Complainant is Delaware North Companies, Inc.- Boston of Boston, Massachusetts, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
Respondent is Charlie Wilkins of Weymouth, Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2011. On December 12, 2011, the Center transmitted by email to GoD, Inc. (the “Registrar”) a request for registrar verification in connection with the Disputed Domain Name. On December 12, 2011, 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 December 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 5, 2012.
The Center appointed Lynda M. Braun as the sole panelist in this matter on January 11, 2012. 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
Complainant owns and operates a year-round, 19,600-seat sports and entertainment arena located in Boston, Massachusetts known as the TD Garden. Complainant’s Boston arena is state-of-the-art and fully equipped with three (3) private restaurants, ninety (90) executive suites, a multi-million dollar video scoreboard and complete 360-degree LED technology lighting system. TD Garden is the successor to the famous Boston Garden arena that operated for approximately 65 years, hosting Boston’s professional basketball and professional hockey teams and providing a stage for some of the most important and historical entertainment and political events of its time. TD Garden replaced the Boston Garden in 1995 and has become ranked as one of the top three sports and entertainment venues in the United States; its hosted events draw in excess of 3.5 million attendees a year.
On April 15, 2009, Complainant’s arena was renamed TD Garden from TD Banknorth Garden after entering into an exclusive 20-year naming agreement with Toronto Dominion Bank, N.A. (“TD Bank”). Pursuant to the naming agreement, TD Bank granted Complainant the exclusive right to use, enforce and benefit from the TD GARDEN trademark in connection with the arena for the term of the agreement and additionally gave Complainant the exclusive right to register the official domain name for the arena as well as use domain names incorporating the TD GARDEN trademark.
As such, Complainant is the exclusive licensee of United States trademark TD GARDEN, No. 3,929,160, in International Class 35 for concession stands featuring food arranging and arranging and conducting exhibitions for business purposes; in International Class 41 for entertainment services, namely, leasing stadium facilities for sporting events, exhibitions, concerts, meetings, seminars and conventions; providing radio and television studios in connection with stadium events; leasing and operating stadium suites for event viewing purposes; arranging and conducting sporting events and tournaments, concerts and sporting exhibitions, for public viewing and for radio and television broadcast; and in International Class 43 for catering and restaurant services.
Complainant registered the domain name on May 29, 2009, shortly after the announcement of the name change from TD Banknorth Garden to TD Garden. Complainant uses this website to provide information about the sports and entertainments events held at the arena and to sell tickets to such events through its licensed ticket broker Ticketmaster. The Internet has become an extremely important communication and marketing tool for Complainant.
On or around March 1, 2011, Respondent registered the Disputed Domain Name , which, as of the date of the Complaint in this case, resolved to a pay-per-click page containing hyperlinks to several third party websites that, without authorization from Complainant, advertised and sold tickets to events at Complainant’s arena in competition with Complainant’s licensed ticket broker. As of the writing of this decision, when one types in the Disputed Domain Name, an error message appears, stating that the website cannot be found. 5. Parties’ Contentions A. Complainant
Complainant alleges the following:
- The Disputed Domain Name is confusingly similar to Complainant’s TD GARDEN trademark.
- The existence of an exclusive license to use and enforce the trademark, along with Complainant’s extensive use thereof, sufficiently confers rights in the TD GARDEN trademark to Complainant.
- The Disputed Domain Name entirely incorporates Complainant’s TD GARDEN trademark with the addition of the generic or descriptive term “events.” Domain names incorporating a complainant’s trademark and generic or descriptive terms such as “arena,” “stadium,” “center,” or “tickets,” are confusingly similar to that complainant’s trademark where, as here, Complainant is the sponsor of or a party to a naming rights agreement with a sports or entertainment venue.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent is not commonly known by the Disputed Domain Name, Respondent is not using the Disputed Domain Name in connection with the bona fide offering of goods or services, and Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
- Respondent has registered and is using the Disputed Domain Name in bad faith because Respondent has intentionally attracted for commercial gain Internet users to Respondent’s website.
- Respondent’s unauthorized and unapproved hijacking of customers searching for Complainant to Respondent’s website, where it provides links to competing websites which sell unauthorized tickets to events at Complainant’s arena, is solely for the purpose of achieving commercial gain.
- Respondent was operating a pay-per-click website to which the Disputed Domain Name resolved.
- Bad faith exists in this case, even if only the Registrar or Google, and not Respondent himself, derived commercial gain from the pay-per-click website.
- Respondent owns the domain name that resolves to a website, “www.” that sells tickets to events at Complainant’s arena, also evidence of bad faith.
- Complainant’s TD GARDEN trademark registration was filed prior to Respondent’s registration of the Disputed Domain Name. Therefore, Respondent had constructive notice of Complainant’s trademark rights, further supporting a finding of bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Disputed Domain Name:
(i) That the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) That Respondent has registered and is using the Disputed Domain Name in bad faith.
These elements are discussed as follows: A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is nearly identical and is confusingly similar to Complainant’s trademark. Complainant is the exclusive licensee of the TD GARDEN trademark and therefore has rights to enforce it. The word “events” in the Disputed Domain Name is descriptive and indicates that the website deals with events that take place at the TD Garden arena. The addition of “events” does not remove the similarity but increases the risk of confusion for Internet users, as they would believe that the website at the Disputed Domain Name belongs to or is associated with Complainant. Indeed, it is well established that the addition of descriptive or generic words to a trademark does nothing to change an otherwise identical or confusingly similar domain name. See, e.g., PRL USA Holdings, Inc. v. Unasi Management Inc.,WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity).
