Manhattan Center Studios, Inc. v. High pr Network
Claim Number: FA1205001445131
Complainant is Manhattan Center Studios, Inc. (“Complainant”), represented by Robert F. Zielinski of Law Offices of Robert F. Zielinski, LLC, Pennsylvania, USA. Respondent is High pr Network (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <themanhattancenter.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2012; the National Arbitration Forum received payment on May 22, 2012.
On May 23, 2012, GoDaddy.com, LLC. confirmed by e-mail to the National Arbitration Forum that the <themanhattancenter.com> domain name is registered with GoDaddy.com, LLC. and that Respondent is the current registrant of the name. GoDaddy.com, LLC. has verified that Respondent is bound by the GoDaddy.com, LLC. 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 May 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2012 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@themanhattancenter.com. Also on May 24, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Manhattan Center Studios, Inc., is the owner of the well known and highly regarded music and entertainment venue and production facility known as the MANHATTAN CENTER. The MANHATTAN CENTER has a storied past dating back to the 1920s when it was a rival to the New York Opera House and it remains one of the world's leading, up-scale entertainment and production venues. The MANHATTAN CENTER is home to two of New York City’s most unique event and performance spaces, the Hammerstein Ballroom and the Grand Ballroom, and it also offers in-house recording studios, television studios and video post-production facilities. The MANHATTAN CENTER name is recognized in the U.S. and globally as one of the premier venues for recording studios; performance spaces; audio and visual recording and production facilities; theater productions and concerts; and for television shows, specials, plays and the arts.
Complainant has rights in the MANHATTAN CENTER and MANHATTAN CENTER HAMMERSTEIN BALLROOM THE GRAND BALLROOM marks which it uses in connection with music performance and recording venues, audio and video production facilities, event production, and studios for television production in the United States including the entertainment venue known as the MANHATTAN CENTER.
Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the MANHATTAN CENTER HAMMERSTEIN BALLROOM THE GRAND BALLROOM and Design mark (Reg. No. 2,918,541 registered January 18, 2005).
Complainant was the original owner of the <themanhattancenter.com> domain name, having registered it on August 23, 2007, until March 21, 2012 when the registration inadvertently lapsed due to a clerical error.
Respondent registered the <themanhattancenter.com> domain name on March 23, 2012.
The <themanhattancenter.com> domain name is identical Complainant’s marks.
Respondent is not commonly known by the <themanhattancenter.com> domain name.
The <themanhattancenter.com> domain name resolves to a website or parking page which solely displays a list of links to goods and services;
Respondent registered and is using the <themanhattancenter.com> domain name in order to create confusion as to the source of the disputed domain name so as to attract Internet users for commercial gain;
Respondent knew of Complainant and its mark at the time of registration and use of the <themanhattancenter.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, rights in its MANHATTAN CENTER mark at all times relevant to this proceeding.
Complainant registered the domain name <themanhattancenter.com> on or about August 23, 2007 and was its registered owner until March 21, 2012 when the registration inadvertently lapsed due to a clerical error.
At the time Respondent registered the at-issue domain name, March 23, 2012, Respondent had actual knowledge of Complainant and Complainant’s rights in the MANHATTAN CENTER mark.
Respondent is not authorized to use Complainant’s mark in any capacity, nor legally associated with Complainant.
The <themanhattancenter.com> domain name references a website/parking page containing links that are unrelated to Complainant’s business.
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."
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has rights in the MANHATTAN CENTER HAMMERSTEIN BALLROOM THE GRAND BALLROOM and Design mark which it uses in connection with its entertainment venue and production facilities by virtue of its registration with the United States Patent and Trademark Office (Reg. No. 2,918,541 registered January 18, 2005) thereby demonstrating rights in a mark pursuant to Policy ¶4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant also demonstrates that it has trademark rights in the MANHATTAN CENTER mark. Complainant states it uses the MANHATTAN CENTER mark in connection with music performance and recording venues, audio and video production facilities, event production, and studios for television production in the United States including the entertainment venue known as the MANHATTAN CENTER. Complainant further advances that the mark’s use began in the 1935 when Complainant was a rival to the New York Opera House and has continued to use the mark since that time. Additionally, the mark is said to be recognized in the United States and globally as one of the premier venues for recording studios, performance spaces, audio and visual recording and production facilities, and more. Finally, Complainant claims it has spent substantial amounts of money over the last 80-plus years in advertising and marketing expenses and has spent considerable time and money building up goodwill and strengthening the MANHATTAN CENTER mark, including the registration of the <themanhattancenter.com> domain name. Absent any controverting evidence of record and in light of the credible declaratory evidence proffered by Complainant, the Panel finds that Complainant has used the MANHATTAN CENTER mark in commerce in such a manner and extent so as to credit the mark with identifying the source of Complainant’s services as well as distinguishing Complainant’s services from those of others. Therefore, the Panel concludes that Complainant’s mark has acquired secondary meaning in the minds of consumers and is eligible for protection as a common law trademark. See Zatarian's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983)(Considering: 1) the amount of advertising; 2) the volume of sales; 3)the length and manner of the term’s use; and 4) consumer surveys, as appropriate factors in determining whether or not a term has acquired secondary meaning). Complainant’s common law trademark in MANHATTAN CENTER is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i).
