Hamilton Uptown Limited Liability Company v. Tulip Trading Company
Claim Number: FA1709001748655
Complainant is Hamilton Uptown Limited Liability Company (“Complainant”), represented by Stacy Grossman of Levine Plotkin & Menin, LLP, New York, USA. Respondent is Tulip Trading Company (“Respondent”), St. Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamiltonmusical.com>, registered with Key-Systems GmbH.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 12, 2017; the Forum received payment on September 12, 2017.
On September 14, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <hamiltonmusical.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 September 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2017 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 email@example.com. Also on September 15, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
Complainant is the producer of the Broadway production of the theatrical work entitled “Hamilton: An American Musical,” based off the life of American founding father, Alexander Hamilton. Complainant registered the HAMILTON AN AMERICAN MUSICAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,149,283, first use July 13, 2015, filed Feb. 2, 2016, registered Feb. 28, 2017). See Compl. Ex. I. Complainant also has common law rights in the HAMILTON mark based on its popularity; was nominated for a record-setting sixteen (16) Tony Awards; sold more than 2,000,000 copies of the musical album; and has had widespread media coverage since its inception. Respondent’s <hamiltonmusical.com> is confusingly similar to the HAMILTON mark because it incorporates the mark in its entirety, adds the generic term “musical,” and attaches a “.com” generic top-level domain (“gTLD”).
Respondent has no right or legitimate interest in <hamiltonmusical.com>. Respondent is not commonly known by the disputed domain name. Respondent is believed to have used <hamiltonmusical.com> as a pay-per-click site which redirects users to unrelated pages, failing to represent a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Compl., Attached Ex. K.
Respondent registered and used <hamiltonmusical.com> in bad faith. Due to the fact that domain names associated with theatrical productions typically include the name of the production followed by the word “musical,” it is clear Respondent registered the disputed domain name for the purpose of selling it to Complainant. Respondent’s <hamiltonmusical.com> creates a likelihood of confusion as to source, affiliation, sponsorship, or endorsement. Respondent had actual knowledge of Complainant’s mark due to the fame of the mark and time of registration.
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on April 18, 2015.
The Panel finds that the disputed domain name is confusingly similar Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in and to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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(f), 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 (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 Panel finds that the disputed domain name, <hamiltonmusical.com>, is confusingly similar to Complainant’s valid and subsisting trademark, HAMILTON AN AMERICAN MUSICAL. Complainant has adequately pled its common law rights and interests in and to this trademark prior to April 18, 2015, the date Respondent registered the disputed domain name, by providing substantial evidence of secondary meaning. Respondent arrives at the disputed domain name by merely deleting a space and adding the g TLD “.com” to the trademark. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in and to the disputed domain name. Respondent has no permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
Respondent has apparently made no bona fide offering of goods or services nor legitimate noncommercial or fair use. Complainant argues Respondent registered the <hamiltonmusical.com> domain name in order to confuse unsuspecting Internet users to capitalize from pay-per-click fees on the resolving webpage. Capitalizing on the goodwill of a mark through pay-per-click fees can evince a lack of a bona fide offering of good or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots of the resolving webpage, which contains links such as “NYC Broadway Tickets” and “Movie Coupon Codes.” See Compl. Ex. K..
As such, the Panel finds that Respondent has no rights or legitimate interest in and to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant claims that due to the fact that domain names associated with theatrical productions typically include the name of the production followed by the word “musical,” it is clear Respondent registered the disputed domain name for the purpose of selling it to Complainant. Registering a domain name for the purpose of selling it to a complainant can evince bad faith under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Complainant does not provide any further arguments or any documentation to evince this assertion. Further, this argument cuts against Complainant’s due diligence in obtaining the most appropriate domain name in the most appropriate manner. As such, the Panel is not sympathetic to the argument that Respondent was faster at registering the most logical domain name and beat Complainant to the punch. This is how the domain name system has been conceptualized since the beginning: first in time, first in right. There is certainly no objective evidence that supports the contention that Respondent has attempted to sell the disputed domain name for costs that exceed its out of pocket expenses.
However, it appears that Respondent has registered and used the <hamiltonmusical.com> domain name in bad faith by creating a likelihood of confusion as to source, affiliation, sponsorship, or endorsement of the domain name and capitalize off pay-per-click fees. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). As noted previously, Complainant provides a screenshot of the resolving webpage for the confusingly similar domain name, which contains links to websites such as “Movie Coupon Codes” and “Hamilton.” See Compl. Ex. K. Therefore, the Panel finds Complainant has satisfied Policy ¶ 4(b)(iv) as it has engaged bad faith use and registration of the disputed domain name.
Finally, Complainant asserts Respondent registered the <hamiltonmusical.com> domain name with actual knowledge of the mark. Actual knowledge of a mark at the time of registration can evince bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Given the fame of the HAMILTON mark in association with a Broadway musical and the timing of the registration and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of the mark.
Therefore, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <hamiltonmusical.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: October 13, 2017
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