WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Los Angeles Opera Company v. Mykhaylo Perebiynis
Case No. D2013-1449
1. The Parties
Complainant is Los Angeles Opera Company of Los Angeles, California, United States of America, represented by Funsten & Franzen, United States of America.
Respondent is Mykhaylo Perebiynis of Bradenton, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <laopera.org> (“the Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2013. Also on August 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on August 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 11, 2013.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 17, 2013. 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
Because Respondent has not filed a Response, the following facts are taken from the Complaint and are accepted as true in the circumstances of this case.
Complainant Los Angeles Opera Company is a world-class opera company that has produced opera in Los Angeles, California for the past twenty-five years. Complainant is currently led by operatic tenor, maestro Plácido Domingo, who serves as its General Director. Complainant has been operating since its inception and has been trading under the mark LA OPERA (the “Mark”). Complainant is the registrant of the domain name <laopera.com>.
5. Parties’ Contentions
The Mark is descriptive of Complainant’s goods and services; however, it has acquired distinctiveness (i.e., secondary meaning) due to Complainant’s long-standing, continuous, and widespread use of the Mark. Complainant has developed strong common law rights in the Mark. Since 1986, Complainant has continuously produced opera under the Mark and has achieved international recognition as a world-class producer of opera. Notable productions include Wagner’s Ring Cycle in 2010 and the world premiere of Il Postino, also in 2010. Complainant actively advertises its seasons and productions nationally in print media, on the Internet, and via radio and Internet streaming. Complainant has received editorial coverage in publications such as The New York Times and The Washington Post. The result of this use and notoriety is that the public uniquely associates the Mark with Complainant’s goods and services, and the Mark has therefore acquired distinctiveness.
The Domain Name is identical to the Mark because it is a wholesale appropriation of the Mark-i.e., the Domain Name consists entirely of “laopera”.
Respondent has no statutory or common law rights in the Mark. He does not do business under “LA Opera” nor does he produce opera in Los Angeles or anywhere else in the world. Respondent is not making legitimate noncommercial or fair use of the Mark. Respondent snatched the Domain Name “at auction” so that he could sell it to Complainant (twice) for a profit. The content that Respondent currently presents at “www.laopera.org” (information about “video poker online”) is nothing more than a placeholder. Respondent’s collection of information about video poker online in no way constitutes a fair use of the Mark.
Respondent registered and is using the Domain Name primarily for the purpose of selling, renting, or otherwise transferring registration of the Domain Name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. Such conduct constitutes bad faith. Respondent is a known cybersquatter and his actions here are consistent with this reputation. Respondent does not provide any information about opera generally, or Complainant specifically, at the Domain Name. Further, Respondent does not operate any business under a mark that fancifully incorporates the word “opera”. There is, therefore, no legitimate opera-related commercial, noncommercial, or fair-use reason for Respondent to have registered the Domain Name. Respondent’s registration of the Domain Name strongly suggests that he targeted the Mark and registered the Domain Name in bad faith. He has not asserted ignorance of the Mark.
On November 16, 2012, Complainant’s counsel sent Respondent a letter demanding transfer of the Domain Name to Complainant. That same day, Respondent answered the letter, stating: “[t]his domain I can sell [sic] you for $1890.” Respondent continued: “[i]f you want this domain, let me know and I will initiate the sale. The transaction will be carried out with the use of Escrow.com.” Id. Respondent then provided two links for the escrow website. Id. That same day Respondent directed that his name and contact information be removed from all domain information databases (e.g., WhoIs, BetterWhoIs) and replaced with the contact information for Domains By Proxy LLC. Domains By Proxy LLC’s business is to hide the identity of domain name registrants. In response to Respondent’s offer to sell the Domain Name to Complainant, Complainant’s counsel sent a second letter, renewing the demand to transfer the Domain Name. Again, Respondent offered to sell the Domain Name to Complainant for USD 1,290. Respondent also volunteered insight into the cost/benefit analysis that is central to his cybersquatting business: “[y]our client […] can get a domain for less money than the fact that he spent on lawyers’ fees. Last price for domain $1290.” Id. Of course, the only plausible purchaser that can make legitimate use of the Domain Name is Complainant. Respondent ended his email with a post script in which he noted “[y]ou are not the first who is threatening me by the court.” Id. These facts make clear that Respondent is a cybersquatter-when contacted about the Domain Name, he asserted no legitimate rights in the Mark, he immediately offered to sell the Domain Name to Complainant, and he admitted that he has been the subject of legal action concerning cyrbersquatting in the past.
