Complainant is Pitchtime, Inc. of Irvine, California, United States of America (“United States”), internally represented.
Respondent is Constantine Zamiesov (a/k/a Kostiantyn Zamiesov, a/k/a Konstantine Zamiesov), Cruxlab, Inc., of Los Angeles, California, United States, self-represented.
The disputed domain names <pitchtime.co>, <pitchtime.com>, <pitchtime.info>, <pitchtime.me>, <pitchtime.net>, <pitchtime.org>, <pitchtimes.com>, <pitchtimes.net>, <pitchtimes.org>, and <pitchtime.xyz> are registered with Gandi SAS (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2019. On March 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 7, 2019, 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 March 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2019. The Response was filed with the Center on March 29, 2019. Complainant submitted a supplemental filing on April 1, 2019. Nothing further was received from Respondent.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on April 4, 2019. 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.
Complainant, Pitchtime, Inc., a company based in Irvine, California, United States, is in the business of developing and commercializing audio, video, and software applications for use over the Internet. Complainant was formerly known as Adgram, Inc. and formally changed its name to Pitchtime, Inc. on July 5, 2016. Complainant owns a United States trademark registration for the PITCHTIME mark (reg. no. 4936675) in connection with some of Complainant’s services. That registration issued on April 12, 2016, and claims a first use date in commerce of September 8, 2015.
Respondent, Constantin Zamiesov (a/k/a Kostiantyn Zamiesov a/k/a Konstantine Zamiesov), is an individual with an address in Los Angeles California, United States. Respondent Constantin Zamiesov owns a business using the name Cruxlab, Inc. Respondents Constantin Zamiesov and Cruxlab, Inc. are hereinafter collectively referred to as “Respondent.”
In or about April 2016, Complainant retained Respondent to prepare some software code for a product of Complainant. At that time, the disputed domain names had all been registered under the name of Complainant’s then Chief Executive Officer, Mr. R Chalawsky. In or about November 2017, Mr. Chalawsky separated from Complainant. In or about March 2018, the disputed domain names were transferred from Mr. Chalawsky to Respondent in order to allow Respondent to manage the disputed domain names and the hosting of Complainant’s associated website.
At some later point in 2018, the Parties’ relationship deteriorated. Complainant claimed that Respondent had failed to timely complete Complainant’s software code, and Respondent claimed that Complainant owed Respondent monies for work Respondent had done for Complainant and expended on the maintenance and hosting of Complainant’s website. The Parties could not resolve their dispute. Complainant demanded the transfer of the disputed domain names and Respondent apparently refused on the basis that Complainant had failed to pay Respondent for past monies owed.
Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, UDRP panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions, and, under paragraph 12 of the Rules, to request further statements or documents from either party. In exercising this discretion, many panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club, Ltd. v. John Adem, WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai, WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter.
In the instant case, and after reviewing the Complaint and Respondent’s Response, the Panel is willing to accept a declaration under penalty of perjury filed by Complainant’s former Chief Executive Officer Randall Chalawsky regarding his registration of the disputed domain names on Complainant’s behalf. As for the rest of Complainant’s supplemental filing, the Panel does not believe there are exceptional circumstances in this matter that warrant the acceptance of this supplemental filing. The Panel therefore declines to accept the remainder of Complainant’s Supplemental Filings and has disregarded such in reaching its decision.
Complainant maintains that it hired Respondent in April 2016 to prepare software code for a product that Complainant was developing. Complainant contends that in mid-2017 it became concerned that Respondent had charged Complainant for software coding work Respondent had not completed. Complainant alleges that by November 2017 Respondent had failed to complete the work it was doing for Complainant and had provided Complainant with software code that did not meet the specifications of Complainant. The Parties thereafter came to an arrangement in December 2017 for the completion of the work undertaken by Respondent. According to Complainant, the software coding work ultimately was not completed by Respondent and by September 2018 Respondent had abandoned the work to be done for Complainant. Thereafter, Complainant contends that Respondent claimed that it was owed USD 14,000, and that in February 2019 Respondent removed Complainant’s website from the Internet in an effort to compel Complainant to pay the disputed USD 14,000. Complainant further contends that Respondent refused to transfer the disputed domain names to Complainant unless Complainant paid the claimed USD 14,000 USD debt.
Complainant asserts that it is the legal owner of the disputed domain names, as these had been registered or acquired in 2015 by Complainant’s then Chief Executive Officer, Mr. R Chalawsky, for the benefit of Complainant. In November 2017, Mr. R. Chalawsky left the employment of Complainant. In January 2018, there were communications between Mr. Chalawsky, Complainant, and Respondent concerning the transfer of the disputed domain names from Mr. R. Chalawsky to Complainant with the help of Respondent. In March 2018, the disputed domain names were transferred to Respondent so that Respondent could manage the disputed domain names and the hosting of Complainant’s website for the benefit of Complainant.
