The Complainant is The Lumineers, LLC, United States of America (“United States”), represented by Creative Law Network, LLC, United States.
The Respondent is Diana K. Willard, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2020. On March 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2020, the Registrar 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” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2020. The Center appointed William R. Towns as the sole panelist in this matter on April 27, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is an American folk-rock band – “The Lumineers” – with origins tracing back to 2005. Headquartered in Denver, Colorado, the band has proven a popular touring and recording band, having released three highly successful albums. The first release in 2012, “The Lumineers”, went “triple platinum” in the United States and Canada, and “platinum” in the United Kingdom and Ireland. A second release in 2016 also went “platinum” in the United States. The Complainant released its third album in September 2019. The Complainant has had a number one album on Billboard, performed hundreds of shows for millions of fans, been nominated for two GRAMMY awards, appeared on network and cable television on numerous occasions, and sold millions of albums in digital and hard-copy formats. Tickets for the Complainant’s tour sites are made available for sale on the Complainant’s “www.thelumineers.com” website. The Complainant does not object to tickets being resold at face value through official resale channels, but requests that tickets not be resold for profit through secondary ticketing sites, and warns that such tickets may be cancelled without refund and with the buyer not gaining entry to the event. The Complainant is the owner of United States trademark registrations for THE LUMINEERS mark, including United States Reg. No. 4406896, registered on September 24, 2013; United States Reg. No. 4406895, registered on September 24, 2013; and United States Reg. No. 5068636, registered on October 25, 2016. The Complainant holds a Canadian trademark registration for THE LUMINEERS, Reg. No. TMA900905, registered on April 13, 2015. The Complainant also holds International trademark registrations for THE LUMINEERS, Nos.1160926 and 1174772, registered on April 16, 2013 and August 14, 2013, respectively. The Complainant has used THE LUMINEERS mark in commerce since as early as June 1, 2009. Following the band’s third release in September 2019, the Complainant announced an extended North American tour scheduled from February 13, 2020, to September 18, 2020. Shortly thereafter, the disputed domain name was registered on December 2, 2019. The disputed domain name resolves to a website at “www.thelumineerstickets.info” (“the Respondent’s website”), on which tickets for the Complainant’s upcoming tour are advertised for sale. The Respondent’s website prominently displays a photograph of The Lumineers live performance, over which the Respondent has superimposed the text set forth below: “The Lumineers tickets The Respondent placed the following statement above the tour photo: “We are an independent ticket guide not an official venue. We sell discount and resale tickets, all our tickets are 100% guaranteed and may be priced below or above face value.” At the bottom of each page of the Respondent’s website is a copyright notice: “Copyright © 2012 - 2020. The Lumineers Tickets. All Rights Reserved.” 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar if not essentially identical to the Complainant’s THE LUMINEERS mark. The Complainant asserts that THE LUMINEERS mark has become famous and distinctive, emphasizing that the Complainant has had a number one album on Billboard, performed hundreds of shows for millions of fans around the world, been nominated for two GRAMMY awards, appeared on network and cable television, and sold millions of albums in digital and hard-copy formats. The Complainant observes that the disputed domain name incorporates the Complainant’s distinctive THE LUMINEERS mark in its entirety, and that the addition of the descriptive term “tickets” is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. According to the Complainant, the term “tickets” is not only descriptive but also a reference to the Complainant’s well-known live performances, adding to the likelihood of confusion and further evidencing that the Respondent has intentionally sought to divert traffic and sales intended for the Complainant. The Complainant further contends that the disputed domain name is likely to confuse consumers to believe that the Respondent’s business and activities are affiliated with, endorsed or sponsored by the Complainant, or that the Respondent’s use of the disputed domain name is authorized by the Complainant. The Complainant maintains that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has no connection or affiliation with the Complainant or with any of the Complainant’s agents, licensees, assignees, or with any other affiliates of the Complainant. The Complainant submits that the Respondent has no rights, whether by contract, license, assignment, or otherwise, to use the Complainant’s THE LUMINEERS mark in the disputed domain name. The Complainant submits that there is no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. According to the Complainant, the Respondent’s only use of the disputed domain name has been to illegitimately profit from the goodwill in the Complainant’s mark. The Complainant further maintains that, given the widespread