Hamilton IP LLC and Hamilton Uptown Limited Liability Company v. Alexander SF / crocus investments
Claim Number: FA2206002000579
Complainants are Hamilton IP LLC and Hamilton Uptown Limited Liability Company (“Complainants”), represented by Stacy Grossman of Levine Plotkin & Menin, LLP, New York, USA. Respondent is Alexander SF / crocus investments (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamiltonbroadwaytickets.com>, registered with Instra Corporation Pty Ltd.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainants submitted a Complaint to the Forum electronically on June 15, 2022. The Forum received payment on June 15, 2022.
On June 16, 2022, Instra Corporation Pty Ltd. confirmed by e-mail to the Forum that the <hamiltonbroadwaytickets.com> domain name is registered with Instra Corporation Pty Ltd. and that Respondent is the current registrant of the name. Instra Corporation Pty Ltd. has verified that Respondent is bound by the Instra Corporation Pty Ltd. 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 20, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2022, 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@hamiltonbroadwaytickets.com. Also on June 20, 2022, 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 July 18, 2022, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
Complainants request that the domain name be transferred from Respondent to Complainants.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainants submit that Complainant Hamilton IP LLC is the owner of certain intellectual property related to, and Complainant Hamilton Uptown Limited Liability Company is the producer of, the Broadway production (and several other productions) of the theatrical work entitled Hamilton An American Musical (“Hamilton”). The Panel accepts that the relationship between Complainants constitutes a sufficient nexus or link such that each may claim to have rights to the domain name listed in the Complaint. The Panel will henceforth refer to Complainants as “Complainant”.
A. Complainant
Complainant offers the famous and award-winning musical Hamilton, about the life of American founding father Alexander Hamilton. Hamilton opened off Broadway at the Public Theater in February 2015 and opened on Broadway at the Richard Rogers Theatre on August 6, 2015, where it continues to play.
Complainant has rights in the HAMILTON AN AMERICAN MUSICAL (and Design) mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”). Complainant further asserts common law rights in the truncated HAMILTON mark. Respondent’s <hamiltonbroadwaytickets.com> domain name is confusingly similar to Complainant’s HAMILTON AN AMERICAN MUSICAL (and Design) mark and to its common law HAMILTON mark.
Respondent has no legitimate interests in the <hamiltonbroadwaytickets.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in the HAMILTON AN AMERICAN MUSICAL (and Design) or HAMILTON marks. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name resolves to a website that displays Complainant’s HAMILTON AN AMERICAN MUSICAL (and Design) mark in an attempt to pass off Respondent as affiliated with Complainant and redirect users to a third-party ticket reseller website.
Respondent registered the <hamiltonbroadwaytickets.com> domain name in bad faith with actual knowledge of Complainant’s rights in the HAMILTON AN AMERICAN MUSICAL (and Design) mark and uses the domain name in bad faith in order to divert customers from Complainant for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the HAMILTON AN AMERICAN MUSICAL (and Design) mark through registrations of the mark with the USPTO (e.g., Reg. No. 5,149,284 registered February 28, 2017). Complainant further asserts common law rights in the truncated HAMILTON mark.
It is unnecessary to determine whether Complainant holds common law rights in the mark HAMILTON because, disregarding the design element of the mark, which cannot be replicated in a domain name, the Panel finds Respondent’s <hamiltonbroadwaytickets.com> domain name to be confusingly similar to Complainant’s HAMILTON AN AMERICAN MUSICAL (and Design) mark. This is so because the domain name incorporates the dominant element of the mark, HAMILTON, and merely adds the descriptive terms “broadway” and “tickets”, which, far from distinguishing the domain name from the mark, serve to reinforce the impression that the domain name is associated with the famous American musical show. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <hamiltonbroadwaytickets.com> domain name was registered on August 3, 2017, several months after the registration of Complainant’s mark with the USPTO and after Complainant has shown that its Hamilton show, playing on Broadway, had become famous. The domain name resolves to a website prominently displaying Complainant’s HAMILTON AN AMERICAN MUSICAL (and Design) mark, with the look and feel of Complainant’s website “www.hamiltonmusical.com” and promoting StubHub, a third-party re-seller of Hamilton tickets.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <hamiltonbroadwaytickets.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous HAMILTON AN AMERICAN MUSICAL (and Design) mark when Respondent registered the <hamiltonbroadwaytickets.com> domain name and that Respondent 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 of Respondent’s website and of the services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamiltonbroadwaytickets.com> domain name be TRANSFERRED from Respondent to Complainant Hamilton IP LLC.
Alan L. Limbury, Panelist
Dated: July 19, 2022
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