WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HBP, Inc. v. Front and Center Tickets, Inc.
Case No. D2002-0802
1. The Parties
The Complainant is HBP, Inc. of Reno, Nevada, United States of America, represented by Enns & Archer LLP, of United States of America.
The Respondent is Front and Center Tickets, Inc. of Fort Lauderdale, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names and are registered with Dotster Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 26, 2002, by email. On August 27, 2002, the Center transmitted by email to Dotster Inc., a request for registrar verification in connection with the domain names at issue. On September 11, 2002, Dotster Inc., transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2002. At Respondent's request, and following exchange of email correspondence between the Center and the parties, Respondent was granted an extension to file its Response until October 9, 2002. The Response was filed with the Center on October 9, 2002.
The Center appointed Frederick M. Abbott, David W. Plant and Neil A. Smith as panelists in this matter on November 8, 2002. The Panel finds that it was properly constituted. Each member of 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.
On November 28, 2002, the Center transmitted Administrative Panel Procedural Order No. 1 ("Panel Order No. 1) of the Panel to the parties. Panel Order No.1 stated:
"1. In Paragraph 9 and elsewhere in the Complaint, the Complainant, HBP, Inc., indicates that it is exclusive licensee of the DAYTONA 500 mark from International Speedway Corporation. The Panel requests that Complainant provide evidence sufficient to demonstrate its status as exclusive licensee, its authority to initiate this proceeding on behalf of the licensor, and its right to act as transferee of the disputed domain names, should the Panel conclude that its request for an order of transfer be granted.
"2. In Paragraph 11(b)(iv) of the Complaint, the Complainant asserts that Respondent's resale of Daytona 500 tickets at a price above that printed on the tickets constitutes a violation of Florida law. The Panel asks that Complainant address the question whether the Florida statute cited by it makes it illegal to sell event tickets outside that state, on the Internet, for events taking place within that state. "
Panel Order No. 1 established due dates for Complainant's responsive submission and Respondent's counter-submission, which due dates were met by the parties. On December 12, 2002, Complainant further submitted a certification responsive to Respondent's suggestion that its failure to initially certify its supplemental response constituted a material defect in its pleading, without admitting that the initial submission was in any way defective.
Following receipt of the responses to Panel Order No. 1, the Center notified the parties that the Panel extended the due date for its decision to January 1, 2003.
The Panel thereafter extended the due date for its decision to January 31, 2003, and the Center notified the parties accordingly.
4. Factual Background
Complainant, HBP, Inc., is exclusive licensee in the United States of International Speedway Inc. ("ISI") (a Delaware corporation) for the "DAYTONA 500" mark (see discussion infra regarding ISI's rights in the mark). ISI has authorized HBP, Inc. to initiate this proceeding to protect ISI's interests in its mark, and has authorized HBP, Inc. to act as transferee of the disputed domain names in the event the Panel orders such transfer in this proceeding. (Complaint, paragraph 9, and Complainant's Response to Panel Order No. 1, paragraph I & attached letter dated December 3, 2002, from Janice C. George, Secretary, ISI, to the Panel). The Panel notes that Complainant referred to International Speedway Corporation ("ISC") (a Florida corporation) in its Complaint as holder and licensor of the mark, and amended this reference to ISI in its Response to Panel Order No. 1. United States Patent and Trademark Office ("USPTO") registration data shows ISI as assignee of the mark from ISC.)
ISI, as assignee of ISC, is the holder of registrations for the trademark and service mark "DAYTONA 500" on the Principal Register at the USPTO, Reg. No. 964,900, dated July 24, 1973, in International Class (IC) 41, service mark covering "Entertainment Service - Namely, an annual automobile race, the entertainment being rendered through the medium of radio and television", and Reg. No. 1,827,197, dated March 22, 1994, in IC's 6, 21, 25, 28 and 34, trademark covering various goods, such as novelty license plates and clothing. (Complaint, paragraph 9 & Annex C & G). Complainant indicates that it is holder of registrations for other "DAYTONA"-formative marks (such as "DAYTONA INTERNATIONAL SPEEDWAY"), but has not provided details regarding such registrations (id., paragraph 9).