Specifically, other UDRP panels have held that a domain name incorporating a complainant’s trademark and the generic or descriptive term “events” is deemed confusingly similar to that complainant’s trademark. See Sanofi-Aventis v. c/o SANOFIEVENTS.COM / Najdat Hmedany,WIPO Case No. D2011-0869 (finding confusingly similar to the SANOFI trademark because the term “events” lacks distinctive character); Wal-Mart Stores, Inc. v. Jessica Dozier,WIPO Case No. D2006-0635 (finding confusingly similar to the WAL-MART trademark because the word “events” does not negate the confusing similarity between the domain name and complainant’s trademark).
In addition, the Disputed Domain Name entirely incorporates Complainant’s trademark. A substantial number of previous UDRP panels have found that a domain name which wholly incorporates a complainant's trademark may be sufficient for a finding of confusing similarity under the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. 2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. 2000-0047; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615.
Accordingly, the Panel finds that Complainant has established its case under the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
There is nothing in the case file or on the Respondent’s website that would suggest rights or legitimate interests in the Disputed Domain Name. The Respondent’s default notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant, that Respondent is now or was ever known by the Disputed Domain Name, or that Respondent has other authority, license or permission to use Complainant’s trademark. Therefore, the Panel infers that Respondent is using the Disputed Domain Name to divert Internet users searching for Complainant’s website to its own website by capitalizing on the fame and goodwill of Complainant. This use does not constitute a legitimate interest in the Disputed Domain Name. See Owens Corning v. NA, WIPO Case No. D2007-1143. Finally, where Respondent has registered and used the Disputed Domain Name in bad faith (see below), this Panel finds that Respondent cannot be found to have made a bona fide offering of goods or services.
Accordingly, the Panel finds that Complainant has established its case under the second element of the Policy. C. Registered and Used in Bad Faith
The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to Complainant, who is the owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) Respondent has registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the trademark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) Respondent, by using the Disputed Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product on Respondent’s website.
Policy paragraph 4(b).
Sufficient circumstances are present here to evidence registration and use of the Disputed Domain Name in bad faith.
First, the Panel finds that Respondent’s registration of the Disputed Domain Name after Complainant began to use and widely promote its distinctive trademark is evidence that the Disputed Domain Name was registered in bad faith. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where respondent registered the domain name after complainant established rights and publicity in complainant’s trademarks). As exclusive licensee of the TD GARDEN trademark, Complainant has been using TD GARDEN widely and continuously. Thus, it is extremely difficult to conceive of a plausible situation in which Respondent would have been unaware that TD GARDEN belonged to another party at the time of registration.
In fact, it is highly likely that Respondent who is located in Massachusetts was well aware of Complainant and its business when Respondent registered the Disputed Domain Name. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). Furthermore, Respondent operates another website that sells tickets to events at the Complainant’s TD Garden arena, “www.”. Thus, the Panel infers that Respondent had actual knowledge (not only constructive knowledge) of Complainant’s rights in the TD GARDEN trademark when it registered the Disputed Domain Name, further evidence of bad faith.
Second, Complainant has submitted evidence that the Disputed Domain Name resolves to a website for competing goods offered by Complainant’s competitors.1 In other words, Respondent appears to have used the Disputed Domain Name in order to intentionally trade on the goodwill in the TD GARDEN trademark and to attract traffic to third party websites for commercial gain, which previous UDRP panels have concluded support a finding of bad faith. See NetWizards, Inc. v. Spectrum Enterprises,WIPO Case No. D2000-1768 (Registration and use of a domain name to re-direct Internet users to websites of competing organizations constituted bad faith registration and use); Tarjeta Naranja S.A. v. MrD and Alejandro San Jorge,WIPO Case No. D2001-0295 (to link Internet surfers looking in their browsers for the well known mark of complainant to a competitor’s website is a typical bad faith use under the Policy); AutoNation, Inc. v. Paul Schaefer,WIPO Case No. D2001-0289 (bad faith use and registration found where Respondent used confusingly similar domain name to sell competing products); Express Messenger Systems, Inc. v. Golden State Overnight,WIPO Case No. D2001-0063 (use of confusingly similar domain name by competitor of Complainant constituted bad faith registration and use).
Finally, the website to which the Disputed Domain Name resolves had been set up to provide links to commercial products, including ticket-related products, on a pay-per-click basis. This is further evidence of bad faith. See St. Baldrick’s Foundation Inc. v. Web Advertising, Corp.,WIPO Case No. D2007-0707 (“Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate ‘click-through’ sites, can be considered to be evidence of bad faith.”). It is reasonable to assume that the Disputed Domain Name generated revenue from the click-through referrals. Whether this revenue accrued directly to Respondent or to the Registrar, or to both, is immaterial. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. This conduct additionally confirms that Respondent registered and used the Disputed Domain Name in bad faith.
Accordingly, the Panel finds that Complainant has established its case under the third element 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 be transferred to Complainant.
Lynda M. Braun
Sole Panelist
Dated: January 13, 2012
1 Although the Disputed Domain Name no longer resolves to the click-through website operated by Respondent, there is sufficient evidence in the record to prove that this was previously the case. The Panel infers that Respondent took down the pay-per-click website after being served with the Complaint.
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