Paper Mill Playhouse v. Airai Holdings
Claim Number: FA2203001989259
Complainant is Paper Mill Playhouse (“Complainant”), represented by Stacy Grossman of Levine Plotkin & Menin, LLP, New York, USA. Respondent is Airai Holdings (“Respondent”), Palau.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <papermillplayhouse.org>, registered with Tucows Domains 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2022. The Forum received payment on March 22, 2022.
On March 22, 2022, Tucows Domains Inc. confirmed by e-mail to the Forum that the <papermillplayhouse.org> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 March 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2022 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 March 24, 2022, 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 April 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 a nationally renowned not-for-profit theater in New Jersey. Complainant has common law and registered rights in the PAPER MILL PLAYHOUSE mark. Respondent’s <papermillplayhouse.org> domain name is identical to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <papermillplayhouse.org> domain name as Respondent is not commonly known by the domain name nor did Complainant authorize Respondent to use the PAPER MILL PLAYHOUSE mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a parked webpage that offers pay-per-click links.
Respondent registered and is using the <papermillplayhouse.org> domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the PAPER MILL PLAYHOUSE mark due to the longstanding use of the mark in commerce.
Moreover, Respondent has been defaulted in several other UDRP proceedings, including Indiana University v. Airai Holdings, FA1404001553395 (Forum May 14, 2014) and AGIP, LLC Limited Liability Company Delaware v. Airai Holdings, FA1607001683996 (Forum Aug. 25, 2016). This evidences a pattern of bad faith registration, and further demonstrates Respondent’s bad faith in this case.
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has common law rights in the PAPER MILL PLAYHOUSE mark through use in commerce since 1938. Articles published in 2016 and 2022 refer to Complainant as “A beloved New Jersey arts institution since 1938”. Complainant has also shown that it has rights in the PAPER MILL PLAYHOUSE mark through registration with the USPTO, Reg. No. 5213789, registered on May 30, 2017.
The Panel finds Respondent’s <papermillplayhouse.org> domain name to be identical to Complainant’s PAPER MILL PLAYHOUSE mark since it incorporates the mark in its entirety and adds the inconsequential “.org” generic top-level domain (“gTLD”), which may be ignored.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <papermillplayhouse.org> domain name was registered on December 12, 2001. It resolves to a parked webpage that offers pay-per-click links to third-party ticket sellers’ websites, which compete with Complainant for ticket sales.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <papermillplayhouse.org> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was aware of Complainant’s common law PAPER MILL PLAYHOUSE mark when Respondent registered the <papermillplayhouse.org> domain name in 2001 and that Respondent is using the domain name intentionally in an attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element. It is therefore unnecessary for the Panel to consider Respondent’s previous history of domain name complaints.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <papermillplayhouse.org> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: April 19. 2022
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