national arbitration forum

 

DECISION

 

Manhattan Center Studios, Inc. v. James Lawson

Claim Number: FA1210001469540

 

PARTIES

Complainant is Manhattan Center Studios, Inc. (“Complainant”), represented by Robert F. Zielinski of Law Offices of Robert F. Zielinski, LLC, Pennsylvania, USA.  Respondent is James Lawson (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <manhattancenter.com>, registered with ENOM, INC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 31, 2012; the National Arbitration Forum received payment on October 31, 2012.

 

On November 1, 2012, ENOM, INC. confirmed by e-mail to the National Arbi-tration Forum that the <manhattancenter.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name.  ENOM, INC. has verified that Respondent is bound by the ENOM, 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 November 1, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of November 21, 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, adminis-trative, and billing contacts, and to postmaster@manhattancenter.com.  Also on November 1, 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.

 

A timely Response was received and determined to be complete on November 21, 2012.

 

Complainant submitted an Additional Submission on November 26, 2012 that was deemed in compliance with Supplemental Rule 7.

 

Respondent submitted an Additional Submission on December 3, 2012 that was deemed in compliance with Supplemental Rule 7.

 

On December 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 Not-ices, 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

Complainant alleges, among other things, that:

 

Complainant is the owner of the common law trademarks THE MANHATTAN CENTER and MANHATTAN CENTER. 

 

Complainant has used the marks in commerce in connection with the operation and marketing of music performance and recording venues, audio and video production facilities, event production and studios for television production since at least 1935.

 

Complainant holds a trademark registration, on file with the United States Patent and Trademark Office ("USPTO") for the MANHATTAN CENTER HAMMER-STEIN BALLROOM THE GRAND BALLROOM & Design mark (Reg. No. 2,915,541, filed Aug. 1, 2003; registered Jan. 18, 2005). 

 

THE MANHATTAN CENTER facility dates from the 1920’s, when it was a rival to the New York Opera House, and it remains a leading entertainment and pro-duction venue in New York City. 

 

Complainant owns the <themanhattancenter.com> domain name, received as a result of the UDRP decision in Manhattan Center Studios, Inc. v. High pr Net-work, FA 1445131(Nat. Arb. Forum June 20, 2012). 

 

Respondent registered the disputed domain name on January 8, 2004, but has never conducted any commercial activity via the domain name. 

 

Respondent’s <manhattancenter.com> domain name is identical to Complain-ant’s MANHATTAN CENTER trademark and the dominant portion of Complain-ant’s USPTO mark registration. 

 

Respondent is not affiliated with Complainant, or with its artists, producers or performers. 

 

Respondent does not have any rights to or legitimate interests in the disputed domain name.

 

Respondent knew or should have known of Complainant’s rights in the mark when it registered the domain name.

 

Respondent registered the domain name, and it is being used by Respondent, in bad faith.

 

B. Respondent

Respondent asserts, among other things, that:

 

Complainant is attempting to steal Respondent’s domain name after unsuccess-fully trying to buy it.

 

Since Respondent registered the disputed domain name in January of 2004, it has been contacted by Complainant’s representatives several times, beginning in November of 2006 and ending in August of 2012, seeking to purchase it.

 

Respondent acquired the domain name after finding it on a “drop list,” a publish-ed report of expired domain names which were intended soon to be deleted and were therefore then presently available for registration.

 

The lengthy time that Complainant has been aware of Respondent’s domain name, during which Complainant tried several times to buy it, but did not assert trademark claims over it, and instead waited more than five years to file this Complaint, is evidence that Complainant does not believe that its claim is valid.

 

The term “Manhattan Center” is merely descriptive of Complainant’s facilities and geographic location, and cannot be claimed solely by Complainant.   

 

Complainant’s trademark registration is for a drawing, of which the term “Manhat-tan Center” is but a modest part. 

 

Complainant could not have registered the term “Manhattan Center” as a trade-mark, or it would have done so. 

