WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Madison Square Garden L.P., MSG Beacon LLC v. Beacon Theater Services, Ltd.
Case No. D2008-0029
1. The Parties
The Complainants are Madison Square Garden L.P. and MSG Beacon LLC, of United States of America, represented by Abelman Frayne & Schwab, United States of America.
The Respondent is Beacon Theater Services, Ltd., of the Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, internal representation.
2. The Domain Name and Registrar
The disputed domain name is registered with Vivid Domains.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 8, 2008. On January 9, 2008, the Center transmitted by email to Vivid Domains a request for registrar verification in connection with the domain name at issue. On January 9, 2008, Vivid Domains transmitted by email to the Center its verification response confirming that the 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”), 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 January 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2008. The Response was filed with the Center on February 4, 2008.
The Center appointed John Swinson as the sole panelist in this matter on February 13, 2008. 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.
Even though the Response was filed one day late, the Panel has decided to accept and consider the Response, as doing so will not negatively impact the rights of either party in these circumstances.
4. Factual Background
There are two Complainants, namely MSG Beacon LLC and Madison Square Garden L.P.
MSG Beacon LLC is wholly owned by Madison Square Garden L.P., and assert to be the joint exclusive licensees of certain trademarks relating to the Beacon Theatre (including BEACON THEATER and BEACON THEATRE).
The Beacon Theatre is a historic theatre located in New York City, opened in the late 1920s. In its earlier days, it was a venue for vaudeville acts, musicals, drama, operas and movies. In more recent times it has become known as a venue for musical concerts. The theatre is listed on the US National Register of Historic Places.
The website at the disputed domain name contains sponsored links, primarily relating to concert, Broadway or theater tickets. However it also provides sponsored links to other goods and services such as travel (car rental, flights, accommodation), finance (credit cards, car and health insurance) and home (mortgages, houses for sale, real estate training).
In reading this decision, one should note the name of theatre is “The Beacon Theatre” (spelt with an “re” ending), but the disputed domain name has an “er” ending.
5. Parties’ Contentions
A. Complainant
The Complainants make the following contentions:
The Complainants are jointly the exclusive licensee of the BEACON THEATER trademark (as well as other related marks), pursuant to a license from Beacon Broadway Company, LLC. and Beacway Operating LLC. Under that license, the Complainants are granted the right to enforce the trademark against third parties.
The Beacon Theatre is one of the most famous venues for entertainment in the world. Many high profile people have used the Beacon Theatre as a venue for concerts or shows.
BEACON THEATRE has acquired common law trademark status due to its continuous commercial use of over 75 years and extensive promotion. These common law rights were acquired a long time before the disputed domain name was registered.
The BEACON THEATRE trademark is well known in the United States, but also internationally.
The disputed domain name is identical or confusingly similar to the trademark because the “.com” suffix is irrelevant, and the absence of white space in domain names is disregarded.
The Respondent has not been licensed or permitted by the Complainants (or the owner of the trademark) to use the trademark. The Respondent has not received authorization from the Complainants or the owner to register the disputed domain name. The Respondent does not appear to have any rights or legitimate interests in the disputed domain name.
Prior to registration of the disputed domain name, the Respondent did not appear to use or be known as a trademark, company name, business name or trade name which is the same as the disputed domain name.
The owner of the trademark (and its predecessors) used the trademark for many years preceding registration of the disputed domain name. It can reasonably be inferred that the Respondent had notice of the trademark at the time it registered the disputed domain name, because it is such a well known name with a high level of fame and distinctiveness. The Respondent would not have registered the disputed domain name but for the renown of the trademark.
The Respondent is not using the disputed domain name in relation to a bona fide offering of goods or services. The relevant website provides information and ticketing for events related to the trademark, as well as services which are unrelated to the trademark. The links on the website are per-per-click advertising links. Use of a well known trademark as a domain name with pay-per-click advertising is evidence that the Respondent is deliberately seeking to capitalize on the similarity between the disputed domain name and trademark, and to gain revenue from that similarity. By providing links to the Complainants’ competitor’s products, the Respondent is also disrupting the Complainants’ business.
The Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the name to the Complainants or a competitor of the Complainants for valuable consideration in excess of out-of-pocket expenses.
The goods available on the website (concert tickets, theatre tickets) would be expected by an Internet user to appear on the official website of the Complainants. It therefore appears from the content of the website that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the trademark to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Registration of a domain name which is identical or confusingly similar to a well known trademark by a person with no connection to the trademark amounts to opportunistic bad faith.
On July 19, 2007, the Complainant sent a letter to the Respondent. This correspondence was returned marked “unclaimed”.
B. Respondent
The Respondent makes the following contentions:
Beacon Theatre is a descriptive term that describes a presentation venue or theatre which serves as a guiding light or inspiration. It is also descriptive of the actual beacons of light often used by theatres during an event or movie premiere. Beacon Theater describes the services provided by the Complainant, such as presenting events, musicals and other shows that are a source of inspiration and guidance.
The descriptive term “beacon theater” is in common use by many third parties around the world, such as in Australia, Canada, Great Britain and even in the United States. In order to prove common law trademark rights in BEACON THEATER, the Complainant would have to show that its mark had secondary meaning, or that consumers associated it exclusively or almost exclusively with the mark BEACON THEATER. Consumers clearly do not associate the Complainant exclusively with the term BEACON THEATER - this would be impossible in light of the substantial third party use of the term.
There is no evidence that the Respondent had knowledge of the Complainants, their business, website or trademarks when it registered the disputed domain name, and the Complainants have failed to provide any evidence to the contrary. It was impossible for the Respondent to have knowledge of the Complainants’ trademarks since the Complainants have no registered trademarks over BEACON THEATRE.
Although the Complainants allege substantial use of the common law mark, they did not apply to register it as a trademark until August 31, 2007, over five years after the Respondent registered the disputed domain name on May 5, 2002. The Complainant has not established common law trademark rights in BEACON THEATER, or that such rights were existing at the time the Respondent registered the disputed domain name.
The Respondent registered the disputed domain name because it believed no party could claim exclusive rights over it, and because of its descriptive nature. The purpose of the Respondent’s website is to provide an online venue guiding visitors to event resources.
The Respondent is commonly known by the disputed domain name, because its business name contains the disputed domain name, along with the additional word “services”, which describes the nature of the Respondent’s business.
The Respondent has used the disputed domain name in connection with bona fide goods and services, being pay-per-click advertisements. This advertising offering establishes legitimate interest. The Respondent can also show rights and legitimate interests because the disputed domain name is a descriptive term subject to third party use. The Complainants should not be able to have a monopoly over a descriptive term.
The Respondent did not register the disputed domain name with intent to sell, rent or transfer it to the Complainants or a competitor, or to disrupt the Complainants’ business, or confuse Internet users.
The Respondent uses the disputed domain name website to display sponsored search results from Google, provided by DomainS. The Respondent receives a share of the revenue earned from the pay-per-click advertisements. These links relate to the descriptive meaning of the disputed domain name, by providing concert tickets, theatre tickets, and tickets to Broadway shows.
There is no evidence that the Respondent registered the disputed domain name to capitalize on the Complainants’ trademark.
6. Discussion and Findings
To succeed, the complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
While the Complainants’ licensor has filed three trademark applications over “Beacon Theater” on August 31, 2007, the Complainants’ do not claim trademark or service mark rights on this basis.
Rather, the Complainants assert common law trademark rights over several trademarks relating to the Beacon Theater, including BEACON THEATRE and BEACON THEATER.
As a threshold issue, it must be established that the relevant trademark is one in which the Complainants “have rights”. It is not necessary for the Complainants to be the trademark owners for this purpose, nor do they need to be the only person or entity with rights in the trademark (see DigiPoll Ltd v. Raj KumarWIPO Case No. D2004-0939).
The Complainants have an exclusive license of these common law trademarks from the trademark owners, and part of the license was annexed to the Complaint. As noted in Miele, Inc. v. Absolute Air Cleaners and Purifiers,WIPO Case No. D2000-0756 “A licensee having the right to use a mark under its license is clearly a party having a right in the service or trademark”. As such, the Complainants in this case have standing to bring an action under the Policy.
