Theatre Development Fund, Inc. v. Matt Moran
Claim Number: FA1908001857375
Complainant is Theatre Development Fund, Inc. (“Complainant”), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman, New York, USA. Respondent is Matt Moran (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tkts.org>, registered with Bizcn.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2019; the Forum received payment on August 14, 2019.
On September 3, 2019, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <tkts.org> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.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 September 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 2019 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.org. Also on September 5, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant is the largest not-for-profit Performing Arts Service Organization in the USA. It sells discounted Broadway and Off Broadway tickets through its booth located at the center of Times Square in New York City. It also has subsidized more than 1,000 plays and musicals, including 37 productions that later became Pulitzer Prize winners. Complainant has rights in the trademark TKTS mark through its use in commerce since 1973 and its registration of the mark with the USPTO dating back to 2001. Respondent’s <tkts.org> domain name, registered in 2003, is identical or confusingly similar to Complainant’s mark as Respondent incorporates the mark in full and merely adds the “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <tkts.org> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use Complainant’s mark. Furthermore, Respondent’s use of the disputed domain name to resolve to a pay-per-click website with links related to Complainant’s business is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass itself off as Complainant.
Finally, Respondent registered and uses the disputed domain name in bad faith, as Respondent is attempting to attract Internet users for commercial gain with competing hyperlinks. Additionally, Respondent had actual knowledge of the Complainant’s rights in the mark when registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the trademark TKTS through its registration of the mark with the USPTO. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Therefore, the Panel finds that the Complainant has rights in the TKTS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tkts.org> domain name is identical or confusingly similar to Complainant’s mark as Respondent incorporates the mark in full and merely adds the “.org” gTLD. Merely adding a gTLD to an otherwise unaltered and fully incorporated mark typically does not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”) Therefore the Panel finds that Respondent’s <tkts.org> domain name is identical or confusingly similar to Complainant’s TKTS mark under Policy ¶ 4(a)(i).
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). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <tkts.org> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by the Complainant to use Complainant’s mark. In considering this issue, relevant WHOIS information can be used as evidence to show whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes that the WHOIS record for the disputed domain name identifies the Respondent as “Matt Moran” and no information in the record indicates that Respondent is known otherwise, that it was authorized to use Complainant’s mark, or that it was commonly known by the disputed domain name. Therefore, in the absence of a Response or other submission by the Respondent, the Panel finds that Respondent has no rights or legitimate interests in the <tkts.org> domain name under Policy ¶ 4(c)(ii) as Respondent is not commonly known by the disputed domain name.
Next, Complainant argues that Respondent’s lack of rights or legitimate interests in the <tkts.org> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a website which is being used to obtain pay-per-click revenue by linking to third-party websites, some of which compete with Complainant’s business. Use of a domain name to link to a complainant’s competitors is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant contends that the domain name resolves to a website displaying pay-per-click links, some of which send users to competitor’s websites. Complainant submits into evidence screenshots of Respondent’s website and some of the third-party sites to support this contention. In the absence of a Response or any other submission by the Respondent, the Panel agrees that Respondent does not have rights or legitimate interests in the <tkts.org> domain name based upon the use to which the domain has been put.
Complainant argues that Respondent registered and uses the <tkts.org> domain name in bad faith, as Respondent had actual knowledge of the Complainant rights in the TKTS mark when registering the disputed domain name. Actual knowledge of a complainant’s trademark when registering a disputed domain name can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent’s had actual knowledge given the fame of the TKTS mark based upon the fame of the mark, its distinctiveness, and the content of the website to which it resolves. Complainant provides a photo of its TKTS branded ticket booth in New York City’s Times Square, one of the most heavily touristic sties in the world. Further, prior Panels have found Complainant’s mark to be famous. See Theatre Development Fund, Inc. v. SERGE TUDOR / Zebroid, LLC, FA 1677425 (Forum July 12, 2016) (“Complainant argues that Respondent clearly had such knowledge because of the fame of the [TKTS] 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.”) Therefore, the Panel finds that Respondent registered the <tkts.org> domain name with knowledge of Complainant’s mark and in bad faith under Policy ¶ 4(a)(iii).
Additionally, Complainant argues that Respondent registered and uses the <tkts.org> domain name in bad faith, as Respondent attempting to attract Internet users for commercial gain with competing hyperlinks. Registration and use of a disputed domain name to host hyperlinks to competing products to attract Internet users for commercial gain can be evidence of bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Here, Complainant provided screenshots of the <tkts.org> domain name’s resolving webpage, showing links to sites that sell Broadway plays tickets in competition with Complainant. Therefore, the Panel finds that Respondent registered and uses the <tkts.org> domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tkts.org> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: October 2, 2019
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