The "DAYTONA 500" mark is used to identify an automobile race organized by Complainant and its affiliated enterprises. In 2000, CBS Sports paid approximately $18,000,000 for the right to televise the 2000 Daytona 500 race. The Daytona 500 race is among the most widely viewed automobile races in the United States, and the race has been widely broadcast outside the United States. In 2002, over 35,000,000 television viewers in the United States watched all or part of the race broadcast, which was also broadcast by more than 690 radio stations. The "DAYTONA 500" mark is well known among consumers of automobile racing entertainment in the United States. (Id., paragraph 9 & Annexes D-F).
Complainant and its affiliated enterprises enter into "official sponsorship" agreements with various companies, such as Ford, Unocal, Pepsi, Frito-Lay, Visa, Rolex, AT&T, UPS and Valvoline, authorizing these "official sponsors" to use the "DAYTONA 500" mark (among others) in connection with the advertisement of their products and services (id., paragraph 9).
According to the registrar's verification to the Center, Respondent is registrant of the disputed domain names and . The registrations for both names were created on July 14, 2001, and were last updated on that same date. The Technical Contact for the disputed domain names is "Halpern, Mark".
As of August 15, 2002, the disputed domain name was used to post a home page headed with the term in large font "", with the words "best prices - best selection - best service" appearing in smaller font beneath that heading. To the side of the large heading was a logo for "FRONTROW NETWORK", with a toll-free telephone number. Beneath these headings was the statement "PREMIUM TICKETS FOR ALL MAJOR EVENTS". Beneath that followed a chart showing various types of events with names of artists, teams and/or locations. Among the chart headings was "AUTO RACING", followed by a list:
"NASCAR
Daytona 500
Tickets
Kansas City,
Bristol,
Talladega, Louden,
Grand Prix
Indy 500."
This home page also allowed searching by "event" and "venue". It included no disclaimer of affiliation with any enterprise. (Complaint, Annex J).
As of August 21, 2002, clicking on "NASCAR" on a list on the left side of the home page took the user to another web page also headed with "" (as above), and the statements "*BUY NASCAR TICKETS ONLINE* OR call - now toll free �" and a list of "UPCOMING NASCAR RACES, RACING SPECIALS". As of August 15, 2002, "DAYTONA 500" did not appear on that list, which included, for example, "Pepsi 400 tickets" and "Pennzoil 400 tickets". By clicking on "Pennzoil 400 tickets", the user was taken to a listing of tickets for "NASCAR at DAYTONA SPEEDWAY", with over 200 tickets offered for sale for the Daytona 500 race at prices ranging from $170 to $737 each. (Complaint, Annex J). The "face value" of a $737 ticket is $215 (id., paragraph 9).
As of August 15, 2002, the disputed domain name was used to host a home page headed "Daytona 500 Tickets", with a toll free telephone number. The home page showed illustrated advertisements for "Indy 500 tickets", "Daytona 500", "Formula 1 Grand Prix", and "Brickyard 400". Clicking through on "Daytona 500" included both reference to tickets, and a statement "Thinking of extending your Florida holiday let us know and we can customise your package and dates to your needs". At the bottom of this click through page in small font appears "DISCLAMER*NASCAR has neither licensed nor endorsed Front and Center Entertainment Group to sell goods and services in conjunction with NASCAR races.*"
On March 12, 2000, Mark Halpern sent an email to Complainant indicating that he had "inadvertently obtained the domain name and " and offering to transfer them to Complainant for free to "do the right thing". When Complainant responded affirmatively by letter of March 21, 2000, Respondent replied with a letter claiming that his ownership and use of the subject names was "fair use" and refusing to transfer them (but offering to insert a disclaimer on his website). Following demands from Complainant, Respondent eventually transferred the names to it. (Complaint, paragraph 10 & Annex H, and Response).
