WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Madison Square Garden L.P., Radio City Trademarks, LLC v. Great Camanoe Investments Ltd / Belize Domain Names Whois Service Lt
Case No. D2007-0819
1. The Parties
The Complainants are Madison Square Garden L.P. and Radio City Trademarks, LLC, of United States of America, represented by Abelman Frayne & Schwab, United States of America.
The Respondent is Great Camanoe Investments Ltd / Belize Domain Names Whois Service Lt, of City of Belmopan, Belize.
2. The Domain Names and Registrars
The disputed domain names
are registered with
Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2007. On June 6, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue.
On June 11, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 14, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2007.
The Center appointed Ross Carson as the sole panelist in this matter on July 23, 2007. 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
Complainants in this administrative proceeding are Madison Square Garden L.P., a Delaware limited partnership and Radio City Trademarks, LLC, a Delaware limited liability company (hereafter “Complainants”). Complainant Radio City Trademarks, LLC is wholly owned by Complainant Madison Square Garden L.P. Previous panels have held that when companies are part of a group of companies having common control whose trademarks are incorporated as domain names registered by a respondent the members of the group are an entity for purposes of paragraph 3(a) of the Rules which provides that “any person or entity may initiate a complaint”. (See L’Oreal, Helena Rubinstein, LancOme Parfums et Beaute & Cie. v. Spiral Matrix, WIPO Case No. D2006-0869; L’Oreal, Biotherm, LancOme Parfums et Beaute & Cie v. Unasi, Inc, WIPO Case No. D2005-0623).
Complainant Madison Square Garden L.P. is the owner of the trademark MADISON SQUARE GARDEN registered in the United States of America as Registration No. 835,284 on September 12, 1967 for “operation of a sport entertainment, convention and exhibition arena,…”. The application was based on use in commerce in the United States of America since in or about 1879. The trademark MADISON SQUARE GARDEN is also registered in the United Kingdom of Great Britain and Northern Ireland under Registration No. 1441452 since May 12, 1992 and in the European Community under Registration No. 000219816 since October 16, 1998.
Madison Square Garden arena opened to the public in New York City in 1879. Through long use, wide promotion, and the high-profile nature of the events held at Madison Square Garden, it has become one of the most well-known venues for sports and entertainment in North America. In addition to serving as a sports arena for amateur and professional tennis, wrestling, boxing and the home court of the professional basketball team the New York Knicks and the professional hockey team the New York Rangers and the New York Liberty women basketball professional basketball team, it also serves as a venue for large attendance events such as Ringling Brothers and Barnum and Bailey circus, musical performances, and major political events.
Complainant Radio City Trademarks, LLC is the registered owner of the trademarks RADIO CITY, United States Trademark Registration No. 1323767 registered on March 5, 1985 in relation to “entertainment services—namely the production and presentation of theatrical, musical and cinematic shows and performances”; RADIO CITY MUSIC HALL, United Sates Registration No. 1121615 registered on July 3, 1979 in relation to “entertainment services—namely, live and cinematic shows; ROCKETTES, United States Registration No. 1209117 registered on September 14, 1982 in relation to “entertainment services by a dance group …”; RADIO CITY ROCKETTES, United States Registration No. 2147635 registered March 31, 2000 in relation to “entertainment services, namely, the production and presentation of theatrical, musical and cinematic shows and performances“; and RADIO CITY CHRISTMAS SPECTACULAR, registered as United States Registration No. 2375564 registered on August 8, 2000 in relation to “plush toy animals,… and other goods in International Class 28”.
Radio City Music Hall entertainment center located in the center of New York City is the largest indoor theatre in the world. Its marquee is a full city block long. Its auditorium measures 160 feet from back to stage and the ceiling reaches a height of 84 feet. The venue is often referred to as simply Radio City. The world’s most popular entertainers have entertained audiences at Radio City Music Hall entertainment center. More than 300 million people have come to Radio Music Hall entertainment center in New York City since it opened its doors in 1932 to enjoy stage shows, movies, concerts and special events, including performances by Frank Sinatra, Ella Fitzgerald, Linda Ronstadt, Bill Cosby, Liberace, Sammy Davis, Jr., Ann Margaret, Johnny Mathis, John Denver, The Count Basie Orchestra, Itzhak Perlman, Jose Carreras, Ray Charles and B B King and the dance troupe known as the Rockettes.
