The Complainant is The Hartman Media Company, LLC of Jackson, Wyoming, United States of America (“United States”), represented by Steven Pollack, United States.
The Respondent is Host Master, 1337 Services LLC of Charlestown, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2018. On July 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 30, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 1, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 1, 2018.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on August 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 17, 2018. 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. 4. Factual Background
The relevant facts can be summarized as follows.
The Complainant is as United States company and is a corporate vehicle for a Mr. Jason Hartman’s business. Mr. Hartman is an entrepreneur who specializes in property development and investing in real estate.
The Complainant owns the following registered trademarks: JASON HARTMAN (United States Trademark Registration No. 4470582, registered January 21, 2014) and JASONHARTMAN.COM (United States Trademark Registration No. 4418120, registered October 15, 2013) for financial investment in the field of real estate and financial services, namely, real estate note brokerage, in class 36. These trademarks are referred to below as “The JASON HARTMAN trademark”.
The Respondent registered the Disputed Domain Name on May 17, 2018.
The Respondent has linked the Disputed Domain Name to a website (the “Respondent’s Website”) which contains a large amount of material critical of Mr. Hartman. In summary that material analyses and comments upon what it says is a large number of litigation cases Mr. Hartman has been involved with and calls into question his expertise and skills. It does so in highly emotive and unflattering terms. The Respondent’s Website is anonymous in that no contact details or other information is provided on the website to show who is responsible for publishing it. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows.
The Complainant says that Mr. Hartman is “a world-renowned industry professional who has been involved in several thousand real estate transactions and has owned income properties in 11 states and 17 cities…[and] he helps people achieve financial freedom by purchasing income property in prudent markets nationwide…He is also the founder of The Hartman Media Company and The Jason Hartman Foundation…He serves as a guru in his trade and has spent years building up his name and reputation”.
It says the Disputed Domain Name is confusingly similar to The JASON HARTMAN trademark. Addition of the descriptive term “properties” does not distinguish the Disputed Domain Name.
The Complainant says the Respondent has no rights or legitimate interests in the term “JASONHARTMAN”.
It also says that the Disputed Domain Name was registered and is being used in bad faith. In this respect the Complainant says that the person who registered the Disputed Doman Name is a competitor of Mr. Hartman who is using the Respondent’s Website to denigrate Mr. Hartman and his business in an untrue and dishonest manner. The Complainant explains this in the following terms: “In an effort to drive business away from Mr. Hartman and to destroy the large market share that Mr. Hartman has earned through years of education and service to the profession, a believed competitor, acting anonymously, Respondent, is criminally impersonating Mr. Hartman, using his trademarks, and defaming him by publishing a plethora of false and misleading statements of material fact relating to Mr. Hartman’s personal life, financial history, litigation history, commercial dealings, supposed prurient nature, credibility, and trustworthiness”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Matters
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
The Panel also notes this is a case where the named Respondent (“Host Master”) appears to be an organisation that registers domain names in its own name but on behalf of third parties, who wish to remain anonymous. This is analogous to use of a privacy service but actually provides an even greater level of anonymity because there is no way for the Registrar to disclose details of the person on whose behalf the domain name was registered.
The Panel in this case proceeds on the basis that the principles applicable to privacy and proxy services area applicable and adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent”.
In the present case as no other respondent has been notified the Panel considers it appropriate to proceed against “Host Master”. References to the Respondent should be understood as also including the person or persons who caused the registration to be effected in the name of “Host Master”. 6.2 Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in The JASON HARTMAN trademark.
The Disputed Domain Name is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive term (such as here the word “properties”) has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, is not generally taken into account for the purpose of determining whether a domain name is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks. Therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use The JASON HARTMAN trademark. The Complainant has prior rights in The JASON HARTMAN trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Conceivably, had a response been filed, the Respondent might have suggested that the Respondent’s Website was a bona fide criticism site and/or was an exercise of some form of free speech right. That seems to the Panel the only conceivable argument that could be advanced in support of a legitimate interest. The Panel has considered this and had regard to the position set out in WIPO Overview 3.0 section 2.6, as follows:
“2.6 Does a criticism site support respondent rights or legitimate interests?
As noted above, UDRP jurisprudence recognizes that the use of a domain name for fair use such as non-commercial free speech would in principle support a respondent’s claim to a legitimate interest under the Policy.
2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment.
2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e. (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.
2.6.3 Where the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., ), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. Some panels have found in such cases that a limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., as “fundraising” to offset registration or hosting costs associated with the domain name and website)”.
In the present case the Panel notes that the Disputed Domain Name combines Mr. Hartman’s name (which is the same as the JASON HARTMAN trademark) with a purely descriptive term. Accordingly the Panel considers that paragraph 2.6.3 does not apply and there exists an “impermissible risk of user confusion” similar to that described in paragraph 2.6.2 of WIPO Overview 3.0 (above), particularly given that the additional descriptive term “properties” is directly relevant to the Complainant’s business. Accordingly the Panel does not consider that any legitimate interest arises in this respect.
The Panel notes that had the Disputed Domain Name combined the JASON HARTMAN trademark with a manifestly derogatory term different considerations would have arisen (see paragraph 2.6.3 of WIPO Overview 3.0, above) and the result would not necessarily have been the same.
The Panel therefore finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present case, it was manifestly a deliberate decision by the Respondent to include Mr. Hartman’s name in the Disputed Domain Name. This was clearly part of a deliberate plan to publish material that was critical of Mr. Hartman. The Panel has no means of assessing whether or not any of the allegations contained in the content of the Respondent’s Website are true. It also has no means of knowing whether or not Mr. Hartman’s fame, reputation and success are as strong as the Complaint claims. The Panel also has no way of knowing whether the Respondent is a competitor of the Complainant (as the Complaint alleges) or some other person who wishes to criticize Mr. Hartman. The Panel does not consider that any of this matters. Whether or not the Respondent (whoever it is) is entitled to criticize Mr. Hartman by publicizing material such as that which is found on the Respondent’s Website is not a matter for the Policy. What however the Policy is directed at is using, as part of this activity, a domain name which is confusingly similar to the Complainant’s trademark and which would be likely to be taken to be that of the Respondent and/or Mr. Hartman. That is misleading and likely to attract visitors who are searching for Mr. Hartman’s business. That, in the opinion of the Panel, amounts to bad faith registration and use.
The Panel again notes that had the Disputed Domain Name combined The JASON HARTMAN trademark with a manifestly derogatory term different considerations would have arisen and the result would not necessarily have been the same.
Finally the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Name, , be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: September 24, 2018
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