On April 17, 2002, Complainant sent a cease and desist and transfer demand regarding the disputed domain names to Respondent�s former counsel. No response was received from that counsel or Respondent. (Id., paragraph 10 & Annex I).
As evidenced by cancelled check dated March 31, 2000, Respondent purchased 50 seats from Daytona International Speedway for $4,259 (Respondent's check identifier "Daytona T738293 2/18/2001 (50) seats"). Respondent's owner states that it has maintained for eight years a contractual relationship to purchase a minimum 50 seats per year from Complainant, but did not submit written evidence of this contract other than the aforesaid cancelled check. Respondent further states that Complainant was aware of Respondent and the nature of its business (Respondent's Response to Panel Order No. 1, Affidavit of Mark Halpern, paragraph 3, sworn/undated & Exhibit B (cancelled check)).
Respondent indicates that it has been registered, licensed and bonded within the State of Florida as a travel agency since 1990. (Affidavit of Halpern, id.).
The Registration Agreement in effect between Respondent and Dotster, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
A. Complainant
Complainant alleges that it is exclusive licensee of the "DAYTONA 500" trademark and service mark in the United States with authority to initiate this proceeding on behalf of the licensor, and to act as transferee of the disputed domain names should that be ordered by the Panel (see Factual Background, supra).
Complainant argues that the disputed domain names are identical or confusingly similar to its mark. It states that addition of a generic or descriptive term to the mark does not avoid likelihood of confusion.
Complainant indicates that the "DAYTONA 500" mark is well known in the United States.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. It alleges that Respondent has never been authorized to use its mark, or to sell tickets to the Daytona 500 race. Complainant indicates that Respondent is not commonly known as "DAYTONA 500". Complainant argues that even if Respondent may at times sell "DAYONA 500" tickets, this does not give Respondent rights to use the mark in its domain names. Complainant alleges that Respondent's sale of DAYTONA 500 tickets at "grossly inflated prices further negates any purported fair use", and that "Such a practice violates the policies of D[aytona] I[nternational]S[peedway], Complainant's sublicensee, and Florida law. On the back of every ticket to the DAYTONA 500 race is printed, 'Tickets may not be sold at a price higher than printed on the ticket�."
Complainant states:
"Florida statutes provide 'Whoever shall offer for sale or sell any ticket good for admission to any sporting exhibition, athletic contest, theater, or any exhibition where an admission price is charged and request or receive a price in excess of $1 above the retail admission price charged therefore by the original seller of said ticket shall be guilty of a misdemeanor of the second degree.' Fla. Stat. ch. 817.36(2)(a) (2000). Complainant and DIS have an interest in making sure that the DAYTONA 500 mark is not associated with conduct in violation of state statutes. By inflating the prices of the tickets sold to the DAYTONA 500 race, Respondent tarnishes the goodwill associated with Complainant, DIS and the DAYTONA 500 mark. Therefore, Respondent has no legitimate interest or right to use the DAYTONA 500 mark in this way."
Complainant argues that Respondent is using its mark to misleading divert consumers for commercial gain and has no legitimate rights in its mark.
Complainant states that Respondent registered and is using the disputed domain names in bad faith. Complainant alleges that Respondent was aware of its mark when it registered the names, and that in any case registration of the marks establishes constructive notice. Complainant alleges that Respondent registered and used the names to intentionally attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion regarding sponsorship, affiliation or endorsement by Complainant of Respondent's websites. Complainant indicates that Respondent has used its mark " to lure users to Respondent's websites, where it then has the opportunity to sell tickets to other sports and entertainment events, including tickets to other NASCAR sanctioned races conducted by promoters other than Complainant and its licensees, and who are in competition with Complainant. This 'bait and switch' scheme clearly shows bad faith use of the DAYTONA 500 mark in the domain names."
Complainant alleges that Respondent's use of a small disclaimer at the bottom of one web page does not negate bad faith registration and use.
