Theatre Development Fund, Inc. v. SERGE TUDOR / Zebroid, LLC
Claim Number: FA1606001677425
Complainant is Theatre Development Fund, Inc. (“Complainant”), represented by Stacy Grossman of Law Office of Stacy J. Grossman, New York, USA. Respondent is SERGE TUDOR / Zebroid, LLC (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tkts.online>, registered with Go China Domains, 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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2016; the Forum received payment on June 1, 2016.
On June 1, 2016, Go China Domains, LLC confirmed by e-mail to the Forum that the <tkts.online> domain name is registered with Go China Domains, LLC and that Respondent is the current registrant of the name. Go China Domains, LLC has verified that Respondent is bound by the Go China Domains, 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 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2016 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@tkts.online. Also on June 2, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses was served on, 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.
A timely Response was received and determined to be complete on June 22, 2016.
Complainant’s Additional Submission was received and determined to be compliant on June 27, 2016.
On June 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard DiSalle 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the TKTS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,510,002, registered Nov. 20, 2001). Respondent’s <tkts.online> domain name is identical to the TKTS mark; it differs only though the addition of the generic top-level domain (“gTLD”) “.online.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <tkts.online> domain name. It is not affiliated with Complainant, permitted to use the TKTS mark, or operates a business under the name “TKTS.” Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use and the resolving website is used to confuse Internet users into believing it is associated with Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <tkts.online> domain name in bad faith. It is being used to create a likelihood of confusion as to the source of the website. Respondent registered the <tkts.online> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the famous TKTS mark.
B. Respondent
Policy ¶ 4(a)(i)
Complainant does not have rights in the TKTS mark.
Policy ¶ 4(a)(ii)
Respondent has rights in the TKTS mark in relation to the sale of tickets for theatrical events.
Policy ¶ 4(a)(iii)
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
C. Additional Submission
On June 1, 2016, Complainant filed a motion to dismiss Respondent’s opposition to one of Complainant’s TKTS trademark applications with the USPTO on the grounds of improper service (Fed. R. Civ. P. 4) and failure to state a claim upon which relief can be granted (Fed. R. Civ. P. 12(b)(6)). Respondent failed to respond to that motion.
(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.
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.
Complainant claims rights in the TKTS mark through its registration with the USPTO (Reg. No. 2,510,002, registered Nov. 20, 2001). Complainant has provided evidence of this registration in its Exhibit C. Accordingly, the Panel finds that Complainant has rights in the TKTS mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).).
Complainant argues that Respondent’s <tkts.online> domain name is identical to the TKTS mark in that it differs only though the addition of the gTLD “.online.” The Panel finds the <tkts.online> domain name identical to the TKTS mark pursuant to Policy ¶ 4(a)(i). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”); see also DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Forum July 14, 2014) (holding that the addition of the new “.menu” gTLD combined with the “dunkin” element adds to the confusing character of the domain at issue).
The Panel notes that 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 (Forum Aug. 18, 2006). Complainant contends that Respondent is not commonly known by the <tkts.online> domain name because it is not affiliated with Complainant, permitted to use the TKTS mark, or operates a business under the name “TKTS.” The Panel notes that the available WHOIS information lists “SERGE TUDOR / Zebroid, LLC” as Registrant. The Panel finds a lack of evidence that Respondent is commonly known by the <tkts.online> domain name, and finds that Respondent is not so known under Policy ¶ 4(a)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant maintains that Respondent fails to use the <tkts.online> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the resolving website to confuse Internet users into believing it is associated with Complainant. Complainant has provided a screenshot of the resolving website in its Exhibit D. The Panel finds this evidence sufficient, and finds that Respondent fails to use the <tkts.online> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(a)(ii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 alleges that Respondent uses the <tkts.online> domain name in bad faith in that it is used to create a likelihood of confusion as to the source of the website. Complainant has provided a screenshot of the resolving website, in its Exhibit D, to demonstrate this use. The Panel finds this evidence sufficient, and finds that Respondent uses the <tkts.online> domain name in bad faith according to Policy ¶ 4(a)(iii). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(a)(iii) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant maintains that Respondent registered the <tkts.online> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the TKTS mark. Complainant argues that Respondent clearly had such knowledge because of the fame of the mark. The Panel finds this argument sufficient to demonstrate Respondent’s actual knowledge of Complainant’s rights, and finds that Respondent registered the <tkts.online> domain name in bad faith. 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 makes no contentions with regards to Policy 4(a)(iii)
The Complainant having established all three elements required under the ICANN Policy, the Panel grants its Motion to Dismiss Respondent’s opposition and concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tkts.online> domain name be TRANSFERRED from Respondent to Complainant .
Richard DiSalle, Panelist
Dated: July 12, 2016
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