Respondent’s <themanhattancenter.com> domain name is confusingly similar to Complainant’s MANHATTAN CENTER mark. The addition of article “the” in the <themanhattancenter.com> domain name does make the <themanhattancenter.com> domain name distinct from Complainant’s MANHATTAN CENTER mark. See Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the [article] ‘the’ to the beginning of the domain names fails to make them separate and distinct, as distinguishable from Complainant’s marks.”). Similarly, the addition of the generic top-level domain “.com” is irrelevant to Policy ¶ 4(a)(i) analysis. 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).
Respondent lacks rights and legitimate interests in respect of the <themanhattancenter.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case acts conclusively.
Complainant did not authorize Respondent to use any of its trademarks and Respondent is not affiliated with Complainant or anyone Complainant is legitimately associated with. The WHOIS record for the <themanhattancenter.com> domain name lists “High pr Network” as the domain name registrant and nothing in the record suggests that Complainant is commonly known by the domain name. Therefore, since Respondent is not commonly known by the <themanhattancenter.com> domain name, Paragraph 4(c)(ii) is inapplicable. 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Furthermore,
the <themanhattancenter.com> referenced
website/parking page offers no content but for unrelated links and
advertisements. Respondent’s use of the <themanhattancenter.com> domain name in such a manner is neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use and is thus not
a use protected under either Policy ¶¶ 4(c)(i) or 4(c)(iii). See Constellation
Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum
May 8, 2007) (finding that the respondent had no rights or legitimate interests
under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to
operate a website featuring links to goods and services unrelated to the
complainant).
Complainant is the original owner of the <themanhattancenter.com> domain name. Complainant registered the <themanhattancenter.com> domain name on August 23, 2007, and it remained the owner of the disputed domain name until March 21, 2012 when a clerical error caused the inadvertent lapse of the <themanhattancenter.com> domain name. Respondent’s registration of the <themanhattancenter.com> domain name two days after an inadvertent lapse of Complainant’s original registration demonstrates Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”).
Given Complainant’s uncontroverted evidence, Complainant well satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
The <themanhattancenter.com> domain name references a website/parking page displaying links to a variety of goods and services. As mentioned elsewhere herein, these links are to goods and services unrelated to Complainant’s business. From these circumstances the Panel concludes that Respondent is attempting to attract, for commercial gain, Internet users to the <themanhattancenter.com> domain name by creating a likelihood of confusion as to the source, sponsorship, or affiliation of the <themanhattancenter.com> domain name pursuant to Policy ¶ 4(b)(iv). The Panel further concludes that the domain name was registered for such purpose. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
As mentioned elsewhere, Complainant previously owned the <themanhattancenter.com> domain name having registered it on August 23, 2007. The domain name inadvertently lapsed on March 21, 2012. Two days later, on March 23, 2012, Respondent “swooped in to grab the domain name.” Complainant’s past ownership of the <themanhattancenter.com> domain name coupled with Respondent’s opportunistic behavior in registering and using the domain name is further evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name).
Finally, Respondent had actual knowledge of Complainant and its rights in the MANHATTAN CENTER mark at the time it registered the at-issue domain name. Complainant’s widespread and long-standing use of the MANHATTAN CENTER mark, the timing of Respondent’s registration which immediately followed the lapse of Complainant’s original registration, as well as the fact that the domain name was not put in to service but for referencing a parking page, all show that it highly unlikely that Respondent lacked actual knowledge of Complainant and Complainant’s rights in the MANHATTAN CENTER mark prior to registering the at-issue domain name. Respondent’s actual knowledge of Complainant’s rights in the MANHATTAN CENTER mark prior to its registration of the <themanhattancenter.com> domain name additionally indicates that the domain name was registered in bad faith pursuant to Policy ¶ 4(a)(iii).
See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <themanhattancenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 20, 2012
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