WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kimmel Center, Inc. v. Tech Support, Trade Out Investments Ltd

Case No. D2011-0293

1. The Parties

The Complainant is Kimmel Center, Inc., United States of America, represented by Cozen O'Connor, United States of America.

The Respondent is Tech Support, Trade Out Investments Ltd, Venezuela.

2. The Domain Names and Registrar

The disputed domain names <merriamtheater.com> and <merriamtheatre.com> are registered with Power Brand Center Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2011. On February 14, 2011, the Center transmitted by email to Power Brand Center Corp., a request for registrar verification in connection with the disputed domain names. On February 14, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 23, 2011.

The Center verified that the Complaint together with the amended 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 February 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2011.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 1, 2011. 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.

The Panel issued Procedural Order No. 1 to the Parties on April 5, 2011, requesting that the Complainant provide further evidence as to its relationship with, and instructions from, the University of the Arts, to be received by the Center by April 12, 2011. The Complainant’s Supplemental Filing was received by the Center on April 13, 2011 and is admitted by the Panel. The Respondent was allowed three days from receipt of the Complainant’s Supplemental Filing in order to make a submission and provide evidence strictly in reply, and did not reply.

4. Factual Background

The facts are extracted from the Complaint.

The Merriam Theater in Philadelphia, Pennsylvania, traces its history for nearly a hundred years. John W. Merriam gave the theater building to The University of the Arts, which has used the unregistered mark MERRIAM THEATER since at least as early as 1991. The Complainant, Kimmel Center, Inc., is the exclusive manager of the theater as agent for the university.

The disputed domain name <merriamtheater.com> was registered on February 14, 2002 and <merriamtheatre.com> on August 30, 2000. Nothing is known about the Respondent except what is stated in the registration records.

5. Parties’ Contentions

A. Complainant

In its Supplemental Filing the Complainant states that it, Kimmel Center, Inc., is authorised to act for The University of the Arts in the present proceeding. The Complainant produces in evidence a License Agreement dated September 17, 2009 between The University of the Arts and Kimmel Center, Inc. (the “License”), which includes the granting to the Complainant of all rights to and the maintenance of the authentic University of the Arts domain name <merriamtheater.org>.

The Complainant contends that it has gained significant common law and other trademark rights in the trademark MERRIAM THEATER since 1991 through continued usage, promotion, advertising, and enforcement of its trademark rights. It has done so since before the Respondent’s registration of the disputed domain names in 2000 and 2002. It is contended that each of the disputed domain names incorporates the trademark MERRIAM THEATER either identically or with the last two letters transposed, constituting confusing similarity with the trademark.

The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent is not affiliated with the Complainant. There is no evidence that the Respondent has made a legitimate registration or use of the disputed domain names for a bona fide offering of goods or services. The Respondent cannot claim to have been commonly known by the disputed domain names and is in any case effectively anonymous. The disputed domain names have been used for the commercial purpose of offering link farms to visitors to the corresponding websites.

The Complainant further contends that the disputed domain names were registered and used in bad faith. Such use has continued after notices setting out the Complainant’s rights were sent to the Respondent. Internet users arriving at the websites corresponding to the disputed domain names are offered a variety of commercial links, including topics related to the Complainant’s business such as “Merriam Theater Tickets”, “Merriam Theater”, “Discount Theater Tickets” and “Tickets for Theater”. Consequently Internet users are likely to be confused into believing that the disputed domain names are associated with the Complainant, which they are not. Desist and transfer letters were sent to the Respondent on January 4, 2011 and January 19, 2011 in respect of the disputed domain name <merriamtheater.com>, and on February 9, 2011 in respect of the disputed domain name <merriamtheatre.com>. No replies were received.

The Complainant requests the transfer to it of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required:

“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identity of the Respondent

The Respondent was initially identified from the registration records as being the anonymous registrant of the disputed domain names at PrivacyProtect.org of Munsbach, Luxembourg. The registration details incorporated the statement: “Note - All Postal Mails Rejected”. Whilst the use of a privacy service may be legitimate, it may also manifest that the Respondent does not intend to be traced.

An automated email reply from PrivacyProtect.org on February 28, 2011 stated that it provides a WhoIs privacy service for domain name owners that do not wish to be contacted directly and that the only way to reach the registrant or other contacts for the disputed domain names was to follow a link provided. The message said that postal mail would be rejected and telephone calls would be answered by a machine with directions to the website.

The underlying registrant of record in this case was divulged by the Registrar in response to the Center’s enquiry. Communications sent by the Center to the email and physical addresses of the Respondent, including to the postmaster at the disputed domain names and by courier, were rejected or not replied to. The Panel is satisfied that the Center fulfilled all its obligations to attempt to contact the Respondent in the terms of paragraph 2 of the Rules.

