|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Claim Number: FA0309000196048
Complainant is Tickets.com, Inc., Costa Mesa, CA (“Complainant”) represented by Philip I. Frankel, Esquire of Bond, Schoeneck & King, PLLC, One Lincoln Center, Syracuse, NY 13202-1355. Respondent is H.A. Woofer Smith, Houston, TX, (“Respondent”) represented by Patrick W. Fletcher, Esquire of Fletcher Law Offices, 427 E. 17th Street, Suite 325,
Costa Mesa, CA 92627.
The domain name at issue is <wwwtickets.com>, registered with
Network Solutions, Inc.
The undersigned certifies that he has
acted independently and impartially and to the best of his knowledge has no
known conflict in
serving as Panelist in this proceeding.
M.
KELLY TILLERY, ESQUIRE as
Panelist
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on September 15, 2003;
the Forum
received a hard copy of the Complaint on September 18, 2003.
On September 22, 2003, Network Solutions,
Inc. confirmed by e-mail to the Forum that the domain name <wwwtickets.com> is registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, 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 September 24, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”),
setting a deadline of October 14, 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@wwwtickets.com
by e-mail.
A timely Response was received and
determined to be complete on October 14, 2003.
An Additional Submission was timely
received from Complainant and was determined to be complete on October 16,
2003.
On October 23,
2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M.
KELLY TILLERY, ESQUIRE as Panelist.
Complainant requests that the domain name
be transferred from Respondent to Complainant.
A. COMPLAINANT
Complainant contends that:
1. it is the owner of the TICKETS.COM mark and a logo
incorporating the words TICKETS.COM in both the U.S. and abroad;
2. it
has been using the word mark and logo as early as August 1997;
3. the logo consists of two elliptical designs with the words
TICKETS.COM going through it;
4. its mark and logo were registered with the United States
Patent and Trademark Office (“USPTO”) on June 25, 2002 under Registration
No.
2,584,197 in Classes 39, 41 and 42 and on November 12, 2002 under
Registration No. 2,649,091 in Class 41;
5. it provides numerous services through its website
<tickets.com>, selling tickets to sports and entertainment events,
providing
information about pending concerts, plays and sporting events and
allowing viewers to buy tickets online;
6. it has two pending applications for the word mark
TICKETS.COM with the USPTO;
7. it has also registered and has applications pending
throughout the world in several countries for both the word mark and the logo
as reflected in an attached chart;
8. a competitor, Ticket Vault, Inc., provides
similar services through its website <ticketvault.com>, a domain name
registered
by Woofer Smith, a principal in Ticket Vault, Inc.;
9. the
domain name <wwwtickets.com> was created on May 4, 2002, years
after Complainant was online and approximately three years after the Ticket
Vault, Inc. website
was active;
10. when
one types in the disputed domain name, it links the browser directly to the
<ticketvault.com> website;
11. the
registration of <wwwtickets.com> is “typosquatting” and an attempt
to direct the public away from Complainant’s website if they mistype
Complainant’s mark;
12. it
became aware of the domain name and sent a cease and desist letter to
Respondent on or about August 22, 2003; to date, there has
been no response and
the domain name continues to exist;
13. the
domain name is confusingly similar to TICKETS.COM because it incorporates
Complainant’s mark in its entirety and includes the
strategic addition of the
“www” prefix;
14. Respondent is not using the domain name
in connection with a bona fide offering of goods and services,
but rather to steal business away from a direct competitor based solely on a
customer’s unknowing
typographical error;
15. Respondent
is not commonly known by the domain name;
16. Respondent
has not used the domain name in connection with a legitimate, non-commercial
use.
B. RESPONDENT
Respondent contends that:
1. registration of Complainant’s logo is valid
and protects Complainant’s mark with regard to the distinctive design of the
logo;
2.
Complainant
does not possess a federal registration of the word mark
TICKETS.COM alone;
3. the word mark TICKETS.COM cannot serve as
a valid common law trademark because it is generic as applied to a company that
sells tickets;
4. both USPTO registrations of Complainant
specifically state that “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE
‘TICKETS.COM’, APART
FROM THE MARK AS SHOWN”;
5.
Complainant
has offered only a self-made spreadsheet to substantiate its claim of
foreign
registrations;
6.
even if
such registrations do in fact exist, as both the Complainant and the Respondent
are
residents of and have their principal
places of business in the United States, the trademark laws of the United
States should be applied;
7.
before any
notice of this dispute, Respondent used the domain name in connection
with a bona fide
offering of goods or services;
8.
