Hershey Theatre v. LaPorte Holdings, Inc.
Claim
Number: FA0501000399347
Complainant is Hershey Theatre (“Complainant”),
represented by Kevin M. Gold, of Rhoads & Sinon LLP,
Post Office Box 1146, Harrisburg, PA 17108-1146. Respondent is LaPorte
Holdings, Inc. (“Respondent”), 2202 South Figueroa Street, Suite 721, Los
Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hersheytheater.com>, registered with Nameking.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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 10, 2005.
On
January 7, 2005, Nameking.Com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <hersheytheater.com> is
registered with Nameking.Com, Inc. and that Respondent is the current
registrant of the name. Nameking.Com, Inc. has verified that Respondent is
bound by the Nameking.Com, Inc. registration agreement and has thereby agreed
to resolve domain name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
January 11, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 31, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@hersheytheater.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
February 3, 2005, 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." 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 <hersheytheater.com>
domain name is confusingly similar to Complainant’s HERSHEY THEATRE mark.
2. Respondent does not have any rights or
legitimate interests in the <hersheytheater.com> domain name.
3. Respondent registered and used the <hersheytheater.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Hershey Theatre, is a performing arts center presenting Broadway shows,
classical music and dance attractions and world-renowned entertainers. Originally known as the Hershey Community
Theatre until 1979, Complainant has spent significant time, money and other
resources building its brand recognition.
Complainant has
used the HERSHEY THEATRE mark in commerce since September 1933, but has never
registered the mark. Complainant is a
non-profit theatre and is part of the M.S. Hershey Foundation. Complainant opened its seventy-first season
in November 2004.
Complainant
registered and uses the <hersheytheatre.com> domain name to inform the
public of the broad array of services that Complainant offers.
Respondent
registered the disputed domain name on November 19, 2002. Respondent has configured the domain name to
direct Internet users to a website that offers a search engine, and links to
websites that predominantly compete with Complainant’s services.
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.
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.
Under Policy ¶
4(a)(i), a complainant need not hold a registered trademark to establish rights
in a mark. Common law rights are
sufficient when a complainant demonstrates secondary meaning associated with a
mark. See McCarthy on Trademarks and
Unfair Competition, § 25:74.2 (4th ed. 2002) (stating that the ICANN
dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
Complaint under the Policy); see also British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”); see also 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); see also
Fishtech v. Rossiter, FA 92976
(Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights
in the mark FISHTECH which it has used since 1982).
The domain name
registered by Respondent, <hersheytheater.com>, is confusingly
similar to Complainant’s HERSHEY THEATRE mark because the only difference is
the mere transposition of the last two letters “e” and “r.” This slight change does not significantly
distinguish the domain name from the mark.
See Elder Mfg. Co., Inc. v.
Recker, FA 98414 (Nat. Arb. Forum Sept. 10, 2001) (“In the matter at bar it
is beyond refute that Respondent’s domain names are virtually identical, and
thus confusingly similar to Elder’s trademarks. Any superficial differences
between the domain names and the Elder trademarks are de minimis and of
no legal consequence”); see also Slep-Tone
Entm't Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum
Mar. 13, 2000) (“[L]ikelihood of confusion is further increased by the fact
that the Respondent and [Complainant] operate within the same industry.”); see
also Hewlett-Packard Co. v. Cupcake
City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name
which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of
the Policy); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he transposition of two letters does not create a distinct mark
capable of overcoming a claim of confusing similarity, as the result reflects a
very probable typographical error”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
has argued that Respondent has no rights or legitimate interests in the domain
name that incorporates Complainant’s mark.
Due to Respondent’s failure to respond to the Complaint, it is assumed
that Respondent lacks rights and legitimate interests in the disputed domain
name. The burden shifts to Respondent
to show that it does have rights or legitimate interests once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Do the Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to
come forward to [contest a complainant’s allegations] is tantamount to
admitting the truth of complainant’s assertion in this regard”); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s
failure to respond: (1) Respondent does not deny the facts asserted by
Complainant, and (2) Respondent does not deny conclusions which Complainant
asserts can be drawn from the facts).
Respondent
is using the <hersheytheater.com> domain name to direct Internet
users to a website that features advertising for a variety of services and
hosts a search engine to link viewers to an array of websites, including sites
that offer the same type of services that Complainant offers both in its
HERSHEY THEATRE office and online.
Respondent’s use of the domain name, which is confusingly similar to
Complainant’s HERSHEY THEATRE mark, to direct Internet users interested in
Complainant’s products to a commercial website that offers a search engine and
links to theatre-related websites is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use); see also TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that
Respondent’s diversionary use of Complainant’s marks to send Internet users to
a website which displayed a series of links, some of which linked to
competitors of Complainant, was not a bona fide offering of goods or services);
see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan
10, 2003) (finding that Respondent had no rights or legitimate interests in the
disputed domain name where it used Complainant’s mark, without authorization,
to attract Internet users to its business, which competed with Complainant).
Nothing
in the record, including the WHOIS domain name registration information, for
the <hersheytheater.com> domain name dispute suggests that
Respondent is commonly known by the domain name or by Complainant’s HERSHEY
THEATRE mark pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <hersheytheater.com> domain name to provide links to
popular productions and categories of the entertainment market including
theatre schedules and ticket sales.
Complainant’s business also provides its own theatre schedule, seating
diagrams and ticket sales. The Panel
finds that, by creating confusion around Complainant’s mark, Respondent is
attempting to disrupt the business of a competitor. Respondent’s use of a confusingly similar version of
Complainant’s mark to offer goods and services similar to Complainant’s goods
and services is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding
that Respondent registered and used the domain name <eebay.com> in bad
faith where Respondent has used the domain name to promote competing auction
sites); see also Hewlett Packard
Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that
Respondent registered and used the domain name primarily for the purpose of
disrupting the business of Complainant by offering personal e-mail accounts
under the domain name <openmail.com> which is a use identical to
Complainant’s services under the OPENMAIL mark); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
The Panel infers
that Respondent intentionally registered a domain name that incorporates
Complainant’s mark for Respondent’s commercial gain. Respondent’s disputed domain name diverts Internet users who seek
Complainant’s HERSHEY THEATRE mark to Respondent’s search engine and to links
offering theatre-related services through the use of a domain name that is
confusingly similar to Complainant’s mark.
Respondent’s practice of diversion, motivated by commercial gain,
through the use of a confusingly similar domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also State Fair of Texas v.
Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith
where Respondent registered the domain name <bigtex.net> to infringe on
Complainant’s goodwill and attract Internet users to Respondent’s website); see
also ESPN, Inc. v. Ballerini, FA
95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent
linked the domain name to another website <iwin.com>, presumably
receiving a portion of the advertising revenue from the site by directing
Internet traffic there, thus using a domain name to attract Internet users for
commercial gain).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <hersheytheater.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
February 17, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum