WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ticketmaster Corporation vs. DiscoverNet, Inc.
Case No. D2001-0252
1. The Parties
The Complainant is Ticketmaster Corporation, 3701 Wilshire Boulevard, Los Angeles, California 90010, USA.
The Respondent is DiscoverNet, Inc., 111 Prospect St., Stamford, Connecticut 06901, USA.
2. The Domain Name and Registrar
The Contested Domain Name is .
The Registrar is Network Solutions, Inc. (NSI), 505 Huntmar Drive, Herndon, Virginia 20170, USA.
3. Procedural History
The Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy"), which was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved on October 24, 1999 and in accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") as approved on October 24, 1999 as supplemented by the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 ("Supplemental Rules").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on February 16, 2001, and in hard copy, with Annexes A-I, as well as the appropriate payment on February 19, 2001. The Complainant's attorneys, stated that they separately served a copy of the Complaint, by courier and email, on both the Respondent and the Registrar, NSI.
Pursuant to paragraph 4(d) of the Policy, the Complainant selected the Center as the ICANN approved administrative dispute resolution service provider to administer this proceeding. Through the Complaint, the Complainant requested a single member panel.
After receiving the original Complaint, the Center, in accordance with paragraph 5 of the Supplemental Rules, determined whether the Complaint fully complied with the formal requirements of the Rules and the Supplemental Rules. In that regard, on February 23, 2001, the Center requested confirmation from NSI of information set forth in the Complaint relative to the contested domain name; specifically, contact and registrant information for that domain name, as well as whether NSI received a copy of the Complaint from the Complainant. The Center also requested NSI to specify: (a) whether the ICANN Policy applies to the contested domain name, and (b) the current status of that domain name. On February 27, 2001, NSI provided its response to the Center through which NSI provided contact information pertinent to the contested domain name from its WHOIS database, confirmed that NSI is the registrar of the contested domain name, stated that the Policy is in effect (through Network Solutions' version 5.0 registration agreement) for the contested domain name, and that the contested domain name was then in an "active" status.
On February 28, 2001, the Center notified the Respondent of the filing of the Complaint, including an indication that the Center was forwarding a complete copy of the Complaint, both in email and hard copy form, to the Respondent (with the latter method forwarding a copy of all the annexes as well). In that regard, the file contains a copy of the courier air bill as well as an email transmission report evidencing that the Complaint was indeed sent to the Respondent in those manners. The Complaint, and its accompanying documents, and all subsequent communications associated therewith were provided in the preferred manners and to the addresses as mandated by paragraphs 2(a), 2(b) and 4(a) of the Rules.
Hence, the notification to the Respondent having occurred on February 28, 2001 under paragraph 4(c) of the ICANN Policy, this administrative proceeding is deemed to have commenced on that date.
Having reviewed the Complaint and succeeding correspondence between the Center and NSI, in detail, the Panel agrees with the determination of the Center that the Complaint and its handling met the requirements of the Rules and the Supplemental Rules.
The Respondent was then provided with a 20-calendar day period, expiring on March 19, 2001 to file its response with the Center and serve a copy of the response on the Complainant.
As of March 19, 2001, the Center had not received a substantive response to the Complaint from the Respondent; hence, the Center, in an email letter dated March 21, 2001, notified the Complainant and Respondent of the default of the Respondent.
Accordingly, pursuant to the Rules and Supplemental Rules, on March 26, 2001, the Center contacted the undersigned, Mr. Peter L. Michaelson, Esq., requesting his service as a sole panelist for this dispute. On the same day, Mr. Michaelson accepted and returned, by facsimile to the Center, a fully executed Statement of Acceptance and Declaration of Impartiality and Independence. The Center, through an email letter dated March 27, 2001, notified the parties of the appointment of Mr. Michaelson as the panelist.
Based on deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel to the Center on or before April 9, 2001.
This dispute concerns one domain name, specifically "".
The language of this proceeding is English.
4. Factual Background
Inasmuch as the Respondent, DiscoverNet, Inc., has failed to respond to the Complaint as required by the Policy and Rules, all the factual representations alleged by the Complainant, Ticketmaster Corporation, will be accepted as undisputed. For convenience of the reader, factual allegations from the Complaint are reproduced below.
A copy of the WHOIS registration record for the contested domain name appears in Annex A to the Complaint. As indicated on that record, the Respondent registered the contested domain name with NSI on February 3, 1998.
The Complainant currently owns the following valid and subsisting U.S. trademark registrations on which this dispute is based. The Complainant has provided a copy of this registration, as issued by the United States Patent and Trademark Office (PTO), in Annex C to the Complaint. For ease of reference, the Panel will collectively refer to these registered marks, particularly the last two, as the TICKETMASTER marks, while specifically referring to the 1,746,016 block letter registration as the mark "TICKETMASTER".
a) TICKETMASTER ON LINE (stylized)
US registration 1,960,551; registered March 5, 1996
This trademark was registered, for use in connection with: "On-line ticket agency services for sporting events, musical concerts and other entertainment events", in international class 35. This mark claims first use and first use in inter-state commerce of June 30, 1995.
b) TICKETMASTER (stylized)
US registration 1,746,017; registered January 12, 1993
This trademark was registered, for use in connection with: "Ticket agency services for sporting events, musical concerts and other entertainment events", in international class 35. This mark claims first use and first use in inter-state commerce of July 31, 1983. An affidavit of continued use and incontestibility for this mark was filed on February 20, 1998 with and subsequently accepted on March 27, 1998 by the PTO.
c) TICKETMASTER (block letter)
US registration 1,746,016; registered January 12, 1993
This trademark was registered, for use in connection with: "Accounting services for ticket sales rendered by computer; and promoting sporting events, musical concerts and other entertainment events; ticket agency services for sporting events, musical concerts and other entertainment events", in international class 35. This mark claims first use and first use in inter-state commerce of August 31, 1975. An affidavit of continued use and incontestibility for this mark was filed on February 9, 1998 with and subsequently accepted by the PTO.
The Complainant also currently owns a pending U.S. trademark application, filed on an intent-to-use basis, for the mark "TICKETMASTER.COM", of which a copy of the PTO database record for this application downloaded from the PTO web server has been provided in Annex D to the Complaint.
d) TICKETMASTER.COM (block letter)
US application serial no. 75/820,905; filed October 13, 1999
This trademark was filed, for use in connection with: "On-line ticket agency services for sporting events, musical concerts and other entertainment events", in international class 35.
An updated version of this record, currently available from the PTO server, indicates that this mark was allowed by the PTO on September 26, 2000 and an Amendment to Allege Use has been subsequently filed by the Complainant on January 24, 2001, and apparently accepted by the PTO on March 28, 2001. However, the record does not indicate the date of first use. Currently, this mark is awaiting its issuance as a registration. Since, for the purposes of this proceeding, this mark is merely cumulative to the three registrations held by the Complainant and hence not necessary for the Panel to consider in reaching its decision, then, for simplicity, the Panel will ignore this pending mark.
The Complainant is a global leader in live event ticket sales. In that regard, the Complainant provides tickets to more than 350,000 events each year, including professional sports, arts, family, concert and other events. Furthermore, the Complainant's network of approximately 2,700 ticketing outlets and charge by phone centers are located in 210 cities in the United States, Canada, the United Kingdom, Ireland, Mexico, and Australia. The Complainant's annual sales under the trade name and TICKETMASTER marks currently exceed US $1.6 billion.
In addition, the Complainant has long and extensively used the trade name and mark "TICKETMASTER", and variations thereof, for its ticketing services throughout the United States and internationally.
The Complainant uses its domain name in connection with its on-line ticketing services. In that regard, the Complainant states that anyone in the world with a valid credit card and Internet capability can access its web site and buy tickets for entertainment events. The Complainant's affiliates in Canada, Mexico, Ireland, the United Kingdom and Australia maintain similar web sites at , , , , , respectively, and also via . A copy of the home page for each of these web sites appears in Annex E to the Complaint.