The remaining question is whether the Complainants have common law trademark rights as they claim. It is well established from previous panel decisions, that in order to prove common law trademark rights in BEACON THEATER or BEACON THEATRE, the Complainants must show that these terms have achieved secondary meaning or association with Complainants or their goods and services. To do this, a complainant can, for example, provide evidence of media recognition, public awareness or length and amount of sales under the trademark. (See for example Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786).
In the Complaint it is stated that between February 2, 1999 and August 9, 2007, over 500 shows were held at the Beacon Theatre, with more than 1.5 million tickets sold. The gross revenue from these shows alone exceeded $80 million US dollars. While the Complainants themselves did not have rights over the trademark during this entire time, the licensor and prior operators of the Beacon Theatre did.
There has also been significant media and public recognition of the Beacon Theatre. When a Google search for “Beacon Theater” was performed by the Panel, nine of the first ten results refer to the New York City Beacon Theatre.
The Beacon Theatre has a long history, dating back to 1929 and the Panel considers it to be a well known, famous entertainment venue in New York City. The Beacon Theatre has hosted some of the most famous performers of recent times, and it can be inferred that such shows would have involved a large amount of advertising and promotion of the venue, for an extended period of time. Shows for famous performers are often announced up to a year in advance, with large scale and expensive advertising in print, television, radio and a wide variety of other media. Such advertising would have undoubtedly contained the BEACON THEATRE trademark.
In the light of the above, the Panel accepts that the public (at least in New York City, but more than likely outside this geographic area) would associate BEACON THEATRE with the Complainants’ services of managing the Beacon Theatre. The Complainants have therefore provided adequate grounds for a finding that they hold common law trademark rights in the name BEACON THEATRE. It is of no consequence that the secondary meaning of BEACON THEATRE may be more prominent in New York City than anywhere else in the world.
The Panel also refers to Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems,WIPO Case No. D2001-0932, where the cases regarding common law rights in the name of a building are discussed.
The Respondent asserts that “Beacon Theater” is a descriptive term, subject to substantial third party use, and that the Complainant has not provided sufficient evidence to establish that BEACON THEATRE has acquired a secondary meaning, to the extent that the public associates the term primarily with the Complainants’ goods and services.
The Panel does not agree. While there may be other Beacon Theatres in the world, they do not possess the same level of fame or notoriety as New York City’s Beacon Theatre. Further, in the Panel’s view, the level of third party use cannot be accurately described as “substantial”. There are a handful of other theatres over the world which are called “Beacon Theatre”, and that fact alone does not mean that the Complainants do not have the necessary rights for the purpose of the Policy.
The disputed domain name is clearly confusingly similar to the Complainants’ common law BEACON THEATRE trademark, as the only difference is a common variation in the spelling of “theatre”.
The Panel finds that the first element has been met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any 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 your 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 non-commercial 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.” (Policy, paragraph 4(c)).
To succeed on this element, the complainant must make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
The Complainants have inferred that the Respondent had knowledge of the trademark (because it is so well known and has a lengthy history) at the time it registered the disputed domain name. The Complainants also contend that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, because they are providing a website with pay-per-click advertising, which is directly related to the Complainants’ trademark.
The Panel finds this constitutes a prima facie case that the Respondent lacks rights or legitimate interests.
In response, the Respondent states that it is known as Beacon Theater Services Ltd, which incorporates the entire disputed domain name.
The Respondent’s address for service has been given as the Cayman Islands. Aside from using its name on the response and for the WHOIS contact information, the Respondent has not provided any evidence that it is commonly known by the name Beacon Theater or similar. After conducting numerous Internet searches, the Panel was unable to find any reference to Beacon Theater Services Ltd. There is no “about us” section on the disputed domain name website which provides information on the Respondent.
Such evidence should have been easily available to the Respondent, and the Panel can only infer that by failing to provide such evidence, the Respondent is not commonly known by the term “Beacon Theater”.
