Theatre Development Fund, Inc. v. Ty Harris
Claim Number: FA1910001867118
Complainant is Theatre Development Fund, Inc. (“Complainant”), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman, New York, USA. Respondent is Ty Harris (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gottkts.com>, registered with 1&1 IONOS SE.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 16, 2019; the Forum received payment on October 16, 2019.
On October 16, 2019, 1&1 IONOS SE confirmed by e-mail to the Forum that the <gottkts.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 October 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 2019 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@gottkts.com. Also on October 18, 2019, 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 November 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
A. Complainant
Complainant is the largest not-for-profit Performing Arts Service Organization in the USA. It sells discounted Broadway and Off Broadway tickets through its booth located at the center of Times Square in New York City. It also has subsidized more than 1,000 plays and musicals, including 37 productions that later became Pulitzer Prize winners. Complainant has rights in the trademark TKTS mark through its use in commerce since 1973 and its registration of the mark with the USPTO dating back to 2001. Respondent’s <gottkts.com> domain name, registered on July 19, 2017, is identical or confusingly similar to Complainant’s mark as it includes the TKTS mark in its entirety, adding the generic word “got” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <gottkts.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use the Complainant’s mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s use of the disputed domain name resolves to a competing ticket sales webpage using the TKTS mark to pass off as Complainant and confuse Internet users as to affiliation with the Complainant.
Respondent registered and uses the domain name <gottkts.com> in bad faith. Respondent disrupts Complainant’s business and commercially benefits from the confusion created by incorporating the TKTS mark in order to directly compete with Complainant. In addition, the fame of Complainant’s TKTS mark demonstrates Respondent’s actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the TKTS mark based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Complainant provides copies of its USPTO registration certificates for the TKTS mark. Accordingly, the Panel finds that Complainant has established rights in the TKTS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <gottkts.com> domain name is identical or confusingly similar to Complainant’s mark as it includes the TKTS mark in its entirety, adding the generic word “got,” and the gTLD “.com.” The addition of a generic word like “got” with the “.com” gTLD, does not distinguish a domain name for purposes of Policy ¶4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”) The Panel therefore finds that the disputed domain name is confusingly similar to the TKTS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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 an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the <tkts.com> domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or otherwise authorized to use Complainant’s mark. In considering this issue, WHOIS information may be used to determine whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Ty Harris,” and there is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use the TKTS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use the <gottkts.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the TKTS mark on a website to sell tickets in competition with Complainant. Using a domain name to pass oneself off as a complainant in order to sell competing products or services does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) Complainant provides screenshots of the disputed domain name’s resolving webpage which displays the TKTS mark and sells tickets to performance events that directly competes with Complainant’s business. The Panel therefore finds that Respondent fails to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <gottkts.com> domain name in bad faith, as Respondent had actual knowledge of the Complainant rights in the TKTS mark when registering the disputed domain name. Actual knowledge of a complainant’s trademark when registering a disputed domain name can adequately create a foundation upon which to demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent’s had actual knowledge given the fame of the TKTS mark based upon the fame of the mark, its distinctiveness, and the content of the website to which it resolves. Complainant provides a photo of its TKTS branded ticket booth in New York City’s Times Square, one of the most heavily touristic sties in the world. Further, prior Panels have found Complainant’s mark to be famous. See Theatre Development Fund, Inc. v. SERGE TUDOR / Zebroid, LLC, FA 1677425 (Forum July 12, 2016) (“Complainant argues that Respondent clearly had such knowledge because of the fame of the [TKTS] mark. The Panel finds this argument sufficient to demonstrate Respondent’s actual knowledge of Complainant’s rights, and finds that Respondent registered the <tkts.online> domain name in bad faith.”) Therefore, the Panel finds that Respondent registered the <gottkts.com> domain name with knowledge of Complainant’s mark and in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the domain name <gottkts.com> in bad faith as Respondent commercially benefits from the confusion created by Respondent’s use of the wholly incorporated TKTS mark and directly competes in ticket sales with Complainant. A respondent’s use of a confusingly similar domain name to sell products or services in competition with a complainant has been held to be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”) Complainant has attached screenshots of the disputed domain name’s resolving website which contain the TKTS mark and offers for sale tickets to entertainment performances that directly competes with Complainant’s ticket-selling business. Therefore, the Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gottkts.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 13, 2019
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