Complainant indicated in response to Panel Order No. 1 that Florida's criminal jurisdiction statute would bring Respondent's activities regarding sales to parties outside the state within the scope of the "scalping statute" because of the connections (e.g., taking orders in Florida, the event taking place in Florida, shipping of tickets from Florida). It further argues that a finding of illegality under Florida's scalping statute is not necessary to finding lack of fair use of the disputed domain names.
Complainant requests the Panel to direct the registrar to transfer the disputed domain names to it.
B. Respondent
Respondent alleges that Complainant does not have rights in the trademark and service mark "DAYTONA 500 TICKETS", which is much different than "DAYTONA 500". Respondent says: "If the panel were to make this determination, then, for example, the registrant of the syllable 'micro' would have a precedent for obtaining the domain name , and many other variations thereof. A decision of this type would create an extremely unfortunate precedent."
Respondent argues in response to Complainant's allegation that it is not authorized to use its mark, that it is common for brokers to use marks or event names along with "tickets" in domain names.
Respondent contends that principles of exhaustion of rights establish its fair use of Complainant's marks in the disputed domain names. It refers to language in Koninklijke Philips Electronics N.V. v. Cun Siang Wang, WIPO Case No. D2000-1778 (March 15, 2001) and Chantelle v. Marvin Weinberger, WIPO Case No. D2001-1181 (December 20, 2001), in support of its proposition.
Respondent further argues that its use of Complainant's marks in connection with the resale of tickets constitutes "fair use", citing to NCAA v. Randy Pitkin, et al., WIPO Case No. D2000-0903 (March 9, 2001) and Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 (February 28, 2000), in support.
Respondent contends that its use of "DAYONA 500" in the disputed domain names to advertise tickets for the Daytona 500 race is a fair use because it is using the domain names to identify the tickets in question and because Respondent has used a disclaimer.
Respondent argues that it has not registered or used the disputed domain names in bad faith because there is no likelihood of confusion regarding Complainant's sponsorship of its websites since it is "abundantly clear that many types of tickets for many types of events are being marketed. Furthermore, there is a disclaimer on the page which irrefutably proclaims that the website is not affiliated or endorsed by Complainant." Respondent argues that any confusion would be "low level" and would be dispelled by its disclaimer. Respondent argues that it is acting in good faith by selling legitimate products of Complainant.
Respondent argues that its offer and eventual transfer of and to Complainant evidence its good faith.
In response to Panel Order No. 1, Respondent argues that a determination whether its actions are consistent with Florida criminal statutes is outside the scope of the Panel's authority. It argues that should the Panel elect to consider the legality of Respondent's conduct, it should be aware that the Florida scalping law includes a number of exceptions, such as relating to travel agencies reselling tickets as part of a travel package. Respondent argues that the Panel could not fairly make a determination on the question of lawfulness with the limited evidence before it, and should refrain from doing so.
Respondent requests that the Panel reject Complainant's request to order the transfer of the disputed domain names to it.
6. Discussion and Findings
The Panel determination in this matter is rendered by Frederick Abbott (Presiding) and David Plant, constituting a majority. Panelist Neil Smith dissents from the majority decision. Reference to the Panel herein should be understood to refer to the Panel majority.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules). In this proceeding, Respondent filed detailed responsive pleadings. The Panel is satisfied that Respondent had adequate notice and opportunity to participate.
As a preliminary matter, the Panel notes that each party submitted a response to its Panel Order No. 1. Respondent objected to Complainant's submission on grounds that Complainant had not included a certification of the accuracy of the information in its supplemental submission. The Panel notes that the only certification the Rules require of a Complainant is in respect to its Complaint (Rules, paragraph 3(b)(xiv)), and that the Panel did not request or require a certification in regard to supplemental submissions). Following Respondent's objection, Complainant transmitted a certification by counsel to assure compliance with unspecified requirements. The Panel does not consider it necessary to consider such additional certification as it was not required by the Policy, Rules or Supplemental Rules.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
ISI is the holder of trademark and service mark registrations for the term "DAYTONA 500" on the Principal Register at the USPTO. Such registrations establish a presumption of exclusive rights in the mark in favor of the registrant, and Respondent has not provided evidence to rebut that presumption. Complainant has presented evidence sufficient to establish that it is the exclusive licensee of ISI in the United States for the "DAYTONA 500" mark, and that it has been authorized by ISI to initiate and prosecute this Administrative Proceeding, and to act as transferee of the disputed domain names should the Panel so order. The Panel notes that the licensor and licensee of the mark are parts of a commonly controlled enterprise. The Panel determines that Complainant has rights in the trademark and service mark "DAYTONA 500". For purposes of this determination, the Panel will hereinafter refer solely to Complainant as holder of rights in the mark.