As a result of the Complainant's extensive marketing efforts and the resulting widespread use of its services, a prior administrative panel has recognized that "the TICKETMASTER service mark is a strong, arbitrary and well-known trademark applied to ticket agency services offered through ticketing outlets and on-line web sites. ..." Ticketmaster Corporation v. Dmitri Prem, D2000-1550 (WIPO
January 16, 2001). Consequently, the Complainant states that it has come to own enormously valuable goodwill symbolized by its mark "TICKETMASTER".
As indicated by a copy of an incorporation record (provided in Annex F to the Complaint) from the Connecticut Secretary of State, the Respondent was not incorporated until January 18, 1996 which is well after the Complainant's first use and registration of its mark "TICKETMASTER".
Between February 3, 1998, the date on which the Respondent registered the contested domain name and January 18, 1999, the date of the Complainant's warning letter to the Respondent (a copy of which appears in Exhibit G to the Complaint), the Respondent apparently did not use the contested domain name in connection with any bona fide offering of goods or services.
The contested domain name was placed "on hold" by NSI between May 29, 1999 and March 10, 2000 pursuant to its then existing dispute resolution policy.
On or about April 24, 2000, the Respondent established a web site using the contested domain name as an address, through which, upon accessing that site, a single page was displayed (a copy of which appears in Annex H to the Complaint) stating that that domain name was for sale and providing a contact email address as "domains@".
Subsequently, on or about November 20, 2000, the Respondent began hosting a web site of "TicketP" through use of the contested domain name, , as an address. A copy of the home page and a staff information page from that site appears in Exhibit I to the Complaint. This web site advertises theater, concert and sporting event tickets and directly competes with on-line ticketing services provided by the Complainant. In that regard, the staff information page expressly states, in salient part:
"Ticket Pro is an independent, privately owned company engaged in the service of finding and providing tickets for admission to any and all concerts, sporting and theatre events worldwide. ... We are able to provide access to the secondary market of event tickets, through our various sources and contacts. Tickets for most events are bought and sold in a free and fluctuating market, and therefore our prices are much higher than the face value of the tickets. The prices quoted reflect the degree of difficulty, and of course, the cost of obtaining the tickets. Please visit our website at TicketP for the most current prices on most events."
5. Parties� Contentions
A. Complainant
i. Similarity
The Complainant takes the position that the contested domain name is identical to its mark "TICKETMASTER" as to likely confuse Internet users who may believe they are doing business with the Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with the Complainant; hence, satisfying the confusing similarity requirement in paragraph 4(a)(iii) of the Policy.
In that regard, the Complainant asserts that the generic top level domain (gTLD) ".net" is to be ignored for the purpose of assessing similarity.
ii. Legitimacy
The Complainant contends that the Respondent has no rights or legitimate interests in the contested domain name.
Specifically, the Complainant contends that the Respondent is not commonly known by the contested domain name and has not acquired any lawful trademark or service mark rights to this name.
In addition, the Complainant contends that between the date on which the Respondent registered the contested domain name, i.e., February 3, 1998, and the date of the Complainant�s, Ticketmaster�s, warning letter, January 18, 1999, the Respondent had not used the contested domain name in connection with a bona fide offering of goods or services in that the domain name, when entered into a browser as a web address, merely returned a page indicating that the Respondent's web site was "under construction".
Furthermore, the Complainant contends that the Respondent's subsequent actions in offering the contested domain name for sale (as indicated in Annex H to the Complaint), via the Internet, while that domain name was maintained in a "hold" status by NSI, pursuant to NSI's prior dispute resolution policy, does not constitute a legitimate use.
Lastly, the Complainant contends that the Respondent's subsequent and intentional actions in using the contested domain name as an address of a web site offering ticketing services, for commercial gain and competitive to those of the Complainant, are likely to misleadingly divert Ticketmaster�s customers and tarnish the Complainant's TICKETMASTER marks. Hence, the Complainant takes the position that this use is also illegitimate under the Policy.
Accordingly, the Complainant concludes that the Respondent cannot demonstrate any rights or legitimate interests in the contested domain name pursuant to paragraph 4(a)(ii) of the Policy.
iii. Bad Faith
The Complainant contends that the Respondent has registered and is now using the contested domain name in bad faith.
