New York City Ballet, Inc. v. Tucker Brown
Claim Number: FA0806001210744
Complainant is New York City Ballet, Inc. (“Complainant”), represented by Stephen
J. Jeffries, of Holland & Knight LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nycballet.net>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 20, 2008.
On June 19, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <nycballet.net> domain name is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 14, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
On July 11, 2008, the National Arbitration Forum granted Respondent’s July 10, 2008 Request for Extension of Time to Respond to Complaint Without Complainant’s Consent, thereby setting a deadline of August 4, 2008 by which Respondent could file a Response to the Complaint.
A timely Response was received in electronic format only, and not in hard copy on August 4, 2008. A hard copy was received on August 5, 2008, however, in that the hard copy was received late, the Response is considered deficient under ICANN Rule 5. However, the Panel, in its discretion, will consider the Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where Respondent submitted a timely Response electronically, but failed to submit a hard copy of the Response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Complainant submitted an Additional Submission on August 11, 2008 that was considered timely and complete pursuant to Supplemental Rule 7.
On August 14, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The domain name <nycballet.net> is confusingly similar to Complainant's trademark and service mark NEW YORK CITY BALLET.
Complainant's registration for Complainant's NEW YORK CITY BALLET trademark and service mark on the Principal Register of the United States Patent and Trademark Office issued well prior to the date upon which the <nycballet.net> domain name was registered.
The <nycballet.net> domain name consists of a common and obvious abbreviation of Complainant’s mark and the generic top-level domain “.net.”
Respondent has no rights or legitimate interests in respect of the
domain name that is the subject of the Complaint. Complainant
has not authorized Respondent to register or use the domain name <nycballet.net>, and there is no connection between Complainant and
Respondent. Respondent is not commonly known by the
domain name <nycballet.net>. Respondent
is identified as Tucker Brown, having an address located in the
Respondent has registered and used the domain name in bad faith. Complainant's NEW YORK CITY BALLET trademark and service mark was well-known and famous long prior to the date upon which Respondent registered and used the confusingly similar domain name incorporating the mark. By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Respondent does not contest that Complainant owns trademark rights in the mark NEW YORK CITY BALLET in connection with ballet performances and certain related goods and services. It is notable, however, that the only federal registration owned by Complainant, namely U.S. Trademark Registration No. 1,721,862, disclaims any rights in the term “ballet” except as part of the full mark.
There is no evidence of record that Complainant owns any trademark rights in the phrase “NYC ballet.” Moreover, Complainant does not allege that it uses “NYC ballet” as a trademark. On the contrary, Complainant alleges that third-party news reports sometimes abbreviate Complainant’s proper name into the form “NYC Ballet.” Complainant does not allege that this use is made with its authorization, and as such, the third-party use cannot give rise to protectable rights for Complainant.
Complainant asserts that it owns domain names that include <nycballet.com> and <nycballet.org>, but it does not allege that its ownership of those domain names or its use of them has given rise to trademark rights.
Respondent does not claim to own any trademark rights in “NYC ballet.” Indeed, Respondent does not make any trademark use at all of the phrase “NYC ballet.” Respondent merely owns the domain name <nycballet.net> as a generic identifier for a website that provides information related to ballet in his city. As such, Respondent has a legitimate interest in using the generic terms “NYC” and “ballet” to fairly identify the informational content of his website.
Complainant selected a very weak
trademark. It combined the place name of
its location (
There is no evidence of record that Respondent has registered or used the domain name in bad faith.
Respondent registered the domain
name because it was of personal interest to him and his family. Respondent’s wife and his daughter are each
ballet students. Respondent lives in
Respondent did not know at that time he registered <nycballet.net> that Complainant used the domain name <nycballet.com> or claimed any rights that might relate to <nycballet.net>. Respondent was certainly aware of the New York City Ballet, but he had not seen or heard it referred to as the NYC Ballet.
Respondent is aware of no instances of misdirected Internet traffic or consumer confusion related to <nycballet.net>.
