WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Adam Kent Hasiak v. Domains by Proxy, LLC and Christian Wragg
Case No. D2018-2597
1. The Parties
The Complainant is Adam Kent Hasiak of Boca Raton, Florida, United States of America (“U.S.”), represented by AXS Law Group, PLLC, U.S.
The Respondents are Domains by Proxy, LLC of Scottsdale, Arizona, U.S. and Christian Wragg of Boca Raton, Florida, U.S., self-represented.
2. The Domain Names and Registrar
The disputed domain names <adamhasiak.com>, <adamhasiakjets.com>, <adamkhasiak.com> and <adamprivatejet.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 14, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Christian Wragg 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 the Respondent of the Complaint, and the proceedings commenced on November 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2018. The Center received an email communication from the Respondent on December 6, 2018. The Respondent did not submit a formal response. Accordingly, the Center notified the Parties that it will proceed to panel appointment on December 17, 2018.
The Center appointed Joseph Simone as the sole panelist in this matter on December 27, 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 Complainant, Adam Kent Hasiak, is an individual residing in Boca Raton, Florida. He is the sole founder and owner of his private travel company, Adam Private Jets (“the Company”). The Complainant states he has serviced customers in every state within the U.S. as well as Puerto Rico, India, United Kingdom, Spain, France, Portugal, Monaco, United Arab Emirates, Iraq, Maldives, Montenegro, Russian Federation, Canada, Mexico, British Virgin Islands, Jamaica, and French Polynesia. In connection with the marketing and operation of his Company, the Complainant uses his personal name as a mark, combined with the Company name and mark, ADAM PRIVATE JETS. The Complainant utilizes them on Twitter, Instagram and LinkedIn social media accounts, as well as a YouTube channel, to market the Company’s services. He is also the owner of the domain <adamprivatejets.com>, which uses and promotes the same.
The disputed domain names were registered on the following dates:
1) <adamhasiak.com>, registered on September 25, 2018
2) <adamkhasiak.com>, registered on September 26, 2018
3) <adamprivatejet.com>, registered on October 3, 2018
4) <adamhasiakjets.com>, registered on October 3, 2018
On October 8, 2018, shortly after the disputed domain names were registered, the Complainant sent a cease and desist letter to the Respondents, requesting a transfer or cancellation of the disputed domain names based on common law trademark rights. No response was received. The Complainant alleges that the disputed domain names originally all redirected to a pornographic website “www.allboners.com” and have since been redirected to several different websites including 1) a 9/11 Memorial Fund donation site; (2) “www.adamrecoverycenter.com”; (3) “www.usaaircraft.com”; (4) “www.adam.com”; and (5) “www.happygaytravel.com”. They currently redirect to the website “www.aitaf.org”, a page promoting Arts in the Armed Forces, an organization designed to bring “arts programming to active duty service members, veterans, military support staff and their families around the world free of charge”.
5. Parties’ Contentions
First, the Complainant contends that the disputed domain names are identical or confusingly similar to the marks ADAM HASIAK / ADAM K. HASIAK and ADAM PRIVATE JETS in which he has rights. The Complainant contends that his personal name is used as a mark, and that although unregistered, this mark has become a distinctive identifier associated with the Complainant and the travel services offered by his Company. He submits he has used his individual name in connection with marketing his Company and its services for profit over a period of almost nine years. The Complainant also contends that he has common law trademark rights in the mark ADAM PRIVATE JETS and its logo incorporating the same, which have been used alongside his individual name in marketing the Company’s services to the public worldwide. Marketing includes via Twitter, Instagram and LinkedIn social media accounts as well as a YouTube channel and the Complainant’s website “www.adamprivatejets.com”. As such, the disputed domain names <adamhasiak.com>, <adamhasiakjets.com>, <adamkhasiak.com> and <adamprivatejet.com> all incorporate the Complainant’s personal or Company name to which he has established rights in commerce.
Second, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names since none of the examples granting such rights in paragraph 4(c) of the Policy apply. To the contrary, the Respondent has tarnished the Complainant’s marks, which is evidenced by the “unseemly conduct as linking pornographic . . . images or information to an otherwise wholesome mark.” (Adam Anschel v. Domains By Proxy, LLC / Tzvi Milshtein, WIPO Case No. D2015-1570 (citing Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206)). The Respondent registered the disputed domain names containing the Complainant’s marks, and there is no apparent link to the Complainant’s own website or email. The Complainant contends that registration of the disputed domain names was part of a pattern of retaliatory conduct against the Complainant in order to damage his reputation and goodwill. Such cases should result in the Panel finding sufficient evidence that the Respondent lacks any rights or legitimate interests in the disputed domain names.