Complainant argues that it owns all rights in the PITCHTIME mark by virtue of its use of the mark since September 2015 and its April 2016 United States trademark registration for PITCHTIME.
Complainant asserts that the disputed domain names are identical or confusingly similar to Complainant’s PITCHTIME mark as they each consist of the PITCHTIME mark in its entirety.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names as Respondent (i) has never been known under any of the disputed domain names, (ii) owns no rights in the PITCHTIME mark, and (iii) is not making a bona fide or legitimate use of the disputed domain names, as Respondent is merely holding the disputed domain names hostage in order to recover a disputed fee of USD 14,000.
Lastly, Complainant argues that the disputed domain names were registered and are being used in bad faith by Respondent as Respondent is holding the disputed domain names to extort USD 14,000 from Complainant. In addition, Complainant maintains that it is the owner of the disputed domain names and only transferred the disputed domain names to Respondent so that Respondent could maintain them and manage the hosting of Complainant’s website. In that regard, Complainant maintains that Respondent in February 2019 took affirmative steps to remove Complainant’s website from the Internet in order to compel Complainant to pay the claimed USD 14,000.
Respondent denies Complainant’s contentions. Respondent maintains that Complainant has no rights in the disputed domain names as (i) the disputed domain names were all registered by Complainant’s former Chief Executive Officer, Mr. R Chalawsky, prior to the date when Complainant obtained rights in the PITCHTIME mark, and (ii) the disputed domain names were thereafter held by Mr. Chalawsky until they were transferred to Respondent in March 2018. Respondent maintains that Mr. Chalawsky and not Complainant owned the disputed domain names before their transfer to Respondent.
Respondent maintains that it has paid approximately USD 1030 per month for the hosting of Complainant’s website and that Complainant has refused to reimburse Respondent for monies paid by Respondent for the maintenance and hosting of the website at the disputed domain names.
Respondent contends that the Parties’ dispute is not suitable for resolution through a UDRP proceeding as the dispute between the Parties concerns past work and the payment due to Respondent as a result of that past work. According to Respondent, communications between the Parties show that there is an ongoing dispute regarding the disputed domain names, the software available on the disputed domain names, and the monies owed to Respondent for the maintenance of the disputed domain names and the hosting of Complainant’s website. Respondent contends that there has been no bad faith on its part and that the only bad faith has been Complainant’s attempt to side-step its debt obligations and attempt to use the UDRP process as a vehicle to do so.
In a supplemental declaration filed by Complainant’s former Chief Executive Officer Mr. R. Chalawsky, Mr. Chalawsky declares that (i) he purchased the disputed domain names on behalf of Complainant during the course of his employment with Complainant, (ii) that the disputed domain names were paid for through Complainant’s credit card or bank account, (iii) he makes no claims to the disputed domain names, and (iv) all rights in the disputed domain names belong to Complainant.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns a trademark registration for the PITCHTIME mark in connection with its services. Respondent does not contest that Complainant has rights in the PITCHTIME mark.
With Complainant’s rights in the PITCHTIME mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding generic or country code Top-Level Domain extensions such as, by way of example, “.com”, “.net”, and “.co”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain names are identical or confusingly similar to Complainant’s PITCHTIME mark as they each incorproate the PITCHTIME mark in its entirety. Respondent does not contest otherwise. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s PITCHTIME mark and in showing that the disputed domain names are identical or confusingly similar to that trademark.
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence before the Panel shows Respondent only obtained the disputed domain names pursuant to an arrangement with Complainant and its former Chief Executive Officer for the purpose of maintaining the disputed domain names and Complainant’s website for the benefit of Complainant. At all relevant times thereafter, the evidence before the Panel shows that the disputed domain names were used by Respondent in connection with that purpose. Respondent has provided no evidence to the contrary and has, in fact, admitted that his only purpose for holding the disputed domain names, which Respondent implicitly recognizes are owned by Complainant, is for the purpose of resolving a debt he claims he is owed by Complainant for work Respondent performed in the past. In essence, Respondent is holding the disputed domain names hostage. Whatever the dispute Respondent might have with Complainant does not entitle Respondent to hold Complainant’s property as ransom in order to secure the payment of an alleged debt. To the extent Respondent has a legitimate claim against Complainant for an alleged debt, such belongs in a different forum. Simply put, Respondent’s use of the disputed domain names to secure the payment of an alleged debt does not support a finding that Respondent has rights or legitimate interests in the disputed domain names. See, e.g., Athena Infonomics India Private Limited v. Registration Private, Domains By Proxy, LLC / Renji Mathew, WIPO Case No. D2017-1779.