Respondent
admits registering the domain name to attract people seeking tickets on
the Internet;
C.
ADDITIONAL SUBMISSIONS
A. COMPLAINANT
Complainant
further contends that:
1.
Respondent’s
failure to provide evidence of genericness or descriptiveness is fatal to
Respondent’s case;
2.
copies of
the actual international registrations are attached as an Exhibit;
3.
the fact
that the TICKETS.COM mark, a word mark without the design, has been
registered in foreign
countries is alone enough;
4.
the
TICKETS.COM mark is at the very least, suggestive of the services recited in
several of its registrations;
5.
Complainant
can have (and indeed has) legitimate rights by virtue of its use of the
mark across a broad spectrum of different
goods and services.
1. Complainant has not
met its burden to prove by a preponderance of the credible, relevant,
admissible evidence that Respondent’s domain name is confusingly
similar to a
mark in which Complainant has rights.
Policy ¶ 4(a)(i).
2. Complainant
has not met its burden to prove by a preponderance of the credible,
relevant, admissible evidence that Respondent has no rights or legitimate
interest in respect to the domain name. Policy ¶ 4(a)(ii).
3. Complainant has not met its burden to prove by a
preponderance of the credible, relevant, admissible evidence that Respondent’s
domain name has been
registered and is being used in bad faith. Policy ¶
4(a)(iii).
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires
that the 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;
(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.
Complainant
actually owns four (4) service marks registered with the USPTO.
MARK
USPTO REGISTRATION CLASS(ES) DISCLAIMER(S)
REGISTRATION DATE
NUMBER
TICKETS.COM
2649091 11/12/01 41 No claim to exclusive
(Design
plus letters) right to use
“tickets.com” apart from as shown.
TICKETS.COM 2584197 6/25/02 42 No
claim to exclusive
(Design
plus letters) right to use
“tickets.com”
apart
from
as shown.
TICKETS.COM
1-800-TICKETS (Design
plus words and numbers) 2621143 9/17/02 41 No claim to exclusive
right
to use “tickets.com 1-800-tickets” apart from mark as shown.
TICKETS.COM 2613620 9/3/02 42; 41; 39 No claim to exclusive
1-800-TICKETS (Design right to
use
plus words and numbers) “tickets.com
1-800-
tickets” apart from
mark as shown.
Complainant
attempted to register the TICKETS.COM mark as a word/service mark on August 7,
1998 with a disclaimer of exclusive rights
to “.com” only apart from the
mark as shown in Classes 39 and 42. The
USPTO refused to register the mark and the Trademark Trial and Appeal
Board dismissed Complainant/Applicant’s Application on September 2, 2002.
Complainant
tried again to register the word mark TICKETS.COM as a word/service mark
but this time on the USPTO Supplemental Register in Classes 35, 41 and
42. On September 16, 2002, the USPTO
Examining Attorney mailed a “Non-Final Action” letter “requesting additional
information and/or making
an initial refusal.”
No final determination as to registerability has been made.
Thus,
as things stand at present, Complainant has no U.S. registered mark for
TICKETS.COM as a word mark and four (4) registered Design/Word
marks having
“TICKETS.COM” as part thereof. However,
each of those four (4) registrations specifically and clearly disclaims any
exclusive right to use the words TICKETS.COM
as a mark apart from the stylized,
design marks which incorporate same.
Under
these circumstances, none of Complainant’s U.S. registrations establish rights
in a mark as required by Policy ¶ 4(a)(i).
This,
however, does not end this inquiry.
Registration with the USPTO is not prerequisite to a Complainant
establishing that it has rights in a mark under Policy ¶ 4(a)(i). A Complainant
may establish “rights
in a mark” by proving that it has common law rights in
the United States to the mark and/or even registrations and/or common law
rights in the mark in another country or countries.
Complainant
claims use of TICKETS.COM as a “word mark and logo” as early as August
1997. Although Complainant’s only
“evidence” of same is a copy of two (2) of the four (4) aforementioned
Registrations for Design/Word Marks,
Respondent does not dispute this
claim. Complainant has also alleged
widespread use of the mark since then throughout the U.S. (and the world) and
Respondent also does not
dispute same.
