HY IP Holding Company LLC v. Marc Chanti / metromotion
Claim Number: FA1807001796110
Complainant is HY IP Holding Company LLC (“Complainant”), represented by Susan J. Kohlmann of Jenner & Block, New York. Respondent is Marc Chanti / metromotion (“Respondent”), New York.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hudsonyardsmedia.com>, registered with GoDaddy.com, LLC.
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.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 10, 2018; the Forum received payment on July 16, 2018.
On July 11, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hudsonyardsmedia.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 July 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2018 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@hudsonyardsmedia.com. Also on July 18, 2018, 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 13, 2018.
On August 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that the disputed domain name is identical with Complainant’s HUDSONS YARD trademark as the Respondent’s addition of the term “media” and deleted spaces between words do not distinguish the disputed domain name from Complainant’s trademark.
Complainant also argues that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant further argues that the disputed domain name was registered and is being used in bad faith. Complainant argues that Respondent had full knowledge of Complainant’s trademarks and that the disputed domain names were registered to confuse Internet users whilst benefitting from Complainant’s goodwill and reputation. Complainant also argues that Respondent had attempted to sell the disputed domain name to Complainant and to a third party for a sum in excess of Respondent’s out-of-pocket costs for registration of the disputed domain name.
B. Respondent
Respondent submitted a Response to Complainant’s contentions.
In essence, Respondent argues that there is no confusing similarity between Complainant’s trademark and the disputed domain name.
Respondent also argues that it has rights or legitimate interests in the disputed domain name as it has been operating its business in the Hudson Yards address since 1998.
Respondent further argues that it did not register and use the disputed domain name in bad faith.
The Panel finds as follows:
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.
Paragraph 4(a)(i) of the Policy requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
Complainant is the owner of the following trademark registrations in the United States:
- Registration no. 5125892, HUDSON YARDS®, registered on January 17, 2017;
- Registration no. 5143390, HUDSON YARDS®, registered on February 14, 2017;
- Registration no. 5176730, HUDSON YARDS®, registered on April 4, 2017;
- Registration no. 5218846, HUDSON YARDS®, registered on June 6, 2017;
- Registration no. 5296689, HUDSON YARDS®, registered on September 26, 2017;
- Registration no. 5301812, HUDSON YARDS®, registered on October 3, 2017;
- Registration no. 5309254, HUDSON YARDS®, registered on October 17, 2017;
- Registration no. 4284033, ONE HUDSON YARDS®, registered on January 29, 2013;
- Registration no. 4792892, 55 HUDSON YARDS®, registered on August 18, 2015;
- Registration no. 5073323, 10 HUDSON YARDS®, registered on November 1, 2016;
- Registration no. 5286574, 10 HUDSON YARDS®, registered on September 12, 2017; and
- Registration no. 5306829, FIFTEEN HUDSON YARDS®, registered on October 10, 2017.
For the purposes of establishing whether Complainant has rights in the trademarks under the Policy, the Panel finds that Complainant is the registered owner of the above trademarks and therefore has rights therein. Complainant registered the above trademarks over a period of time beginning in the year 2013 and spanning until 2017. The trademarks registered some years before Respondent registered the disputed domain name include ONE HUDSON YARDS and 55 HUDSON YARDS and 10 HUDSON YARDS. These trademarks comprise the words HUDSON YARDS as their common and central component.
Complainant contends that the disputed domain name <hudsonyardsmedia.com> integrates Complainant’s HUDSON YARDS trademark in its entirety plus a general term, “media”. See Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345. The addition of merely descriptive terms would not prevent a finding of confusing similarity under the first element (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.). Past Panelists have found that such changes are not typically sufficient to distinguish a domain name from an incorporated mark. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”).
The Panel disagrees with Respondent’s argument that for the purpose of this element, Complainant’s trademarks have to relate to goods and services related to the media. Paragraph 4(a)(i) of the Policy considers only whether Complainant has rights in a mark and whether the disputed domain name is confusingly similar to the mark. In any event, it is unclear what scope of “media related services or goods” Respondent provides as it appears from Respondent’s website that Respondent also engages in the offering of real estate rental as part of his business.
