Hit Factory Entertainment, Inc. v. Manhasset
Bay Associates, Inc.
Claim Number: FA0602000649476
PARTIES
Complainant is Hit Factory Entertainment, Inc. (“Complainant”), represented by Fritz L. Schweitzer, of Schweitzer Cornman Gross & Bondell LLP, 292 Madison Avenue - 19th Fl., New York, NY 10017. Respondent is Manhasset Bay Associates, Inc. (“Respondent”), PO Box 494, Port Washington, NY 11050.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hitfactorystudio.com>,
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 21, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 23, 2006.
On February 21, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National
Arbitration Forum that the <hitfactorystudio.com>
domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the
current registrant of the name. Melbourne
It, Ltd. d/b/a Internet Names
Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On February 27, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 20, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@hitfactorystudio.com by e-mail.
A timely Response was received and determined to be complete on March
20, 2006.
On March 31, 2006, Complainant filed with the National Arbitration
Forum an Additional Submission.
Although that Additional Submission was not filed fully in compliance
with Supplemental Rule 7, the Panel has determined, in the interests of
justice, to consider the allegations made therein in reaching this decision.
On March 31, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends, among other things, that:
Complainant has, since 1987, held a U.S. trademark registration for the
THE HIT FACTORY mark for use in connection with recording studio services.
Complainant has similar registrations in Canada, Great Britain, Japan,
Australia, Cuba, Italy and Mexico.
Complainant has been using its mark in commerce for over 34 years.
Due to its long-standing use in commerce, Complainant also owns common
law rights to the same mark.
Complainant also holds registrations for numerous domain names
containing its famous mark, including these:
<thehitfactory.com>, <hitfactory.com>,
<hitfactorystudios.com> and <thehitfactorystudios.com>.
Respondent registered the disputed domain name in February of 2005.
The use of Complainant’s mark in Respondent’s domain name is without
authorization.
Respondent is not commonly known by the disputed domain name.
Respondent has failed to develop a web site for the disputed domain name.
The domain name resolves to a web site unaffiliated with either
Respondent or Complainant.
Prior to April 4, 2005, the same domain name instead resolved to a
separate website owned by Respondent at <sosproductions.com>, at which
Respondent promoted its own commercial recording studio services.
On that date, Complainant, having learned of the existence of
Respondent’s web site and its connection to the disputed domain name,
corresponded with Respondent requesting that the domain name be transferred to
Complainant.
Respondent reacted to this communication by redirecting the domain name
to another web site described below in Respondent’s contentions.
B. Respondent
Respondent contends, among other things, that:
Respondent has never offered to sell the disputed domain name to
anyone.
The disputed domain name forwards to a web site associated with the
Make-A-Wish Foundation, a non-profit organization devoted to granting the
wishes of children with life-threatening medical conditions.
Respondent has never realized any commercial benefit from the
connection between its domain name and the Make-A-Wish Foundation web site.
Owing to recent business reverses, Complainant may no longer be using
its mark in commerce.
Moreover, no web site has ever been developed by Complainant for any of
the domain names associated with its mark.
The term “hit factory” is a generic expression not eligible for
protection under the ICANN Policy.
C. Additional Submissions
Complainant’s Additional Submission alleges, inter alia, that:
Complainant has not abandoned its mark, and continues to use it in
commerce.
Respondent does not dispute that it once used the subject domain name
to resolve to its web site for SOS Productions, a competitor of Complainant in
the provision of recording studio services.
Respondent does not offer any explanation for its decision to register
a domain name containing Complainant’s mark.
FINDINGS
(1) the domain name registered by Respondent is
confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the same domain name was registered and is
being used by Respondent in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant contends that it has rights in the THE HIT FACTORY mark by
virtue of its registration with the United States Patent and Trademark Office
dating from 1987. The Panel agrees. See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.” See also Innomed
Techs., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”
Respondent
nonetheless contends that Complainant may have surrendered its rights in the
mark by failing to continue its use in commerce. Respondent’s argument misapprehends the function of this
proceeding. Complainant’s rights in its
mark, once established by the relevant national authorities, will not be
disturbed by this Panel. See Julie
& Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds
Blow, D2005-0073 (WIPO Mar.
6, 2005) (“Except in the most extraordinary circumstances, the Panel
lacks jurisdiction or authority (not to mention the competence) to set aside a
trademark registration issued by governmental authority.”). Respondent’s contention with regard to
possible abandonment of Complainant’s trademark rights must therefore be
directed elsewhere.
Likewise,
it is of no consequence that Complainant may have failed to this point to
employ any of its many domain names containing the mark in a functioning web
site or otherwise used it in Internet commerce. It is enough that, as here, Complainant has rights in the mark
sufficient to satisfy Policy ¶ 4(a)(i).
Respondent
also attempts to contest Complainant’s rights in its mark by asserting that the
phrase “Hit Factory” is generic in character, and, therefore, not entitled to
trademark protection. Once again,
Respondent’s contention is misplaced.