 

In the course of the trademark registration process, Complainant admitted that the term “Manhattan Center” is not inherently distinctive.

The component terms of the disputed domain name are generic and geograph-ically descriptive.

 

Respondent registered the disputed domain name because of the geographic reference to the Midtown Manhattan area, one of the world’s foremost urban and business centers.

 

Respondent did not know of Complainant when it registered the domain name.

 

Respondent did not place the parking page at the website which is maintained by its domain name registrar, which occurs with millions of unused domain names, solely at the discretion of the registrar. 

 

C. Additional Submissions

In its Additional Submission, Complainant alleges, among other things, that:

 

Respondent has failed to refute that the disputed domain name is confusingly similar to Complainant’s trademarks.

 

Complainant’s mark has been accepted by the USPTO, and it is a recognized trademark with longstanding use in the marketplace.

 

Respondent has failed to refute that it possesses no rights to or legitimate inter-ests in respect of the disputed domain name.

 

Respondent admits that it has not used the disputed domain name because it is “busy,” but it offers no meaningful explanation as to why it has held the registra-tion without activity for over five years.

 

Respondent has not refuted the assertion of the Complaint that it registered and uses the disputed domain name in bad faith.

 

Even if Respondent did not have actual knowledge of Complainant’s marks when it registered the domain name, it had at least constructive knowledge of the MANHATTAN CENTER marks by virtue of Complainant’s USPTO registration.

 

Respondent’s long failure to make active use the disputed domain name is evi-dence of its registration and use in bad faith.

 

Respondent has made it clear that it would part with the domain name for an amount in excess of its out-of-pocket costs related to the acquisition and main-tenance of the domain name.

 

Respondent is the owner of at least 480 other domain names, and warehousing of and trafficking in domain names is evidence of bad faith registration and use of the instant domain name.

 

Respondent

In its Additional Submission, Respondent alleges, among other things, that:

 

An e-mail message Respondent received from Complainant’s representative in 2006 contradicts every relevant point Complainant has made when it recites that: “Because of the location, this venue has always ‘unofficially’ been referred to as The Manhattan Center.”

 

Complainant makes conflicting statements regarding the parked website at which the domain name is housed, arguing both that Respondent has never used the domain name, yet also claiming that Respondent benefits financially from it.

 

In fact, Respondent has had nothing to do with the parking of the website resolving from its domain name, and Respondent derives no benefits from it. 

 

FINDINGS

Complainant has failed to demonstrate that the disputed domain name was registered by Respondent in bad faith.

 

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."

 

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 can-celled or transferred:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    the domain name has been registered and is being used by Respondent in bad faith.

 

It is customary to discuss these considerations in turn, and in the order in which they are presented in the Policy.  However, because a failure of Complainant to satisfy any of them results in a failure of the Complaint as a whole, the facts presented in this proceeding make it necessary for us to examine but one of them in order to dispose of the matter fully. That one is the question whether the domain name was registered “in bad faith” within the meaning of Policy ¶ 4(a)(iii).

This is so because, in order to prevail on the point of Policy ¶ 4(a)(iii), Complain-ant must prove both that the domain name is being used in bad faith and that it was registered in bad faith.  The construction of this proviso in the conjunctive means that, if the registration of the domain name is not proven to have been effected in bad faith, we need not inquire whether it is now being used in bad faith.  See, for example, Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum, Sept. 20, 2002) (finding that, because a UDRP complainant must prove all three elements prescribed under the Policy, the failure of a complainant to prove one of them makes inquiry into the remaining elements unnecessary). 

 

Resolution of the question of bad faith registration of the domain name turns on a point which is undisputed by the parties, which is that Respondent acquired the domain name after seeing its appearance on a “drop list” of existing domain names which were then available for registration after having been registered earlier by someone else.  The significance of this is not only that Respondent had not created or registered the domain name in the first instance, but that there was evidently nothing in the surrounding circumstances when Respondent obtained it that should have alerted Respondent to the possible illegitimacy of the domain name, such as a suggestion of a pending or threatened challenge to it. 