The Panel further determines on the basis of extensive evidence presented by Complainant regarding consumer identification of the "DAYTONA 500" mark with its racing entertainment service (the Daytona 500 race), that the mark is well known in the field of automobile racing.
The disputed domain names and directly incorporate Complainant's mark, and add the term "tickets" and a gTLD (".net" and ".org" respectively). The common noun "tickets" does not distinguish the disputed domain names from Complainant's mark such as to avoid a finding of confusing similarity. Internet users viewing Complainant's mark along with the common noun "tickets" would likely assume that Complainant was using its mark (or had authorized another party to use its mark) to offer tickets for sale on the Internet. The addition of the gTLD ".net" and ".org", respectively, in this case does not act to dispel potential Internet user confusion.
Respondent's asserts that a finding by the Panel of confusing similarity would acknowledge that the holder of rights in a mark "micro" would be able to "obtain" (presumably meaning in an Administrative Proceeding) the domain name . This is not correct. Complainant is not asserting exclusive rights in the word "tickets".[1] Complainant is not attempting to "obtain" the disputed domain names by asserting exclusive rights to the names (including "tickets") as trademarks. It is instead attempting to prevent Respondent from using its "DAYTONA 500" mark along with a common word in a manner that is likely to confuse Internet users. The holder of rights in a mark "micro", were this common term to acquire secondary meaning as a mark, might or might not be able to establish that the term "Microsoft" was confusingly similar to its mark in a particular context. This would not, however, allow it to "obtain" the domain name from the holder of the "MICROSOFT" mark in an Administrative Proceeding under the Policy because its holder, Microsoft Corporation, has rights or legitimate interests in that term as a mark.
The Panel determines that Complainant has rights in the trademark and service mark "DAYTONA 500" and that the disputed domain names are confusingly similar to its mark. Complainant has established the first element necessary for a finding of abusive domain name registration and use.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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." (Policy, paragraph 4(c))."
Respondent does not assert that it has been commonly known by the disputed domain names. Respondent argues that it has used the disputed domain names for a bona fide offering of goods. Whether or not its resale of Daytona 500 tickets is a bona fide offering of goods, Respondent had notice of a dispute with Complainant prior to using or preparing to use the disputed domain names to offer those tickets for sale. In 2000, Complainant had vigorously objected to Respondent's registration of the domain names and , and Respondent eventually transferred those domain names to Complainant upon the latter's legal demand. Respondent could not in good faith have concluded that Complainant would not dispute its registration and use of and in 2001. Respondent's counsel already argued to Complainant in 2000 that the earlier-registered domain names were held for "fair use" purposes, and Complainant had disputed this in 2000. Respondent did not offer "Daytona 500" tickets for sale under the disputed domain names prior to notice of a dispute with Complainant.
Respondent's principal argument is that use of the disputed domain names (and Complainant's mark) for the resale of Daytona 500 race tickets is protected as "fair use", done without intent for commercial gain to misleadingly divert consumers. Respondent argues that its use of the "DAYTONA 500" mark is fair because it is using the mark to identify tickets to a racing event that is appropriately identified by the mark, that the tickets it is offering to sell are legitimate goods which it has the right to sell, and that it is offering to sell the tickets in a manner which makes clear it is not affiliated with or sponsored by Complainant because it has included a disclaimer of affiliation with Complainant on its websites.
The Panel notes that determinations regarding claims of fair use depend upon the facts and circumstances of each case. The facts in this Administrative Proceeding do not establish fair use of Complainant's mark by Respondent.
