Radio City Trademarks, LLC v. S Jon Grant
Claim Number: FA2105001948976
Complainant is Radio City Trademarks, LLC (“Complainant”), represented by Brandon Ress of King & Spalding LLP, Texas, USA. Respondent is S Jon Grant (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rockettes.live>, registered with Dynadot, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2021; the Forum received payment on May 28, 2021.
On June 1, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <rockettes.live> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 June 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2021 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@rockettes.live. Also on June 3, 2021, 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 June 28, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the ROCKETTES mark established by its ownership of the trademark and service mark registrations set out below. In addition, Complainant submits that it has established rights and goodwill in the mark through its extensive use in connection with entertainment services, including on the Internet, since at least as early as 1934.
Complainant alleges that the disputed domain name is identical to Complainant’s ROCKETTES trademark because, as it incorporates the distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).
Complainant adds that the addition of the generic Top-Level Domain (“gTLD”) extension <.live> is irrelevant in determining similarity of <rockettes.live> to Complainant’s ROCKETTES marks. See, 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”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has no relationship, affiliation, connection, or association with Complainant. Respondent has never requested or received any authorization, permission or license from Complainant to use the ROCKETTES mark in any way.
Complainant asserts that Respondent has never been commonly known by the disputed domain name <rockettes.live> or by the ROCKETTES mark and has never acquired any trademark rights in same.
Complainant adds that there is no information available in the WHOIS record to suggest that Respondent is known by <rockettes.live>. Indeed, given Complainant’s long and extensive world-wide rights in the ROCKETTES mark in connection with entertainment services and related goods and services, Respondent could not have rights in the ROCKETTES mark unless Complainant granted them, which Complainant asserts has not occurred.
Complainant adds that Respondent has not used the disputed domain name in good faith and in connection with a bona fide offering of services.
Referring to a screen capture of the website to which the disputed domain name resolved on January 28, 2021 Complainant submits that the disputed domain name appears to redirect customers and potential customers to a variety of different websites. Complainant has encountered instances where the site redirects to <optavut.com> and a popup error message that requires the user to click and possibly download malware.
Another screen capture of a different website to which the disputed domain name has resolved, annexed to the Complaint presents the Internet user with an advertisement for “miracle pills that cure erectile dysfunction” disguised as a CNN article.
Complainant submits that Respondent is using the disputed domain name to divert Complainant’s customers and potential customers to Respondent’s website for commercial gain and argues that such use of a domain name incorporating the mark of another to gather personal information is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to 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)).
Complainant also alleges that the disputed domain name was registered in bad faith arguing that it incorporates the entirety of the ROCKETTES mark and uses the gTLD extension <.live> that is directly related to the live performances advertised in connection with the ROCKETTES mark, indicating that Respondent knew of Complainant’s rights in the ROCKETTES mark. Complainant contends that a respondent’s actual knowledge of a complainant’s rights in a mark can be determined from the domain name and the use made of it per 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.”). Respondent’s registration and infringing use of the <rockettes.live> domain name, despite having such knowledge, therefore indicates bad faith.
As described above, Respondent is using the <rockettes.live> domain name, which is confusingly similar to the ROCKETTES marks, to direct Internet users to a websites through which Respondent attempts to make financial gain through the installation of malware or the fraudulent marketing of products.
Complainant alleges that such use of a well-known mark to deceive Internet users and maliciously infect their computer system is not a bona fide use of the mark. See Wikimedia Foundation, Inc. v. Yangmin Fang, Huli Jing Internet Holdings Ltd., Case No. D2015-2140 (WIPO Jan 15, 2016).
Likewise, use of a domain name to direct internet users to third party commercial websites is concrete evidence of bad faith registration and use. See, e.g., Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA96577 (Forum Feb. 27, 2001) (respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
Complainant contends that Respondent’s use of the <rockettes.live>. domain name dilutes Complainant’s ROCKETTES mark, alleging that Respondent has diminished consumers’ capacity to associate the ROCKETTES mark with the quality products and services offered by Complainant under the ROCKETTES mark by using the mark in association with fraudulent sites that are not associated with or related to Complainant’s goods and services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the ROCKETTES trademark which is used in connection with entertainment services the ROCKETTES mark and for which Complainant holds a portfolio of trademark registrations including the following:
· United States registered trademark ROCKETTES, registration number 4809895 registered on the Principal Register on September 8, 2015 for goods in international class 3 ;
· United States registered trademark ROCKETTES, registration number 5418530 registered on the Principal Register on March 6, 2018 for goods in international class 14 ;
· United States registered service mark ROCKETTES, registration number 1209117 registered on the Principal Register on September 14 1982 for services in international class 41 ;
· United States registered trademark ROCKETTES, registration number 1202852 registered on the Principal Register on July 27, 1982 for goods in international class 25;
· United States registered trademark ROCKETTES, registration number 1860442 registered on the Principal Register on October 25, 1994 for goods in international class 28; and
· United States registered trademark ROCKETTES, registration number 2283460 registered on the Principal Register on October 5, 1999 for goods in international class 25.
