Hamilton Uptown Limited Liability Company v. Ed Bienstock
Claim Number: FA1701001713039
Complainant is Hamilton Uptown Limited Liability Company (“Complainant”), represented by Stacy Grossman of Levine Plotkin & Menin, LLP, New York, New York, USA. Respondent is Ed Bienstock (“Respondent”), Brooklyn, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hamiltonthemusical.com> and <hamiltonamericanmusical.com> (the “Disputed Domain Names”), registered with GoDaddy.com, 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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 18, 2017; the Forum received payment on January 18, 2017.
On January 19, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hamiltonthemusical.com> and <hamiltonamericanmusical.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 “UDRP” or the “Policy”).
On January 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2017 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@hamiltonthemusical.com, postmaster@hamiltonamericanmusical.com. Also on January 19, 2017, 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.
On February 7, 2017, Respondent requested an extension of 20 calendar days for filing a Response, stating in part, “I have found only two days ago the emails from the Forum in my spam box.” On the same date, the Forum granted this request, giving the Respondent until February 28, 2017, to submit a Response.
A timely Response was received and determined to be complete on February 28, 2017.
Complainant’s Additional Submission was received and determined to be in compliance with Forum’s Supplemental Rule # 7 on March 6, 2017.
On March 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg as Panelist.
On March 14, 2017, Respondent’s Additional Submission was received.
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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it “is the producer of the Broadway production (and several other productions) of the theatrical work entitled Hamilton An American Musical (‘Hamilton’). Hamilton is a musical about the life of American founding father Alexander Hamilton, with music, lyrics and book by Lin-Manuel Miranda. The show was inspired by the 2004 biography Alexander Hamilton by Ron Chernow.” Complainant further states that “Hamilton opened off Broadway at the Public Theater in February 2015, and opened on Broadway at the Richard Rogers Theatre in August 2015, where it continues to play.” Complainant further states that “[i]n 2016, Hamilton was nominated for a record-setting 16 Tony Awards (winning 11, including Best Musical), and was also the recipient of both the 2016 Grammy Award for Best Musical Theater Album and the 2016 Pulitzer Prize for Drama”; “President Obama and the First Lady hosted the cast of the musical at the White House, where they performed selections from the show for attendees” in March 2016; “[t]he Grammy Award winning cast album of the Broadway production of Hamilton was the highest-selling Broadway cast album of 2015 and peaked at number one on the Rap Album chart, the first cast album to ever do so”; “[t]he Recording Industry Association of America (‘RIAA’) certified the album double platinum in October 2016, with more than 2,000,000 copies sold”; and “[t]here has been widespread media coverage of Hamilton, in nearly every major newspaper, magazine, television station and online media outlet.”
Complainant states, and provides evidence to support, that it “filed applications to register HAMILTON AN AMERICAN MUSICAL (and Design) as a trademark in February 2016” and that “[m]ost of its applications have been published for opposition and will register in due course.” These are referred to hereafter as the “HAMILTON Trademark.” Complainant also states that the HAMILTON Trademark is protected by “common law rights.”
Complainant states, and provides evidence to support, that the Disputed Domain Name <hamiltonthemusical.com> was registered on August 27, 2015, and is being used “as a pay-per- click site that promotes sites related to Hamilton.” Complainant states that the Disputed Domain Name <hamiltonamericanmusical.com> was registered on January 11, 2017, one day after its representative contacted Respondent about the Disputed Domain Name <hamiltonthemusical.com>.
Complainant states, and provides evidence to support, that it engaged in discussions with Respondent about purchasing the Disputed Domain Names for amounts ranging from $5,000 to $29,000, but that after “provisionally agree[ing]” on a purchase, Respondent “made a series of additional demands” that included, among other things, reference to a purchase price of $99,000 and “8 comp orch /house seats to the Broadway hamilton show a year” plus a “quick backstage tour.”
Complaint contends, in relevant part, as follows:
· The Disputed Domain Names are confusingly similar to the HAMILTON Trademark because, inter alia, the Disputed Domain Names “are comprised of the HAMILTON [Trade]mark in its entirety, with the addition of the words ‘THE MUSICAL’ in one case, and ‘AMERICAN MUSICAL’ in the other” and that such “slight variations are insufficient to differentiate a disputed domain name from a given mark.”
· Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, Respondent “never operated a website” using either of the Disputed Domain Names but instead “used them as pay-per-click sites”; the Disputed Domain Names “are not affiliated with Complainant, and Complainant has not authorized Respondent to use” the HAMILTON Trademark; “Respondent was not commonly known by the domain name[s] prior to [their] registration”; the Disputed Domain Names “are not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use”; Respondent’s use of the Disputed Domain Names “is designed to confuse unsuspecting Internet users”; and the Disputed Domain Names “are likely to cause confusion, mistake or to deceive as to the affiliation, connection, or association of the parties.”
· The Disputed Domain Names were registered and are being used in bad faith because, inter alia, “g]iven the fame of Complainant’s mark when Respondent registered the [Disputed] Domain[] [Names], Respondent’s efforts to extract large sums of money and free theater tickets in exchange for transfer of the Disputed] Domain[] [Names], and Respondent’s registration of the [s]econd… [Disputed] Domain [Name] after it had been contacted by [Complainant’s representative], it is clear that Respondent had actual knowledge of Complainant and its trademark at the time of registration of the Disputed Domain Names”; “Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website[s]”; because the Disputed Domain Name <hamiltonamericanmusical.com> was registered only after Complainant’s representative contacted Respondent about the Disputed Domain Name <hamiltonthemusical.com>, this second domain name “was undoubtedly registered primarily for the purpose of selling it to Complainant”; and “[g]iven the convention of adding ‘the musical’ to the title of a Broadway show, it is clear that Respondent’s registration of <www.HamiltonTheMusical.com> was primarily for the purpose of selling it to the Complainant.”
B. Respondent
Respondent states that “the Complainant egregiously mischaracterizes the scope of the trademarks and service marks at issue,” because “Complainant at most has rights to a specific logo, rather than to the words ‘HAMILTON AN AMERICAN MUSICAL.’” Respondent further states that, in the course of proceedings related to Office Actions for the HAMILTON Trademarks at the U.S. Patent and Trademark Office, Complainant “expressly admits ‘Applicant’s Mark is More than a Word Title’” and Complainant “offer[ed]… to disclaim all word elements” in applications for the HAMILTON Trademark; and that “[t]he marks were allowed only after the USPTO accepted the aforementioned offers by the Complainant offer to disclaim the words HAMILTON AN AMERICAN MUSICAL.”
As a result of the above, Respondent contends that “[t]he disclaimed elements of the marks are highly relevant in determining whether the first element of the UDRP is satisfied” because citing the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “Where a trademark includes a word or textual component which has been entirely disclaimed (indicating the complainant has no exclusive rights in such word or text) within the relevant registration, or of a word plus design element in which the design element is found to be the sole source of distinctiveness, such registration alone may be insufficient to enable the complainant to establish relevant rights for standing purposes under the UDRP, absent a showing of acquired distinctiveness through use of the relevant mark.” And: “Textual content which has been expressly disclaimed in a complainant's relevant trademark registration is generally disregarded by panels when assessing a domain name's identity or confusing similarity under the first element of the UDRP.”
Further, Respondent states that “the earliest filing date of any of the marks cited by Complainant is February 2, 2016, and therefore none of the marks had even been filed, much less published, when Respondent registered HamiltonTheMusical.com on August 27, 2015. Indeed, by Complainant’s own admission, at least one of the marks (Ser. No. 86804241) was not even used in commerce until September 25, 2015, which is after Respondent registered HamiltonTheMusical.com on August 27, 2015. Moreover, none of the marks had been registered when the Complaint was filed on January 19, 2017.”
Respondent contends, and provides an affidavit in support thereof, that he has legitimate interests in respect of the Disputed Domain Names because, inter alia, he “made demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services: namely, a musical which predates – and is entirely unrelated to – Complainant’s offering.”
Respondent contends that the Disputed Domain Names were not registered and are not being used in bad faith because, inter alia, Respondent had no contact with Complainant or Complainant’s representative until contacted by Complainant’s representative on January 10, 2017, which “would suggest that Respondent did not register the domain names at issue primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant”; archived copies of web pages associated with the Disputed Domain Names do not include pay-per-click advertisements and, in any event, such advertisements are permissible in some circumstances.
C. Additional Submissions
As noted above, each party has submitted an additional submission. While Rule 7 of the Forum’s Supplemental Rules expressly provides for such submissions, Rule 7(f) states that “[a]dditional submissions must not amend the Complaint or Response.” Accordingly, because the Panel considers each of the additional submissions in this case largely an amendment to previous filings, the Panel below discusses only the content in such filings that it considers relevant to this proceeding.