Respondent used the domain name to provide information related to ballet.
The web pages submitted by
Complainant as showing Respondent’s website are not pages placed by
Respondent. Rather, they are pages
placed by Respondent’s domain name registrar, GoDaddy, which took down
Respondent’s actual web pages after receipt of the Complaint. Respondent’s actual website included such
information as hyperlinks to ballet schools in
Respondent is making a fair use of the domain name. The words that comprise the domain name are generic, and the Registrant is using the domain name to point to a site focused on the subject matter identified by those generic terms.
Respondent has not sought to divert consumers away from Complainant’s website. There is no indication in this case that Respondent’s registration has disrupted Complainant’s business in any way.
Respondent’s website contained no scandalous or objectionable content that might harm Complainant’s reputation.
Respondent has not offered to transfer, sell, or otherwise assign the domain name to Complainant or to any third party.
Respondent has not engaged in a pattern of conduct involving improper trafficking in domain names or holding domain names rightfully belonging to others.
Respondent provided accurate contact information at the time he registered his domain name, but some of the information has become out of date. He will update it as soon as he regains access to his domain name. Importantly, his actual name and his e-mail address were at all times correct. Respondent has made no attempt to conceal or obscure his identity.
Respondent’s website did have ad content to generate revenue, as do many websites. That fact alone, though, does not suggest any improper actions or intentions.
Complainant has come before the Panel with unclean hands. Complainant, through its General Manager, sent multiple demands to Network Solutions in an apparent effort to cause the improper transfer of the domain name. It is submitted that this sort deceptive “self help” is inconsistent with a good faith undertaking to resolve this matter.
C. Additional Submissions
Complainant contends that Respondent has conceded that Complainant has rights in the trademark NEW YORK CITY BALLET; and has failed to dispute the substance of Complainant's allegation that the domain name <nycballet.net> is confusingly similar to Complainant's NEW YORK CITY BALLET trademark and service mark.
There is no evidence that Respondent has made use of the domain name "to provide information related to ballet" but for Respondent's own declaratory statement. Respondent has asserted that Respondent is unable to provide documentary evidence of Respondent's use of the domain name "to provide information related to ballet" because domain name registrar GoDaddy "took down the Respondent's actual web pages after receipt of the Complaint." However, this statement is patently false. The evidence demonstrates that the website associated with the domain name was occupied entirely by commercial advertising links well prior to the filing of the Complaint, and the site content remains essentially unchanged to date. Respondent's declaratory statement to the effect that Respondent is making legitimate non-commercial or fair use of the domain name "to provide information related to ballet" is neither credible nor sufficient to establish rights or legitimate interests.
In responding to the Complaint, Respondent has conceded that Respondent was aware of Complainant's NEW YORK CITY BALLET trademark and service mark prior to purchasing the domain name <nycballet.net>. Respondent has failed to dispute in any meaningful way the substance of Complainant's allegations that Respondent has registered and used the domain name in bad faith.
Respondent has asserted that an absence of bad faith may be deduced from Respondent's purported lack of effort to "conceal or obscure" Respondent's identity as the domain name registrant. Noting that Respondent employed the registrant identity cloaking service provided by Domains by Proxy, Inc. to register and use the domain name, this assertion and Respondent's supporting declaratory statement are without truth or merit.
Complainant, a donor supported not-for-profit corporation organized under the laws of the State of New York, is the owner of the mark NEW YORK CITY BALLET for entertainment services in the nature of ballet performances, education and outreach activities and programs in the field of ballet, including an affiliated ballet school, docent and other volunteer programs in the field of ballet, licensed dancewear, souvenir clothing and gift items, and printed materials such as ballet related books, posters, calendars and souvenir programs.
