WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Uptown Entertainment, Inc. v. Steven Kiryakoza
Case No. D2002-0065
1. The Parties
The Complainant is Uptown Entertainment, Inc. with its corporate offices located at 2211 Woodward Avenue, Detroit, Michigan, 48201, U.S.A. Complainant is represented by Mr. David R. Haarz, Dickinson Wright PLLC, 1901 "L" Street, N.W., Suite 800, Washington, D.C. 20036-3506, U.S.A.
The Respondent is Steven Kiryakoza, of Cheap Accessories, Inc., 2430 Franklin Rd., Bloomfield Hills, Michigan, 48302, U.S.A. The Respondent is unrepresented and has taken no action in this proceeding.
2. The Domain Name and Registrar
The domain name at issue is <uptownpalladium.com>, registered with Go Daddy Software, 14455 North Hayden Road, Suite 219, Scottsdale, Arizona 85260, U.S.A.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a Panelist in this proceeding.
4. Procedural History
The essential procedural history of the administrative proceeding is as follows:
On January 23, 2002, a Complaint was received electronically by the WIPO Arbitration and Mediation Center ("the Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Uniform Domain Name Dispute Resolution Policy implemented by ICANN ("the Rules"). A hardcopy of Complaint was received by the Center on January 25, 2002. The Complainant elected to have the dispute decided by a single member Administrative Panel.
The Center sent a Request for Registrar Verification to Go Daddy Software on January 28, 2002. Go Daddy Software responded on January 29, 2002, and confirmed: (1) that it was in receipt of the copy of the Complaint; (2) that it was the Registrar for the disputed domain name; (3) that the Respondent, Steven Kiryakoza, was the current Registrant of the contested domain name; (4) that the Respondentís contact details as set out above were correct; (5) that the Policy applied to the contested domain name; (6) the domain name was placed on Registrar Lock; (7) English is the language of the registration agreement; and (8) the domain name registrant submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name.
On January 30, 2002, the Center completed its formal filing compliance requirements checklist. On January 30, 2002, the Center transmitted notification of the Complaint and initiation of the proceeding to the Respondent via e-mail, facsimile and Federal Express. This document represented January 30, 2002, as the commencement of this administrative proceeding (Rules for Uniform Domain Name Dispute Resolution Policy, para. 4(c)). Respondent did not file a response to the Complaint.
The Center sent a Notification of Respondent Default to the Respondent on February 21, 2002. On February 28, 2002, the Center sent out a Notification of Appointment of Administrative Panel to all parties, giving a Projected Decision Date of March 14, 2002.
5. Relief Sought
The Complainant requests that the domain name <uptownpalladium.com> be transferred from the Respondent to the Complainant.
6. Factual Background
Activities of the Complainant
The Complainant is Uptown Entertainment, Inc., a Michigan corporation that operates an entertainment and movie theater complex located in Birmingham, Michigan, called UPTOWN PALLADIUM. The UPTOWN PALLADIUM opened in November, 2001, and has received press coverage in various newspapers in Michigan. The grand opening of the UPTOWN PALLADIUM featured the film, "Harry Potter and the Sorcererís Stone" which Complainant asserts generated considerable interest and notoriety for the UPTOWN PALLADIUM. Since its opening, the UPTOWN PALLADIUM has entertained more than 50,000 patrons. Copies of website articles about the theater were attached to the Complaint.
The Complainantís Trademark
Complainant asserts that it is the owner of the common law (unregistered) service mark of UPTOWN PALLADIUM, which has been in commercial use continually since November, 2001.
The Respondent failed to file a Response to the Complainantís Complaint.
7. The Partiesí Contentions
The Complainant contends that the disputed domain name registered by <uptownpalladium.com> is a total appropriation of Uptown Entertainment, Inc.ís service mark and such domain name is virtually identical to the UPTOWN PALLADIUM mark, visually, phonetically and connotatively to which confusion is likely.
In addition, Complainant contends that Steven Kiryakoza has no rights or legitimate interest in the domain name as he has no rights in the term UPTOWN PALLADIUM nor does he appear to have rights in any similar marks. Complainant asserts that Respondent is engaged in businesses which have not used UPTOWN PALLADIUM or any similar mark, and which have no relation to the entertainment business. Complainant further asserts that the website at <uptownnpalladium.com> was initially devoted to a diatribe against Complainantís UPTOWN PALLADIUM.
On December 3, 2001, counsel for Uptown Entertainment, Inc. sent a letter to Respondent offering to purchase the <uptownpalladium.com> domain name for Respondentís out-of-pocket expenses. Respondent refused to accept delivery of that letter. A copy of the letter was attached to the Complaint.
Shortly thereafter, Respondent altered the web page by removing reference to the UPTOWN PALLADIUM and now it is a commercial link to a telecommunications site that appears to be operated by Respondent. Thus, Complainant concludes that it is clear that Respondent has not used the <uptownpalladium.com> domain name, nor shown any demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Complainant has not licensed or otherwise permitted Respondent to use any of its marks or to apply for any domain name incorporating any of its marks and Respondent has not made any legitimate noncommercial or fair use of the mark.