In its additional submission, Complainant provides additional articles about Hamilton the musical prior to Respondent’s registration of the Disputed Domain Names, which Complainant says “are a very small sample of the publicity received, and was accompanied by sales of merchandise, advertising, promotional and other production-related activities, all of which created renown of Complainant’s mark.” Further, Complainant contends that not all of its applications to register the HAMILTON Trademark contain a disclaimer – “and anyway, this argument is irrelevant because [of] Complainant’s far-reaching common law rights at the time Respondent registered the [Disputed Domain Names].”
Complainant also questions “[t]he veracity of Respondent’s claim of good faith registration” given that “[t]he timing of [Respondent’s] registration (August 27, 2015) is highly suspect in light of the fact that Complainant’s production opened on Broadway on August 6, 2015” and further given that Respondent’s registration of domain names containing “other famous musical titles” (such as those of A Chorus Line, Fiddler on the Roof, Guys and Dolls, Miss Saigon, the Sound of Music and Zorba) all occurred many years after such musicals ran on Broadway.
In his additional submission, Respondent contends that “Complainant has not alleged that it owns rights to the name ‘Hamilton’ alone”; “[n]or could the name ‘Hamilton’ standing alone acquire common law rights without substantial evidence of secondary meaning”; “[p]rior panels have held that common names and references to well-known stories, whether real or fictional, are rarely subject to common law trademark protection without substantial proof of secondary meaning”; “[t]he limited evidence submitted by Complainant – articles published by third parties and award recognition long after Respondent registered the first domain name – falls far short of meeting th[e] high standard” for establishing common law trademark rights in UDRP proceedings; and “regardless of the fame of the underlying theatrical production, none of Complainant’s evidence shows that the public associates the phrase ‘Hamilton An American Musical’ with this particular show.”
The Panel finds that the Disputed Domain Names are identical or confusingly similar to a trademark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and that Respondent registered and is using the Disputed Domain Names 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.
As of the date on which the Complaint was filed, Complainant apparently had no trademark registrations for the HAMILTON Trademark. Ordinarily, trademark applications alone are insufficient to establish “rights” for purposes of paragraph 4(a)(i) of the UDRP.
Further, although common law trademarks are sufficient under the UDRP, Complainant has failed to provide evidence that is typically required to establish such rights. Notably, WIPO Overview 2.0, paragraph 1.7, states the following in response to the question, “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?”:
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition…. [A] conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required…. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.
Here, Complainant has provided evidence making clear that Hamilton the musical is successful and well-known. However, Complainant has not provided much evidence that would be expected to establish that it has common law rights in the HAMILTON Trademark. For example, while the record includes significant amounts of media recognition, it contains nothing with respect to “length and amount of sales under the trademark, the nature and extent of advertising, [or] consumer surveys.” Accordingly, the Panel is reluctant to find that Complainant has established common law trademark rights in the HAMILTON Trademark.
Ordinarily, therefore, the absence of any trademark registrations and inadequate evidence to assert common law trademark rights would be fatal to a Complainant under paragraph 4(a)(i) of the UDRP. However, because Complainant’s trademark applications were the subject of much discussion by both Complainant and Respondent, the Panel exercised its authority to review those applications on the website of the United States Patent and Trademark Office (USPTO). As WIPO Overview 2.0, paragraph 4.5, states: “A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include… discretionary referencing of trademark online databases.”
Significantly, when reviewing applications for the HAMILTON Trademark, the Panel discovered that each of the following applications has matured into a registration subsequent to the date on which the Complaint was filed (and, interestingly, prior to the date of the Panel’s appointment):
· U.S. Reg. No. 5,149,283 for HAMILTON AN AMERICAN MUSICAL & design (first used in commerce on July 13, 2015; registered on February 28, 2017) for use in connection with “paper products, namely, souvenir programs concerning a musical; postcards and window cards in the nature of decorative posters that can be hung in a store window or elsewhere.” Disclaimer: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘AN AMERICAN MUSICAL’ APART FROM THE MARK AS SHOWN.”
· U.S. Reg. No. 5,149,284 for HAMILTON AN AMERICAN MUSICAL & design (first used in commerce on July 13, 2015; registered on February 28, 2017) for use in connection with “clothing, namely, t-shirts, sweatshirts, baseball caps and one piece infant garments.” Disclaimer: None.