Thus, Complainant just might have “rights in the mark” under U.S. common
law, if not the “common law” of other nations.
However,
Complainant further contends that it has registrations for “TICKETS.COM” in
Argentina, Denmark, France, Germany, Indonesia
and Tunisia and for “TICKETS.COM
& DESIGN” in Argentina, Australia, Benelux, Canada, European Community,
Denmark, France, Germany,
Indonesia, Japan, South Korea, New Zealand, Spain,
Switzerland, Taiwan and United Kingdom.
As Respondent points out, Complainant first submitted only a chart/list
of these alleged registrations, with dates, numbers and nations. No official documents were submitted and
Respondent disputes same.
Under
these circumstances and especially in light of Complainant’s lack of candor
with this forum regarding its USPTO Registrations,
the Panel is unable to lend
any credence to Complainant’s claims regarding these foreign
registrations. Unfortunately, for
reasons of limited access, cost, language differences and unfamiliarity with
the trademark law of the seventeen
(17) foreign jurisdictions involved, this
Panel cannot take judicial notice of any public record readily available.
Complainant
has, however, now, filed an Additional Submission replying to Respondent’s
arguments, including this one and attaching
purported copies of foreign
registrations as aforementioned.
For
purposes of this discussion, the Panel will assume that the supplemental
documentation provided by Complainant does establish
that it owns valid
registrations for TICKETS.COM as a word mark only, without any disclaimers, in
several other countries. Without the
tools referenced above, the Panel is unable to determine the strength of this
evidence[1],
but need not do so for reasons set forth below.
Under
U.S. trademark law and some UDRP precedent, registration of a mark creates a
rebuttable presumption of acquired secondary meaning
and inherent
distinctiveness. See Men’s
Wearhouse, Inc. v. Wick, FA117861 (Nat. Arb. Forum Sept. 16, 2002); see
also Janes Int’l. Holding Co. v. Rademacher, D2002-0201 (WIPO Mar.
5, 2002). Complainant has no U.S.
registration for TICKETS.COM as a word mark alone and/or without a disclaimer,
but the Panel will grant Complainant
said presumption based upon the unrebutted
evidence of foreign registrations.
Complainant
sells tickets. Its claimed mark is
TICKETS.COM.[2] The primary significance of the word TICKETS
is of a type of license or commodity; it cannot possibly be as an indicator of
Complainant
as the source of “tickets.”
Complainant and Respondent and thousands of others sell TICKETS. Under these circumstances, its “mark” is
generic. No one has or can have exclusive rights in and to same. See
Historical Research Ctr. Int’l Inc. v. artrampage.com, FA 110772 (Nat. Arb.
Forum June 20, 2002); Energy Source, Inc.
v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001); ABC Inc. v. Genious, Inc., FA 104582
(Nat. Arb. Forum Apr. 12, 2002; Efutures.com
LLC v. Canon Trading Co., FA 103056 (Nat. Arb. Forum Feb. 27, 2002); See generally R. Badgley, Domain Name Disputes Section 2.04 [A]
(Aspen Law & Business 2002); Gilson, Trademark
Law & Practice, Section 2.02 (Matthew Bender 2000). Even if this “mark” could be considered
merely descriptive or suggestive, Complainant has failed to demonstrate that
the term has
acquired secondary meaning.
See ABC Inc. v. Genious, Inc.,
FA 104582 (Nat. Arb. Forum Apr. 12, 2002); see
also Cyber Imprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11,
2001). Complainant cannot have rights
in the mark as required by Policy ¶ 4(a)(i).
Under
these circumstances, Complainant has thus not met its burden of proof under
Policy ¶ 4(a)(i).
Under these
circumstances, Policy ¶ (4)(c)(i) supports Respondent’s contention that it has
rights and/or legitimate interests in respect
of the domain name in accord with
Policy ¶ 4(a) (ii). Complainant has
thus failed to meet its burden of proof on this second necessary element as
well.
Since a complainant must prove all three
(3) points under Policy ¶ 4(a) and Complainant herein has not proven the first
two, it is
unnecessary to reach the third element. However, this Panel also finds no evidence of registration or use
in bad faith, primarily for the same reasons set forth hereinabove.
Complainant having failed to establish
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be
DENIED.
Accordingly, it is Ordered that
Complainant’s Complaint be and hereby is dismissed.
Philadelphia, Pennsylvania
Dated: November 14, 2003
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/1050.html