Complainant is Meow Wolf, Inc., United States of America (“United States”), represented by The Bennett Law Group, United States.
Respondent is Contact Privacy Inc. Customer 1242101181, Contract Privacy Inc. Customer 1242532075, Contact Privacy Inc. Customer 1243594352, Canada / Brody Rios, NET4000, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2019. On October 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 10, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 24, 2019. 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 Respondent of the Complaint, and the proceedings commenced on October 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2019. The Response was filed with the Center on November 13, 2019. The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 18, 2019. 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 Established in 2008, Complainant is an arts and entertainment group based in Santa Fe, New Mexico. Complainant employs over 400 employees in positions creating and supporting art across a variety of media, including architecture, sculpture, painting, photography, video production, cross-reality (AR/VR/MR), music, audio engineering, narrative writing, costuming, performance, and more. The company creates immersive and interactive experiences that transport audiences of all ages into fantastic realms of story and exploration. This includes art installations, video and music production, and extended reality content, which take place in various geographic locations. More than 1 million visitors have visited the company’s space in New Mexico. In 2017, the company generated roughly USD 9 million in income. It has been well-publicized that Complainant is expanding to Las Vegas in 2020, then Denver, followed by a permanent exhibit in Washington, D.C. (“DC”) in 2022. Complainant’s expansion to Denver involves a USD 60 million, 90,000-square-foot immersive art park. It has been widely reported that the company recently raised more than USD 158 million in funding from investors, following a prior funding round of USD 17 million. Complainant is the owner of the MEOW WOLF trademark, having commenced use of this mark in 2008 in connection with entertainment services and clothing. Complainant owns five registrations and two pending applications for the MEOW WOLF mark, registered with the United States Patent and Trademark Office (“USPTO”), as follows: - Registration No. 4090514, registered on January 24, 2012, with first use in commerce of February 1, 2008; - Applications: Serial No. 87707172 with priority date of December 4, 2017, and Serial No. 87549755 with priority date of July 31, 2017. In 2017, Complainant’s first permanent installation in Santa Fe won the prestigious THEA Award from the Themed Entertainment Association. Complainant and its MEOW WOLF trademarks have received critical acclaim and unsolicited media attention, including the following: - “Meow Wolf, The Insane Art Collective Taking Over the World”, Rolling Stone, January 16, 2019; Respondent operates as 4TIX, LLC, and uses the brand and domain name The Domain Names were registered as follows: Domain Name Registration Date January 4, 2018 April 16, 2018 December 11, 2018 5. Parties’ Contentions A. Complainant (i) Identical or confusingly similar Complainant states that since adopting and using its MEOW WOLF trademark in 2008, it has devoted substantial time, money and effort in promoting its mark to identify Complainant as the source of its services. By virtue of Complainant’s success, as well as the fanciful nature of its MEOW WOLF trademark and its long use of the mark, Complainant claims that the mark has developed substantial and valuable goodwill that belongs exclusively to Complainant. The registrations for the MEOW WOLF mark constitute prima facie evidence of their validity and of Complainant’s exclusive right to use the corresponding marks with the corresponding goods and services. Complainant states that the Domain Names are comprised of Complainant’s MEOW WOLF mark followed by the name of a recently announced intended destinations for Complainant. Complainant’s plans to expand to Las Vegas, Denver and DC were widely publicized and the press continues to report on news regarding these expansions, such as updates on Complainant’s construction, timeline and new details regarding the planned experiences. The Domain Names create the same, or essentially the same, commercial impression as Complainant’s trademarks and are similar in sight, sound and meaning. The Domain Names all contain Complainant’s entire unique and fanciful MEOW WOLF mark. Complainant contends that consumers are likely to believe that the Domain Names originate from or are affiliated with, authorized or endorsed by Complainant. Complainant claims that Respondent intentionally registered the Domain Names precisely because of the likely association with Complainant’s marks. Accordingly, Complainant contends that the Domain Names are confusingly similar to Complainant’s trademarks. (ii) Rights or legitimate interests Complainant states that its rights in the MEOW WOLF trademarks were firmly established before Respondent registered any of the Domain Names. Respondent cannot claim or show any rights to the Domain Names that are superior to Complainant’s rights in its trademarks. The Domain Names are obviously related to Complainant’s marks. Complainant states that, on information and belief, Respondent does business as BuyTickets.com, an online marketplace for concert, sports and theater tickets. Complainant believes that Respondent has at all times been aware of Complainant