUILDING trademark.

 

Respondent uses the at-issue domain name to offer it for-sale and to address a webpage that tricks internet users into downloading malware or adware.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant's registration of the EMPIRE STATE BUILDING mark with the USPTO sufficiently demonstrates Complainant's rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <empire-state-building.info> domain name contains Complainant's EMPIRE STATE BUILDING with its impermissible spaces replaced with hyphens and with all followed by the ".info" top-level. The differences between Complainant's trademark and the at-issue domain name fail to distinguish the domain name from Complainant's trademark for the purposes of the Policy. Therefore, the Panel concludes that Respondent's <empire-state-building.info> domain name is confusingly similar to Complainant's EMPIRE STATE BUILDING trademark pursuant to Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable 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.").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

The WHOIS information for <empire-state-building.info> indicates that "Domain Privacy – Domain Name Privacy Inc." is the domain name's registrant and there is no evidence in the record indicating that Respondent is commonly known by <empire-state-building.info>. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent uses <empire-state-building.info> to address a website displaying a link the purports to verify that the site visitor Is not a robot. However, the link in-fact installs malware or adware on the visitor's device. The domain name may also be phishing for private information. Respondent's use of the <empire-state-building.info> domain name is thus not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii).  See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent's use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses "failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)"). Likewise, Respondent's use of the confusingly similar <empire-state-building.info> domain name to offer the domain name for-sale for an amount reasonably in excess of its out of pocket costs indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent's lack of rights and lack of legitimate interests in respect of the at-issue domain name. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that "a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests" in a disputed domain name).

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to the Policy.

 

First, Complainant reports that visitors to Respondent's <empire-state-building.info> webpage are confronted with a request to verify that said visitor is not a robot by clicking a selection box. Upon doing the response is to install malware or adware. The webpage may also be used to phish for personal data. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) ("In addition, Respondent's undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.");see also, Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1211001473573 (Forum Jan. 21, 2013) (holding that because the respondent used the at-issue domain name to attempt to facilitate the download of malicious software to the computers of the website's visitors, the respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).

 

Next, Respondent registered and used its <empire-state-building.info> domain name to offer the domain name for sale through Afternic. There, the domain name is offered to the general public for $3,000 USD. Such amount is well in excess of Respondent's reasonable out-of-pocket costs associated with the domain name. This general offer to sell <empire-state-building.info> for an amount certain exceeding Respondent's out-of-pocket cost for such domain name shows Respondent's bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) ("Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i)."); see also, Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the EMPIRE STATE BUILDING mark when it registered <empire-state-building.info> as a domain name. Respondent's actual knowledge of Complainant's rights in EMPIRE STATE BUILDING is evident given the Complainant's world renowned trademark. Respondent's registration of <empire-state-building.info> with knowledge of Complainant's trademark rights in EMPIRE STATE BUILDING further shows Respondent's bad faith registration and use of <empire-state-building.info> pursuant to the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <empire-state-building.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: February 6, 2024