Further, Complainant contends that the domain name was registered and is being used in bad faith. Respondent was aware of Complainantís mark, as he had visited the UPTOWN PALLADIUM complex. Respondent usurped Complainantís rights and registered the <uptownpalladium.com> domain name intentionally to attempt to attract Internet users to the website for financial gain by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location of a product or service on the Respondentís website or location. Complainant argues that there is nothing in the domain name to indicate that the site is anything but the "official" UPTOWN PALLADIUM site they are looking for when they seek information about the entertainment and movie theater complex. Respondent has diverted Internet traffic to his own site, thereby depriving Uptown Entertainment, Inc. of visits by Internet users.
Finally, Complainant contends that merely because Respondentís claimed purpose for establishing his site was to criticize the Uptown Palladium, that fact, even if true, should not insulate Respondent because use of the trademark in a domain name for a vehicle to engage in criticism constitutes bad faith. Currently, his use of Complainantís mark UPTOWN PALLADIUM is used as a mechanism to divert Internet users to his <cheapaccessories.com> website, which is evidence of Respondentís bad faith.
The Respondent has not made any submissions. Since the Respondent has made no response or rebuttal of Plaintiffís contentions, and the Panelist knows of no extraneous evidence or other reasoning that might bias a belief of error therein, the Panelist accepts those contentions by default.
8. Discussion and Findings
Paragraph 4(a) of the Policy instituted three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondentís "domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and"
(ii) Respondent has "no rights or legitimate interests in respect of the domain name; and"
(iii) Respondentís "domain name has been registered and is being used in bad faith."
Each of these three elements must be proved by a Complainant to obtain relief. Paragraphs 4(b) and 4(c) of the Policy provide further nonexclusive criteria for determining whether the Registrant has engaged in abusive domain name registration with respect to subparagraphs 4(a)(ii) and 4(a)(iii).
A. Identity of Respondentís Domain Name and Complainantís Trademarks
According to the undisputed evidence of the Complainant, it has had ownership rights in the common law mark, UPTOWN PALLADIUM since November, 2001. The Panelist finds that the Complainant owns the common law mark and has rights in and duties concerning the mark UPTOWN PALLADIUM.
Failure of Complainant to police its common law mark would have the effect of debilitating its mark and its rights in the future to register its mark.
The Panelist furthermore finds that the disputed domain name, <uptownpalladium.com> is identical to the UPTOWN PALLADIUM mark in which the Complainant has rights.
The Complainant has therefore satisfied the conditions for the first element to be successful.
B. Absence of Rights or Legitimate Interests of the Respondent in the Domain Name
The Panelist considers the nonexclusive list of factors found in Paragraph 4(c) of the Policy to determine whether the Respondent has rights or legitimate interests in the disputed domain name. The Panelist finds that the Respondent has no rights or legitimate interests in the domain name.
Respondent did not, as of the time of registration show any use of, or demonstrable preparations to use the domain name in connection with the bona fide offering of goods and services. Nor has the Respondent shown that it has been commonly known by the domain name.
The Respondent has failed to show any evidence of harassment by the Complainant or rights or legitimate interests in the disputed domain name to warrant a finding of reverse domain name hijacking. To establish reverse domain name hijacking "the respondent must show knowledge on the part of the complainant of the respondentís right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in face of such knowledge." See Sydney Opera House Trust v. Trilynx Pty Limited, WIPO Case No. D2000-1224 (October 31, 2000). Respondent has not shown that a legal right has matured in him nor that Complainant recognized or was aware of any right of Respondent in the UPTOWN PALLADIUM mark.
The Panelist finds that the Respondent has no rights or legitimate interests in respect of the domain name and that the conditions for the second element have been satisfied.
C. Registration and Use of the Domain Name in Bad Faith
The Panelist considers the nonexclusive list of factors found in Paragraph 4(b) of the Policy to determine whether the Respondent registered and used the disputed domain names in bad faith.
The Panelist finds there is no logical explanation for the choice of "uptownpalladium" as a domain name, except to pretend a false association with Complainant, of some activity or persons NOT affiliated with Complainant, using the domain name as its tool to deceive members of the public with the common law mark UPTOWN PALLADIUM of the Complainant.
The evidence offered by the Complainant from the WhoIs database listing for <uptownpalladium.com> states the domain name is owned by the "Steven Kiryakoza at Cheap Accessories, Inc.," with an administrative billing contact as <firstname.lastname@example.org>. The Respondentís email address used for the registration of <uptownpalladium.com> is also <email@example.com>. According to the undisputed evidence, Respondent initially established the website to be a diatribe against Complainantís UPTOWN PALLADIUM theaters. Thereafter, Respondent removed the references to Complainantís UPTOWN PALLADIUM and is using the mark as purely a commercial link to a telecommunications site that is apparently operated by Respondent.
The Panel can not discern a legitimate reason for Respondent to register and use this domain name when it knew that Complainant was operating a successful theater business known as "UPTOWN PALLADIUM." The Panelist can not reasonably conclude that the Respondent had a good faith intent when it registered and began using the domain name. This conclusion is further bolstered by the fact that Respondent has not provided any persuasive evidence that it used the term to identify itself in a descriptive sense in its advertising or on the website found at the domain name.
The Panelist concludes that the domain name in dispute has been registered and is being used in bad faith.
The conditions for the third element are therefore satisfied.
As a result, the Panelist has found that the domain name registered by the Respondent is confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith. The Complainantís cause is just and proper; the Respondent has not rebutted it.
Accordingly, the Panelist directs the registration of the domain name <uptownpalladium.com> to be transferred by Respondent to the Complainant.
Dated: March 14, 2002