ESRT Empire State Building, L.L.C. v. Sudhir Kumar / Infogate Limited
Claim Number: FA1606001681718
Complainant is ESRT Empire State Building, L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, United States. Respondent is Sudhir Kumar / Infogate Limited (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <empirestatebuilding.xyz>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2016; the Forum received payment on June 29, 2016.
On June 30, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <empirestatebuilding.xyz> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2016 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@empirestatebuilding.xyz. Also on July 1, 2016, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
A. Complainant
1. Complainant is the owner of the iconic and world-renowned Empire State Building in New York City. Complainant has registered the EMPIRE STATE BUILDING mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,413,667, registered Dec. 19, 2000), which demonstrates Complainant’s rights in its mark. The <empirestatebuilding.xyz> domain is identical to the EMPIRE STATE BUILDING mark, save for the elimination of the spaces between the words of Complainant’s mark and the affixation of the generic top-level domain (“gTLD”) “xyz.”
2. Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the domain, and Respondent is not a licensee of Complainant.
3. Further, Respondent does not use the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain resolves to an inactive website.
4. Respondent registered and is using the domain in bad faith. First, Respondent has, through its registration and use of the domain, engaged in opportunistic bad faith. Second, Respondent has failed to make any active use of the domain.
5. Third, because of the fame of Complainant’s mark, it is clear that Respondent registered the domain with at least constructive knowledge of Complainant’s mark and its rights therein.
6. Finally, Respondent’s use of a privacy service supports an inference of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the EMPIRE STATE BUILDING mark. Respondent’s domain name is confusingly similar to Complainant’s EMPIRE STATE BUILDING mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <empirestatebuilding.xyz> domain name, and that Respondent registered and uses the domain name 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(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 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 (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.”).
Complainant is the owner of the Empire State Building in New York City. Complainant has registered the EMPIRE STATE BUILDING mark with the USPTO (e.g., Reg. No. 2,413,667, registered Dec. 19, 2000), which demonstrates its rights in the mark.[1] Trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), without regard to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <empirestatebuilding.xyz> domain is identical to the EMPIRE STATE BUILDING mark, save for the elimination of the spaces between the words of Complainant’s mark and the affixation of the gTLD “xyz.” The elimination of the spaces between the words of a complainant’s mark does not serve to adequately distinguish a respondent’s domain from a complainant’s mark. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). The affixation of the “.xyz” gTLD does not save a domain from a determination of confusing similarity under Policy ¶ 4(a)(i). See Navistar International Corporation v. EIJI TAKAHASHI, FA 1672359 (Forum May 27, 2016) (“[w]e conclude from a review of the record that Respondent’s <navistar.xyz> domain name is substantively identical, and therefore confusingly similar, to Complainant’s NAVISTAR trademark. The domain name contains the entire mark, with only the addition of the generic Top Level Domain (‘gTLD’) ‘xyz.’). For these reasons, Respondent’s domain is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <empirestatebuilding.xyz> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, 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.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <empirestatebuilding.xyz> domain name. Complainant contends that Respondent is not commonly known by the domain name. Further, Complainant argues that Respondent is not a licensee of Complainant. The WHOIS information merely lists “Sudhir Kumar / Infogate Limited” as registrant. Accordingly, there is nothing in record from which to conclude that Respondent is commonly known by the <empirestatebuilding.xyz> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent’s domain resolves to an inactive website. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question). Therefore, the Panel concludes Respondent is not using the <empirestatebuilding.xyz> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has failed to make any active use of the domain. A respondent’s failure to make any active use of a domain constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). For this reason, the Panel may find that Respondent registered and is using the domain in bad faith per Policy ¶ 4(a)(iii).
Complainant contends that because of the fame of Complainant’s mark, it is clear that Respondent registered the domain with at least knowledge of Complainant’s mark and its rights therein. Due to the fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant’s rights. Thus, the Panel finds that Respondent registered the domain in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <empirestatebuilding.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 5, 2016
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