WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hellinger / Nederlander 46th St. Corp. v. Privacy service provided by Withheld for Privacy ehf / Max Harlin

Case No. D2021-3698

1. The Parties

The Complainant is Hellinger / Nederlander 46th St. Corp., United States of America (the “United States”), represented by Abelman Frayne & Schwab, United States.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Max Harlin, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <therichardrodgerstheatre.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2021, the Registrar 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 November 15, 2021, 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 November 19, 2021.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2021.

The Center appointed Taras Kyslyy as the sole panelist in this matter on January 4, 2022. 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 owns and operates the Richard Rodgers Theater and several other theaters in New York City, United States. The Richard Rodgers Theatre opened in 1924 as the 46th Street Theatre. It was renamed in 1990 to honor the legendary composer, Richard Rodgers.

The Complainant owns the United States Trademark Registration No. 4,673,980 for its RICHARD RODGERS THEATRE trademark, registration date January 20, 2015.

The Complainant also owns and uses the <richardrodgerstheatre.com> domain name, registered on May 15, 2001.

The disputed domain name was registered on November 14, 2016 and redirects to a website at “www.hamiltontheater.com” offering for sale tickets to the Richard Rodgers Theatre of the Complainant. The website includes disclaimer section stating that it is not affiliated or sponsored by Nederlander Organization or Richard Rodgers Theatre.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The presence of the Top-Level Domain (the “TLD”) “.com” suffix is irrelevant in the comparison of a domain name to a trademark. The Respondent’s registration of the disputed domain name was intended to confuse or deceive as it would falsely suggest that products, services, or activities associated with the disputed domain name are those of the Complainant.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not received from the Complainant any license or consent, express or implied, to use the Complainant’s trademark as a domain name or in any other manner. Prior to the registration of the disputed domain name, the Respondent did not use “Richard Rodgers Theatre” as a trademark, company name, business or trade name. The Respondent is not otherwise commonly known with reference to the name “Richard Rodgers Theatre”. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services, since the disputed domain name falsely suggests to consumers that the Respondent is affiliated with the Complainant when in fact it is not. The use of a domain name that incorporates a well-known trademark to direct visitors to a website unconnected with the trademark owner does not constitute use in connection with a bona fide offering of goods and services, nor can it be considered a legitimate use of a domain name. The Respondent’s purpose for registering the disputed domain name that suggests that it is affiliated with the Complainant was to gain business by portraying itself as associated with the Complainant. Using a domain name with the intent of causing confusion, initial interest, or otherwise, is an abuse of the domain name. When the Respondent registered the disputed domain name on November 14, 2016, the Complainant was using its trademark and it was well known live theater industry, and to consumers throughout the world. Thus, at the time the Respondent registered the disputed domain name, it was aware of the Complainant’s trademark. It is impossible to conceive of a circumstance in which the Respondent could legitimately use the disputed domain name without creating a false impression of association with the Complainant. The Complainant’s trademark is distinctive and has no meaning other than as a reference to the Complainant and its goods and services, so the disputed domain name would not have been registered but for the renown of the Complainant’s trademark.

The disputed domain name was registered and is being used in bad faith. The disputed domain name is operated by a third party, which controls other similar domain names mocking known theaters. The Respondent has previously been found to have registered and used the domain name <parktheaterlasvegas.com> in bad faith. Because of the distinctive nature of the Complainant’s trademark, the Respondent is likely to have had actual notice and should be charged with notice as to the existence of the Complainant’s trademark at the time it registered the disputed domain name, which suggests that the Respondent acted with opportunistic bad faith in registering it. While using the disputed domain name the Respondent intentionally attempted to attract Internet users to the Respondent’s webpage for commercial gain and in an attempt to profit by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, services, and products. The Respondent intentionally registered the disputed domain name to trade on the goodwill and reputation of the Complainant, and thereby irreparably harm the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in its registered trademark.

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards TLD “.com” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant’s trademark.

According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that in the present case the addition of article “the” to the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s trademark.

Considering the above the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones, TheDotCafe,/ Victoria McCann / Robert Hope, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

According to section 2.8.2 of the WIPO Overview 3.0 resellers or distributors using a domain name identical to a complainant’s trademark to undertake sales related to the complainant’s goods are not making a bona fide offering of goods and thus have no legitimate interest in such domain name. The Panel finds this applies in the present case, considering the risk of the misrepresentation by the disputed domain name identical to the Complainant’s trademark.

Noting the high risk of implied affiliation between the disputed domain name and the identical widely known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897).

Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent’s use of the disputed domain name to purport to sell the Complainant’s products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered and widely known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark in the United States. Thus, the Panel finds that the disputed domain name identical to the Complainant’s trademark was registered in bad faith.

According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(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 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 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 trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; 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 its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

In this regard, the Panel finds that at least the third and the fourth of the above scenarios apply to the present case confirming the Respondent’s bad faith.

The disclaimer found on the website to which the disputed domain name resolves does not avoid confusion on the part of potential Internet users and thus, does not negate an inference of bad faith (see, e.g., Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra, WIPO Case No. D2018-1145). According to section 3.7 of the WIPO Overview 3.0 “where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused”.

Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

7. Decision

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

Taras Kyslyy
Sole Panelist
Date: January 14, 2022