Specifically, the Complainant contends that the Respondent's failure to make a good faith use of the contested domain name and its later attempt to sell it, presumably for profit, constitutes bad faith registration and use.
In addition, the Complainant takes the position that bad faith in the use and registration of Respondent�s domain name is further evidenced by the fact that the Respondent had constructive knowledge of the Complainant's federal registrations for its TICKETMASTER marks, particularly given the high degree of distinctiveness and notoriety of these marks. Consequently, the Complainant contends, in all likelihood, the Respondent selected the contested domain name in spite of and with full knowledge of the Complainant's notorious marks and trade name.
Furthermore, the Complainant contends that the contested domain name has been linked, in various search engines, to the Respondent's TicketP web site, thereby causing confusion for those Internet users, who ostensibly seek the Complainant's site through entry of the contested domain name that includes the Complainant's mark, and, as a result of which, yielding undeserved financial gain to the Respondent. Hence, the Complainant believes that this further evidences bad faith use in violation of paragraph 4(b)(iv) of the Policy.
Therefore, the Complainant concludes that the Respondent�s conduct in registering and using the contested domain name constitutes bad faith registration and use under paragraph 4(a) of the Policy.
B. Respondent
The Respondent has not filed any substantive response to the allegations raised in the Complaint.
6. Discussion and Findings
In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant's undisputed representations. In that regard and apart from judging this proceeding through mere default of the Respondent, the Panel makes the following specific findings.
i. Similarity
The Panel finds that confusion would likely arise as a result of the Respondent's current use of the contested domain name in connection with a site that offers ticketing services that directly compete with those currently offered by the Complainant.
The only difference between the contested domain name, , and the Complainant's mark "TICKETMASTER" is the inclusion in the former of ".net" as a gTLD. This difference is so de minimus and immaterial as to be utterly inadequate to preclude any confusion from occurring. For all practical purposes, the domain name in question is identical to the Complainant's mark "TICKETMASTER". See, e.g., NetWizards, Inc. v. Spectrum Enterprises D2000-1768 (WIPO April 4, 2001), MSNBC Cable, LLC v. T D2000-1204 (WIPO December 8, 2000), W, Inc. v. Zvieli Fisher D2000-0614 (WIPO September 11, 2000) and Lana Marks, Ltd., Inc. v. SYP Web D2000-0304 (WIPO June 23, 2000). Furthermore, this Panel is in full accord with a prior panel decision, Ticketmaster Corporation v. Dmitri Prem, D2000-1550 (WIPO January 16, 2001), which held that a top level domain is to be ignored in assessing similarity to a mark.
Such confusion would undoubtedly cause those users intending to access the Complainant's website, but who reach, through diversion invoked by entry of the contested domain name, the TicketP web site, to think that an affiliation of some sort exists between the Complainant and the Respondent, when, in fact, no such relationship exists at all. See, e.g., Dollar Financial Group, Inc. v VQM NET FA 96101 (Nat. Arb. Forum January 25, 2000); eBAY Inc. v. G L Liadis Computing, Ltd. and John L. Liadis d/b/a G L Liadis Computing Ltd. D2000-1463 (WIPO January 10, 2001); Treeforms, Inc. v. Cayne Industrial Sales, Corp. FA 95856 (Nat. Arb. Forum December 18, 2000) and The Pep Boys Manny, Moe and Jack of California v. E-Commerce Today, Ltd. AF-0145 (eResolution May 3, 2000).
Therefore, the Panel finds that the contested domain name "" sufficiently resembles the Complainant's registered marks as to cause confusion.
Accordingly, the Panel also finds that sufficient similarity exists under paragraph 4(a)(i) of the Policy for the contested domain name .
ii. Illegitimacy
Based on its federal service mark registrations, the Complainant has acquired exclusive rights to use its TICKETMASTER marks. Furthermore, by virtue of the registration of these marks, the US PTO has implicitly recognized that each of these marks has acquired appropriate secondary meaning in the marketplace.
