Complainant is GP Liquidating, LLC (f/k/a Artistix, LLC) of Rochester, New York, United States of America (“United States”), represented by Woods Oviatt Gilman LLP, United States.
Respondent is Luis Soto-Jacques, Ace Entertainment Company of Danville, California, United States. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2016. On July 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 14, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2016. Respondent did not submit any formal response. On July 23, 2016, Respondent sent an informal email to the Center asking for a copy of the Complaint, to which the Center replied on July 25, 2016. On August 5, 2016 Respondent sent an informal email to the Center in which Respondent indicated he could not find a lawyer to handle the matter, and asking the Center how he could defend his ownership of the disputed domain name. The Center acknowledged receipt of Respondent’s email on August 8, 2016, drawing Respondent’s attention to the Center’s publicly-available Response filing guidelines. On August 9, 2016, having received no further communications from Respondent, the Center sent an email to the Parties indicating that the Center would proceed with appointment of the Administrative Panel.
The Center appointed Mark Partridge as the sole panelist in this matter on August 11, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Parties were informed on August 26, 2016, that the due date for a decision was extended to August 31, 2016, due to exceptional circumstances. 4. Factual Background
The following facts are alleged by Complainant and are undisputed.
Complainant and its predecessors in interest (hereafter “Complainant”) have used the mark ARTISTIX in connection with the sale and distribution of apparel since August 6, 2013. Respondent was hired by Complainant to provide various marketing services relating to the ARTISTIX mark from March 2013 to July 2015. During that time Complainant paid Respondent about USD 810,100 for services as an independent contractor. In July of 2015, Complainant terminated the services of Respondent as an independent contractor.
Respondent registered the disputed domain name on October 3, 2013, while working for Complainant as an independent contractor. The domain name was used for a site to promote and sell Complainant’s products under the ARTISTIX mark.
Respondent registered the disputed domain name on September 30, 2015, after being terminated as an independent contractor by Complainant. The domain name leads to a Go Daddy parking page.
Respondent has refused to transfer the disputed domain names to Complainant. 5. Parties’ Contentions A. Complainant
Complainant claims common law rights in the ARTISTIX mark based on use in commerce in the U.S. and contends that the domain names are confusingly similar to its ARTISTIX mark. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names because Respondent was hired by Complainant as an independent contractor, knew that the ARTISTIX mark belonged to Complainant, and has no legitimate claim to the disputed domain names. Finally, Complainant contends that the domain name was registered in bad faith because Respondent registered the domain name in his own name, rather than Complainant’s while he was working on Complainant’s behalf. Complainant contends that the domain name was registered in bad faith after Respondent’s services were terminated. In both cases, Complainant contends that Respondent has used the domain names to extort a large payment from Complainant, demanding USD 240,000, despite the fact that he has already been paid at least USD 810,100. B. Respondent
Respondent did not formally reply to Complainant’s contentions. Respondent submitted three non-substantive informal email communications to the Center on July 23, 2016, August 8, 2016, and August 26, 2016. 6. Discussion and Findings A. Identical or Confusingly Similar
The record submitted shows that Complainant has adopted and used the mark ARTISTIX since at least August 8, 2016. The mark seems to be inherently distinctive for apparel and was entitled to protection in the United States upon adoption and use in commerce. Thus, Complainant has rights in the ARTISTIX mark.
The disputed domain names are confusingly similar to Complainant’s mark because they combine the mark with apt generic terms for the goods sold by Complainant. As a result, the Panel finds that the disputed domain names are confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
There is no indication in the record that Respondent has any rights or legitimate interests in domain names based on Complainant’s marks. Respondent’s only apparent connection with the disputed domain names arises from the fact that he was hired as an independent contractor to assist Complainant with marketing. Accordingly, the Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The disputed domain name was registered by Respondent while he was working for Complainant as an independent contractor. Although the disputed domain name was used for a site relating to Complainant, the Panel agrees with Complainant that the registration was made in bad faith because the domain name was registered in Respondent’s name, not in Complainant’s name. There is no logical reason to conclude that registration in this manner was authorized or approved by Complainant.
The disputed domain name was registered by Respondent after his services as an independent contractor were terminated. There is no legitimate reason for this registration. As a result, the Panel agrees that Respondent registered the domain name in bad faith.
Finally, Respondent has refused to transfer the disputed domain names to Complainant. He has no legitimate reason for using the disputed domain names. The only apparent reason for retaining them is to extort payment from Complainant in excess of the cost related to registration of the names.
Accordingly, the Panel finds that the disputed domain names were registered and used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, and , be transferred to Complainant.
Mark Partridge
Sole Panelist
Date: August 31, 2016
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