Third, the Complainant submits that the disputed domain names were registered and are being used in bad faith. He states that he and the Respondent Christian Wragg are former co-tenants of a commercial real estate property and that a dispute arose between them concerning a security deposit and ownership of a printer. In an effort to retaliate against the Complainant and put pressure on him to make a monetary payment, the Respondent registered the disputed domain names through a proxy service. The Complainant thereby contends that registration was done to extort money from the Complainant in consideration for transferring the disputed domain names and to prevent the Complainant from being able to reflect his rightful marks in any corresponding domain name.
Other supporting circumstances include that the disputed domain names are identical to the marks in question, they were registered after a dispute arose between the Parties and the content of the sites to which the disputed domain names direct included offensive, pornographic and irrelevant information that unwittingly misled consumers and interfered with the Complainant’s business. The latter includes redirecting to the website of a competitor, USA Aircraft Brokers, Inc at “www.usaaircraft.com”, and to a 9/11 memorial site, which has an offensive connotation by directing consumers looking for the plane company to a site dedicated to a memorial for victims of the worst terrorist attack on U.S. soil, involving planes as weapons. The Respondent did not respond to the cease and desist letter, and instead engaged in a pattern of conduct continuously changing the sites to which the disputed domain names direct.
On December 6, 2018, the Respondent, Christian Wragg, sent an informal email to the Center stating he had no interest in maintaining the disputed domain names going forward and requested to “consent to remedy”. Since this requires the Complainant to suspend proceedings which it did not, the matter proceeded to panel appointment. The Respondent did not submit a formal response to the Complainant’s contentions.
6. Discussion and Findings
6.1 Respondent’s Informal Consent to Transfer
In this case, the Respondent informally consented to transfer the disputed domain names. No suspension request was received by the due date and the representative for the Complainant later confirmed they would not be filing a request for suspension. In such circumstances, the Panel has the discretion to order the requested remedy solely on the basis of such consent (section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In some cases, however, the Panel may find it appropriate to proceed to a substantive decision on the merits, including where (i) the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights and where (ii) the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision (section 4.10 of WIPO Overview 3.0). Given that the Complainant in this case relies on common law trademark rights, in order to establish them and in case the Complainant wishes to have a recorded decision on the matter, the Panel will proceed to a substantive decision on the merits. The Panel also notes that there may be a prior dispute between the Complainant and the Respondent, so the Complainant may not wish to accept the Respondent’s consent.
6.2 Substantive Issues
A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
In the absence of registered trademarks, a complainant must establish common law trademark rights by showing that its marks have become a distinctive identifier which consumers associate with its services (section 1.3 of WIPO Overview 3.0). Relevant evidence demonstrating acquired distinctiveness includes (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys (section 1.3 of WIPO Overview 3.0). With regard to personal names, a complainant may be able to establish unregistered or common law rights in that name where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services (section 1.5 of WIPO Overview 3.0).
The Complainant submitted evidence showing his personal name “Adam Hasiak” / “Adam K. Hasiak” and company name “Adam Private Jets” used in conjunction with the promotion of private airline services including:
- marketing materials for ADAMPRIVATEJETS including the words “Adam Hasiak”, “#JETwithADAM” and “Follow Adam on Social Media” with icons linking to LinkedIn, Twitter, Instagram and YouTube;
- a Twitter account for “Adam K. Hasiak @AdamPrivateJETS” with promotional tweets containing an ADAMPRIVATEJETS stylized mark and an “A logo”, including a photo of a public billboard featuring an individual identifiable as Adam Hasiak, a plane and the stylized word mark and logo;
- an Instagram account for “adamprivatejets” containing a brief bio of Adam K. Hasiak. An online visit to the Instagram page shows photos advertising the private air charter with the stylized mark ADAMPRIVATEJETS and “A logo”, including a plane decorated with the stylized word mark;
- a LinkedIn account for “Adam K. Hasiak (AdamPrivateJETS)” containing a description of the company and its travel services;
- a YouTube channel for “AdamPrivateJETS” describing Adam as a “seasoned aviation consultant” and containing a video describing how to book the private jet services; and
- a website at the domain “www.adamprivatejets.com” promoting “Adam Hasiak (AdamPrivateJETS) 24/7 Private Air Charter”
The Panel notes that the Complainant’s company also appears to go by the name “Access Jet Group”. The Complainant’s LinkedIn account identifies him as Founder & CEO of “Access Jet Group” next to the “A logo” and provides a link to the website “www.accessjetgroup.com”. This website features a stylized mark for “Access Jet Group” and a “message from Founder Adam K. Hasiak” welcomes visitors to “Access Jet Group”. Comparatively, the website at “www.adamprivatejets.com” is minimal in terms of design and information. The WhoIs shows it was created on December 15, 2015, but according to the Wayback Machine, on August 5, 2018, it resolved to a page stating “website coming soon”. Therefore, it seems that the website at “www.adamprivatejets.com” relied on by the Complainant has only been in operation for a short time.