· U.S. Reg. No. 5,154,092 for HAMILTON AN AMERICAN MUSICAL & design (first used in commerce on July 13, 2015; registered on February 28, 2017) for use in connection with “entertainment services in the nature of a theatrical performance of a musical play.” Disclaimer: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘HAMILTON’ AND ‘AN AMERICAN MUSICAL’ APART FROM THE MARK AS SHOWN.”
· U.S. Reg. No. 5,154,093 for HAMILTON AN AMERICAN MUSICAL & design (first used in commerce on July 13, 2015; registered on March 7, 2017) for use in connection with “entertainment services in the nature of a theatrical performance of a musical play.” Disclaimer: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘HAMILTON’ AND ‘AN AMERICAN MUSICAL’ APART FROM THE MARK AS SHOWN.”
· U.S. Reg. No. 5,154,094 for HAMILTON AN AMERICAN MUSICAL & design (first used in commerce on September 25, 2015; registered on March 7, 2017) for use in connection with “downloadable music via the Internet and wireless devices; pre-recorded CDs featuring music.” Disclaimer: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘HAMILTON’ AND ‘AN AMERICAN MUSICAL’ APART FROM THE MARK AS SHOWN.”
Therefore, it is apparent that Complainant “has rights” in the five HAMILTON Trademarks listed above, as these are now registered at the USPTO. Importantly, U.S. Reg. Nos. 5,149,283 and 5,149,284 do not disclaim the word “Hamilton.” Accordingly, there is no reason for the Panel to disregard these two registrations. Rather, the Panel will proceed to evaluate whether the Disputed Domain Names are confusingly similar to these registrations, which the Panel will refer to hereafter as the HAMILTON Registrations.
The relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “hamiltonthemusical” and “hamiltonamericanmusical”), as it is well established that the generic Top-Level Domain (“gTLD”) (i.e., “.com”) may generally be disregarded for this purpose. See the WIPO Overview 2.0, paragraph 1.2 (“[t]he applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”).
Each of the Disputed Domain Names contains the “HAMILTON” and “MUSICAL” portions of the HAMILTON Registrations. While the word “musical” is disclaimed from 5,149,283, it is not disclaimed from 5,149,284. Because the design element of any trademark cannot be replicated in a domain name, the Panel here considers whether the Disputed Domain Names are identical or confusingly similar to the word marks HAMILTON AN AMERICAN MUSICAL (disclaiming “AN AMERICAN MUSICAL”) and HAMILTON AN AMERICAN MUSICAL (disclaiming nothing), given that these words are “[w]hat stands out” in the HAMILTON Registrations, RUGGEDCOM, Inc. v. James Krachenfels, WIPO Case No. D2009-0130, and given that the word portion of the HAMILTON Registrations “is the only portion that can be used in speech when talking about Complainant’s products or services, or in written communications over the Internet, or while attempting to type in a web address directly into one’s browser.” Vaga-lume Midia Ltda v. Kevo Ouz d/b/a Online Marketing Realty, FA1287151 (Forum December 7, 2009).
It is apparent, therefore, that the Disputed Domain Names contain the prominent portions of words in the HAMILTON Registrations, the only differences being substitution of the word “the” for the word “an”, and deletion of the word “American” (which, in any event, is disclaimed from one of the HAMILTON Registrations). These minor differences do nothing to alleviate any confusing similarity.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, Respondent “never operated a website” using either of the Disputed Domain Names but instead “used them as pay-per-click sites”; the Disputed Domain Names “are not affiliated with Complainant, and Complainant has not authorized Respondent to use” the HAMILTON Trademark; “Respondent was not commonly known by the domain name[s] prior to [their] registration”; the Disputed Domain Names “are not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use”; Respondent’s use of the Disputed Domain Names “is designed to confuse unsuspecting Internet users”; and the Disputed Domain Names “are likely to cause confusion, mistake or to deceive as to the affiliation, connection, or association of the parties.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case. Although Respondent has submitted a Response as well as an additional submission, those documents do not contain credible allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names. Respondent’s assertions (which, granted, are supported by affidavits) that it “made demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services: namely, a musical which predates – and is entirely unrelated to – Complainant’s offering” are not believable.
“Credibility should not be discounted in determining a party’s rights even in a paper only proceeding such as the UDRP.” Gerald M. Levine, “Domain Name Arbitration” (Legal Corner Press, LLC, 2015), p. 463. “Instead of appearance and demeanor that carry weight to a trier of fact, parties are judged by their candor or lack of it, the plausibility of their arguments, their statements or silences and the evidence they produce, withhold or suppress.”
