Roundabout Theatre Company, Inc. v. KONDRAT JABLONSKI
Claim Number: FA1501001599161
Complainant is Roundabout Theatre Company, Inc. (“Complainant”), represented by Stacy Grossman of Law Office of Stacy J. Grossman, New York, USA. Respondent is KONDRAT JABLONSKI (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hiptix.com>, registered with ENOM, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2015; the National Arbitration Forum received payment on January 9, 2015.
On January 12, 2015, ENOM, INC. confirmed by email to the National Arbitration Forum that the <hiptix.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 January 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on January 13, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
Complainant is a not-for-profit theater company in New York City. In 2000 Complainant launched HIPTIX, a low-price ticket program for theatergoers
between 18 and 35 years of age. Complainant has used the HIPTIX mark in connection with this program, and its U.S. trademark registration for HIPTIX issued in 2007. Complainant registered the disputed domain name <hiptix.com> in 2001 and used it for a website from that time until 2012, when Complainant decided to incorporate the HIPTIX content into its main website. At that time Complainant allowed the registration for the disputed domain name to lapse. Complainant recently discovered that a third party had registered the disputed domain name and created a website that included the entire contents of Complainant’s former site, altering some of the language and adding links to pornographic sites.
Complainant contends that the disputed domain name is identical or confusingly similar to its HIPTIX mark. Complainant contends further that Respondent has no rights or legitimate interests in the disputed domain name, and that the domain name has been registered and is being used in bad faith. In support thereof, Complainant states that the domain name was registered in the name of a privacy service to mask Respondent’s identity; that Complainant has not authorized Respondent to use its mark; and that Respondent is not commonly known by the domain name. Complainant alleges that Respondent is using the disputed domain name for a website that infringes Complainant’s copyrights and incorporates links to third-party pornographic websites, in a manner designed to create confusion among Internet users. Complainant alleges further that given the fame of its mark and the fact that Respondent copied content from Complainant’s website, it is clear that Respondent had knowledge of Complainant and its mark at the time of registration of the domain name. Complainant accuses Respondent of creating a likelihood of confusion with Complainant’s mark and tarnishing Complainant’s reputation.
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been 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."
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(e), 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 (Nat. Arb. 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.”).
The disputed domain name is identical to Complainant’s registered trademark, but for the addition of the “.com” top-level domain, which is irrelevant for purposes of paragraph 4(a)(1) of the Policy. See, e.g., Abt Electronics, Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (finding <abt.com> identical to ABT). The Panel finds that the disputed domain name is identical to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name is identical to Complainant’s mark, and it apparently has been used solely for the purpose of creating and profiting from confusion with Complainant. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
The disputed domain name is identical to Complainant’s mark, and it has been used for a website that consists predominately of material copied from Complainant’s website, with the addition of what presumably are pay-per-click links to other, unrelated sites. Such use is indicative of bad faith under the Policy. See, e.g., iHerb, Inc. v. Emma Hong, FA 1553252 (Nat. Arb. Forum May 7, 2014) (finding bad faith based upon use of domain name for website that copied the look and feel of complainant’s site). In the absence of evidence to the contrary, the Panel infers that the domain name was registered for this purpose. The Panel therefore finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hiptix.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 10, 2015
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