ICANN-UDRP proceedings are not vested with jurisdiction to determine a
Complainant’s entitlement to trademark protection. That is the province of the competent national authorities. Once the pertinent authorities have spoken,
the issue is determined for purposes of these proceedings. In The Ritz Hotel, Limited v. Damir Kruzicevic, D2005-1137 (WIPO, Jan. 16, 2006), a
case challenging a complainant’s rights in a mark on grounds of genericness,
the panel stated:
Complainant has proved that it is the registered
proprietor of the mark RITZ, for various goods and services, in numerous
countries. It is not for the Panel in an administrative proceeding such as this
to question the validity of those registrations.
In
this instance there is evidence that Complainant’s rights in its mark have been
recognized by the national authorities of perhaps eight countries, including
the United States, of which both Complainant and Respondent are evidently
residents. There is no indication in
the record of this proceeding to suggest that any of those authorities has ever
withdrawn the registration of Complainant’s mark. The Panel is therefore obliged to recognize Complainant’s rights
in its mark.
We turn, then, to the question, whether, given that Complainant has rights in its mark, Respondent’s domain name is either identical or confusingly similar to that mark. On this question, it cannot fairly be said that the mark and domain name are identical. The two are, however, confusingly similar, differing in only non-substantive ways, by the addition of the general article “the”, the generic term “studio” and the generic top level domain name “.com.” See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
For these reasons, the Panel determines that
Policy ¶ 4(a)(i) has been satisfied.
Under this heading, Complainant must make out a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii), at which point the burden shifts to Respondent to
show that it has such rights or interests.
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) (“Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph [4(a)(ii)], however, it is sufficient for the Complainant to
show a prima facie case and the burden of proof is then shifted on to the
shoulders of Respondent. In those
circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.”). In
this instance, Complainant has made out a prima
facie showing that Respondent has no rights or interests in the disputed
domain name. Respondent responds only
to the effect that the disputed domain name forwards to a web site associated
with the Make-A-Wish Foundation, a non-profit organization devoted to granting
the wishes of children with life-threatening medical conditions, and that Respondent
has never realized any commercial benefit from the connection between its
domain name and the Make-A-Wish Foundation web site.
Taking its assertions as true, Respondent has
failed to show that it has legitimate rights to or interests in the disputed domain
name. However laudable it might seem to
be at first blush, diverting Internet users seeking Complainant’s
services to a third-party website unrelated to Complainant does not constitute
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the disputed domain name pursuant
to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho,
FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business does not represent a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii).”).
Likewise, Respondent can find no shelter
under Policy ¶ 4(c)(ii), because Respondent
makes no effort to suggest that it has ever been commonly known by the subject
domain name.
Inasmuch as Respondent has offered no other basis upon
which its claim of rights or interests might be grounded, the Panel finds that
Complainant has met the proof requirements of Policy ¶ 4(a)(ii).
In examining the character of Respondent’s conduct under Policy ¶ 4(a)(iii), it is customary to resort to the provisions of Policy ¶ 4(b), which recites four separate considerations bearing on this topic. In the circumstances here obtaining, it appears that none of the provisions of Policy ¶ 4(b) precisely applies. However, that does not end our inquiry, because that proviso of the Policy expressly recites that its terms are non-exclusive. We are therefore free to explore other factors that might bear on the problem before us.
We first observe that Respondent
registered the contested domain name with either actual or constructive
knowledge of Complainant’s rights in the THE HIT FACTORY mark by virtue of Complainant’s prior registration
of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain
name despite such actual or constructive knowledge, without more, evidences bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
Moreover, a careful examination of the facts alleged in this proceeding very strongly suggests that Respondent is guilty of what might be called “cyber-scavenging.” This is to say that Respondent, evidently having learned that Complainant may have fallen on hard economic times, and so might soon not be in a position effectively to defend the rights to its mark, evidently decided to strike early by registering the disputed domain name, and, when called on it, attempting to divert attention by redirecting the domain name to the web site of a charitable institution that enjoys public esteem. This gambit is unavailing. Respondent’s behavior is evidence of bad faith registration and use whether it occurs during Complainant’s salad days or when it is in recovery. It is, in short, enough that Respondent has registered and uses the offending domain name without the consent of the rightful mark holder. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that a respondent registered the domain name <statefarmnews.com> in bad faith because the respondent intended to use a complainant’s marks to attract the public to the web site without permission from the complainant).
The Panel thus
finds that Complainant has satisfied the requirements of Policy ¶
4(a)(iii).
DECISION
Complainant having established all three elements required to be proven
under the ICANN Policy, the Panel concludes that the relief requested shall be GRANTED.
Accordingly, it is Ordered that the <hitfactorystudio.com>
domain name be TRANSFERRED forthwith
from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 14, 2006
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