and its MEOW WOLF trademarks. Respondent registered the Domain Names ending in “denver”, “vegas” and “dc” shortly after Complainant announced its intention to expand to those destinations, and well after Complainant had developed significant recognition and goodwill in its trademarks. The Domain Names all redirect to Respondent’s “www.buytickets.com” website, which according to Complainant is selling highly overpriced tickets to Complainant’s experiences. Respondent is using the Domain Names in a manner that is likely to confuse consumers to their detriment, as they are likely to mistakenly purchase overpriced tickets from Respondent, believing they are purchasing from Complainant. Further, Respondent is using Complainant’s MEOW WOLF trademarks to divert Complainant’s consumers to Respondent’s own website. In particular, Respondent is redirecting the Domain Names to its website at “www.buytickets.com”. The webpage to which the Domain Names redirect prominently depicts Complainant’s MEOW WOLF mark at the top. The webpage also depicts the MEOW WOLF logo and includes a photo of Complainant’s branded office building in Santa Fe. Below the trademarks, the webpage also displays a calendar of Complainant’s events with links to “Buy Tickets”. Complainant states that consumers who follow the “Buy Tickets” link are taken to another page where they may purchase overpriced tickets. For example, Respondent is selling tickets to an event on September 29, 2019, for USD 61, when the same tickets could be purchased on Complainant’s own site for USD 16. Complainant states that Respondent did not register the Domain Names based on an intent to create a MEOW WOLF branded business, nor has Respondent made any demonstrable preparations to use the Domain Names in connection with a bona fide offering of any good or service under any of those names. Respondent is not commonly known by any of the Domain Names, and has not acquired any legitimate trademark or service mark rights in the Domain Names. Respondent has used the Domain Names to mislead and funnel users and potential users of Complainant’s services to Respondent’s website at “www.buytickets.com” and to facilitate Respondent’s own gain at Complainant’s expense. Respondent’s use of the Domain Names is based on the trademark value of Complainant’s MEOW WOLF trademarks. Respondent is profiting from the value of Complainant’s marks by using the Domain Names for its own commercial gain. Respondent is using the Domain Names to offer information and tickets to experiential events, which is the exact manner in which Complainant has used and registered its trademarks. For the foregoing reasons, Complainant claims that Respondent has no rights or legitimate interests in the Domain Names. (iii) Registered and used in bad faith Complainant contends that Respondent registered the Domain Names in bad faith. Respondent was well-aware of Complainant’s MEOW WOLF trademarks at the time it registered the Domain Names. Additionally, Respondent has had years of constructive notice of Complainant’s registered trademarks. The Domain Names are clearly related to Complainant’s marks. The Domain Names contain Complainant’s entire and identical MEOW WOLF mark, followed by a destination to which Complainant recently announced it plans to expand. Complainant states that, on information and belief, Respondent has intentionally attempted to attract, for its commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks. This is evident from the fact that Respondent is redirecting the Domain Names to its own ticket sales website, which prominently features Complainant’s trademarks and sells tickets to Complainant’s events. Respondent is driving consumers to a website that undermines Complainant’s legitimate commercial interests. Respondent’s bad faith is evidenced by its (i) use of Complainant’s identical trademarks in the Domain Names, (ii) addition of the words “denver” “vegas” and “dc” to the MEOW WOLF mark in the respective Domain Names, (iii) registration of the Domain Names shortly after Complainant announced its intention to expand to those destinations, (iv) redirection of the Domain Names to its own ticket sales site, (v) prominent display of the MEOW WOLF mark at the top of Respondent’s webpage, and (vi) prominent display of the MEOW WOLF logo on the webpage, so that the page appears to be authorized, endorsed or sponsored by Complainant. Alternatively, Respondent registered the Domain Names solely for the purpose of reselling them to Complainant, or to prevent Complainant from reflecting its marks in corresponding domain names, or primarily for the purpose of disrupting Complainant’s business. Complainant asserts that Respondent is seeking to profit from the unauthorized association with Complainant’s MEOW WOLF marks. In light of the confusing similarity between the Domain Names and the marks, and Respondent’s prominent use of the marks on its website, Internet users who encounter the Domain Names will be confused as to the source, sponsorship, affiliation or endorsement of them. As such, Complainant urges there can be little doubt that Respondent has registered and used the Domain Names in bad faith. B. Respondent (i) Identical or confusingly similar Respondent argues that the Domain Names are neither identical nor confusingly similar to any of Complainant’s alleged trademarks or service marks. Respondent claims its use of the Domain Names is descriptive and not in the manner of a trademark use or for the purpose of causing consumer confusion. Respondent states that it does not claim – by means of the Domain Names, on its