national arbitration forum

 

DECISION

 

American Musical Theatre of San Jose, Inc. v. Wolf Internet Services LDC c/o Wolfgang Sauer

Claim Number:  FA0609000797527

 

PARTIES

Complainant is American Musical Theatre of San Jose, Inc. (“Complainant”), represented by Milana Homsi, of Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA 94304-1050.  Respondent is Wolf Internet Services LDC c/o Wolfgang Sauer (“Respondent”), P.O. Box 364, Belize City 00000 BZ.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amtsj.com>, registered with Enom, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 18, 2006.

 

On September 18, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <amtsj.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 September 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 16, 2006 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@amtsj.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 23, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant runs a non-profit theater company in San Jose, California, which has been in operation for over seventy-two years. 

 

Since 1995, Complainant has continuously used the AMTSJ mark, an abbreviation of Complainant’s full business name, to refer its theater company. 

 

Complainant puts on six to eight stage productions per year, and also offers education and training programs, under the mark. 

 

Over 250,000 people attend Complainant’s shows per year and Complainant earned $18.4 million in revenue in 2005. 

 

Complainant maintains a website at the <amtsj.org> domain name.

 

Respondent registered the <amtsj.com> domain name on September 10, 2004. 

 

Respondent uses the disputed domain name to operate a commercial website featuring pay-per-click links to other theater companies and ticket brokers unrelated to Complainant.

 

Respondent’s <amtsj.com> domain name is identical to Complainant’s AMTSJ mark.

 

Respondent has no rights or legitimate interests in the <amtsj.com> domain name.

 

Respondent registered and uses the <amtsj.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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:

 

i.   the domain name registered by Respondent is identical or confusingly similar to a

     trademark or service mark in which Complainant has rights; and

ii.  Respondent has no rights or legitimate interests in respect of the domain name; and

iii. the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

 

Complainant has not registered the AMTSJ mark with any trademark authorities.  However, the Policy does not require Complainant to hold a trademark registration in order to establish rights in the mark for purposes of Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a complainant's mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001):

 

The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.

 

Through continuous use of the AMTSJ mark in connection with its theater company operations since 1995, the AMTSJ mark has acquired secondary meaning.  Therefore, Complainant has established common law rights in the AMTSJ mark pursuant to Policy ¶ 4(a)(i).  See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that a complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001):

 

[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.

 

The only difference between Respondent’s <amtsj.com> domain name and Complainant’s AMTSJ mark is the addition of the generic top-level domain (“gTLD”) “.com.”  Previous panels have stated that the addition of a gTLD to a complainant’s mark does not create a distinguishing difference.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to a complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):

 

[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .

 

Therefore, the Panel concludes that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the <amtsj.com> domain name.  Complainant must first make out a prima facie case in support of its allegations. The burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):

 

Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).

 

See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to the domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <amtsj.com> domain name.  See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent has no rights or legitimate interests in the domain name because that respondent never submitted a response or provided the panel with evidence to suggest otherwise); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000):

 

By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name.  

 

However, the Panel will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

In this connection, we first observe that Complainant alleges, and Respondent does not deny, that there is no evidence in the record suggesting that Respondent is commonly known by the disputed domain name, including the WHOIS information, which lists “Wolf Internet Services c/o Wolfgang Sauer” as the registrant of the <amtsj.com> domain name.  Consequently, Respondent has not established rights or legitimate interests in the <amtsj.com> domain name in accordance with Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006); see also Coppertown Drive-Thru Systems, LLC v. Snowden, FA 715089 (Nat. Arb. Forum Jul. 17, 2006).

 

Moreover, it is likewise undisputed that Respondent’s <amtsj.com> domain name, which includes Complainant’s entire AMTSJ mark, resolves to a commercial website displaying links to competing theater companies and ticket brokers.  In Citigroup Inc. v. Horoshiy, Inc., FA 290633 (Nat. Arb. Forum Aug. 11, 2004), the panel found that a respondent’s use of domain names that were confusingly similar to a complainant’s marks to redirect Internet users seeking that complainant’s products to a website with links offering products that competed with those of that complainant did not represent 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).  Because similar circumstances exist in the present case, and Respondent likely profits from diverting Internet users to third-party websites, we reach the same conclusion.  See also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with those of a complainant was not 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)).

 

The Panel therefore concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The record reflects that Respondent uses the <amtsj.com> domain name to redirect Internet users to its own commercial website with links to competing theater companies and ticket brokers.  Respondent does not deny Complainant’s allegation that this is done for commercial gain. Respondent’s diversionary use of the <amtsj.com> domain name for commercial gain comes within Policy ¶ 4(b)(iv).  It is thus plain that Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s AMTSJ mark in order to profit from the goodwill associated with the mark.  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent was diverting Internet users searching for a complainant to its own website and likely profiting from click-through fees); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002):

 

By use of …[a disputed domain name]… to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv). 

 

For this reason, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <amtsj.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

Terry F. Peppard, Panelist

Dated:  October 30, 2006

 

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