Ravinia Festival Association v. xc2 c/o Internet Coordinator
Claim Number: FA0606000738155
Complainant is Ravinia Festival Association (“Complainant”), represented by Sana Hakim, of Bell, Boyd & Lloyd LLC, 70 W. Madison, Suite 3300, Chicago, IL 60602. Respondent is xc2 c/o Internet Coordinator (“Respondent”), P.O. Box 71826, KCPO, Central Hong Kong.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <raviniafestival.com>, registered with Enom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 26, 2006.
On June 26, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <raviniafestival.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 20, 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@raviniafestival.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 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <raviniafestival.com> domain name is identical to Complainant’s RAVINIA FESTIVAL mark.
2. Respondent does not have any rights or legitimate interests in the <raviniafestival.com> domain name.
3. Respondent registered and used the <raviniafestival.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1904, Complainant, Ravinia Festival Association, has hosted world-class musical events in its 3,200-seat open-air pavilion located the suburban area of Chicago. In connection with the operation of its musical venue, this non-profit organization holds the registration of the RAVINIA FESTIVAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,620,484 issued Sept. 17, 2002).
Respondent registered the <raviniafestival.com> domain name on August 20, 2003. The disputed domain name resolves to an advertising portal website that displays links to various commercial websites, including websites that offer goods and services that compete with Complainant.
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.
The Panel finds that Complainant has established rights in
the RAVINIA FESTIVAL mark through its registration with the USPTO. See 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.”);
see also U.S. Office of Pers. Mgmt. v. MS Tech.
Inc., FA 198898 (Nat. Arb. Forum Dec. 9,
2003) (“[O]nce the USPTO has made a determination that a mark is registrable,
by so issuing a registration, as indeed was the case here, an ICANN panel is
not empowered to nor should it disturb that determination.”).
Complainant contends that the <raviniafestival.com> domain name is identical to its RAVINIA FESTIVAL mark. The Panel finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i) because it contains Complainant’s mark in its entirety and merely adds a generic top-level domain (“gTLD”). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”); 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.
Under to Policy ¶ 4(a)(ii), Complainant bears the initial burden to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Once such a finding is made, the burden shifts to Respondent to affirmatively prove that it does have rights and legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also 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).”). The Panel finds that Complainant has sufficiently established a prima facie case through its uncontested assertions in the Complaint and will evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not and never has been commonly known by the <raviniafestival.com> domain name. According to the WHOIS database, Respondent registered the disputed domain name as “xc2” and “Internet Coordinator.” Because there is no evidence in the record to suggest otherwise, the Panel is compelled to find that Respondent is not commonly known by the <raviniafestival.com> domain name. 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant further asserts that the
disputed domain name resolves to an advertising portal website that displays
links to various commercial websites, including websites that offer goods and
services that compete with Complainant.
The Panel finds that the use of a domain name that is identical to Complainant’s
mark to resolve to an advertising portal website that features competing and
non-competing links is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial use pursuant to
Policy ¶ 4(c)(iii). See 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); see
also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001)
(stating that the respondent’s use of the complainant’s entire mark in domain
names makes it difficult to infer a legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s registration and use of the disputed domain name is in bad faith. Due to the nature of the advertising portal website the Panel infers that Respondent is earning click-through revenues from the operation of the website. Additionally, the Panel finds that the identical nature of the domain name will likely cause confusion as to Complainant’s sponsorship of or affiliation with the resulting website. Accordingly, the Panel concludes that Respondent’s registration and use of an identical domain name to display advertisements to competing and non-competing websites for financial gain evidences bad faith pursuant to Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Moreover, the Panel finds that Respondent’s registration and use of the disputed domain name constitutes disruption and evidences bad faith pursuant to Policy ¶ 4(b)(iii) because it directly links Internet users to competitors of Complainant. 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 EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
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 <raviniafestival.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Judge Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 7, 2006
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