Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shorenstein-Hays Nederlander Theatres, LLC v. Pablo Palermo

Case No. D2009-0674

1. The Parties

The Complainant is Shorenstein-Hays Nederlander Theatres, LLC of California, United States of America, represented by Idell & Seitel LLP, United States of America.

The Respondent is Pablo Palermo of San Isidro, Peru.

2. The Domain Name and Registrar

The disputed domain name <goldengatetheatre.com> (the "Disputed Domain Name") is registered with Backslap Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2009. On May 22, 2009, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the disputed domain name. On May 25, 2009, Backslap Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 28, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amendments to the Complaint on May 29, 2009 and June 2, 2009 respectively.

The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on June 25, 2009.

The Center appointed Alistair Payne as the sole panellist in this matter on June 30, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant has owned and operated the Golden Gate Theatre, located in San Francisco, California, United States of America continuously since 1979. The Complainant presents the Best of Broadway theatre series in San Francisco and is also the owner of the Curran and Orpheum Theatres in San Francisco. The Complainant has used the GOLDEN GATE THEATRE mark in conjunction with goods and services relating to live theatrical entertainment at the Golden Gate Theatre since 1979.

The Complainant`s web site "www.shnsf.com" has been in operation since 2005 and contains several pages dedicated to the Golden Gate Theatre containing ticketing and other information on the Golden Gate Theatre.

The Disputed Domain Name was registered on November 17, 1999. The web site to which the Disputed Domain Name resolves contains links to third party web sites, including, but not limited to, links to the web sites of the Complainant`s competitors.

5. Parties` Contentions

A. Complainant

The Complainant contends that it has established common law trade mark rights in the GOLDEN GATE THEATRE mark through its continuous use of the mark in connection with the presentation of live entertainment performances at the Golden Gate Theatre since 1979. The Complainant supports this contention by reference to the fact that the web site it has operated since 2005 "www.shnsf.com" contains several pages dedicated to the Golden Gate Theatre providing information on productions and allowing theatregoers to purchase tickets online.

The Complainant contends that the Disputed Domain Name is identical or confusingly similar to the Complainant`s GOLDEN GATE THEATRE common law trade mark. The Complainant supports this contention by reference to the fact previous panel decisions have found that the addition of ".com" is not a distinguishing difference.

The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant submits that there is no evidence to suggest that the Respondent is using, or has made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant notes that the Disputed Domain Name is simply a list of links to other web sites, including, but not limited to, links to the Complainant`s competitors.

The Complainant contends that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name.

The Complainant submits that the Respondent has registered and used the Disputed Domain Name in bad faith. The Complainant contends that the Respondent`s sole purpose in registering the Disputed Domain Name was to sell, rent or otherwise transfer the Disputed Domain Name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent`s out of pocket costs directly related to the Disputed Domain Name.

Further, the Complainant submits that the Disputed Domain Name and the web site to which it resolves are used to intentionally divert traffic intended for the Complainant by creating a likelihood of confusion with the Complainant`s GOLDEN GATE THEATRE mark.

B. Respondent

The Respondent has not filed a formal Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent. The Panel may draw negative inferences from the Respondent`s default where necessary.

6. Discussion and Findings

If the Complainant is to succeed, he must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that;

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of the three elements referred to in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant does not rely on any registered trade mark rights in the term "Golden Gate Theatre". Therefore, if the Complainant is to succeed it must prove that it has unregistered trade mark rights in the GOLDEN GATE THEATRE mark.

Previous panels have held that for a complainant to establish unregistered trade mark rights the complainant must demonstrate that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such secondary meaning includes the length and amount of sales under the mark, the nature and extent of advertising, and consumer surveys and media recognition. Above All Advertising Inc. v. Belize Domain Whois Service Lt, WIPO Case No. D2007-0775.

The Panel is satisfied that the Complainant`s longstanding use of the GOLDEN GATE THEATRE mark in connection with entertainment services provides a strong indication of source. Mr. Holland, Chief Executive of the Complainant has provided a declaration stating that the Complainant has been using the GOLDEN GATE THEATRE mark in conjunction with various goods and services relating to live theatrical entertainment at the Golden Gate Theatre in San Francisco, California since 1979. The Panel considers that the Complainant`s use of the GOLDEN GATE THEATRE mark over such an extended period of time combined with the fact the Complainant has been operating a web site "www.shnsf.com" which contains a number of pages dedicated to the Golden Gate Theatre since 2005 and which allows customers to purchase theatre tickets online is sufficient to establish the Complainant`s unregistered trade mark rights in the term GOLDEN GATE THEATRE.

The Disputed Domain Name is made up of the common law trade mark GOLDEN GATE THEATRE to which the generic top level domain ".com" has been added. The Panel in SENSIS Pty Ltd., Research Resources Pty Ltd. v. Kevin Goodall, WIPO Case No. D2006-0793 noted that:

"To make a true comparison between a trade mark and a domain name, the suffix of the domain name is ignored, enabling the real substance of the two expressions to be compared"

The Panel is therefore satisfied that the ".com" generic top-level domain does not serve to distinguish the Disputed Domain Name from the Complainant`s common law trade mark. The Panel therefore finds that the Disputed Domain Name is identical and confusingly similar to the Complainant`s trade mark and the Complainant has satisfied paragraph 4 (a)(i) of the Policy.