Complainant also holds trademark and service mark registrations that incorporate ROCKETTES such as:
· United States registered trademark RADIO CITY ROCKETTES registration number 2563641 registered on the Principal Register on April 23, 2002 for goods in international class 28;
· United States registered trademark RADIO CITY ROCKETTES registration number 2567658 registered on the Principal Register on May 7, 2002 for goods in international class 25;
· United States registered service mark RADIO CITY ROCKETTES registration number 2147635 registered on the Principal Register on March 31, 1998 for services in international class 41;
· United States registered trademark THE ROCKETTE EXPERIENCE registration number 2573638 registered on the Principal Register on ;
· United States registered trademark ROCKETTES SUMMER INTENSIVE registration number 4357207 registered on the Principal Register on ;
· United States registered trademark ROCKETTES SUMMER INTENSIVE registration number 4272407 registered on the Principal Register on January 8, 2013 for services in international class 41.
Complainant has an established Internet presence and owns and uses the domain name <rockettes.com> in connection with the advertising and sale of its products and services.
The disputed domain name <rockettes.live> was registered on February 25, 1999 and resolves to various websites including a website purporting to offer erectile dysfunction medication.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint.
The Registrar has confirmed that Respondent is the registrant of the disputed domain name. Respondent availed of a privacy service to conceal his name on the published WhoIs. The Identity of the registrant was disclosed by the Registrar to the Forum.
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 has provided clear, convincing and uncontested evidence that it has rights in the ROCKETTES mark established by its ownership of the trademark/service mark registrations described above and that it has established rights and goodwill in the mark through its use in business providing entertainment services.
The disputed domain name <rockettes.live> is composed of Complainant’s ROCKETTES mark and the gTLD extension <.live>.
Complainant’s ROCKETTES mark is the dominant and only distinctive element in the disputed domain name. The gTLD extension <.live> no distinctive character because on the balance of probabilities it would be recognized as a technical necessity for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the ROCKETTES mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name because:
· Respondent has no relationship, affiliation, connection, endorsement or association with Complainant;
· Respondent has never requested or received any authorization, permission or license from complainant to use the ROCKETTES mark in any way;
· Respondent has never been commonly known by the disputed domain name <rockettes.live> or by the ROCKETTES mark and has never acquired any trademark rights in the same;
· there is no information available in the WHOIS record to suggest that Respondent is known by <rockettes.live>;
· given Complainant’s long and extensive world-wide rights in the ROCKETTES mark in connection with entertainment services and related goods and services, Respondent could not have rights in the ROCKETTES mark unless Complainant granted them, which Complainant asserts has not occurred;
· Respondent has not used the disputed domain name in good faith and in connection with a bona fide offering of services;
· a screen captures of the website to which the disputed domain name resolved on January 28, 2021 appears to show that the disputed domain name redirects customers and potential customers to a variety of different websites including a site with a pop-up error message that requires the user to click and possibly download malware; and another presents an advertisement for “miracle pills that cure erectile dysfunction” disguised as a CNN article;
· upon information and belief, Respondent is not engaged in a bona fide offering of goods and services, but rather is using the subject domain name to divert Complainant’s customers for commercial gain to gather personal information is not be a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests.
Respondent has failed to discharge the burden of production in this proceeding. This Panel must therefore find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii)
Complainant has satisfied this Panel that on the balance of probabilities the disputed domain name was registered in bad faith because it is composed only of Complainant’s ROCKETTES mark in its entirety, in combination with the non-distinctive gTLD extension; Complainant has an extensive international business and reputation; and the distinctive ROCKETTES mark has no meaning other than as Complainant’s trademark.
It follows that it is most improbable that the registrant of the disputed domain name was unaware of Complainant, its mark and reputation when the disputed domain name was chosen and registered.
This Panel finds therefore that the disputed domain name was registered with Complainant’s mark in mind with the intention of taking predatory advantage of Complainant’s reputation and goodwill by creating confusion among Internet users.
Additionally Complainant has satisfied this Panel that on the balance of probabilities the disputed domain name is being used in bad faith because the uncontested evidence indicates that the disputed domain name is being used to resolve to a number of websites, unrelated to Complainant, and it is clear that Respondent is intentionally using Complainant’s trademark within the disputed domain name in bad faith to divert Internet traffic to these websites.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer 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 <rockettes.live> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 29, 2021
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