Complainant Radio City Trademarks, LLC’s Rockettes trademark was first used in 1934 in respect of a precision dance company. Since debuting at Radio City Music Hall entertainment center over 70 years ago, the Rockettes dance company has continued to perform at the Radio City Music Hall performance center as well as elsewhere in the United States of America. In 2001, the Rockettes precision dance company were invited to perform and performed at the 2001 Presidential Inauguration in Washington, D.C.
The Radio City Christmas Spectacular show, often popularly referred to as the Radio City Christmas Show, starring the Rockettes dance troupe is an annual part of the holiday festivities of millions of people. The eight-week show has been a sell-out success since its debut in 1933. Since 1994, The Christmas Spectacular has gone on the road and plays to enthusiastic audiences in Branson, Chicago, Cleveland, Dallas, Detroit, Indianapolis, Minneapolis, Nashville and Phoenix. The show is now enjoyed by more people in one year than any other live show in America - more than 2.1 million people annually.
Respondent registered the domain names in dispute between August 24, 2004 and February 5, 2006 well after Complainants’ trademarks were registered and became well known .The web pages associated with the domain names in dispute contain links to competitors of Complainant offering tickets to entertainment being offered by Complainant’s at Madison Square Garden or Radio City Music Hall entertainment centers or hotel or other facilities located in the vicinity of Complainants’ entertainment centers.
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainants submit that the relevant portions of the domain names in dispute are identical or confusingly similar to the trademarks of Complainants because the domain names in dispute incorporate the trademarks MADISON SQUARE GARDEN, RADIO CITY, RADIO CITY MUSIC HALL, RADIO CITY MUSIC HALL CHRISTMAS SHOW or ROCKETTES and differ from Complainants’ registered trademarks in minor and immaterial respects.
Complainants further submit that the presence of a top level domain (TLD) such as “.com” suffix is irrelevant in the comparison of a domain name to a trademark (see BIC Deutschland GmbH & Co KG v. Paul Tweed, WIPO Case No D2000-0418; Singapore Airlines v. Nielson, WIPO Case No. D2000-0644). The absence of white space in the domain names is to be disregarded in determining identity or confusing similarity between a domain name and a trademark (see Air Austral v. WWW Enterprise, Inc., WIPO Case No D2004-0765). The insertion of hyphens between elements of a domain name can likewise be disregarded in determining identity or confusing similarity between a domain name and a trademark (see Transcontinental Media Inc v. Info Dot Net Web Services/Mr. James M Van Johns, WIPO Case No. D2001-0908). The addition of the letter “s” as a mark of pluralization is not a distinguishing element (see Advanced Comfort, Inc. v. Frank Grillo, WIPO Case No. D2002-0762). Minor misspelling or typographical errors do not create a new or different mark. This is particularly the case where the trademark is well-known, as here. Registration of such domain names are known as “typo-piracy” or “typo-squatting” (see Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO Case No. D2003-0317). The addition of generic or descriptive terms does not distinguish Respondent’s domain names from Complainants’ trademarks (see SFX Motor Sports, Inc. v. Spiral Matrix, WIPO Case No. D2006-0815). The addition of geographic references does not serve to distinguish the domain name from Complainants’ trademarks (see Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106). The compounding of Complainants’ trademarks to form a domain name does not create a distinctive new mark (see Nintendo of America Inc v. Pokemon, WIPO Case No. D2000-1230).
A.2 No Right or Legitimate Interests in respect of the Domain Names
Complainants submit that Respondent has not been licensed, contracted or otherwise permitted by Complainants in any way to use Complainants’ trademarks or to apply for any domain name incorporating Complainants’ trademarks, nor have the Complainants acquiesced in any way to such use or application of Complainants’ trademarks by Respondent. Indeed, at no time did Respondent have authorization from Complainants to register the domain names in dispute. To the best knowledge of the Complainants, Respondent has no legitimate right or interest in the domain names in dispute.
