DECISION

 

Des Moines Performing Arts v. Max Harlin / Pure Tonic Marketing Ltd

Claim Number: FA2501002133518

 

PARTIES

Complainant is Des Moines Performing Arts ("Complainant"), represented by Matthew Warner-Blankenship of Dentons Davis Brown, P.C., Iowa, USA. Respondent is Max Harlin / Pure Tonic Marketing Ltd ("Respondent"), Seychelles.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <desmoinescivic.com>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of hid knowledge has no known conflict in serving as Panelist in this proceeding.

 

Gerald M. Levine, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 6, 2025; Forum received payment on January 6, 2025.

 

On January 6, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <desmoinescivic.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 January 13, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2025 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@desmoinescivic.com. Also on January 13, 2025, 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.

 

An informal email Response was received on January 30, 2025.

 

On January 30, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Gerald M. Levine, Esq. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

The disputed domain name, <desmoinescivic.com> was registered on May 8, 2017.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant (sometimes referred to as DMPA) states that it is central Iowa's premier not-for-profit performing arts organization and operates the Des Moines Civic Center, a 2,744-seat performing arts center located in Des Moines, Iowa. It has been Iowa's largest theater since it opened on June 10, 1979, and is used for concerts, Broadway shows, ballets, and other special events.

 

The Complainant states further that it operates several venues, but the largest and most well-known is their key venue: the Des Moines Civic Center. Through prominent promotion and longstanding use, the relevant consuming public identifies the Des Moines Civic Center as the preeminent performing arts venue in the state of Iowa, and commonly refers to DMPA under that name, and as such DMPA has developed highly valuable goodwill and substantial common law rights in the Des Moines Civic Center trademark. It contends that it has spent significant time and resources developing consumer and industry recognition and goodwill in Complainant's Marks.

 

The Complainant contends that it learned about Respondent's infringing domain name and website from a demand letter received on October 9, 2024 from PicRights International, Inc. ("PicRights") on behalf of the Associated Press alleging "Unlicensed Use of The Associated Press Imagery" on the <desmoinescivic.com> website.

 

The Complainant contends further that it has an unregistered trademark through continuous use of "Des Moines Civil Center" from its opening in 1979. On December 12, 2024, the Complainant applied to the USPTO for registration of "DES MOINES CIVIC CENTER".

 

B. Respondent

Respondent did not submit a formal response. In its informal email it identified itself as Pure Tonic Marketing "a small marketing agency that focuses on entertainment guides for various concert locations, cities and venues around the globe. Alongside concert schedules, we provide important information such as directions, and recommendations for local restaurants, nearby hotels and of course reputable ticket providers. Going beyond just simple concert listing, we offer everything a reader might need for planning a full successful night out."

 

Respondent denies that it is creating the false impression that it is maintained by or associated with Complainant by pointing out that the website contains disclaimers of association on every page. It invited the Complainant "to discuss the websites content," adding that "a UDRP forced transfer of the domain we feel is unjustified, given our clear efforts of good faith and most importantly that the domain name itself does not infringe on any trademarks." 

 

Respondent concluded that if "the complaining party want to resolve this outside of UDRP . . . [t]hey are welcome to reach out."

 

FINDINGS

1.       Complainant has demonstrated that it owns and operates the Des Moines Civic Center and that the Center has been continuously in use from its opening in June of 1979;

2.       While Complainant does not own a registered mark, it has by its continuous use of the Center acquired distinctiveness for the mark;

3.       Respondent acquired <desmoinescivic.com> with actual knowledge of Complainant;

4.       Respondent registered and is using <desmoinescivic.com> in competition with the Complainant in offering through a third party vendor to sell tickets to performances and events at the Des Moines Civic Center;

5.       Respondent lacks rights or legitimate interests in <desmoinescivic.com>;

6.       Respondent registered and is using <desmoinescivic.com> in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 formal response, but taking into account its summary statements in the informal email and such other evidence of record, the Panel shall decide this administrative proceeding on the basis of the undisputed facts pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and it shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. See Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Claim No. D2000-1195 ("[I]n the absence of direct evidence, complainant and the panel must resort to reasonable inferences from whatever evidence is in the record.")