The Respondent has not proven any basis that would legitimize any claim it has to the contested domain name. In fact, the Panel believes that, under the present facts, it is extremely unlikely that the Respondent can even make such a claim.
As noted above, the contested domain name is, for all practical purposes, identical to the Complainant's mark "TICKETMASTER" under which the Complainant provides its ticketing services.
In the Panel's mind, use of the contested domain name as an instrumentality for diverting Internet users, who as a result of entering a domain name containing the Complainant's mark -- though inadvertently with a different gTLD from that associated with the Complainant's site but clearly with an intention of reaching the Complainant's web site -- to a commercial site of a direct competitor clearly does not constitute legitimate use.
In that regard, such use, at its core, generates commercial gain for the Respondent by intentionally and misleadingly diverting users (both customers and potential customers) away from patronizing the Complainant's site to patronizing the TicketP web site. Confusion is likely to result from a consumer perception of an apparent relationship, affiliation or connection between the Complainant and the Respondent when, in fact, no such relationship, affiliation or connection exists. This, in turn, clearly tarnishes the Complainant's very well-known, highly notorious and widely recognized mark, particularly the substantial goodwill which the Complainant has developed as a result of over 25 years of continuous use and extremely large sales made under that mark. See, e.g., Wombat Enterprises, Inc. d/b/a Domain-It! v. Advanced Network Technologies FA 95823 (Nat. Arb. Forum Nov. 17, 2000), Marriott International, Inc. v. Vladimir Kyznetsov FA 95648 (Nat. Arb. Forum Oct. 24, 2000) and Interactive Gallery, Inc. v. d communications FA 94673 (Nat. Arb. Forum June 27, 2000).
Such use, commercial in nature, is certainly not bona fide within the meaning of paragraph 4(c)(i) of the Policy and hence is illegitimate.
Furthermore, apart from using the contested domain name to divert Internet users to competitive web site, the Respondent's prior use of that name, simply in conjunction with a web site that displays an "under construction" message and without having adduced any evidence of its then actually having engaged in constructing a web site for the bona fide commercial offering of goods or services, does not constitute legitimate use in and of itself or demonstrable preparation for such use. See Lusomundo - Sociedade Gestora de Parcipaçoes Sociais, S.A. and Lusomundo Audiovisuais, S.A. v. InmoSoria and Andr�s Ceballos Moscoso D2000-0523 (WIPO August 2, 2000), Ticketmaster Corporation v. Dmitri Prem cited supra, and The Hamlet Group v. James Lansford D2000-0073 (WIPO March 31, 2000). That result does not change if, as here, the "under construction" message is simply replaced with a message stating the contested domain name is for sale. Such a bald message, devoid as here of any further business conduct on the part of the Respondent that might be consistent with either a bona fide offering goods or services or undertaking a demonstrable preparation for such an offering, does not legitimize any claim the Respondent might have to the name. In fact, the offer, being for a domain name that incorporates the Complainant's notorious and widely recognized mark -- let alone occurring while the contested domain name was under "hold" by NSI, implies just the opposite; namely, that the Respondent, in making the offer, had absolutely no intention of commercially exploiting the domain name in any way other than its sale, and particularly in a manner detrimental to the Complainant.
Furthermore, given a lack of any substantive response from the Respondent and pursuant to paragraph 14(b) of the Rules, the Panel infers that the Complainant has never authorized the Respondent to utilize any of the TICKETMASTER marks in any manner, nor does the Complainant appear to have any relationship, affiliation or association whatsoever with the Respondent. Hence, any use to which the Respondent were to put of the term "TICKETMASTER", in connection with ticketing services identical or similar to those with which the Complainant is using its mark, would directly violate the exclusive trademark rights now residing in the Complainant -- rights which began accruing to the Complainant over 22 years prior to the date on which the contested domain name was registered. As such, the Respondent is not commonly known by any of the TICKETMASTER marks. Thus, its continued use of the contested domain name violates paragraph 4(c)(ii) of the Policy. See, e.g., Cabletron Systems, Inc. v. DSL Enterprises D2000-0571 (WIPO August 18, 2000).