use and notoriety of the Complainant’s THE LUMINEERS mark and the nature of the Respondent’s website content, the Respondent was well aware of the Complainant’s mark when registering and using the disputed domain name. The Complainant further asserts that the Respondent has not been commonly known by the disputed domain name and is not making a legitimate noncommercial or other fair use of the disputed domain name. The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant emphasizes that THE LUMINEERS is a well-known mark, and finds it unlikely that the Respondent would have selected the disputed domain name without knowing of the reputation of the Complainant’s mark. The Complainant submits that bad faith can be found where, as here, the disputed domain name is so obviously connected with the Complainant that its very use by the Respondent suggests opportunistic bad faith. The Complainant submits 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 Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant observes that the Respondent’s website contains content that is identical or similar to that found on the Complainant’s website. The Complainant is emphatic that the Respondent’s unauthorized use of the Complainant’s image and likeness constitutes direct infringement of the Complainant’s copyright-protected photograph, and also infringes the rights of publicity of the members of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”, see Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name In this case, the Complainant’s THE LUMINEERS mark is clearly recognizable in the disputed domain name.2 The Respondent’s inclusion in the disputed domain name of the word “tickets” does not dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Generic Top-Level Domains (“gTLDs”) generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s THE LUMINEERS mark. The Respondent notwithstanding registered the disputed domain name, appropriating the Complainant’s THE LUMINEERS mark for use with the Respondent’s website, on which the Respondent purports to offer The Lumineers tickets for sale to the public. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial 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. The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record that the Respondent was aware of the Complainant and the Complainant’s THE LUMINEERS mark when registering the disputed domain name. As noted above, the disputed domain name is confusingly similar to the Complainant’s mark. In advertising The Lumineers concert tickets for sale, no meaningful attempt has been made by the Respondent to disclaim any affiliation with the Complainant. Vague references to phrases such as “independent ticket guide” and “not an official venue” do not serve to inform Internet visitors that the Respondent’s website is not affiliated with or sponsored by the Complainant. Absent an effective disclaimer, and given the imagery and content on the Respondent’s website, Internet users arriving the Respondent’s website would be likely to conclude that the website they have arrived at is affiliated with, sponsored or endorsed by the Complainant. The Panel further concludes that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. An assessment of a claim of fair use under paragraph 4(c)(iii) of the Policy entails consideration of the nature of the disputed domain name, as well as circumstances beyond the disputed domain name itself, and in some cases issues of commercial activity. A respondent’s use of a domain name is not “fair” in circumstances where the domain name falsely suggests affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla,WIPO Case No. D2016-1698. See WIPO Overview 3.0, section 2.5 and cases cited therein. 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, such as here. See WIPO Overview 3.0, section 2.5.1, and cases cited therein. The Panel thus finds that the Respondent’s use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. As previously noted, the Respondent has not been authorized to use the Complainant’s mark, and the Panel concludes that the Respondent has not been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of and had the Complainant’s THE LUMINEERS mark in mind when registering the disputed domain name. The Respondent in all likelihood sought to exploit and profit from the Complainant’s mark, using the disputed domain name to attract Internet users to the Respondent’s 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. The Respondent’s registration and use of the disputed domain name in the circumstances of this case constitutes bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name William R. Towns 1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. 2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy. 3 See WIPO Overview 3.0, section 1.8 and cases cited therein. 4 See WIPO Overview 3.0 , section 1.11.1 and cases cited therein. In some instances, the meaning of a particular gTLD may be relevant to panel assessment of the second and third elements of the Policy. See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
The Lumineers is going to perform in 47 cities this year including Barclays Center, John Paul Jones Arena, Bankers Life Fieldhouse and Bridgestone Arena. The last The Lumineers concert will be in September 18th in Austin. Buy your The Lumineers concert tickets online or over the phone today before they Sold out. All The Lumineers Tickets are 100% guaranteed.”
Sole Panelist
Date: May 11, 2020
Full & Egal Universal Law Academy