Respondent has used the domain name to direct Internet users to a home page headed with the term "" in large font, with the words "best prices - best selection - best service" appearing in smaller font beneath that heading. The overall appearance of the home page is that "DAYTONA 500" is the principal identifier. On the same web page there are ticket listings for numerous entertainment events, including many auto racing entertainment events that compete with Complainant's Daytona 500 race. There was no disclaimer of affiliation with Complainant on this web page, nor did there appear to be a disclaimer elsewhere on this site.
Respondent has used the domain name to direct Internet users to a home page headed "Daytona 500 Tickets", with a toll free telephone number. The home page showed illustrated advertisements for "Indy 500 tickets", "Daytona 500", "Formula 1 Grand Prix", and "Brickyard 400". Once again, the overall appearance of the home page is that "DAYTONA 500" is the principal identifier, and a variety of auto racing events that compete with Complainant's are shown as prominently as that identified by Complainant's mark. Only by clicking through on "Daytona 500" is an Internet user taken to a web page on which a small font disclaimer is included at the bottom of the page. That disclaimer does not refer to Complainant or its mark, but rather to "NASCAR", which is a mark held by a third party.
The fact that Respondent has purchased Daytona 500 tickets from Complainant does not establish a fair use right to use Complainant's mark to advertise competing products in the circumstances presented here.
Whether use of a third party trademark is "fair" involves a contextual analysis. The U.S. Court of Appeals for the Ninth Circuit in Playboy Enters. v. Welles, 279 F.3d 796 (9th Cir. 2002), recently re-articulated a test for nominative fair use which it first adopted in New Kids on the Block v. New America Publ'g, Inc., 971 F.2d 302 (9th Cir. 1992):
"First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. [(n12 New Kids, 971 F.2d at 308 (footnote omitted).]
"We noted in New Kids that a nominative use may also be a commercial one. n13 [Id. at 309 ('Where, as here, the use does not imply sponsorship or endorsement, the fact that it is carried on for profit and in competition with the trademark holder's business is beside the point.')." 279 F. 3d at 801
With reference to the test articulated by the Ninth Circuit, the Panel considers that Daytona 500 race tickets are not readily identifiable without use of the "DAYTONA 500" mark. Moreover, Respondent has not used more of the mark than is necessary to identify the product (i.e., the race tickets).
Respondent's use of Complainant's mark as the principal identifier on its home pages, and the use of those home pages to advertise the services of competing race entertainment providers does not, however, survive the test of "do[ing] nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder". In the Panel's view, Respondent has deliberately used Complainant's mark to suggest an association of its business with that of Complainant.
The Panel notes that the Ninth Circuit's analysis of fair use in Playboy v. Welles, while acknowledging the right to make limited use of a mark in a "metatag", did not address the use of the mark in a domain name. The Ninth Circuit indicated that use of the mark in a manner that would cause search engines to list the fair use claimant's website prior to that of the trademark holder might alter its analysis. [2] Use in a domain name may create a more complex situation for a party claiming fair use. The Panel need not in this proceeding distinguish fair use of a mark in a domain name and on a website. Respondent used the disputed domain names (and mark) to direct Internet users to websites which in fact imply sponsorship by or affiliation with the mark holder. This is sufficient to negate Respondent's claim of fair use as to the disputed domain names.
The Panel also takes note of the recent decision of the U.S. Court of Appeals for the Seventh Circuit in Ty Inc. v. Perryman, No. 02-1771, decided October 4, 2002. This case involving a dilution claim regarding use of the domain name in connection with a website offering "Beanie Babies" for resale. The Seventh Circuit (Posner, CJ), found that the defendant-appellant did not blur or tarnish the trademark holder's "Beanie Babies" mark by truthfully advertising its products for resale on the Internet, stating, inter alia, "We do not think that by virtue of trademark law producers own their aftermarkets and can impede sellers in the aftermarket from marketing the trademarked products." (No. 02-1771, at 7).