In light of the above findings, the Panel is not persuaded that the Respondent has any or, based on current facts provided to the Panel, is likely to acquire any legitimate interests in the contested domain name, whether on a commercial or non-commercial basis.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in the contested domain name within paragraph 4(a)(ii) of the Policy.
iii. Bad Faith
The Panel, pursuant to Rule 14(b), infers from the lack of any Response that the Respondent intentionally chose the contested domain name for its identical resemblance to the Complainant's mark "TICKETMASTER". Clearly, the Panel believes that in doing so the Respondent intended at some point to reap financial benefit from that name and particularly from using that name in a manner that, through diverting Internet users away from the Complainant's web site to that of a competitor (here TicketP), would cause consumer confusion and concomitant injury to the Complainant. If the goal of the Respondent was not to obtain future pecuniary gain from its actions, then why would it have chosen a domain name that incorporates, verbatim, the Complainant's well-known mark "TICKETMASTER"? Given the lack of any Response, the Panel believes that, if the Respondent did not harbor this goal, the Respondent would have had no reason to choose this name and, in all likelihood, would not have done so.
Furthermore, given the long, widespread notoriety and extensive consumer recognition attendant to the Complainant's mark "TICKETMASTER" with use of this mark starting over 22 years prior to the date on which the Respondent registered the contested domain name, the Panel infers, and it strains credulity to think otherwise, that the Respondent was well aware of the Complainant's mark "TICKETMASTER" but chose, in spite of that knowledge, to register the contested domain name that identically incorporated this mark, and with the intent of misappropriating and financially benefiting, to the detriment of the Complainant, from the goodwill inherent in its mark (as well as the other TICKETMASTER marks).
Hence, the Respondent's acts in registering the contested domain name clearly constituted bad faith registration.
Moreover, the Panel is easily persuaded that the Respondent's use of the contested domain name for diverting Internet users, i.e., particularly customers and potential customers of the Complainant, from the Complainant's web site to the web site of TicketP, a site which offers ticketing services that directly competes with service offerings from the Complainant, constitutes bad faith use. Such actions clearly manifest an intent of the Respondent to commercially benefit from the ensuing confusion of Internet users who enter the contested domain name into their browser in an attempt to reach the Complainant's site but who are directed to the Respondent's TravelP site, as to source, sponsorship, affiliation or endorsement, between the Complainant and the services offered by the Respondent. These actions directly contravene paragraph 4(b)(iv) of the Policy.
Other panels have found that registration and use of a domain name to divert Internet users to web sites of competing organizations constituted bad faith use and registration. In that regard, see, e.g., Wombat Enterprises, Inc. d/b/a Domain-It! v. Advanced Network Technologies cited supra, Hollywood Casino Corporation v. Go Call Inc. FA 95741 (Nat. Arb. Forum October 30, 2000), Marriott International, Inc. v. Vladimir Kyznetsov cited supra, Travis Hill v. N FA 95345 (Nat. Arb. Forum August 30, 2000), Drs. Foster & Smith, Inc. v. Jaspreet Lalli FA 95284 (Nat. Arb. Forum August 21, 2000), Southern Exposure v. Southern Exposure, Inc. FA 94864 (Nat. Arb. Forum July 18, 2000), Interactive Gallery, Inc. v. d communications cited supra, and Zwack Unicum Rt. v. Erica J. Duna D2000-0037 (WIPO March 10, 2000).
Hence, the Panel finds that the Complainant has shown a sufficient basis to establish bad faith registration and use of the contested domain name under paragraph 4(a)(iv) of the Policy.
Thus, the Panel concludes that the Complainant, even apart from default of the Respondent, has provided sufficient proof of its allegations to establish a prima facie case under paragraph 4(a) of the Policy upon which the relief it now seeks can be granted.
7. Decision
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the relief sought by the Complainant is hereby granted.
The contested domain name, specifically , is ordered transferred to the Complainant.
Peter L. Michaelson, Esq.
Sole Panelist
Dated: April 9, 2001
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