Complainants further submit on information and belief that prior to the registration of the domain names in dispute, Respondent did not use the domain names in dispute or any mark containing such as a trademark, company, business or trade name. On information and belief Respondent is not commonly known in reference to the domain names in dispute or any combination of these (see Compagnie de Saint Gobain v. Corn-Union Corp., WIPO Case No. D2000-0020; (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); Gallup Inc. v. Amish Country Store, NAF Case No. 96209 (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s domain registration; (3) Respondent is not commonly known by the domain name in question).
Complainants also submit that at the times Respondent registered the domain names in dispute, Complainants’ trademarks had long been used and widely promoted by Complainants and were well-known among consumers. In view of the above, it may reasonably be inferred that Respondent would not have registered the domain names in dispute but for the renown of Complainants’ trademarks which gives rise to a presumption that Respondent does not have any legitimate right or interest in the domain names in dispute (see Victoria’s Secret et al. v Asdak, St Johns, AG, NAF Case No. 96542).
Complainants further submit that Respondent does not use the domain names in dispute in connection with a bona fide offering of goods or services. The domain names in dispute are currently associated with webpages purporting to provide information and ticketing for events related to Complainants’ trademarks and events of others. The links on the website are pay-per-click advertising links. The use of a domain name that incorporates a well-known trademark to direct visitors to a website unconnected with the trademark owner cannot constitute use in connection with a bona fide offering of goods or services or otherwise be considered a legitimate interest in a domain name. In particular, the use of a well-known trademark as a domain name to link to such a pay-per-click advertising website is evidence that Respondent deliberately seeks to capitalize on the identity or close similarity of the domain names in dispute to the Complainants’ trademarks and to gain revenue therefrom (see Target Brands, Inc. Bealo Group S.A., NAF Case No. 128684; Alta Vista Company v. Andrew Krotov, WIPO Case No. D2000-1091).
A.3 Registered and Used in Bad Faith
Complainants submit that Complainants and their predecessors-in-interest adopted and have used Complainants’ trademarks for many years and such adoption and use precedes the registration date of the domain names in dispute. It can reasonably be inferred that the Respondent had notice of Complainants’ trademarks at the time when it registered the domain names in dispute. (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Samsonite Corporation v. Colony Holdng, NAF Case No. 94313; CBS Broadcasting, Inc. v. LA-Twilight-Zone, WIPO Case No. D2000-0397).
Complainants further submit that Respondents registration of multiple domain names incorporating Complainants’ trademarks suggests that at the time the Respondent registered the domain names in dispute, Respondent had knowledge of Complainants’ trademarks. Accordingly, it may be inferred that Respondent intentionally registered the domain names in dispute to trade-off the goodwill and reputation of Complainants’ trademarks or otherwise create a false association, sponsorship or endorsement with or of the Complainants. The registration of a domain name identical or confusingly similar to a well-known trademark by a person with no connection to that trademark amounts to “opportunistic bad faith”. (see Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Veuve Clicquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
Complainants further submit that on information and belief, in registering and using the domain names in dispute, Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The domain names in dispute are currently associated with webpages purporting to provide information and tickets to events related to Complainants’ trademarks or other events. The links on the website are pay-per-click advertising links. The use of a well-known trademark as a domain name to link to such a pay-per-click advertising website is evidence that Respondent deliberately seeks to capitalize on the identity or close similarity of the domain names in dispute to Complainants’ trademarks to gain revenue therefrom (Alta Vista Company v. Andrew Krotov, WIPO Case No. D2000-1091).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding, AG v. AAIM, WIPO Case No. D2000-0403.
For the reasons stated above, the Panel finds that Complainants constitute an entity which may initiate a single Complaint against Respondent with respect to the domain names in dispute.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly prove that the domain names in dispute are confusingly similar to the trademarks in which Complainants have rights.
Complainant Madison Square Garden L. P. is the owner of the trademark MADISON SQUARE GARDEN registered in the United States as Registration No. 835,284 on September 12, 1967, for “operation of a sport entertainment, convention and exhibition arena…”. The application was based on use in commerce in the United States of America since in or about 1879.
