Hypebeast Hong Kong Limited v. Joao Vitor Belizario Martins de Souza / Hypebeastt
Claim Number: FA2302002033371
Complainant is Hypebeast Hong Kong Limited (“Complainant”), represented by Jorge Arciniega of Loeb & Loeb LLP, California, USA. Respondent is Joao Vitor Belizario Martins de Souza / Hypebeastt (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The disputed domain names are <hypebeastt.com> and <hyperbeastt.com>, registered with Tucows Domains 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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to Forum electronically on February 24, 2023; Forum received payment on February 27, 2023.
On February 27, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <hypebeastt.com> and <hyperbeastt.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2023 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@hypebeastt.com, postmaster@hyperbeastt.com. Also on March 1, 2023, 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 March 1, 2023.
On March 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Fernando Triana, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts it operates a website and online retail store for men’s contemporary fashion and culture, that initiated as a blog in 2005.
Complainant owns the trademark registration HYPEBEAST with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,575,143, registered on February 17, 2009, in international classes 41 and 45).
Respondent’s disputed domain names <hypebeastt.com> and <hyperbeastt.com> are confusingly similar to Complainant’s trademark HYPEBEAST as each merely adds letters, “t” or “r” and “t” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests disputed domain names <hypebeastt.com> and <hyperbeastt.com>.
Respondent has not been authorized by Complainant to use the trademark HYPEBEAST.
Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent is advertising goods and services that are identical to and compete with those offered by Complainant.
Respondent registered and uses the disputed domain names <hypebeastt.com> and <hyperbeastt.com> in bad faith.
Respondent’s websites disrupt Complainant’s business as Respondent registered the disputed domain names in order to compete with Complainant’s online retail business.
Respondent’s websites attract users by creating confusion as to an affiliation or endorsement by Complainant and sell identical products that compete with Complainant for Respondent’s financial gain.
B. Respondent
Respondent submitted a response that the disputed domain names were previously registered to Respondent, but are no longer under Respondent’s control.
Respondent argued that at the time of registration, it was registered and used in good faith.
Further, an email from the email account associated with the disputed domain names states that “I’m glad to shut it down. . .I did not have any interest in copy a trend (sic) mark.”
1. Complainant owns the trademark HYPEBEAST through its registration of the trademark with the United States Patent and Trademark Office (USPTO) (Reg. No. 3,575,143, registered on February 17, 2009, in international classes 41 and 45), among others.
2. Respondent lacks rights or legitimate interests in the disputed domain names.
3. The registration and use of the disputed domain names was done 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.
Complainant contends to be the owner of the trademark HYPEBEAST through its registration of the trademark with the United States Patent and Trademark Office (USPTO) (Reg. No. 3,575,143, registered on February 17, 2009, in international classes 41 and 45), among others.
i) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of trademark rights. As a matter of general principle, industrial property rights are typically acquired by registration before a competent office.
The generally accepted definition of a trademark involves the concept of a distinctive force as the most relevant element. It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force and the owner is granted with an exclusive right over the trademark, which entitles him or her to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[i] and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant has proven its rights in the trademark HYPEBEAST through its registration of the trademark with the United States Patent and Trademark Office (USPTO) (Reg. No. 3,575,143, registered on February 17, 2009, in international classes 41 and 45), among others.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with services of international classes 41 and 45. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark HYPEBEAST for purposes of Paragraph 4(a)(i) of the Policy.
ii) Identity or confusing similarity between the disputed domain name and Complainant’s trademark
Complainant alleges that the disputed domain names are confusingly similar with Complainant’s trademark HYPEBEAST.
In the first place, before establishing whether or not the disputed domain names <hypebeastt.com> and <hyperbeastt.com> are confusingly similar to Complainant’s trademark HYPEBEAST, the Panel wants to point out that the addition of generic top-level domains (gTLDs), e.g., “.com,” “.net,” “.edu,” or “.org”, may be disregarded when determining if the disputed domain name is identical or confusingly similar to the registered trademark[ii].
UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name may be disregarded in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, D2000-0477 (WIPO July 25, 2000), the panel stated:
“The addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.
The Panel considers that the reproduction of the trademark HYPEBEAST, by the disputed domain names <hypebeastt.com> and <hyperbeastt.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[iii], as, the disputed domain names merely include a misspelled version of the trademark HYPEBEAST.
Besides, the disputed domain names do not include any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain names belong to Complainant. Thus, by registering the disputed domain names, Respondent creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the domain names.
In addition, the misspelling is not sufficient to make the disputed domain names different from the trademark HYPEBEAST.
Paragraph 1.7. of the WIPO Jurisprudential Overview 3.0, clearly states:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain names are confusingly similar to Complainant’s trademark HYPEBEAST and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
However, Complainant proved the following:
1. Complainant owns the trademark HYPEBEAST through its registration of the trademark with the United States Patent and Trademark Office (USPTO) (Reg. No. 3,575,143, registered on February 17, 2009, in international classes 41 and 45), among others.
2. Respondent registered the disputed domain names in November 2022.
3. Complainant operates a website and online retail store for men’s contemporary fashion and culture.
4. The website to which the disputed domain names resolved to, is an online store for men.
Given the above, the Panel considers the following:
1. The use of the disputed domain names as an online store for men cannot be qualified as a use in connection with a bona fide offering of goods or services, since it uses Complainant’s trademark to offer the same goods and services.
2. Respondent use of Complainant’s trademark as part of the disputed domain name misleads visitors into thinking that Complainant is somehow connected to Respondent.
3. Moreover, there is no evidence to support that Respondent is and/or has been commonly known by the disputed domain name.
4. Finally, Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, since the use of Complainant’s trademark as part of the disputed domain names misleads visitors into thinking that Complainant is somehow connected to Respondent.
This Panel believes considers that registering the disputed domain names with the inclusion of a misspell version of Complainant’s trademark to offer the same services, does not grant rights and does not constitute legitimate interest in the disputed domain names.
Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with as Respondent lacks any right or legitimate interest in the disputed domain name.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her 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 his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith, since Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement.
Respondent knew or should have known of the trademark HYPEBEAST[iv], since the disputed domain names revert to a website that offer the same services as Complainant.
The Panel finds Respondent deliberately took someone else’s trademark to register two domain names and to create a business around it.
Thus, this Panel considers that the mere fact of knowingly incorporating a third-party’s trademark in a domain name constitutes registration in bad faith[v]. See Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Direct Navigation Data Inc., WIPO Case No. D2012-1448, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
Furthermore, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website due to the inclusion of Complainant’s trademark in the disputed domain name. Hence, consumers would not be able to differentiate the source of origin, creating a likelihood of confusion with Complainant’s mark and making consumers believe there was a relationship of sponsorship, affiliation, or endorsement between Complainant and Respondent, is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).
Finally, the incorporation of Complainant’s trademark in the disputed domain name and the use of Complainant’s trademarks within the website can also disrupt Complainant’s business, which is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).
Therefore, the three elements of the Policy ¶4 are satisfied in the present case in respect to Respondent of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the disputed domain names <hypebeastt.com> and <hyperbeastt.com> be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: March 20, 2023
[i] See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also The British Broadcasting Corporation v. Jamie Renteria, D2000-0050 (WIPO Mar. 27, 2000).
[ii] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Forum May 18, 2012).
[iii] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[iv] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, WIPO Case No. D2012-0474.
[v] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, supra.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page