Respondent may have provided false contact information to the registrar when registering the Domain Name. Both of the letters that Complainant’s counsel sent to Respondent via certified mail were returned as being “not deliverable as addressed”. Complainant’s counsel concurrently sent the letters to Respondent via email. The time stamps on this email correspondence indicate that Respondent is not in the United States of America (“United States”), conflicting with the address he gave to the Registrar. Counsel for Complainant first emailed Respondent from Los Angeles, California on November 16, 2012, 2:08p.m. pacific standard time (“PST”). In Respondent’s email response, received by Complainant’s counsel two hours later, at 4:03p.m. PST on November 16, 2012, the “sent” time of Complainant’s counsel’s email appears in Respondent’s reply email as November 17, 2012, 12:08a.m. Because the time stamp of an email reflects the recipient’s local time, it is clear that Respondent was in UTC +2 hours, ten (10) hours ahead of the PST time zone (i.e., the difference between 2:08p.m. on November 16th and 12:08a.m. on November 17th is ten hours). The email correspondence between Respondent and Complainant’s counsel on November 28 and 29, 2012, reflects the same ten-hour difference. This evidence suggests that the Florida address that Respondent provided when he registered the Domain Name is false and that Respondent’s true contact address is somewhere in the UTC +2 hours time zone.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Name should be cancelled or transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
Complainant has not proffered a United States federal trademark registration to prove its rights in LA OPERA. Rather, Complainant is relying on its common law rights in the Mark. As previous UDRP panels have held, under United States law, an unregistered trademark that is used in commerce may be treated as a trademark for the purposes of paragraph 4(a)(i) of the Policy if complainant can show that the mark is inherently distinctive or at least has acquired secondary meaning and thus has become a distinctive identifier associated with complainant or its goods and services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7. Relevant evidence of such secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition”. Id. Complainant acknowledges that the Mark is descriptive of Complainant’s goods and services; however, it argues that the Mark has acquired distinctiveness due to Complainant’s long-standing, continuous, and widespread use of it. Complainant claims common law rights as far back as 1986, although the Panel notes Complainant has not made of record evidence to support the full scope of such a claim. The evidence of record here (e.g., marketing materials and write ups in the United States and abroad) support, at best, common law rights since 2007. This evidence is sufficient for Complainant to carry its burden of proof on this element.
Furthermore, the incorporation of a trademark in its entirety in a domain name is typically sufficient to establish that a domain name is identical or confusingly similar to complainant’s mark for purposes of the Policy. Insofar as the Domain Name <laopera.org> incorporates verbatim the Mark (LA OPERA), in which Complainant has rights, the Panel finds the Domain Name is identical to the Mark. When comparing a challenged domain name and a trademark, the addition of the “.com” or “.org” suffix is generally irrelevant for the purpose of determining whether the domain name is identical or confusingly similar to a trademark. Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of production on this factor shifts to respondent to rebut the showing. The burden of proof, however, remains with complainant. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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.”
Complainant’s uncontested facts establish: (1) Complainant has not licensed or otherwise permitted Respondent to use the Mark in any manner including as a domain name; (2) Respondent has not used or prepared to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services (in fact it appears Respondent’s use of the Domain Name is an infringing one); (3) Respondent has not been and is not commonly known by the Domain Name; and (4) Respondent is not making a legitimate noncommercial or fair use of the Domain Name (it appears from the evidence of record that Respondent obtained the Domain Name at auction to sell it at least to Complainant for a profit).
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon Respondent to rebut Complainant’s evidence. In this case, because Respondent has failed to file a Response, the Panel finds that Complainant’s facts are to be taken as proven.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you 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 website 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 website or location or of a product.”
The Panel concludes, that Respondent has registered and used the Domain Name in bad faith. With regard to the former, Respondent registered the Domain Name <laopera.org>, which is identical to Complainant’s LA OPERA Mark without any rights or legitimate interests in the Domain Name. There is no evidence of record that Respondent operates a business or any other type of entity named “LA Opera”, nor is there evidence that Respondent is in the opera business anywhere, let alone in Los Angeles. The website with which Respondent is using the Domain Name contains information about video poker online and is likely merely a placeholder. As concluded above, Complainant established common law rights in the LA OPERA Mark back to 2007, although the La Opera was founded many years before. The evidence of record does not clearly establish the exact date when Respondent purchased the Domain Name however it appears that the Domain Name <laopera.org> was available by auction when Respondent purchased it and Respondent knew of Complainant by virtue of the fact that Respondent offered to sell the Domain Name to Complainant. Based on these undisputed facts the Panel concludes that Respondent registered the Domain Name in bad faith.
The only evidence of record (unrebutted) supporting Respondent’s conduct with regard to the Domain Name are two emails attempting to sell the Domain Name to Complainant for a profit. Thus the Panel finds that Respondent no doubt registered and is certainly using the Domain Name primarily for the purpose of selling, renting, or otherwise transferring registration of it to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. Such conduct constitutes bad faith. See paragraph 4(b)(i)of the Policy. Further evidence of bad faith use are Respondent’s refusal to transfer the Domain Name twice, after receiving Complainant’s counsel’s cease and desist letters, and Respondent’s attempt to cloak himself in secrecy by using Domain by Proxy’s services. See Dart Industries Inc. v. Leslie Rubin, WIPO Case No. D2006-0146.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <laopera.org> be transferred to Complainant.
Harrie R. Samaras
Date: September 23, 2013