B. Complainant’s Supplemental Filing

The License Agreement between The University of the Arts and Kimmel Center, Inc., is a comprehensive document running to some 27 pages plus 20 pages of exhibits. Paragraph 5(n) states that The University of the Arts will transfer to the Complainant “... all rights to the Internet domain name www.merriamtheater.org and [the Complainant] will be responsible for maintaining content regarding future performances on that site and for all fees and costs required for the maintenance of that site. References to the Theater on this site will refer to “The Merriam Theater of The University of the Arts.” Upon termination of this agreement, [the Complainant] will transfer rights to this domain back to UArts.” This paragraph refers to the authentic domain name of the Merriam Theater, <merriamtheater.org>. It is clear to the Panel from this, and from other full references to “The Merriam Theater of The University of the Arts” in the License, that for the purposes of this proceeding any rights in the authentic domain name, and by implication the trademark MERRIAM THEATER, reside in The University of the Arts and have been extended to the Complainant for the time being. For the purposes of the present proceeding only, the Panel accepts that the Complainant’s maintenance obligations in respect of the authentic website of the Merriam Theater extend to the protection of the Internet presence of the Merriam Theater from abuse, that the Complainant has standing to pursue the Complaint, and that the Complainant would be an appropriate transferee for the time being of a disputed domain name if that were to eventuate.

C. Identical or Confusingly Similar

The Complainant has stated in the Complaint, certified as being complete and accurate, that the common law trademark MERRIAM THEATER has been used, promoted and advertised since at least as early as 1991, and that the “Merriam Theater” is well-known in its sphere. These assertions have not been contested by the Respondent. The Panel finds that the Complainant has sufficient common law rights in the unregistered trademark MERRIAM THEATER for the purposes of the present proceeding to satisfy the required element of paragraph 4(a)(i) of the Policy.

The disputed domain name <merriamtheater.com> is clearly identical to the trademark in which the Complainant has rights. The disputed domain name <merriamtheatre.com> differs from the Complainant’s trademark to the minor extent that it uses the internationally accepted alternative spelling of “theater”, namely “theatre”, and is found to be virtually identical and confusingly similar to the trademark. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

The Complainant has stated that the Respondent has not been authorised to use the trademark MERRIAM THEATER in any way, and to that extent the Respondent cannot have acquired or been granted any rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy sets out certain circumstances, without limitation, whereby the Respondent may be able to refute the Complainant’s prima facie case by seeking to establish rights or legitimate interests within the meaning of paragraph 4(a)(ii) of the Policy, namely:

“(i) before any notice to you [the Respondent] of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent has not in this case sought to establish any such rights or legitimate interests in terms of paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. There is no evidence to suggest that the Respondent has used the disputed domain names for a bona fide offering of goods or services because the establishment of a link farm upon the fame of another’s trademark without authority is not legitimate. There is no evidence to suggest that the Respondent is associated with any “Merriam Theater” or has been commonly known by that or any similar name. The use to which the disputed domain names have been put is not noncommercial. Accordingly, the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that “shall be evidence of the registration and use of a domain name in bad faith”:

“(i) circumstances indicating that you [the Respondent] have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your website or location.”

Paragraph 4(b)(iv) of the Policy is pertinent. The Complainant has stated that the websites to which the disputed domain names resolve are link farms, whereby the Respondent offers visitors a selection of links whose owners may pay commission for such referrals. In the absence of supporting evidence from the Complainant such as screen prints the Panel has exercised its limited powers to conduct independent enquiries (section 4.5, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)) and has visited the Respondent’s corresponding websites. It is clear that they consist of link farms, and include facilities for targeting visitors with links that may reflect the visitor’s geographic and other profile criteria. Whilst the operation of a link farm may be a legitimate business and is commonly adopted to subsidise a public information website or as a legitimate service in its own right, the activity is not legitimate if another’s trademark is used without authority as the means of attracting visitors. The Panel is satisfied that the Respondent is using the trademark MERRIAM THEATER or similar in the disputed domain names without authority in order to attract Internet visitors to the Respondent’s websites by initial interest confusion for commercial gain within the ambit of paragraph 4(b)(iv) of the Policy, and that the disputed domain names were registered primarily for that purpose.

The Respondent’s bad faith is compounded by its failure to reply to the three formal letters from the Complainant asking the Respondent to desist from its use of the disputed domain names and to transfer them to the Complainant (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632). Accordingly the Panel finds for the Complainant under 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 names <merriamtheater.com> and <merriamtheatre.com> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Dated: April 22, 2011