The telling point in Ty Inc. for the present proceeding involves the Seventh Circuit's "com[ing] back to the skipped issue of confusion." The Court continued "For although 80 percent of Perryman's sales are of Ty's products, this means that 20 percent are not, and on her Web page after listing the various Ty products under such names as 'Beanie Babies' she has the caption "Other Beanies" � that are not manufactured by Ty. This is plain misdescription, in fact false advertising, and supports the last prohibition against using 'Beanie' or 'Beanies' 'in connection with any non-Ty products" (id., at 10-11).
In the present case, Respondent is using Complainant's "DAYTONA 500" mark to advertise tickets of competing race enterprises for sale. The term "DAYTONA 500" prominently appears over the offers for sale of competing products. The disclaimer on one site is non-existent, and on the other so remote as to be effectively non-existent. This is misdescription. Respondent is using Complainant's mark to advertise competing products, with no express or implied authority to do so (compare, e.g., Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774 (October 26, 2002), Panelist Abbott as sole panelist, [allowing authorized distributor's use of mark in connection with advertising multiple products when implicitly permitted as mark holder's standard business practice]).
The Panel has considered Respondent's reference to NCAA v. Randy Pitkin, et al., WIPO Case No. D2000-0903 (March 9, 2001) (Panelist Smith in majority). In that case the disputed domain names were used to direct Internet users to websites which only offered for sale tickets to events sponsored by the trademark holder. That sufficiently distinguishes the holding in NCAA v. Pitkin so as to be inapposite to the present case. The Panel notes that there are Administrative Panel decisions that do not endorse the approach adopted in NCAA v. Pitkin (National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700 (December 10, 2000), Panelist Plant as sole panelist). "Ticket resale" cases are fact-sensitive and not readily subject to a general rule of decision.
The Panel takes note of Complainant's allegation that Respondent is acting contrary to Florida criminal law by reselling tickets at prices substantially in excess of face value. The Panel also takes note of Respondent's rejection of that allegation based, inter alia, on its status as a travel agent. The Panel accepts Respondent's view that the question whether Respondent is acting consistently with a state criminal statute is not appropriately addressed by the Panel after Respondent has challenged its applicability. While there may be other cases and circumstances in which a manifest prima facie violation of criminal law could be considered relevant to a determination by a Panel regarding fair use, a proceeding before an Administrative Panel under the Policy is not the appropriate forum for adjudicating contested allegations of this kind.
The Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain names. Complainant has established the second element necessary for a finding of abusive domain name registration and use.
C. Registered and Used in Bad Faith
Respondent's registration and use of and to direct Internet users to websites that prominently display Complainant's mark as the identifier for competing products evidences bad faith registration and use of the disputed domain names for commercial gain, by creating confusion among Internet users as to Complainant's sponsorship of or affiliation with Respondent's websites. Such registration and use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Respondent was on notice from prior dealings that Complainant would and did object to its use of the domain names in the manner in which it used them. Had Respondent been attempting to act in good faith within the scope of the Policy, it would not have used Complainant's marks as the prominent headings of its web pages. Respondent did not use a disclaimer on one of its websites, and on the second used a small general disclaimer on an internal web page unlikely to be noticed by Internet users, at least until well into their examination of Respondent's website. The Panel considers that Respondent understood the legal consequences of its actions.
The Panel finds that Respondent registered and used the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Complainant has established the third element necessary to a finding of abusive domain name registration and use.
The Panel will therefore direct the registrar to transfer the disputed domain names to Complainant.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Frederick M. Abbott
Presiding Panelist
David Plant
Panelist
Dated: February 11, 2003
Dissent
I must respectfully dissent from the conclusion of the majority that Respondent is a cybersquatter within the meaning of the Policy which govern this proceeding. I wish also to write separately regarding the determination which we make here that Complainant has rights as a licensee of the owner of the trademark "DAYTONA 500", to bring this proceeding under the Policy seeking divestiture and reassignment of the Internet domain name equivalent to and confusingly similar to the trademark. While I do not dissent as to the latter conclusion of the majority, and join in it here, I wish to make further remarks as to this scenario.