Here, Respondent’s assertions of rights or legitimate interests in the Disputed Domain Names are undermined by the following: Respondent registered the first of the Disputed Domain Names shortly after Complainant’s musical opened on Broadway in August 2015 – even though Respondent’s affidavit states that he began writing a musical based on the life of Alexander Hamilton three years earlier; Respondent registered the second of the Disputed Domain Names only after being contacted by Complainant’s representative in January 2017; Respondent proposed an expensive and fanciful transaction for sale of the Disputed Domain Names; and Respondent did not explain its alleged rights or legitimate interests in communication with Complainant during the course of discussions regarding such a sale, apparently asserting same for the first time in its Response.
Accordingly, “Respondent’s contentions in this regard [are] unbelievable and fanciful,” and, therefore “[t]he Panel finds that the Respondent has failed to produce any credible evidence to establish rights or legitimate interests in the disputed domain name[s].” Standard & Poor's Financial Services LLC v. Wang Kang Lin, WIPO Case No. D2012-0814. See also, e.g., Dreamworks L.L.C. v. Carol Maleti, WIPO Case No. D2003-0548 (disregarding Respondent’s “incredible assertion” attempting to establish rights or legitimate interests); and Share Our Gifts Foundation, Inc. v. Freedom Bands Inc., Fan Bandz Inc a/k/a fanbanz, WIPO Case No. D2004-1070 (“[w]hile there will certainly be cases in which a Panel cannot determine credibility, it would serve neither the interests of the parties nor the integrity of the process to dismiss any case in which one of the parties submits evidence which creates a colorable issue of credibility, leaving the parties to expensive and prolonged court proceedings”).
Therefore, without any credible evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by 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. Policy, paragraph 4(b).
For the reasons set forth above, the Panel does not find Respondent’s explanations with respect to the Disputed Domain Names credible. Therefore, the Panel looks at the uncontroverted facts: Respondent registered one of the Disputed Domain Names shortly after Complainant’s Hamilton musical opened on Broadway (and six months after the musical opened off Broadway), and the second of the Disputed Domain Names only after being contacted by Complainant’s representative. Even before Respondent registered the first of the Disputed Domain Names, the Hamilton musical had received widespread attention, including a review in The New York Times on August 6, 2015 (provided as an annex by Complainant) that the musical even at that time already “ha[d] been given the kind of worshipful press usually reserved for the appearances of once-in-a-lifetime comets or the births of little royal celebrities.”
Clearly, Respondent could not – and, indeed, does not – deny being unaware of the HAMILTON Trademark when he registered the Disputed Domain Names. Nor does Respondent deny attempting to sell the Disputed Domain Names to Complainant for a price ranging from $29,000 to $99,000 (plus, perhaps, eight prime location seats every year to the Broadway production of Hamilton the musical).
Therefore, regardless of how Respondent has used the Disputed Domain Names, the Panel finds that Respondent was aware of the HAMILTON Trademark and tried to profit off of his registration of them. Under similar circumstances, previous panels have not hesitated to find bad faith. See, e.g., Oculus VR, LLC v. Ivan Smirnov, FA1625898 (Forum July 27, 2015) (finding bad faith based upon “Respondent’s efforts to sell the disputed domain for $58,000” as well as registration days after the Complainant’s relevant product had “gained an incredible amount of notoriety and industry buzz”); Thermo Electron Corp. and Fisher Scientific Co. LLC and Fisher Scientific Int’l Inc. v. Charlie Xu, FA0713851 (Forum July 12, 2006) (complainants argued that the respondent was “opportunistically engaged in bad faith registration,” and the panel agreed – calling the timing of registration “a compelling indication of bad faith”); Coachella Music Festival, LLC and Future Festivals, LLC v. Bennett Carroccio / OurSquare Inc., FA1687024 (Forum Sept. 20, 1016) (finding bad faith where “Respondent requested an in-kind gift it values at $13,000 to transfer the disputed domain names to Complainant” and where “Complainant further alleges that the timing of Respondent’s registration of the disputed domain names is evidence of further bad faith”); and The National Football League v. Above.com Legal, FA1512872 (Forum Oct. 7, 2013) (disputed domain name “was registered shortly after Complainant adopted and registered the mark, and… Respondent has sought to sell the domain name for sums far exceeding its out-of-pocket costs [ranging from $35,000 to $100,000]”).
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamiltonthemusical.com> and <hamiltonamericanmusical.com> domain names be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: March 23, 2017
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