 

Moreover, when Respondent acquired the domain name off the published drop list in January of 2004, Complainant possessed only a pending application for registration of the service mark described as “MANHATTAN CENTER HAM-MERSTEIN BALLROOM THE GRAND BALLROOM & Design mark.”  That mark, which was eventually granted registration in January of 2005, includes an elab-orate design graphic and is qualified by both a partial language disclaimer and a statutory limitation.  In such circumstances, the pendency of the underlying application for that mark cannot, in fairness, be relied upon by Complainant as notice to Respondent of Complainant’s rights in the mark MANHATTAN CENTER, and, therefore, as evidence of bad faith on the part of Respondent in registering the domain name <manhattancenter.com>.

 

We are aware that complainant also claims rights in the common law trademark MANHATTAN CENTER, which it says predate the registration of Respondent’s domain name.  However, although Complainant reports that it supplied to the USPTO evidence supporting the creation of such rights in the process of ob-taining registration of its registered mark, discussed above, the record in this proceeding is devoid of any such evidence, other than screen shots of Com-plainant’s current website.  That material offers no assistance to Complainant because it gives no proof of Complainant’s efforts to create and publicize its common law mark over time, and, in particular, it fails to show that Complainant’s efforts in that direction predated January of 2004, when the domain name was registered.  We therefore cannot credit Complainant’s claim of notice to Re-spondent of Complainant’s rights in its claimed common law mark on the ques-tion of Respondent’s alleged bad faith in the registration of the domain name.  See, for example, Mancini’s Sleepworld v. Laksh Internet Solutions Private Ltd., D2008-1036 (WIPO Sept. 30, 2008).

 

In any event, a situation analogous to this controversy can be found in the panel decision denominated Vacaciones eDreams, S.L. v. BuyDirect Pty Ltd., DAU2011-0043 (WIPO April 3, 2012).  There, as here, a respondent acquired a domain name after seeing it appear on a drop list.  The presiding panel noted the significance of the appearance of the domain name on a published drop list, saying that:

 

The Respondent was entitled to take that at face value.

 

The panel went on to conclude that:

 

The Respondent did not register the disputed domain name in an attempt to appropriate the complainant’s goodwill in its name or trademark and its registration of the disputed domain name was not in bad faith.   

 

Similarly, the evidence before us does not show that Respondent has employed the contested domain name to market goods or services to the detriment of Complainant.  Nor has any evidence been presented to suggest that Respond-ent has attempted to sell the domain name.  Proof of such behaviors could support a finding of bad faith registration of the domain name.  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001).  But no such evidence is present in the record of this proceeding.

 

Also important here is that there is no evidence in the record demonstrating that Respondent took steps either to conceal its identity or to provide false contact details when it registered the domain name, either of which might lend credibility to a claim of bad faith registration.  See, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows,  D2000-0003) (WIPO Feb. 18, 2000).

 

For all of these reasons, we find that Complainant has failed to prove bad faith in the registration of Respondent’s domain name in satisfaction of Policy ¶ 4(a)(iii).

 

Finally, we take notice that Respondent charges Complainant with reverse do-main name hijacking, that is, a deliberate attempt on the part of a complainant to use the UDRP process to wrest a domain name from its rightful owner.  Because of our disposition of Complainant’s claim, and because, for the reasons indicated above, we have found it necessary to analyze in this decision the proof submitted as to only one of the subsections of Policy ¶ 4(a), we decline to address this counter-claim.  See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003):

Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.

 

DECISION

Complainant having failed to establish one of the elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.

 

Accordingly, it is Ordered that the contested <manhattancenter.com> domain name REMAIN WITH Respondent.

 

 

Terry F. Peppard, Panelist

Dated:  December 18, 2012

 

 

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