Boston Opera House Ventures, LLC v. Maximum Tickets
Claim Number: FA1106001392848
Complainant is Boston Opera House Ventures, LLC (“Complainant”), represented by Merton Thompson of Burns & Levinson LLP, Massachusetts, USA. Respondent is Maximum Tickets (“Respondent”), Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostonoperahouse.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011; the National Arbitration Forum received payment on June 9, 2011.
On June 10, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <bostonoperahouse.com> domain name is registered with Wild West Domains, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@bostonoperahouse.com. Also on June 16, 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 July 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bostonoperahouse.com> domain name is identical to Complainant’s BOSTON OPERA HOOUSE mark.
2. Respondent does not have any rights or legitimate interests in the <bostonoperahouse.com> domain name.
3. Respondent registered and used the <bostonoperahouse.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates a dance and theatrical venue now known as the Boston Opera House. Complainant first registered its BOSTON OPERA HOUSE mark with the United States Patent and Trademark Office (“USPTO”) in 2011(Reg. No. 3,949,443 filed October 15 2009; issued September 21, 2010), and first used the mark in commerce on August 5, 2008.
Respondent, Maximum Tickets, registered the <bostonoperahosue.com> domain name on September 24, 2002. The disputed domain name resolves to a website that sells tickets to events held at the Boston Opera House.
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 July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant holds a trademark registration for its BOSTON OPERA HOUSE mark with the USPTO (Reg. No. 3,949,443 filed October 15, 2009; issued September 21, 2010). Registration of a mark with the USPTO has been interpreted as per se evidence of holding rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel finds that Complainant has established its rights in the BOSTON OPERA HOUSE mark through its registration with the USPTO.
Complainant also claims common law rights in the BOSTON OPERA HOUSE mark based on the venue being referred to as the Boston Opera House beginning in or around 1979, corresponding with the time when the venue was officially renamed the “Opera House” after a change in ownership. The record, albeit sparse, is sufficient to establish common law rights in the mark, predating registration of the domain name, particularly in light of the Respondent’s failure to contest the allegations of the Complaint. Complainant alleges that Respondent’s <bostonoperahouse.com> domain name is identical to its BOSTON OPERA HOUSE mark. Respondent’s domain name wholly incorporates Complainant’s mark, simply omitting the space between each word. This is irrelevant to Policy ¶ 4(a)(i) analysis, however. See 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 Technology Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to the complainant’s mark, RADIO SHACK). Moreover, the addition of the generic top-level domain “.com” to Complainant’s mark is insufficient to distinguish the disputed domain name for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel concludes that Respondent’s <bostonoperahouse.com> is identical to Complainant’s BOSTON OPERA HOUSE mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant asserts that Respondent lacks rights and legitimate interests in the <bostonoperahouse.com> domain name. Initially, Complainant carries the burden of making a prima facie case. Once this has been established, as is the case here, the burden shifts to Respondent to refute Complainant’s claims. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Respondent’s failure to respond to the Complaint is strong evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will still examine the record to determine if such rights or legitimate interests exist for the purposes of Policy ¶ 4(a)(ii).
Complainant contends that Respondent is not commonly known by the <bostonoperahouse.com> domain name. The relevant WHOIS information identifies the Respondent as “Maximum Tickets”, which is not similar to the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Given the lack of resemblance between the disputed domain name and Respondent’s identity, the Panel finds that the Respondent is not commonly known by the BOSTON OPERA HOUSE mark.
Complainant further contends that Respondent’s use of the disputed domain name does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel finds that Respondent’s resale of Complainant’s products without Complainant’s consent is not a bona fide offering of goods or services. 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). Additionally, Respondent’s practice of selling Complainant’s goods under Complainant’s name, in the same industry as Complainant, demonstrates that Respondent lacks rights or legitimate interests in the domain name. See American Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”). The Panel finds that Respondent’s use of an identical name in the instant case does not represent a bona fide offering of goods or services, nor does it represent a noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant states that the disputed domain name disrupts its business. Potential customers searching for Complainant online may find Respondent’s website instead being misled to believe they were purchasing tickets directly from Complainant. The Panel concludes that Respondent’s registration and use of the disputed domain name does disrupt Complainant’s theatrical and opera business, which constitutes bad faith under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bostonoperahouse.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 20, 2011
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