Hakkasan Limited v. Lupsa George / Hakkasen
Claim Number: FA1608001690581
Complainant is Hakkasan Limited (“Complainant”), represented by Lauri S. Thompson of Greenberg Traurig, LLP, Nevada, USA. Respondent is Lupsa George / Hakkasen (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hakkasen.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 23, 2016; the Forum received payment on August 23, 2016.
On August 23, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hakkasen.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 August 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@hakkasen.com. Also on August 29, 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 September 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant has rights in the HAKKASAN mark based on numerous registrations with the United States Patent and Trademark Office (USPTO).
Respondent’s <hakkasen.com> domain name is confusingly similar because it merely misspells Complainant’s HAKKASAN mark with an “e” instead of the last “a,” while adding the “.com” generic top-level domain (“gTLD”) identifier.
Respondent holds no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its HAKKASAN mark, and despite listing “Hakkasen” as the registrant organization for the WHOIS information, Respondent is not commonly known by <hakkasen.com>. Respondent is currently using the domain name to redirect Internet users to website featuring adult-oriented material, and “Hakkasen” is nowhere to be found on the resolving website. This cannot be construed as a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the disputed domain name in bad faith. Respondent presumably receives revenue from redirecting Internet users to the website featuring adult-oriented material. Featuring adult-oriented material alone can constitute bad faith under Policy ¶ 4(a)(iii), and this form of capitalizing on a confusingly similar domain name violates Policy ¶ 4(b)(iv). Further, because Respondent’s domain name only differs by one character, it is a form of typosquatting, and is clear evidence of bad faith to divert Internet users seeking the Complainant’s goods and services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for its HAKKASAN mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the HAKKASAN mark.
Respondent is not authorized to use Complainant’s trademark.
The website addressed by redirection from the at-issue domain name features adult-oriented material and makes no mention of Respondent or “Hakkasen.”
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the HAKKASAN mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. It is insignificant that Respondent may be located outside of the USPTO’s jurisdiction. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <hakkasen.com> domain name contains a misspelling of Complainant’s HAKKASAN trademark where the mark’s second “a” is substituted with an “e.” The top-level domain name “.com” is added thereto to complete the at-issue domain name. The domain name’s slight differences from Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i) and therefore the Panel finds that the <hakkasen.com> domain name is confusingly similar to Complainant’s HAKKASAN trademark. See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also, Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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.
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.
WHOIS information for the disputed domain name lists “Lupsa George / Hakkasen” as the domain name’s registrant. However, there is no evidence before the Panel which suggests that Respondent is known by the at-issue domain name except for the inclusion of “hakkasen” in the relevant registration record. Therefore, the Panel concludes that Respondent is not commonly known by the <hakkasen.com> domain name pursuant to Policy ¶ 4(c)(ii). See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information).
Respondent’s <hakkasen.com> domain name redirects to a website promoting adult-oriented material. Using the confusingly similar domain name for such purpose is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited-, FA 1603444 (Forum Mar. 19, 2015) (holding that, generally, a disputed domain which hosts adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below Policy ¶ 4(b) bad faith circumstances as well as other circumstances are present from which the Panel may conclude that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Respondent presumably receives a benefit when internet users are directed by Respondent’s <hakkasen.com> domain name to a website featuring adult-oriented material. Respondent’s use of the trademark rich domain name to redirect internet users seeking Complainant to a commercial website, as here, demonstrates Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Additionally, featuring adult-oriented material on the website referenced by Respondent’s confusingly similar domain name in itself suggests Respondent’s bad faith. See Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that [adult-oriented material providers] rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”).
Finally, the <hakkasen.com> domain name exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces a typographical error or misspelling into a trademark and then uses the string in a domain name wishing and hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the targeted trademark, or that such users will otherwise confuse the misspelled trademark laden domain name with a targeted trademark. As discussed above regarding Policy ¶ 4(a)(i), Respondent, the domain name registrant, simply substitutes a single character in Complainant’s trademark to form the second level of the <hakkasen.com> domain name. Respondent capitalizes on internet users’ mistyping or misreading Complainant’s mark and thereby augmenting traffic through the confusingly similar <hakkasen.com> domain name. Respondent commercially exploits the resulting inadvertent traffic to the detriment of Complainant. Respondent’s typosquatting is itself evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under 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 <hakkasen.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 27, 2016
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