Royal National Theatre v. nine times ventures
Claim Number: FA1203001432318
Complainant is Royal National Theatre (“Complainant”), represented by David Sabel, England. Respondent is nine times ventures (“Respondent”), Idaho, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationaltheatrelive.com>, registered with GoDaddy.com 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2012; the National Arbitration Forum received payment on March 1, 2012.
On March 1, 2012, GoDaddy.com Inc confirmed by e-mail to the National Arbitration Forum that the <nationaltheatrelive.com> domain name is registered with GoDaddy.com Inc and that Respondent is the current registrant of the name. GoDaddy.com Inc has verified that Respondent is bound by the GoDaddy.com 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 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2012 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@nationaltheatrelive.com. Also on March 14, 2012, 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 April 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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
B. Respondent
Respondent failed to file a Response in this matter.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(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.”).
Complainant does not assert rights in a registered trademark. Complainant claims that unregistered marks have a well established history of satisfying Policy ¶ 4(a)(i). Previous panels have held that a trademark registration is not required to establish rights in a given mark if the complainant is able to establish rights under the common law. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). The Panel finds that a trademark registration is not required for Complainant to establish rights in the NATIONAL THEATRE and NATIONAL THEATRE LIVE marks under Policy ¶ 4(a)(i).
Complainant claims that it has established its rights in the NATIONAL THEATRE mark by using it continuously for over 50 years in conjunction with its theatre business. Complainant submits multiple newspaper articles and brochures that all reflect its use of the NATIONAL THEATRE mark in conjunction with theatre productions and other theatre related services. Complainant states that it has earned millions of pounds in revenue under the NATIONAL THEATRE mark and has expended many of those pounds to advertise and promote its business under the mark. The Panel finds that Complainant has established its rights in the NATIONAL THEATRE mark under Policy ¶ 4(a)(i) by creating a secondary meaning in the mark due to its continuous and ongoing use over the last 60 years. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant also claims that it has established rights in the NATIONAL THEATRE LIVE mark through its continuous and ongoing use since 2009. Complainant submits two printouts from websites that support its claim for this mark. Complainant claims that its use is sufficiently public to have established secondary meaning and bases this claim on the Google search results that place its own websites as the primary results when searching for “National Theatre Live.” The Panel finds that Complainant has established rights in the NATIONAL THEATRE LIVE mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant contends that Respondent’s disputed domain name is confusingly similar to its NATIONAL THEATRE mark. Complainant states that the <nationaltheatrelive.com> domain name contains the entire mark while adding the generic top-level domain (“gTLD”) “.com” and the generic term “live.” Complainant also states that the disputed domain name removes the space between terms. The Panel finds that the <nationaltheatrelive.com> domain name is confusingly similar to Complainant’s NATIONAL THEATRE mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
Complainant also contends that Respondent’s disputed domain name is identical to its NATIONAL THEATRE LIVE mark. Complainant states that the disputed domain name includes the entire mark, while merely removing the spaces between the terms of the mark and adding the gTLD “.com.” The Panel concludes that Respondent’s disputed domain name is identical to Complainant’s NATIONAL THEATRE LIVE mark under Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Complainant has proven this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name. Complainant states that the WHOIS information identifies that the registrant of the disputed domain name is “nine times ventures.” Respondent has not offered any evidence to support a finding to the contrary. The Panel concludes from the available evidence that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that the disputed domain name resolves to a website offering links to unrelated businesses. The evidence submitted by Complainant indicates that the website offers both unrelated links and links to competing entities. The Panel concludes that Respondent is not making a bona fide offering of goods or services Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii) based upon its use of the disputed domain name to offer either competing or unrelated hyperlinks. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 also claims that Respondent offered to sell the disputed domain name for $12,500.00 which Complainant states is excessively higher than the actual cost of acquiring the domain name. Complainant submits a printout of an e-mail sent from Respondent to Complainant that supports Complainant’s allegation. Therefore, the Panel finds that Respondent’s attempt to sell the disputed domain name for $12,500 further indicates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
Complainant has proven this element.
Complainant posits that Respondent offered to sell the disputed domain name to Complainant for an amount that is far in excess of Respondent’s out-of-pocket costs associated with the domain name. Complainant submits a printout of communications between itself and Respondent which indicates that Respondent was requesting $12,500 to transfer the domain name to Complainant. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i) based upon Respondent’s effort to sell the disputed domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website”).
Complainant claims that Respondent has engaged in a pattern of bad faith registration and use. Complainant alleges that Respondent owns multiple other domain names that infringe on the marks of other entities. Complainant submits the WHOIS information for many of these marks to illustrate that point. The Panel finds that Respondent has engaged in a pattern of infringing registration that supports a finding of bad faith registration and use under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Complainant argues that Respondent registered the disputed domain name for its own commercial gain, indicating bad faith registration and use. Complainant states that the disputed domain name resolves to a website offering links to unrelated third-party businesses. The evidence submitted indicates that both unrelated and competing links are offered from the website to which the disputed domain name resolves. The Panel concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) based upon either interpretation of the true nature of the links offered. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant also argues that the Panel can reasonably assume that Respondent knew of its rights in the NATIONAL THEATRE and NATIONAL THEATRE LIVE marks. Complainant states that the well-known nature of its marks, along with the national media campaign launched to promote its business within the United States, makes it nearly inconceivable that Respondent could have been unaware of Complainant’s rights in the marks submitted. While constructive notice or knowledge has not been found to be sufficient to support a finding of bad faith registration and use, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the NATIONAL THEATRE and NATIONAL THEATRE LIVE marks when it registered the disputed domain name. The Panel uses that finding to further support a determination of bad faith registration and use under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
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 <nationaltheatrelive.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 19, 2012
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