Hit-factory.info

The timeline behind hit-factory.info

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Hit Factory Entertainment, Inc. v. Bernard Beard Claim Number: FA0502000417303 PARTIES Complainant is Hit Factory Entertainment, Inc. (“Complainant”), represented by Fritz L. Schweitzer of Schweitzer Cornman Gross and Bondell LLP, 292 Madison Avenue, 19th Floor, New York, NY 10017. Respondent is Bernard Beard (“Respondent”), Yelm Highway, Yelm, WA 98597. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <hit-factory.info>, registered with NameSecure.com, Inc. PANEL 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. Hon. Ralph Yachnin. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 10, 2005. On February 9, 2005, NameSecure.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <hit-factory.info> is registered with NameSecure.com, Inc. and that Respondent is the current registrant of the name. NameSecure.com, Inc. has verified that Respondent is bound by the NameSecure.com, Inc. 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 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 7, 2005 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@hit-factory.info by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On March 11,2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <hit-factory.info> domain name is confusingly similar to Complainant’s THE HIT FACTORY mark. 2. Respondent does not have any rights or legitimate interests in the <hit-factory.info> domain name. 3. Respondent registered and used the <hit-factory.info> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Hit Factory Entertainment, Inc., owns and operates several recording studios using THE HIT FACTORY mark in New York City and Miami. Many world-famous recording artists have used Complainant’s studios to record such songs as “Born in the U.S.A.” by Bruce Springsteen and “Graceland” by Paul Simon, along with many others. Complainant has continuously used and applied THE HIT FACTORY mark since 1970 for recording studio services. Complainant registered THE HIT FACTORY mark with the United States Patent and Trademark Office (Reg. No. 1,428,785 issued November 18, 1986). Complainant has similar registrations in Canada, Great Britain, Japan, Australia, Cuba, Italy and Mexico. Complainant’s websites are operated at the domain names <thehitfactory.com>, <hitfactory.com>, and many others containing the words, “hit” and “factory.” Respondent registered the <hit-factory.info> domain name on November 13, 2004. Respondent is merely using the website at the domain name to offer the domain name registration for sale. Complainant corresponded with Respondent requesting transfer of the disputed domain name. Respondent offered to sell the domain name registration to Complainant, at first for $27,500.00, then lowered the price to $4,300.00. DISCUSSION 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." 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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. 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. Identical and/or Confusingly Similar Complainant established with extrinsic proof in this proceeding that it has rights to THE HIT FACTORY mark as evidenced by the registration with the United States Patent and Trademark Office and through continued use of its mark in commerce over the last thirty-five years. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the Complaint in the first place). The <hit-factory.info> domain name registered by Respondent is confusingly similar to Complainant’s THE HIT FACTORY mark because the domain name incorporates Complainant’s mark and simply deletes “the,” adds a hyphen and the generic top-level domain (“gTLD”) “.info.” The deletion of the word “the,” and the addition of a hyphen and the gTLD fail to sufficiently differentiate Respondent’s domain name from Complainant’s mark. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Respondent failed to contest Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain name. Because Complainant’s evidence and arguments are unopposed, the Panel is permitted to accept all reasonable inferences made in the Complaint as true. See 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.”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that complainant’s allegations are true unless clearly contradicted by the evidence). Additionally, Complainant has submitted a prima facie case to the Panel, thereby shifting the burden to Respondent. Respondent’s failure to fulfill its burden means that Respondent has failed to invoke any circumstances that could demonstrate rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once complainant asserts that respondent has no rights or legitimate interests with respect to the domain, the burden shifts to respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that respondent has no rights or legitimate interests in the domain name because respondent never submitted a response or provided the Panel with evidence to suggest otherwise). Respondent is not authorized or licensed by Complainant to use THE HIT FACTORY mark in the domain name. Moreover, no evidence before the Panel suggests that Respondent is commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) respondent is not a licensee of complainant; (2) complainant’s rights in the mark precede respondent’s registration; (3) respondent is not commonly known by the domain name in question). Furthermore, the <hit-factory.info> domain name is confusingly similar to Complainant’s THE HIT FACTORY mark and is used to direct Internet users to a website that offers the domain for sale. Such offers have consistently been found to be neither 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). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding respondent’s conduct purporting to sell the domain name suggests it has no legitimate use). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent has manifested an intent to sell the disputed domain name registration as the website declares, “This domain is for sale.” Given the long-standing use of THE HIT FACTORY mark, it is more likely than not that Respondent’s future sale of the domain name registration is aimed at the deep pockets of Complainant’s business or Complainant’s competitors. Even though Complainant contacted Respondent, Respondent demanded $27,500 to transfer, then lowered its price to $4,300. Without the benefit of a response, the Panel finds that the circumstances sufficiently indicate that Respondent acquired the domain name primarily to sell the registration to Complainant or Complainant’s competitors for a value in excess of out-of-pocket expenses directly related to the domain name pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("What makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner."); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Additionally, Respondent’s registration of the disputed domain name, a domain name that incorporates Complainant’s mark and simply adds a hyphen and deletes “the,” suggests that Respondent knew of Complainant’s rights in THE HIT FACTORY mark. Furthermore, Complainant’s registration of its mark with the United States Patent and Trademark Office confers constructive knowledge on anyone attempting to use the mark. Thus, the Panel finds that Respondent chose the <hit-factory.info> domain name based on the distinctive qualities of Complainant’s mark, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); 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.”). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <hit-factory.info> domain name be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice Supreme Court, NY (Ret.) Dated: March 25, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.