The Panel also notes that even though Complainant has not argued that the disputed domain name has added a gTLD to the trademark, such an addition is irrelevant in the analysis under Paragraph 4(a)(i) of the Policy.
In the present case, the Panel finds that there is confusing similarity between Complainant’s trademark and Respondent’s disputed domain name as the latter contains Complainant’s trademark in its entirety plus a general term, “media”.
In the present case, Complainant has demonstrated prima facie that Respondent lacks rights or legitimate interests in respect of the disputed domain names through providing evidence of trademark registration long before Respondent registered the disputed domain name. In addition, Complainant also showed that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the HUDSON YARDS mark in any way. The WHOIS information provided by Complainant identifies the registrant of the disputed domain name as “Marc Chanti / metromotion” which does not resemble the disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017). No information on the record indicates that Respondent was authorized to register a domain name incorporating Complainant’s trademark.
Once Complainant establishes a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to show that it has rights or legitimate interests in respect of the disputed domain name. 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)); 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”); WIPO Overview 3.0, section 2.1.
Respondent argued that it is using the disputed domain name for a business that began in the same Hudson Yards address in Manhattan in 1998. This argument would have been compelling and sufficient to establish rights or legitimate interests in the disputed domain name had Respondent provided a single piece of evidence to this effect. Respondent did not provide any evidence to show that it has used the mark HUDSONYARDSMEDIA for his business, as part of his business since 1998. Respondent registered the disputed domain name in 2017, long after Complainant broke ground in the same area where Respondent’s business is located and registered a number of its HUDSON YARDS trademarks.
The disputed domain name serves to redirect Internet users to Respondent’s website <daylightstudios.com>. This is admitted by Respondent who states “[t]he name in dispute in this Complaint directs the user to its site for the express purpose of promoting it studio rentals, photo, film, video gear rentals, set construction, crew catering and a wide variety of other goods and services all related to the media industry.” To support this point, Respondent provided screenshots of the homepage of its website. The evidence provided by Respondent shows that he is not using the disputed domain name or the mark HUDSONYARDSMEDIA on his website. Respondent is making use of the Complainant’s trademark HUDSON YARDS as part of his address, though such use is made to identify the location of his business within the real estate project developed by Complainant under the HUDSON YARDS trademark and not to identify his business or promote the goods/services offered therein. The use of the disputed domain name to redirect users to what may appear to be a site that offers at least some competing services cannot support a claim to rights or legitimate interests. WIPO Overview 3.0, section 2.5.3. See also Casumo Services Limited v. Ido Raviv, Net Games Inc., WIPO Case No. D2014-0442; Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
The Panel takes note of the other arguments made by Respondent relating to running an ongoing business which promotes its brand, though as noted above, the evidence filed by Respondent shows promotion of his DAYLIGHT STUDIOS and METROMOTION brands. No evidence was filed by Respondent to show that it is known as a Media service under the disputed domain name.
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(a)(iii) of the Policy requires Complainant to show that Respondent registered and is using the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
Past Panelists have found that a finding of bad faith under Paragraph 4(b)(i) of the Policy requires a showing that the respondent’s primary intent in registering the domain name was to sell the domain name to the complainant. See Master Call Connections, LLC v. Richard Seay / MasterCall, Inc., FA 1662809 (Forum Apr. 12, 2016). Complainant contends that Respondent sought to profit from the registration of disputed domain name by offering it for sale to Complainant and a third party. Respondent argued that it never used the disputed domain name in bad faith and that it was legitimately created.
Finding of registration in bad faith requires a showing that Respondent is taking an unfair advantage of otherwise abuses the complainant’s mark (WIPO Overview 3.0, 3.1). UDRP paragraph 4(b) provides a number of non-exclusive scenarios that constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
…
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The disputed domain name wholly incorporates Complainant’s trademark in addition to the descriptive word “media”. It has long been established that use of a confusingly similar domain name to attract Internet users for commercial gain can indicate bad faith per Policy ¶ 4(b)(iv). See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore, the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”).