In any case, social media confirms that the names Adam Hasiak / Adam K. Hasiak, Adam Private Jets and corresponding logo were used to promote the Complainant’s services extensively and long before registration of the disputed domain names. On “Adam K. Hasiak”’s Twitter account, the Complainant has posted tweets since late 2017 and likely earlier, for ADAMPRIVATEJETS travel services, almost always using the stylized word mark for ADAM PRIVATE JETS, and in several cases also using the tag lines “@AdamPrivateJETS” and “#AdamHasiak”. The YouTube account contains 77 videos uploaded over the last year that advertise private jet travel services by “Adam Hasiak-(AdamPrivateJETS),” and the Instagram account contains photos advertising Adam Private Jets from as early as September 2018. The Panel accepts the Complainant’s contention that he has spent approximately USD 150,000 on advertising and has earned approximately USD 4 million in revenues in connection with his Company. It is clear that consumers of private jet services would associate “Adam Private Jets” with the travel services provided by Adam Hasiak, and likewise associate “Adam Hasiak” / “Adam K. Hasiak” with the travel services provided by Adam Private Jets or the Complainant himself. The fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (section 1.3 of WIPO Overview 3.0). Therefore, the Panel finds that for the purposes of this proceeding under the UDRP, the marks in question have become distinctive identifiers of the travel services provided by the Complainant, and are protected by common law trademark rights.
Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold test (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962) and the Top-Level Domain may be disregarded.
In this case, all of the disputed domain names <adamhasiak.com>, <adamhasiakjets.com>, <adamkhasiak.com> and <adamprivatejet.com> either incorporate the Complainant’s personal or Company name, in which he has established common law trademark rights. The addition of “jets” to the mark ADAM HASIAK in <adamhasiakjets.com> and the omission of an “s” from “Adam Private Jets” in <adamprivatejet.com> are insignificant and do not prevent a finding of confusing similarity.
Therefore, the disputed domain names are confusingly similar to the Complainant’s marks and the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name. The Complainant states that he and the Respondent are former co-tenants of a commercial real estate property, in connection with which a dispute arose. There is no indication that this prior relationship gave rise to an authorization for the Respondent to use the marks in the disputed domain names or otherwise. Online searches for Christian Wragg together with Adam Hasiak and Adam Private Jets suggest no connection between the Respondent and the marks, nor do they indicate the Respondent is commonly known by these names. The Panel accepts that the disputed domain names previously resolved to unrelated third-party websites, including a pornographic website, further suggesting the Respondent has no rights or legitimate interests in the disputed domain names, and that it is quite possible the Respondent registered the disputed domain names as part of a plan to seek retaliation following a dispute. The disputed domain names all currently resolve to another apparently unrelated page relating to “Arts in the Armed Forces”.
As the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests, the burden of production shifts to the Respondent (section 2.1 of WIPO Overview 3.0). The Respondent did not submit a formal response, but sent an informal email confirming he has no interest in maintaining the dispute domain names. Given the foregoing, the Panel finds the Respondent has never had any rights or legitimate interests in the disputed domain names.
The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
Under the third element of the Policy, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
In the absence of conflicting evidence, the Panel accepts the Complainant’s contention that the Complainant and the Respondent are former co-tenants of a commercial property and that a dispute arose between them in relation to this property. It is therefore likely that the Respondent had actual knowledge of the Complainant’s business, and in any case, given the pattern of registering four domain names relating to the Complainant, actual knowledge can be inferred. This creates a strong inference of bad faith (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051).
As the Respondent has no legitimate interest in the disputed domain names and has continually redirected them to different websites unrelated to the Complainant, the Panel believes the Respondent deliberately registered the disputed domain names for the purpose of disrupting the business of the Complainant and / or to prevent the true owner of the trademarks from reflecting them in a corresponding domain name. It is possible the Respondent also wished to extract money from the Complainant in exchange for transferal of the disputed domain names. This constitutes bad faith under paragraph 4(b) of the Policy.
The Respondent’s offer to consent to the transfer of the disputed domain names after being notified of the Complaint to the Center, does not alter this finding. The Respondent failed to respond to the cease and desist letter and has had ample opportunity to effect a transfer or cancellation of the disputed domain names.
Accordingly, the third requirement of the UDRP is satisfied.
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 <adamhasiak.com>, <adamhasiakjets.com>, <adamkhasiak.com> and <adamprivatejet.com> be transferred to the Complainant.
Date: January 11, 2019