Identical and/or Confusingly Similar

For a complainant to establish that it has standing to maintain a UDRP proceeding it must first demonstrate that it has rights in a trademark, and if it does it must then show that the disputed domain name is either identical or confusingly similar to that mark.

The Complainant does not have a registered mark for "Des Moines Civic Center", but contends that from June of 1979 it has continuously offered stage performances and events at that venue. In support of its claim for an unregistered mark, the Complainant contends that it has spent significant time and resources developing consumer and industry recognition and goodwill in developing it.

Specifically: "[A] typical yearly marketing budget for events at DMPA's Des Moines Civic Center is over $800,000.00. Complainant produces and prints approximately 150,000 show programs to distribute at events in the Des Moines Civic Center that display the venue name, which is the name that consumers associate with DMPA's services. The DES MOINES CIVIC CENTER Mark is therefore widely known by the relevant consuming public and Complainant has substantial goodwill and common law rights in the DES MOINES CIVIC CENTER Mark as a result." 

Applications for a trademark confer no right to a mark. See CyberTrader, Inc. v. Gregory Bushell, WIPO Claim No. D2001-1019 ("Mere applications for registration do not prove any protectable rights."). Contentions of use alone generally fall short of what would be expected to prove common law rights. See WIPO Overview 3.0, Sec. 1.3: What does a complainant need to show to successfully assert unregistered or common law trademark rights?  

 

The question before the Panel is whether "Des Moines Civic Center" functioned as a mark at the time Respondent registered <desmoinescivic.com>. Panel has performed some limited research as it is permitted to do (see WIPO Overview, Sec. 4.8) by accessing Respondent's historical website pages on <archive.org> and finds that they corroborate that from 2017 to the present there were the numerous performances and events at the Des Moines Civic Center. 

 

The Panel accepts this proof from the historical archives of the numerous performances and events at the Des Moines Civic Center. It is consistent with Complainant's contentions and is material as evidencing both the complainant's active and continuous use of the Des Moines Civic Center and the associated costs and publicity in operating at that venue. The Panel accepts that the Complainant has common law rights in DES MOINES CIVIC CENTER that predate the Respondent's registration of the disputed domain name.

 

The sole difference between <desmoinescivic.com> and DES MOINES CIVIC CENTER is the omission of the word "Center." Just as where the addition of letters and words does not prevent a finding of confusing similarity under the first element, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018), so too the omission of letters or words does not weaken the dominance of the mark. See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) ("In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.")

 

In comparing the disputed domain name with Complainant's common law mark it is evident that <desmoinescivic.com> is confusingly similar with that mark. The TLD as a functional element is disregarded. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.")

 

Accordingly, the Complainant has satisfied Para. 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

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.

 

Here, Complainant contends that the Respondent lacks rights or legitimate interests in <desmoinescivic.com>. It supports this assertion by declaring that it has neither licensed nor otherwise authorized Respondent to use its mark. However, in its informal email, Respondent contends that it is performing a bona fide service by offering to sell tickets to the Des Moines Civic Center performances and events, not only at this venue but "various [other] concert locations, cities and venues around the globe." 

 

Acting as a broker in selling performance and event tickets may be consistent with a bona fide offering of services, Policy ¶ 4(c)(i). In testing out this possibility, the Panel considered whether Respondent's assertion of its global service to other concert locations and cities might support a right or legitimate interest. However, Respondent's website at <desmoinescivic.com> contains no listing of alleged concert locations and cities globally. The Panel finds that this absence supports the reasonable inference that the alleged global services is likely a fiction and for reasons more fully explained in the next section even if other domain names exist for other venues and cities they are likely to reenact the same conduct that supports lack of rights or legitimate interests.  

 

Based on the record, the Panel finds that Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in <desmoinescivic.com>. Para. 4(c) provides a list of three nonexclusive circumstances any one of which if proved would supports Respondent's right or legitimate interest in the disputed domain name.