The WHOIS information provided by Complainant shows that that the Respondent only registered the disputed domain name on February 15, 2017, which post-dates the Complainant’s first trademark registration by 4 years. In this regard, the Panel notes that Complainant’s project of Hudson Yards came into existence around the year 2005 some 12 years before Respondent’s registration and broke ground in the vicinity of Respondent’s business in 2014 some 3 years before Respondent’s registration. The project is the largest private real estate development in the history of the United States and the largest development in New York City since Rockefeller Center. Moreover, Respondent stated that it has been using the disputed domain name for a business that began in the same Hudson Yards address in Manhattan since 1998, showing that his business has been located in the same area for many years. It is thus extremely unlikely in the eyes of this Panel that at the time of the disputed domain name’s registration, Respondent was not aware of Complainant and its trademarks. This is supported by the fact that while Respondent stated that he registered the disputed domain legitimately, he did not argue he was unaware of Complainant and its trademark prior to the registration of the disputed domain name. The fact that Respondent did not use the HUDSONYARDSMEDIA for his business save to direct internet users to his business trading under other marks is also clear indication that the registration was made in full knowledge of Complainant and its trademarks.
In addition, while a finding of actual confusion is not necessary for the purpose of the Policy, the Panel considers the use of the disputed domain name for redirection to another website offering at least some competing services to create at least some likelihood of confusion, as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Under the particular circumstances of this case, the Panel considers the use of a confusingly similar trademark, which Respondent was aware of before registration to therefore constitute evidence of bad faith registration and use according to the Policy paragraph 4(b)(iv).
In addition, in the present case, the Complainant and Respondent both filed evidence of an email correspondence between them that shows that it was Complainant who first approached Respondent but only provided an offer after Respondent asked for a financial offer. Complainant offered to purchase the disputed domain name for $5,000 so as to settle the dispute amicably. Respondent then informed Complainant that it had been made offers by a third party and would update Complainant as to the quantum of the offer. Respondent subsequently counter-offered Complainant for $22,000 which was rejected by Complainant.
In this regard, it bears noting that a counteroffer to an offer initiated by a complainant does not serve as basis for a finding of bad faith. See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Forum Mar. 13, 2012) (“Respondent never approached Complainant with an offer to sell the name; rather the Complainant sought to purchase the name for $3,000 and Respondent said that it had valued the disputed domain name on its books at $50,000. Even if this statement was an implied counter-offer to sell the name to Complainant for $50,000, in connection with a showing of bad faith it is important to note that it was Complainant who initially approached Respondent about the sale.”).
Complainant contended that Respondent’s offer to sell the <hudsonyardsmedia.com> domain name to Complainant and a third party demonstrates it registered and used the name in bad faith. An offer to sell a domain name—either to a third party or to the complainant—can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i). See Navajo Nation Gaming Enterprise v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd, FA 933276 (Forum May 14, 2018) (concluding that the respondent registered and was using the <firerockcasino.com> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for $14,999.00 USD); see also Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000). The Panel agrees that Respondent responded to the demand letter from Complainant by soliciting a “reasonable financial offer” for the disputed domain name. See Compl. Ex. F. As such, Respondent offered to sell the disputed domain name to Complainant. Taking the foregoing into consideration, the Panel finds that there are circumstances indicating that Respondent has registered the disputed domain name with the intention to sell the disputed domain name to Complainant under Policy paragraph 4(b)(i).
The Panel notes Respondent’s arguments that he registered and has used the domain name in good faith to promote its business in a completely different industry from that of Complainant. However, as explained above, Respondent provided no evidence of such use and the Panel is of the view that Respondent’s business overlaps with that of Complainant’s when he rents and leases spaces for filming and photography purposes.
The Panel is of the view that the circumstances of this case are sufficient to establish that Respondent’s primary intent in registering the domain name was to sell the domain name to Complainant or to attract Internet users to his business for commercial gain using Complainant’s trademark by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Taking all of the above into consideration, the Panel finds that Complainant has satisfied all three elements and met its case under Paragraph 4(a) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hudsonyardsmedia.com> domain name be TRANSFERRED from the Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: August 30, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page