Roundhouse Entertainment Pty Ltd v. Nathan Isacar
Claim Number: FA1108001401943
Complainant is Roundhouse Entertainment Pty Ltd (“Complainant”), represented by Peter E. Nussbaum of Wolff & Samson PC, New Jersey, USA. Respondent is Nathan Isacar (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dayonthegreen.info>, registered with GoDaddy.com Inc. (R171-LRMS).
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 A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2011; the National Arbitration Forum received payment on August 4, 2011.
On August 5, 2011, GoDaddy.com Inc. (R171-LRMS) confirmed by e-mail to the National Arbitration Forum that the <dayonthegreen.info> domain name is registered with GoDaddy.com Inc. (R171-LRMS) and that Respondent is the current registrant of the name. GoDaddy.com Inc. (R171-LRMS) has verified that Respondent is bound by the GoDaddy.com Inc. (R171-LRMS) 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 August 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2011 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@dayonthegreen.info. Also on August 10, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On, September 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" 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 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 <dayonthegreen.info> domain name is confusingly similar to Complainant’s A DAY ON THE GREEN mark.
2. Respondent does not have any rights or legitimate interests in the <dayonthegreen.info> domain name.
3. Respondent registered and used the <dayonthegreen.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its A DAY ON THE GREEN mark in connection with its music concert series held each year in Australia and New Zealand. Complainant has registered the A DAY ON THE GREEN mark with IP Australia (Reg. No. 863,836 registered January 23, 2001).
Respondent, Nathan Isacar, registered the <dayonthegreen.info> domain name on March 5, 2011. The disputed domain name resolves to a website stating that it is under construction but will soon be used to provide upcoming information regarding music concerts.
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.
Complainant has registered its A DAY ON THE GREEN mark with IP Australia (Reg. No. 863,836 registered January 23, 2001). The Panel finds that registration with a trademark authority, such as IP Australia, proves that Complainant has rights in the mark according to Policy ¶ 4(a)(i), regardless of Respondent’s location. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that Respondent’s <dayonthegreen.info> domain name is confusingly similar to Complainant’s A DAY ON THE GREEN mark because the disputed domain name only omits the letter “a” and the spaces between the terms and adds the generic top-level domain (“gTLD”) “.com.” Based on Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006), and CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002), which both held that domain names omitting single letters were nevertheless confusingly similar, the Panel concludes that Respondent’s failure to include the letter “a” in this case does not prevent a finding of confusing similarity. The Panel also finds that deleted spaces and an added gTLD do not affect the essence of the domain name in terms of confusing similarity. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel concludes that Respondent’s <dayonthegreen.info> domain name is confusingly similar to Complainant’s A DAY ON THE GREEN mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant bears the initial burden under Policy ¶ 4(a)(ii) of presenting a prima facie case against Respondent in arguing a lack of rights and legitimate interests. Only after such a case has been made, as in these proceedings, does the burden shift to Respondent to prove rights and legitimate interests. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”). Respondent has not answered the Complainant with anything except silence, however. Because of this failure to respond, the Panel infers that Respondent neither contests Complainant’s allegations nor possesses rights and legitimate interests. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). In the interest of fairness, however, the Panel will continue to examine the evidence according to the Policy ¶ 4(c) factors.
Complainant contends that Respondent is not commonly known by the <dayonthegreen.info> domain name. The WHOIS information for the disputed domain name indicates that the registrant is “Nathan Isacar,” a name with no facial association to the disputed domain name. Due to the lack of evidence supporting any nominal connection between Respondent and the disputed domain name, the Panel finds that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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 asserts that the purpose of the <dayonthegreen.info> domain name is to soon host a website discussing and advertising competing music-concert services and that this effort to deceive consumers and promote competing concerts shows no bona fide offering of goods or legitimate noncommercial or fair use. The Panel finds, however, that the UDRP does not look at future use but instead only examines past and current uses. The Panel finds that the resolving website is not currently in active use because the website states the website is under construction and there are no links, no concert dates, no functioning tabs, etc. Therefore, the Panel finds that Respondent has not satisfied Policy ¶ 4(c)(i) and 4(c)(iii), not because it is competing with Complainant under Complainant’s mark but because Respondent has failed to actively use the dispute domain name. See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the respondent had not established any rights or legitimate interests in the domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant alleges that Respondent’s <dayonthegreen.info> domain name resolves to a website that states it is under construction and that is planning to offer music concert services that compete with the music concerts offered by Complainant. As the UDRP is concerned only with current or past uses, however, the Panel finds that a website that is under construction and that currently displays no informational content is not in active use. Because the website is currently inactive, it cannot be said to be competing with Complainant or to be generating profit. Past panels have nevertheless found, however, that failure to actively use a disputed domain name supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See KB Home v. Nguyen, FA 1045203 (Nat. Arb. Forum Sept. 10, 2007) (finding that a resolving website with no function other than displaying a message that it is under construction is an inactive use of the disputed domain name, which supports a finding of bad faith under Policy ¶ 4(a)(iii)); see also Royal Bank of Scotland Grp plc v. Metcalfe, FA 1094633 (Nat. Arb. Forum Nov. 30, 2007) (determining that identifying a resolving website as “under construction” indicates bad faith according to Policy ¶ 4(a)(iii) as the disputed domain name is not in active use). Based on these precedential cases, the Panel concludes that Respondent’s actions in connection with the <dayonthegreen.info> domain name indicate bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dayonthegreen.info> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 3, 2011
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