WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philadelphia Orchestra Association v. Kimmelcenter.com / WhoIs Privacy Services Pty Ltd. / Frank Gerdes
Case No. D2011-0607
1. The Parties
The Complainant is Philadelphia Orchestra Association of Philadelphia, Pennsylvania, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Kimmelcenter.com / WhoIs Privacy Services Pty Ltd. and Frank Gerdes of Fortitude Valley Queensland, Australia and Utrecht, the Netherlands, respectively.
2. The Domain Name and Registrar
The disputed domain name <kimmelcenter.com> "the Domain Name" is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2011. On April 5, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Domain Name. On April 6, 2011, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 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 amendment to the Complaint on April 12, 2011 and a Second Amended Complaint on April 13, 2011.
The Center verified that the Complaint together with the amended Complaints 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 April 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2011.
The Center appointed Dawn Osborne as the sole panelist in this matter on May 10, 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 Panelist issued a Procedural Order No.1 on May 12, 2011 requesting the Complainant to provide a documentary evidence of the announcement and publicity of the name of the Kimmel Center in 1999 and giving the Respondent the opportunity to make submissions in relation to the same. The Complainant provided further evidence in relation to this order on May 18, 2011.
4. Factual Background
The Complainant is the owner of the Kimmel Center in Philadelphia Pennsylvania and owns a family of KIMMEL CENTER registered marks in the United States for entertainment services, which has been used since 2001.
The Respondent registered the Domain Name on September 29, 1999. It has been used for providing links to third party services providers which are not authorized by the Complainant.
5. Parties’ Contentions
The Complainant's submissions can be summarised as follows:
The Complainant is the owner of the Kimmel Center in Philadelphia Pennsylvania and owns a family of KIMMEL CENTER registered marks in the United States for entertainment services. The marks have been used in commerce since 2001.
A naming agreement in January 7, 1998 recorded the name of the performing arts center in development as the "Kimmel Center For The Performing Arts" and that the name "The Kimmel Center" would be the only name displayed on the exterior of the centre. Press articles in 1998 record the charitable gifts of Sidney Kimmel to the center at this time. The center opened its doors to the public in 2001. The Domain Name was registered on September 29, 1999, several months after the Performing Arts Center was named and the association with the Kimmel name was mentioned in the press.
The Domain Name incorporates the entirety of the KIMMEL CENTER mark in a manner that is confusingly similar to a trade mark in which the Complainant has rights.
The Complainant gained significant common law trade mark rights in its KIMMEL CENTER marks through continuous use, promotion and enforcement.
The KIMMEL CENTER marks were used in commerce before the Domain Name was registered. The Respondent purchased the Domain Name with full knowledge of and intent to trade off the Complainant's rights.
The Respondent is not affiliated with the Complainant and has no rights or legitimate interests nor is it making a bona fide offering of legitimate goods or services under the Domain Name.
The Domain Name has been registered anonymously to avoid the consequences of registering a domain name in which they have no rights or legitimate interests. There has been no attempt to associate the Respondent with the Domain Name. It has been solely used for providing links to unauthorised providers of tickets to events at the Kimmel Center, many at over face value. Customers will be deceived into thinking these third party businesses are associated with the Complainant and into paying more than they should for tickets.
The Respondent has taken commercial advantage of the Complainant's trade mark and reputation to trade off the Complainant's goodwill. The Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent's web sites by creating a likelihood of confusion with the Complainant's trade mark.
The Complainant wrote to the Respondent but received no reply.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The 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.
A. Identical or Confusingly Similar
The Complainant has demonstrated that, through promotion in the press, the mark KIMMEL became associated with its performing arts center with the interested public in 1998 creating a reputation and goodwill in the mark associated with the Complainant at that time sufficient in the circumstances to give rise to common law rights. The Complainant has registered trade marks for KIMMEL CENTER and in its fullest sense since 2001 and it is clear that now the Complainant's center is well- known by the KIMMEL and KIMMEL CENTER marks in the United States.
As such the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed a Response (i.e., it has not shown any circumstances under the Policy paragraph 4(c) of the Policy which may apply in its favour) and does not appear to have any rights or legitimate interests in the Domain Name. The Complainant has indicated that it is not affiliated with the Respondent in any way, the Respondent’s business has no obvious connection with the designation “kimmel” independent of its distinctive indication of services with an origin from the Complainant and is being used to point to third party businesses selling tickets for the Complainant’s performances with no connection to the Complainant in circumstances as discussed below.
As such the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location. The Domain Name was registered shortly after the Kimmel name for the Complainant’s center was established and publicised and as such, the Panel finds that the Respondent registered the Domain Name in contemplation of the Complainant and its Common Law trademark. It has been used to point to third party businesses selling tickets for the Complainant’s performances without making it clear there is no connection with the Complainant in a manner the Panel finds is confusing. Indeed it appears from the print out evidence that tickets are being sold to shows not connected with the Complainant’s center. Finally, although it was not highlighted by the Complainant the print out evidence shows that the Domain Name has also been used to link to other third party businesses such as hotels.
Accordingly, Panel finds that it appears that the Respondent has attempted to attract and cause confusion amongst Internet users between the Complainant’s marks and services and the third party links on the site attached to the Domain Name for commercial gain.
Accordingly, the Panel finds that the Domain Name has been registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <kimmelcenter.com> be transferred to the Complainant.
Dated: June 1, 2011