 

Apart from Respondent's informal email that it has rights or legitimate interests in the disputed domain name, it provides no material evidence to support this assertion. Taking the three circumstances seriatim, the first demands of the Respondent proof that "the domain name or a name corresponding to the domain name [is] in connection with a bona fide offering of goods or services," Para. 4(c)(i) of the Policy. 

 

Here, there is no such evidence of a bona fide offering of services. In fact, the Respondent is not offering any services at all since the alleged ticket service is performed by appropriating Complainant's mark and diverting consumers to a third-party commercial website, www.ticketsqueeze.com to perform the services. This has all the attributes of a routine PPC model of cybersquatting. See Medtronic, Inc. v. Aytekin Yilmaz of Medo Tekstil Elektronik Al. Sat. Tic. Ltd., WIPO Claim No. D2021-1758 (WIPO September 28, 2021) (Bona fide use "encompass[es] the Respondent's knowledge and motives in choosing the name in question– if done deliberately to trade off, or take advantage of the Complainant's name or reputation, then the 'bona fide' requirement is not met").

 

As Respondent identifies itself in its informal email as Pure Tonic Marketing, it clearly is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). As the Respondent does not raise any defense under Policy ¶ 4(c)(iii) for rights or legitimate interests based on noncommercial or fair use of <desmoinescivic.com> no further discussion is necessary.   

 

A careful review of <desmoinescivic.com> shows that Respondent identifies itself as "Des Moines Civic Center Tickets." Even though Respondent disclaims any affiliation with Des Moines Performing Arts the only information provided on the resolving website is the address and telephone number of the Des Moines Civic Center.  

 

If the only contact information on the resolving website is that of the mark owner, Respondent's failure to identify itself and provide contact information undermines the very nature of its disclaimer for at the same time it disclaims it provides only contact information of the mark owner.

 

Accordingly, the Complainant has satisfied Para. 4(ii) of the Policy.

 

Registration and Use in Bad Faith

Complainant has the burden of proving that a respondent's registration and use of a disputed domain name was (and is) in bad faith. The Policy sets forth a set of four nonexclusive circumstances if any one of which is proved demonstrates registration and use in bad faith.

 

In reviewing Respondent's conduct the Panel finds that the evidence supports violation of two and possibly three of the four circumstances. 1) Respondent's informal email asking Complainant whether it "want[ed] to resolve this outside of UDRP? It may save them some money" invites an inference that Respondent is offering to negotiate a fee to transfer <desmoinescivic.com> for a "valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name." Para. 4(b)(i) of the Policy. However, as there is insufficient proof that this was Respondent's intentions, no finding is made on this ground. 

 

2) Panels have held that using another's mark to resolve to a website that offers products or services in competition with a Complainant's business is a violation of Para. 4(b)(iii) of the Policy. Here, the Respondent has registered and is using <desmoinescivic.com> that is confusingly similar if not virtually identical to Complainant's mark. While it purports to be a ticket agent it is actually acting as a shill for another party that performs the service and competes with Complainant for sale of tickets. See State Farm Mut. Auto. Ins. Co. v. Hooks, FA 1282843 (Forum Oct. 13, 2009) ("The Panel infers that Respondent receives click-through fees for diverting Internet users to third-party websites[, b]ecause Respondent's domain names are confusingly similar to Complainant's[…mark therefore causing confusion which constitutes] bad faith registration and use pursuant to Policy ¶ 4(b)(iv)."  See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum August 10, 2015) ("Respondent uses the disputed domain name to confuse Internet users by unlawfully selling tickets to directly competitive concerts and events, thereby engaging in conduct proscribed by Policy ¶ 4(b)(iii).").  

 

3) Respondent has violated Para. 4(b)(iv) of the Policy "[B]y creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location." 

 

The Respondent has brought no other circumstances to the Panel's attention from which the Respondent could reasonably conclude that its registration and use of <desmoinescivic.com> conduct was lawful. see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

Accordingly, the Complainant has satisfied Para. 4(a)(iii) of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <desmoinescivic.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Gerald M. Levine, Panelist

Dated: February 4, 2025