As Complainant has established with sufficient evidence that it owns rights in the PITCHTIME mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
In view of Respondent’s actions as noted above, it is not difficult for the Panel to infer that Respondent’s refusal to transfer the disputed domain names which consists of Complainant’s PITCHTIME mark to secure payment of an alleged debt is being done opportunistically and in bad faith. The remaining question is whether the conjunctive requirement of bad faith registration has been established by Complainant as to the disputed domain names.
There is no dispute between the Parties that the disputed domain names were transferred from Complainant’s former Chief Executive Officer to Respondent in March 2018 pursuant to an arrangement that had been reached with Respondent. The issue then is whether Respondent registered the disputed domain names in bad faith at that time when such were voluntarily transferred to Respondent’s control. On its face, such a voluntary transfer would suggest that there was no bad faith registration of the disputed domain names by Respondent to take advantage of Complainant’s rights in the PITCHTIME mark. However, the issue is more complicated here.
Prior to the date when Complainant started working with Respondent in April 2016, all of the disputed domain names had already been registered or acquired by Complainant’s former Chief Executive Officer, Mr. R. Chalawsky. These registration and acquisitions had been done on behalf of Complainant and according to a sworn declaration submitted by Mr. Chalawsky, which is not contested by Respondent, the disputed domain names belonged to Complainant at all relevant times.
In or around November 2017, Mr. Chalawsky was no longer employed by Complainant. Complainant and Mr. Chalawsky appear to have worked out a separation arrangement and in January 2018 there were multiple communications between Mr. Chalawsky and an in-house attorney for Complainant about various next steps including the transfer of the disputed domain names from Mr. Chalawsky to Complainant. There were also some communications regarding a potential arrangement between Complainant and Respondent whereby Respondent would act as an interim CTO for Complainant. Respondent was copied on most of these communications.
From the evidence submitted, it appears that Mr. Chalawsky had an account with GoDaddy, which at that time was the registrar of record for the disputed domain names. Complainant did not have an account with GoDaddy or any other registrar and relied on Respondent to assist in moving the disputed domain names from Mr. Chalawsky to Complainant. Respondent assisted in effectuating the transfers, but instead of placing the disputed domain names in an account owned by Complainant, Respondent moved all of the disputed domain names to a new registrar, Gandi SAS, and registered the disputed domain names under Respondent’s business name Cruxlab, Inc. What is clear, and is not contested by Respondent, is that there was never any intent to transfer legal title to the disputed domain names from Mr. Chalawsky or Complainant to Respondent.
It is also noteworthy that there may have been issues in 2017 regarding the work that Respondent was doing for Complainant. While the parties have not provided much information or evidence in that regard, from what is before the Panel it appears that in or about December 2017, the Parties were discussing an arrangement to resolve these issues and for Respondent to continue providing services to Complainant. In that context, it appears more likely than not that in March 2018 Respondent acted in bad faith in order to gain an advantage by registering the disputed domain names under Respondent’s name with a new registrar based in another country. Put another way, the preponderance of the evidence before the Panel shows that the intent was likely to transfer the disputed domain names to a company account for Complainant that Respondent would manage, and not to transfer legal title to the disputed domain names to Respondent. Instead, Respondent took advantage of the situation in bad faith, and transferred and registered the disputed domain names under his own name in order to control the ultimate disposition of the disputed domain names for his own benefit.
Respondent’s actions thereafter, further confirm Respondent’s bad faith registration. Just a few months after Respondent registered the disputed domain names in his own name, Respondent used the disputed domain names as a lever to secure payment from Complainant of monies allegedly owed. Respondent took down Complainant’s website for a short period of time and refused to transfer the disputed domain names to Complainant unless Complainant paid Respondent monies allegedly owed. Given that Respondent is a software developer and is in involved in the hosting of websites, these actions suggest that at the time Respondent transferred and placed the disputed domain names under his own name he was well aware that this would provide him with a powerful lever in the event of a dispute with Complainant (a lever that Respondent ultimately used in his dispute with Complainant).
Accordingly, the Panel finds that Respondent has registered and used the disputed domain names in bad faith and that Complainant succeeds under this element of the Policy.
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 <pitchtime.co>, <pitchtime.com>, <pitchtime.info>, <pitchtime.me>, <pitchtime.net>, <pitchtime.org>, <pitchtimes.com>, <pitchtimes.net>, <pitchtimes.org>, and <pitchtime.xyz> be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: April 25, 2019