Complainant is the owner of Registration No. 1,721,862, issued by the United States Patent and Trademark Office on October 6, 1992, for the mark NEW YORK CITY BALLET, for goods and services identified as "paper goods, namely, bookmarks, post cards, stationary, calendars, brochures, flyers, posters, souvenir programs, and books having ballet as the subject matter" in International Class 16, "clothing, namely, children and adult sized t-shirts, sweatshirts, and caps, infant and children-sized suits, adult-sized tank tops, robes, gloves, and socks" in International Class 25 and "entertainment services in the nature of ballet performances" in International Class 41.
York City Ballet has been described as "one of the foremost American dance
companies" of the twentieth century.
Complainant owns and uses the domain names <nycballet.com>, <nycballet.org>, <newyorkcityballet.com>, <newyorkcityballet.org> and <newyorkcityballet.net>.
Respondent registered the domain name <nycballet.net> on August 21, 2006.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts its rights in the NEW YORK CITY BALLET mark (Reg. No.
1,721,862 issued October 6, 1992), which was registered with the United States
Patent and Trademark Office (“USPTO”).
The Panel finds that Complainant has sufficient rights in the mark
through its registration with the USPTO under Policy ¶ 4(a)(i).
Complainant alleges that the disputed <nycballet.net> domain name is
confusingly similar to Complainant’s NEW YORK CITY BALLET mark in that “new
york city” is reduced to its common acronym “nyc,” and that a generic top-level
domain (“gTLD”) “.net” is added.
Previous panels have found that the addition of a gTLD is irrelevant
since every domain name requires a top-level domain. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,”
or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis). Moreover, previous panels have found that
abbreviations of marks, including abbreviations of the geographical component
of the mark, do not differentiate a disputed domain name from a mark.
Respondent contends that the <nycballet.net> domain name is comprised of common, descriptive terms—in that “ballet” is a common word, and that “new york city” merely represents the geographic locale—and as such cannot be found to be confusingly similar to Complainant’s mark. However, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has not
obtained license or permission from Complainant to use its mark or any
variation thereof. Moreover, Complainant
argues that Respondent is not commonly known by the disputed domain name, and
that the WHOIS information lists Respondent as “Tucker Brown.” Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb.
Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also
Complainant asserts that the disputed domain
name resolves to a website that features third-party links unrelated to
Complainant or Complainant’s activities.
Complainant argues that Respondent receives “click-through” fees in
return for displaying these advertisements.
While Respondent alleged that it has made use of the disputed domain
name to provide information related to ballet, Complainant argues in its
Additional Submission that there is no evidentiary support for Respondent’s
statement other than Respondent’s own allegation. The Panel finds that Respondent has not made any actual use or demonstrable
preparations to use the disputed domain name in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum
June 11, 2006) (finding that the respondent’s use of a domain name to redirect
Internet users to websites unrelated to a complainant’s mark is not a bona
fide use under Policy ¶ 4(c)(i)); see
also Constellation Wines
While Respondent argues that it did not establish the parked web page corresponding to the disputed domain name, and that the registrar committed such action, the Panel finds that Respondent bears the responsibility for the content on the website regardless of intent, and that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”); see also Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant also asserts that
Respondent had actual and/or constructive notice given its trademark
registration and long-standing business operations over several decades. Respondent has acknowledged that it was aware
of Complainant when it registered the disputed domain name. Therefore, the Panel finds that Respondent
has engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v.
The Panel finds that Respondent does bear the responsibility over the corresponding website’s content, and that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See XM Satellite Radio Inc. v. Kennedy, FA 796199 (Nat. Arb. Forum Nov. 7, 2006) (“While Respondent undoubtedly parked the domain names with GoDaddy, he is responsible for the content he allows GoDaddy to put on his domains. Respondent could have equally well set up his own ‘parked’ page without any inappropriate content.”); see also Express Scripts, Inc. v Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (“The Respondent contends that the advertisements in this case were ‘generated by the parking company’. The implication is that the Respondent was not responsible for the content of these advertisements. This may well be correct but in the panel’s view this makes no difference. The Respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the complainant’s name.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nycballet.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Dated: August 27, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum