The Carnegie Hall Corporation v. M. Levy
Claim Number: FA0606000736448
Complainant is The Carnegie Hall Corporation (“Complainant”), represented by Scott D. Brown, of Skadden, Arps, Slate, Meagher & Flom LLP, One Beacon Street, Boston, MA 02108. Respondent is M. Levy (“Respondent”), 160 RSD, 8C, New York, NY 10024.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <carnegiehall.com>, registered with Wild West Domains, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 22, 2006.
On June 21, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <carnegiehall.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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 18, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@carnegiehall.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." 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 <carnegiehall.com> domain name is identical to Complainant’s CARNEGIE HALL mark.
2. Respondent does not have any rights or legitimate interests in the <carnegiehall.com> domain name.
3. Respondent registered and used the <carnegiehall.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Carnegie Hall Corporation, operates the internationally famous Carnegie Hall. Complainant has used its CARNEGIE HALL mark continuously since 1895 and holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CARNEGIE HALL mark (Reg. No. 1,599,952 issued on June 5, 1990; Reg. No. 1,818,456 issued on January 25, 1994; Reg. No. 2,358,244 issued on June 13, 2000). Complainant uses the CARNEGIE HALL mark in connection with a wide variety of cultural goods and services, including: concert and performance hall rental services; ticket sales and services; music library services; musical concerts; dance performances; award ceremonies; and a variety of posters, pens and pencils, bags, t-shirts, hats and other goods bearing the CARNEGIE HALL mark. Complainant has registered numerous domain names using the CARNEGIE HALL mark, including <carnegiehall.org> which resolves to Complainant’s primary website, which is used to offer Complainant’s goods and services to Internet users.
Respondent registered the <carnegiehall.com> domain name on December 12, 2003. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which features a generic Internet search engine, advertisements and links to third-party websites. The links to third-party websites include links to websites offering goods and services in direct competition with Complainant, such as “Carnegie hall tickets,” and “concerts.” There are also links to third-party websites unrelated to Complainant, for example “new clocks” and “New York ring tones.”
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 has used its CARNEGIE HALL mark continuously since 1895 and holds multiple trademark registrations for the mark with the USPTO, establishing Complainant’s rights in the mark. The Panel finds that such registration creates sufficient rights in a mark to meet the requirements of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <carnegiehall.com> domain name is identical to Complainant’s CARNEGIE HALL mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, adding only the generic top-level domain “.com.” The addition of a top-level domain is required for the creation of any domain name, and does not distinguish the disputed domain name from Complainant’s mark. Thus, the Panel finds that Respondent’s domain name is identical to Complainant’s mark as addressed in Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <carnegiehall.com> domain name. Complainant’s assertion constitutes a prima facie case and shifts the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel may find that Respondent’s failure to submit a response is evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will examine the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent is using the <carnegiehall.com> domain
name, which is identical to Complainant’s CARNEGIE HALL mark, to redirect
Internet users to Respondent’s website, which features a generic search engine,
advertisements and links to third-party websites. The links to third-party websites include links to websites
offering goods and services in direct competition with Complainant, as well as
links to completely unrelated websites.
Complainant asserts that Respondent is receiving pay-per-click referral
fees as high as $1.50 per click from the search engine, advertisements and
third-party links on its website. The
Panel finds that such use is neither a bona fide offering of goods or
services as contemplated by Policy ¶ 4(c)(i), nor a legitimate noncommercial or
fair use of the domain name as contemplated by Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep.
26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>,
<24-hourfitness.com> and <24hoursfitness.com> domain names to
redirect Internet users to a website featuring advertisements and links to
Complainant’s competitors could not be considered a bona fide offering
of goods or services or a legitimate noncommercial or fair use); see also
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy); see also Wells
Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that using a domain name to direct Internet traffic to a website
featuring pop-up advertisements and links to various third-party websites 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) because the
registrant presumably receives compensation for each misdirected Internet
user).
Furthermore, there is no available
evidence supporting the notion that Respondent is commonly known by the <carnegiehall.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “M. Levy,” and Complainant asserts that
Respondent has no license, permission or other authorization from Complainant
to operate a website including Complainant’s mark. The Panel finds that the available evidence shows that Respondent
is not commonly known by the disputed domain name and thus lacks rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing
in Respondent’s WHOIS information implies that Respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also G.D. Searle
& Co. v. Cimock, FA 126829 (Nat. Arb.
Forum Nov. 13, 2003) (“Due
to the fame of Complainant’s mark there must be strong evidence that Respondent
is commonly known by the disputed domain name in order to find that Respondent
has rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii). However, there is no
evidence on record, and Respondent has not come forward with any proof to
establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <carnegiehall.com> domain
name to redirect Internet users to its website which features links to
third-party websites, including those offering goods and services in direct
competition with Complainant. These
links include links to websites offering tickets, concerts, and music
festivals, all of which are goods and services also offered by Complainant. Presumably, Respondent is profiting from
these links through pay-per-click fees.
The Panel finds that such use disrupts Complainant’s business and is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); see also 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).”).
Respondent’s <carnegiehall.com> domain name is
identical to Complainant’s CARNEGIE HALL mark.
It is quite common for Internet users to type in a mark followed by the
top-level domain “.com” when searching for a business or organization. Because
Respondent’s domain name uses Complainant’s mark in its entirety, adding only
the top-level domain “.com,” Internet users could easily be misled and
redirected to Respondent’s website when trying to find Complainant’s website. Further, because Respondent’s domain name is
identical to Complainant’s mark, Internet users redirected to Respondent’s
website might mistakenly believe that Respondent is sponsored by or affiliated
with Complainant. Respondent is capitalizing
on this confusion by using the disputed domain name to host a website featuring
advertisements, a generic search engine and links to third-party websites, all
of which presumably generate pay-per-click fees for Respondent. The Panel finds that Respondent’s use of the
disputed domain name, identical to Complainant’s mark, to confuse Internet
users in order to attract them to Respondent’s website and for Respondent’s
benefit is evidence of bad faith use and registration pursuant to Policy ¶
4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where the respondent registered the domain
name <bigtex.net> to infringe on the complainant’s goodwill and attract
Internet users to the respondent’s website).
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 <carnegiehall.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 3, 2006
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