The Respondent also contends that as “Beacon Theater” is a descriptive term (alluding to a venue which is a source of light or inspiration), and the website provides services which accord with that meaning, the Respondent has established rights or legitimate interests. In particular, the Respondent states that the disputed domain name describes the services provided by the Complainant, which are “presenting events, musical and otherwise, that are a source of inspiration and guidance”. According to the Respondent, it is using the disputed domain name to offer bona fide services.
The Panel does not agree that Beacon Theater is a generic or descriptive term. While each separate word may have a defined meaning, “beacon” is not necessarily a common everyday word used in relation to theatres. The majority of people would consider “Beacon Theater” to be the name of a particular theatre.
In the Panel’s view, people are extremely unlikely to assume that a “Beacon Theater” website is a place where information can be found on inspirational theatres, or theaters which use a beacon of light during premieres. In any event, the links provided on the disputed domain name website do not directly relate to any descriptive meaning which the term may have. The links primarily relate to information and services for general concert and theater tickets (not necessarily tickets for shows which are inspirational), as well as other services which are completely unrelated to theaters (for example, airfares and insurance).
While in some circumstances the offering of pay-per-click advertising may be a bona fide offering of services under the Policy, the Panel does not agree that it can be classed as bona fide in circumstances where the website utilizes another party’s trademark, and publishes links to competitors’ websites.
The Panel disagrees with the Respondent’s statement that it is providing particular services relating to events via the website. By engaging DomainS to select the advertising links, the Respondent is not strictly in control of any services it is providing, as it has limited control over the advertisements that appear. The Panel infers that this is why the website contains links which are not related to the Respondent’s nominated services.
The Panel therefore finds that the Respondent has failed to show any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The Complainants assert that the Respondent registered the disputed domain name in bad faith primarily for the purpose of selling, renting or otherwise transferring the name to the Complainants (or a competitor of the Complainants) for valuable consideration in excess of out-of-pocket expenses. However there has not been any evidence put forward that the Respondent is intending to sell or transfer the disputed domain name. Accordingly, the Panel does not find any bad faith on the part of the Respondent on this ground.
Paragraph 4(b)(iv) of the Policy states that bad faith can be found in circumstances where the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
As mentioned above, the Complainants’ trademark is well known in New York City. It is true that a trademark search of “Beacon Theatre” via trademark databases at the time the Respondent registered the disputed domain name, would not have alerted the Respondent to the Complainants’ trademark, as no trademark application had been filed until late August 31, 2007. However, the common law trademark had been in existence for a long period of time, and did possess a significant reputation. A basic Internet search for the term would have returned numerous results relating to the New York City Beacon Theatre.
In the Panel’s view, confusion between the Respondent’s website and the Complainants’ trademarks, services and reputation is very likely to occur. This is because there is only a very minor difference in spelling (between “theater” and “theatre”) which are both commonly accepted spellings depending on where the Internet user resides. This alone is enough to cause confusion for Internet users. However the likely confusion is increased once an Internet user arrives on the website, they are presented with services, some of which are the same as, or closely related to the services provided by the Complainants (for example, theater tickets, or concert tickets).
The Respondent contends that it had no knowledge of the Complainants’ or their trademark at the time it registered the disputed domain name. However, the Respondent notes elsewhere in its response that it provide services relating to events (musical and otherwise) that are a source of inspiration and guidance. If the Respondent is in fact experienced in providing these services, the Panel infers that the Respondent would have, at some stage (and more than likely prior to establishing its alleged business), heard of the Beacon Theatre which is arguably a very well known theatre for people engaged in business in this field.
There is no doubt that the Respondent is receiving a commercial gain from the website. In the response the Respondent states that it receives a share of revenue from DomainS in relation to the advertisements that are placed on the website.
In summary, the Panel is able draw inferences of bad faith from the following:
- the Respondent has used in the disputed domain name a valuable trademark which is well-known in relevant circles;
- it is highly likely that the Respondent was aware of the Complainant when registering the domain name, due to type of services it provides;
- the Respondent has not shown, and the Panel cannot conceive of, any good faith use of the disputed domain name.
The Panel therefore finds that the domain name was registered and is being used in bad faith
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 name, be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: February 27, 2008
Full & Egal Universal Law Academy