B. Rights or Legitimate Interests

A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of producing evidence establishing that it has rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to the respondent of the dispute, use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Where the respondent as an individual, business, or other organization, has been commonly known by the disputed domain name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) Where the respondent is making a legitimate non-commercial use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

It is generally regarded as prima facie evidence if: (a) a complainant shows that the disputed domain name is identical or confusingly similar to the complainant`s trade mark; (b) that the respondent is not commonly known by the disputed domain name; and (c) that the complainant has not authorized the respondent to use his mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.

The Panel notes that the Disputed Domain Name is identical to the Complainant`s GOLDEN GATE THEATRE mark. The Panel accepts the Complainant`s contentions that the Respondent is not commonly known by the Disputed Domain Name and that the Respondent has never been authorized by the Complainant to use the Complainant`s trade mark. The Panel is therefore satisfied that the Complainant has provided sufficient prima facie proof that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Respondent has failed to file a response to the Complaint. It remains for the Panel to determine whether the Respondent has legitimate rights or interests in the Disputed Domain Name.

The Panel notes that the Disputed Domain Name was registered on November 17, 1999. The Complainant has not indicated the precise date on which it became aware of the Disputed Domain Name however the Complainant did not attempt to send a cease and desist letter to the Respondent until April 30, 2009.

The Panel in The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 held that it is necessary to consider whether the use made of a eisputed domain name prior to the sending of a cease and desist letter was in connection with the bona fide offering of goods or services.

No evidence has been provided by the Complainant of what use was made of the Disputed Domain Name prior to the sending of the cease and desist letter on April 30, 2009. The Panel notes that according to the "Way Back Machine" service provided on the "www.archive.org" web site no use was made of the Disputed Domain Name until February 2005, from which point the Disputed Domain Name resolved to a web site offering links to third-party web sites, some of which were competitors of the Complainant. The Panel is therefore willing to infer, without any evidence to the contrary having been put forward by the Respondent, that on the balance of probabilities, the use made of the Disputed Domain Name prior to April 30, 2009 was not a bona fide offering of goods or services but rather was an attempt to exploit the reputation of the Complainant`s mark by using an identical Domain Name to attract Internet users to third-party web sites for commercial gain.

Paragraph 4(c)(ii) of the Policy is not satisfied as there is nothing to suggest that the Respondent might be commonly known by the Disputed Domain Name. Neither is there any evidence that the Respondent has been making a non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain.

In all the circumstances the Panel therefore finds the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names and as such the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Policy requires a complainant to prove both registration and use in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) Circumstances indicating that the respondent has registered or 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 trade mark 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 trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; 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 web site or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation; or endorsement of the respondent`s web site or location or of a product or service on the respondent`s web site or location.

For the purposes of paragraph 4(b)(iv) of the Policy the Complainant contends that the Respondent has used the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to the Respondent`s web site by creating a likelihood of confusion with the Complainant`s mark as to source, sponsorship, affiliation or endorsement.

As noted, the Complainant has developed a substantial reputation in the GOLDEN GATE THEATRE mark. The Panel does not find reason why the Respondent would use the Complainant`s trade mark in the Disputed Domain Name for any other reason save as to create a likelihood of confusion amongst Internet users with the Complainant`s common law trade mark. The fact that the Disputed Domain Name resolves to a web site using an icon identical to that used on the Complainant`s web site while including links to, amongst other things, web sites selling tickets to theatrical events at the Complainant`s theatre is likely to cause further confusion amongst Internet users with the Complainant`s mark. In all these circumstances it appears to the Panel that the Disputed Domain Name and the web site to which it resolves were intended to confuse people as to the source, sponsorship, affiliation or endorsement of the Respondent`s web site.

Additional evidence of bad faith can be adduced in light of the fact that the Complainant has been providing services under the GOLDEN GATE THEATRE mark since 1979. The Respondent registered the Disputed Domain Name in 1999. The Panel considers that the Respondent was aware of the GOLDEN GATE THEATRE mark and its extensive reputation at the time of registration. The Panel notes paragraph 2(d) of the Policy which states,

"it is [the respondent`s] responsibility to determine whether your domain name registration infringes someone else`s rights."

With regard to the delay on the part of the Complainant in bringing the Complaint, the panel in The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 stated,

"there is no limitation period in the Policy. The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application."

The Panel in Swimways Corporation v. Richard Nugent, WIPO Case No. D2008-0786 noted that,

"if such a consideration( delay on the part of the complainant) is to apply, it would be necessary for a respondent to identify some basis on which it would be inequitable for the complainant to obtain relief, for example, some evidence of acquiescence or apparent consent on the part of the complainant and some change of position on the part of the respondent."

The Panel therefore notes that the Complainant`s delay in bringing proceedings does not in itself suffice to justify a denial of relief. The Respondent did not reply to the Complainant`s contentions and there is no suggestion that the Complainant has in any way acquiesced in, or consented to the Respondent`s continued holding of the Disputed Domain Name or that the Respondent has in any way changed his position.

The Panel infers that in all these circumstances the Complainant has established that the Respondent registered and used the Disputed Domain Name in bad faith.

Accordingly the Panel considers that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <goldengatetheatre.com> be transferred to the Complainant.

---

Alistair Payne
Sole Panelist

Dated: July 14, 2009