DECISION

On Stage Entertainment, Inc. v. Internet Search Engine

Claim Number: FA0308000187424

PARTIES

Complainant is On Stage Entertainment, Inc., Las Vegas, NV (“Complainant”) represented by Christopher R. Grobl of Silver State Legal. Respondent is Internet Search Engine, Fort Wayne, IN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <legendsinconcert.com> registered with Enom, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 19, 2003; the Forum received a hard copy of the Complaint on August 21, 2003.

On Aug 25, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <legendsinconcert.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On August 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@legendsinconcert.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 22, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <legendsinconcert.com> domain name is identical to Complainant’s LEGENDS IN CONCERT mark.

2. Respondent does not have any rights or legitimate interests in the <legendsinconcert.com> domain name.

3. Respondent registered and used the <legendsinconcert.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has produced evidence of a trademark registration with the United States Patent and Trademark Office for the LEGENDS IN CONCERT mark (Reg. No. 1,412,642 registered on October 7, 1986) related to entertainment services, namely the presentation of live performances featuring impressionists. Complainant uses the mark in connection with live stage shows that consist of performers impersonating famous musical performers in cabarets and theatres principally located in hotel casinos throughout the world.

After an agent of Complainant accidentally allowed its registration of the <legendsinconcert.com> domain name to lapse, Respondent registered the domain name on June 2, 2003. Respondent does not have an active website at the disputed domain name.

DISCUSSION

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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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.

Identical and/or Confusingly Similar

Complainant has established rights in the LEGENDS IN CONCERT mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Complainant contends that the <legendsinconcert.com> domain name is identical to Complainant’s LEGENDS IN CONCERT mark because the disputed domain name incorporates Complainant’s mark in its entirety and simply omits the spaces between the words in the mark. The omission of spaces does not serve to render the domain name significantly differentiated from Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that Respondent’s domain name <charlesjourdan.com> is identical to Complainant’s marks).

The Panel concludes that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has neglected to challenge Complainant’s allegations in this dispute. Therefore, the Panel accepts all reasonable allegations and inferences in the Complaint to be true. See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights to and legitimate interests in the disputed domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent has not yet directed the <legendsinconcert.com> domain name toward an active website. Furthermore, Complainant is the prior registrant of the disputed domain name. In light of the fact that Respondent neglected to contest the Complaint, the Panel finds that Respondent’s failure to use the domain name and its opportunistic registration of the domain name demonstrates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); see also American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name).

Respondent has offered no proof and there is no evidence in the record that Respondent is commonly known by LEGENDS IN CONCERT or <legendsinconcert.com>. Accordingly, the Panel finds that Respondent has failed to establish any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

The Panel concludes that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Policy ¶ 4(b) lists four circumstances, which, if found to be present, constitute bad faith registration and use. However, this was never intended to be an exclusive list. In appropriate circumstances, the Panel is permitted to consider the totality of the circumstances when determining whether a domain name has been registered and used in bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Respondent is not using the <legendsinconcert.com> domain name to point to an active website. In addition, Respondent opportunistically registered the disputed domain name when Complainant’s domain name registration was inadvertently allowed to lapse. Respondent’s opportunistic registration leads the Panel to conclude that the <legendsinconcert.com> domain name was registered and used in bad faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of Complainant’s failure to renew a domain name); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

Accordingly, the Panel concludes that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <legendsinconcert.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  October 3, 2003

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