national arbitration forum
DECISION
Boston Opera House Ventures, L.L.C. v. Cybertrage, Inc. and Chris Viron
Claim Number: FA1103001376174
PARTIES
Complainant
is
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <boston-opera-house.org>,
registered with Godaddy.com, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Honorable
Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
4, 2011; the National Arbitration Forum received payment on March 4, 2011.
On
March 7, 2011, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the
<boston-opera-house.org> domain name is registered with Godaddy.com,
Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that
Respondent is bound by the Godaddy.com, Inc. registration agreement and has
thereby agreed to resolve domain disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
March 14, 2011, the Forum served the Complaint and all Annexes, including a
Written Notice of the Complaint, setting a deadline of April 4, 2011 by which
Respondent could file a Response to the Complaint, via e-mail to all entities
and persons listed on Respondent’s registration as technical, administrative,
and billing contacts, and to postmaster@boston-opera-house.org. Also on March 14, 2011, the Written Notice of
the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent via post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
April 7, 2011, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Honorable Paul
A. Dorf (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent" through
submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Therefore, the Panel may issue its decision based on the documents submitted
and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration
Forum's Supplemental Rules and any rules and principles of law that the Panel
deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent
to Complainant.
PARTIES'
CONTENTIONS
A. Complainant makes the following assertions:
1.
Respondent’s <boston-opera-house.org> domain
name is identical to Complainant’s BOSTON OPERA HOUSE mark.
2.
Respondent
does not have any rights or legitimate interests in the <boston-opera-house.org>
domain name.
3.
Respondent
registered and used the
<boston-opera-house.org> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant,
Boston Opera House Ventures, L.L.C., operates a music and theatre venue. Complainant conducts its business under the
BOSTON OPERA HOUSE mark which is registered with the United States Patent and
Trademark Office (“USPTO”) (e.g.,
Reg. No. 3,849,593; filed October 15, 2009; issued September 21, 2010).
Respondent
registered <boston-opera-house.org>
domain name on August 4, 2010. The
disputed domain name resolves to a website that is used to advertise and sell
tickets for upcoming events at Complainant’s entertainment venue.
DISCUSSION
Paragraph
15(a) of 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."
In
view of Respondent's failure to submit a response, the Panel shall decide this administrative
proceeding on the basis of Complainant's undisputed representations pursuant to
paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it
considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all
reasonable allegations and inferences set forth in the Complaint as true unless
the evidence is clearly contradictory. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum
Paragraph
4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service
mark in which Complainant has rights; and
(2) 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.
Identical
and/or Confusingly Similar
Complainant
asserts rights in the BOSTON OPERA HOUSE mark through its registration of the
mark with the USPTO (e.g., Reg. No.
3,849,593; filed October 15, 2009; issued September 21, 2010). The Panel finds that registration of a mark
with the USPTO establishes rights in the mark under the Policy. Furthermore, the Panel concludes that
Complainant has rights in the mark dating back to the filing date of the
trademark, October 15, 2009. See Microsoft
Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17,
2006) (“Complainant has established rights in the MICROSOFT mark through
registration of the mark with the USPTO.”); see
also Hershey Co. v. Reaves,
FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights
in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the
trademark application and predate [the] respondent’s registration”).
Complainant argues that Respondent’s <boston-opera-house.org>
domain
name is identical to the BOSTON OPERA HOUSE mark. The disputed domain name includes
Complainant’s entire mark with Respondent merely adding hyphens to replace the
spaces between the terms in the mark.
Furthermore, Respondent affixed the generic top-level domain (“gTLD”)
“.org” to Complainant’s mark. The Panel
finds that replacing spaces with hyphens and adding a gTLD are not actions that
result in a unique domain name.
Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds Respondent’s
domain name to be identical to Complainant’s mark. See
Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding
“that the use or absence of punctuation marks, such as hyphens, does not alter
the fact that a name is identical to a mark"); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat.
Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of
a mark still rendered the <gwbakeries.mobi> domain name identical to the
complainant’s GW BAKERIES mark); see also
Sea World, Inc. v. JMXTRADE.com, FA
872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely
a functional element required of every domain name, the <shamu.org>
domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).
The
Panel finds Policy ¶ 4(a)(i) has been established.
Rights or
Legitimate Interests
Complainant
possesses the initial burden of making a prima
facie showing in support of its allegation that Respondent lacks rights or
legitimate interests in the disputed domain name. Once Complainant has satisfied its burden,
Respondent acquires the burden in order to prove rights or legitimate interests
in the domain name. The Panel finds that
Complainant has met its burden and because Respondent failed to respond to
these proceedings, the Panel may assume it lacks rights or legitimate interests
in the domain name pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA
1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertions in this regard.”).
However, the Panel will continue to examine the record under Policy ¶
4(c), to determine whether Respondent has any rights or legitimate interests in
the <boston-opera-house.org> domain
name.
Complainant
asserts that Respondent is not commonly known by the disputed domain name and
that Respondent is not authorized to use the BOSTON OPERA HOUSE mark. The Panel can find no evidence in the record
that would provide a basis for determining that Respondent is commonly known by
the disputed domain name. The Panel also
considered the WHOIS information which does not support a finding that
Respondent is commonly known by the <boston-opera-house.org>
domain name. Complainant alleges
this is not similar to the disputed domain name. In consideration of these facts, the Panel
finds that Respondent is not commonly known by the disputed domain name under
Policy ¶ 4(c)(ii). See Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was
not commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark); see also 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).
Complainant alleges that Respondent uses the disputed domain name to redirect Internet users to Respondent’s website, which consists of advertisements and ticket offers to Complainant’s opera and theatre business. Furthermore, Complainant alleges that Respondent offers to sell tickets at unreasonably high prices without Complainant’s permission. The Panel finds that such use of the domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The
Panel finds Policy ¶ 4(a)(ii) has been established.
Registration
and Use in Bad Faith
Complainant
alleges that Respondent’s <boston-opera-house.org>
domain name resolves to a website that disrupts Complainant’s
business. Specifically, Respondent uses
the domain name to sell tickets to Complainant’s opera and theatre
productions. Complainant alleges that
Internet users intending to find and purchase tickets to Complainant’s theatre
may end up purchasing tickets from Respondent.
The Panel finds that using a domain name to sell tickets disrupts
Complainant’s business and provides evidence that the disputed domain name was
registered and is being used in bad faith pursuant to Policy ¶ 4(b)(iii). See
Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring
the <fossilwatch.com> domain name from the respondent, a watch dealer not
otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D.
Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb.
Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell
Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Complainant
argues that Respondent uses the disputed domain name to divert Internet users
to Respondent’s website where tickets to Complainant’s business are sold. Because of this redirection, Complainant
contends that Internet users are confused as to Complainant’s sponsorship of,
and affiliation with, the disputed domain name, resolving website, and posted advertisements
and offers for tickets. The Panel finds
that Respondent registered the domain name in order to profit commercially from
this confusion. Pursuant to Policy ¶
4(b)(iv), the Panel finds that Respondent has engaged in bad faith registration
and use of the disputed domain name. See Hunter Fan Co. v. MSS, FA 98067
(Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used
the disputed domain name to sell the complainant’s products without permission
and mislead Internet users by implying that the respondent was affiliated with
the complainant); see also Compaq Info. Techs. Group, L.P. v.
Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002)
(finding that the respondent’s use of the <compaq-broker.com> domain name
to sell the complainant’s products “creates a likelihood of confusion with
Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the
website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
The
Panel finds Policy ¶ 4(a)(iii) has been established.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the
<boston-opera-house.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf
(Ret.), Panelist
Dated: April 20, 2011
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