website, or in this proceeding – that it is an authorized reseller of Complainant’s products, but only that its website at “www.buytickets.com” acts as a marketplace, an intermediary between buyers and ticket sellers to facilitate the purchase and sale of event tickets, and as such is not involved directly in the actual ticket sale transaction between the buyer and ticket seller. Respondent contends that nothing in the UDRP or United States law requires Respondent to be authorized by the trademark owner to resell legitimate goods bearing that trademark owner’s mark. Further, Respondent claims that Complainant has produced no evidence that any product sold by Respondent via its website is overpriced. Some tickets might be priced slightly above face value, while other might be priced below face value. As tickets sold through Respondent’s site are often obtained through the secondary market and prices are determined by the individual ticket seller, the prices for tickets might be slightly above or often below face value. (ii) Rights or legitimate interests Respondent contends that it has established a legitimate and bona fide business, 4TIX LLC, using the brand name “BuyTickets.com”. Respondent states that it has used the Domain Names in connection with its business of buying and selling tickets to concerts, events, festivals, and sports events in the secondary market. Respondent claims that it operates in the ticket resale industry, and despite the similarity between its Domain Names and Complainant’s MEOW WOLF mark, no confusion occurs. Respondent states that it makes fair use of the MEOW WOLF mark and has not acted in bad faith because Respondent has legitimately used the Domain Names since 2018, descriptively and accurately, in connection with its bona fide offering of goods and services as a “resale marketplace, not the ticket seller”. Respondent further asserts that it registered and uses the Domain Names only to sell tickets to MEOW WOLF events and prominently disclaims any affiliation with Complainant as clearly stated in the BuyTickets.com terms and policies. Finally, Respondent argues that Complainant is attempting to engage in Reverse Domain Name Hijacking. (iii) Registered and used in bad faith Respondent asserts that the Domain Names have not been registered or used in bad faith because it has used the Domain Names since 2018 in connection with its bona fide offering of goods and services as a resale marketplace, as noted above. Respondent further asserts that the Domain Names were not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring them to Complainant, as the alleged owner of the trademark, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Names. Moreover, the Domain Names were not registered in order to prevent Complainant from reflecting its mark in a corresponding domain name and, in connection therewith, Respondent has not engaged in a pattern of such conduct. Respondent claims that Complainant and Respondent are not competitors and the Domain Names were not registered by Respondent primarily to disrupt Complainant’s business. Finally, Respondent asserts that the Domain Names were not registered in an intentional attempt to attract for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. 6. Discussion and Findings In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and (iii) Respondent has registered and is using the Domain Names in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainant has established rights in its MEOW WOLF trademarks, based on its USPTO trademark registrations for the marks and use of them in connection with its business since 2008. Further, the Panel determines that the Domain Names are confusingly similar to the MEOW WOLF mark, as each Domain Name incorporates the mark in its entirety, while adding the respective terms “denver”, “vegas” and “dc”, which are references to cities in the United States. The MEOW WOLF mark is a highly distinctive and fanciful mark, and it is the dominant feature in each of the Domain Names, clearly recognizable within each one. The addition of the geographical designations does not prevent a finding of confusing similarity between the Domain Names and Complainant’s trademark. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“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 nature of such additional term(s) may however bear on assessment of the second and third elements”). Accordingly, the Panel finds that the Domain Names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. Here, Complainant has made out a prima facie case. Complainant has demonstrated that its rights in the MEOW WOLF trademarks were established well before Respondent registered the Domain Names in 2018. There is no evidence that Complainant licensed or otherwise permitted Respondent to use its MEOW WOLF trademarks or to register a domain name incorporating them. Further, Respondent is not commonly known by any of the Domain Names and did not register them to create a MEOW WOLF branded business. Instead, Complainant has alleged that Respondent’s registration and use of the Domain Names is based on the trademark value of Complainant’s MEOW WOLF marks, and indeed they were registered shortly after Complainant announced the intended future locations for its art installations. The Domain Names all redirect to Respondent’s “www.buytickets.com” website, which according to Complainant, sells overpriced tickets for Complainant’s experiences. Respondent profits from the value of Complainant’s marks by using them in the Domain Names to redirect to a website offering information and tickets