Complainant Radio City Trademarks, LLC is the registered owner of the trademarks RADIO CITY, United States Trademark Registration No. 1323767 registered on March 5, 1985 in relation to “entertainment services—namely the production and presentation of theatrical, musical and cinematic shows and performances”; RADIO CITY MUSIC HALL, United Sates Registration No. 1121615 registered on July 3,1979 in relation to “entertainment services—namely, live and cinematic shows; ROCKETTES, United States Registration No. 1209117 registered on September 14, 1982 in relation to “entertainment services by a dance group …”; RADIO CITY ROCKETTES, United States Registration No. 2147635 registered March 31, 2000 in relation to “entertainment services, namely, the production and presentation of theatrical, musical and cinematic shows and performances; “and RADIO CITY CHRISTMAS SPECTACULAR, registered as United States Registration No. 2375564 registered on August 8, 2000 in relation to “plush toy animals,… and other goods in International Class 28”.
Each the domain names in dispute incorporate one of Complainants’ trademarks MADISON SQUARE GARDEN, RADIO CITY, RADIO CITY MUSIC HALL, RADIO CITY MUSIC HALL CHRISTMAS SHOW or ROCKETTES and differs from Complainants’ registered trademarks in minor and immaterial respects. In the case of the domain name Respondent has used the letter “t” twice in the domain name to misdirect Internet users who make a typographical error in typing to Respondent’s website, an objectionable technique referred to as “typosquatting”.
The Panel finds that Complainants have proven that the domain names in dispute are confusingly similar to the Complainants’ registered trademarks.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
On the material before the Panel, Respondent has not used any of the trademarks MADISON SQUARE GARDENS, RADIO CITY; RADIO CITY MUSIC HALL; RADIO CITY CHRISTMAS SPECTACULAR; ROCKETTES or RADIO CITY ROCKETTES or any misspelling thereof in association with any bona fide goods or services offered by Respondent.
The Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainants’ trademarks or any trademarks confusingly similar thereto. The domain names in dispute are used by Respondent for websites that include sponsored links promoting products offered by competitors of Complainants. The use of the domain name in dispute to divert Internet traffic to Respondent’s websites associated with the domain names in dispute is not a legitimate use of the domain names in dispute. Respondent did not file any evidence to demonstrate Respondent’s rights or legitimate interests in the domain names in dispute as it was entitled to do pursuant to paragraph 4(c) of the Policy.
Complainants have used their trademarks in association with entertainment and public assemblies since as early as 1879 in relation to Madison Square Gardens and as early as 1932 in relation to Radio City Music Hall in the United States of America and such adoption and use substantially precedes the registration date of the domain names in dispute in 2005 and 2006. Through long and substantial use of Complainants’ registered trademarks in association with entertainment services in the United States of America it can reasonably be inferred that Respondent had notice of Complainants’ trademarks at the time when it registered the domain name in dispute; (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that Complainants have proven that Respondent does not have any rights or legitimate interests in the domain names in dispute.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainants must prove that the domain names in dispute has been registered and used in bad faith.
Having regard to Complainants’ long standing registrations in the United States of America of the trademarks MADISON SQUARE GARDEN, RADIO CITY, RADIO CITY MUSIC HALL, RADIO CITY CHRISTMAS SPECTACULAR, ROCKETTES and RADIO CITY ROCKETTES, and no evidence of bona fide use of such trademarks by Respondent in association with any goods or services, the Panel infers that Respondent registered the domain names in dispute with knowledge of Complainants’ well-known trademarks..
The registration of domain names identical or confusingly similar to well-known trademarks by a person with no connection to that trademark amounts to “opportunistic bad faith” (see Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).
In registering and using the domain names in dispute, Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. The domain names in dispute are currently associated with webpages purporting to provide information and tickets to events related to Complainants’ trademarks. The links on the website have the appearance of pay-per-click advertising links. The use of well-known trademarks as domain names to link to pay-per-click advertising websites is a persuasive indication that the Respondent deliberately seeks to capitalize on the identity or close similarity of the domain names in dispute to Complainants’ trademarks and to gain revenue therefrom (see Alta Vista Company v. Andrew Krotov, WIPO Case No. D2000-1091; MatchNet pk v. MAC Trading, WIPO Case No. D2000-0205).
The Panel finds that Complainants have proven that Respondent registered and is using the domain names in dispute in bad faith as set out in paragraph 4(b)(iv) 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 ; ; ; and be transferred to Complainant Madison Square Garden L.P. and the domain names ; ; ; and be transferred to Complainant Radio City Trademarks, LLC.
Ross Carson
Sole Panelist
Dated: August 03, 2007
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