to experiential events, which is the exact manner in which Complainant has used its trademarks. Complainant asserts that Respondent has used the Domain Names to funnel users of Complainant’s services to Respondent’s website at “www.buytickets.com”, to facilitate Respondent’s gain at Complainant’s expense. In response, Respondent contends that it has established a bona fide business, using the brand name “BuyTickets.com”, and that it has used the Domain Names since 2018 in connection with its business of offering a resale marketplace for buyers and sellers of tickets to concerts, events, festivals, and sports events. Respondent also states that it makes fair use of the MEOW WOLF marks and has not acted in bad faith because Respondent has used the Domain Names only to sell tickets to Meow Wolf events, while disclaiming any affiliation with Complainant, as stated in the terms and policies of BuyTickets.com. The Panel determines that Respondent has failed to rebut Complainant’s case and to demonstrate any rights or legitimate interests in the Domain Names. WIPO Overview 3.0, section 2.5, provides that “[f]undamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” WIPO Overview 3.0, section 2.5.1, further specifies that “[e]ven where a domain name consists of a trademark plus an additional term…, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”. Section 2.5.1 explains that “UDRP panels have articulated a broad continuum of factors useful in assessing possible implied sponsorship or endorsement”, and that “[a]t one end, certain geographic terms (e.g., The Domain Names in this case – by using Complainant’s distinctive MEOW WOLF trademark – create a commercial impression that they are owned by, related to, sponsored by, or affiliated with Complainant. Each Domain Name is comprised of the MEOW WOLF mark in its entirety, while adding the geographic terms “dc”, “denver” and “vegas”, respectively, as if indicating the cities where Complainant’s art installations are or will be located. Further, the evidence submitted by Complainant shows that, at the time the Complaint was submitted, the Domain Names redirected to Respondent’s “www.buytickets.com” website, where Complainant’s logo and a photograph of its Complainant’s branded Santa Fe building appear. By using the Internet Archive WayBack Machine, the Panel confirmed also that on August 6, 2018, the first of the Domain Names to be registered by Respondent, In sum, the Panel finds, in view of all of the facts and circumstances in this case, that Respondent’s use of the Domain Names does not support a showing of any rights or legitimate interests in the Domain Names. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Names, which has not been adequately rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires Complainant to demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. In this case, there is no question that Respondent was aware of Complainant’s distinctive MEOW WOLF mark, and intentionally targeted that mark, when it registered the Domain Names. The Panel determines that Respondent, by registering the Domain Names, was attempting to unfairly exploit the reputation and goodwill of Complainant’s trademarks. With regard to use, Respondent is using the Domain Names, which falsely convey an association with Complainant, to redirect Internet users to its website under the unrelated name, BuyTickets.com, where Respondent provides a marketplace for sellers and buyers of tickets. The inevitable consequence is that there will be confusion, as a substantial proportion of Internet users visiting the site will be doing so in the expectation of reaching a site of, or authorized by, Complainant. When they reach the site they may realize that they have been mistaken, but in any event the objective of bringing them there will have already been achieved. As discussed in the analysis in David Foox v. Kung Fox and Bill Hicks,WIPO Case No. D2008-0472, this amounts to impersonation of the mark owner with a view to expanding coverage of Respondent’s ticket services. Respondent is illegitimately identifying itself as Complainant in a confusing manner and attracting visitors to its site by trading off on Complainant’s goodwill in its MEOW WOLF trademarks. Thus, the Panel finds that in this case, by using the Domain Names, Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with Complainant’s distinctive MEOW WOLF trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This amounts to bad faith use within the broad ambit of the Policy. Accordingly, Complainant has satisfied 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 Domain Names Christopher S. Gibson
- Registration No. 5556865, registered on September 4, 2018, with first use in commerce of February 1, 2008;
- Registration No. 5526158, registered on July 24, 2018, with a first use in commerce of February 1, 2008;
- Registration No. 5618471, registered on November 27, 2018, with first use in commerce of February 1, 2008;
- Registration No. 5801032, registered on July 9, 2019, with a first use in commerce of September 4, 2018.
- “As the Experience Economy Booms, Meow Wolf Raises $158 Million to Expand Its Footprint Across America”, ArtNet News, May 17, 2019;
- “Meow Wolf is coming to the nation's capital! Wait, Meow what?”, The Washington Post, December 13, 2018;
- “George R.R. Martin expands storytelling universe with Meow Wolf, a Santa Fe arts collective”, Los Angeles Times, June 3, 2019;
- “What in the World Is Meow Wolf and Why Is It Tourism's Big New Name?”, Frommer’s.
Sole Panelist
Date: December 3, 2019
Full & Egal Universal Law Academy