Proceedings In Which the Complainant Is a Licensee of the Trademark Owner
This case has evolved into a somewhat familiar pattern. While the Policy and Rules governing these administrative proceedings were drafted with the expectation that the Complainant would be the trademark owner that was protesting the ownership of a similar domain name by the Respondent, and seeking to cancel the domain name registration or, as is the case in most proceedings, seek transfer to Complainant of the domain name, we have here a recurring pattern where the Complainant is not the trademark owner, but is merely an exclusive licensee of the trademark. The license agreement between the trademark owner, here International Speedway Corporation, and the exclusive licensee, HBP, Inc., the Complainant here, is apparently silent as to ownership of the domain name, but the parties have apparently agreed that between the two of them, licensee and licensor, the Internet domain name may be held by the licensee. This is perfectly appropriate, and, I am satisfied by the information and documents supplied to the Panel here by the Complainant in response to the Panel�s questions, that for purposes of this decision we may assume that the trademark owner, the owner of the trademark and its licensor, has agreed to allow its licensee, Complainant, to bring this proceeding, and to seek transfer of, and to own, the Internet domain name equivalent to the licensed trademark. For purpose of this proceeding, I am satisfied that licensee, Complainant, has a basis to bring this proceeding and that licensor will not disagree with Complainant or object to ownership of the domain name, if Complainant is successful, by Complainant, the licensee.
My additional remarks suggest, however, that the better practice in this situation is to follow the ICANN rules and require that the trademark owner either bring the proceedings as a Complainant or join in the administrative proceeding as a co-complainant. The Policy and Rules were carefully drafted to include certain representations, indemnifications for the dispute-resolution service provider (the "Provider"), in this case the Center, and, in particular, certain concessions by the Complainant, as to jurisdiction in certain locations where, should the Panel recommend cancellation or transfer of the domain name, the losing Respondent can go to a local court seeking, in effect, a review of the UDRP determination ordering transfer. Where the action is brought by a licensee, even an exclusive licensee, seeking transfer of the domain name, the Provider, here the Center, and, particularly, the Respondent, may lose some of the benefits of the carefully drafted Policy and Rules which provide for the jurisdictional concession, and other terms agreed to by a Complainant. Since in some jurisdictions, the trademark owner/licensor may, in effect, be a necessary party, or be a real party in interest, or equivalent party to a proceeding brought in a local court to prevent transfer of the Internet domain name, because the licensor is the owner of the trademark which forms a basis for the order of transfer, I would prefer that in this scenario, the Panel, or the administering organization for the dispute resolution procedure, here WIPO, require that the licensor join in the complaint, and agree to all of the terms and conditions mandated by bringing such a complaint under the Policy.
While I am satisfied here that the licensor, here International Speedway Corporation, an owner of the trademarks which form the basis for bringing this proceeding, has stated that it has no objection to the transfer of the Internet domain name to its licensee, here Complainant, I would suggest that the better practice would be to require the licensor to join in the proceedings, so that the jurisdictional and other trappings of the UDRP proceeding are present. Perhaps at the next redrafting of the Policy and Rules this can be considered. There are enough disputes in these proceedings between licensor and licensee, so as to suggest that not all licensors and licensees readily agree as to that ownership of the domain name equivalent to the licensed trademark may be in the name of the licensee.
Cybersquatting
I must respectfully dissent from the conclusion of the majority of the Panel that Respondent here is a cybersquatter under the Policy. I do not believe that Respondent is a cybersquatter under the Policy.
I find it pertinent that the Internet domain name at issue, while including the name of the event, here the "Daytona 500" race, includes also the generic term "tickets," and that Respondent is selling tickets to the event on the Internet website to which the Internet domain name refers or is in this case linked. I note that Respondent had originally registered one or more Internet domain names which comprised the trademark name "DAYTONA 500", alone, as the second level designator, such as , and that after the issue was raised Respondent assigned such Internet domain name to Complainant. I find that inclusion of the generic word "tickets," in a situation where Respondent is selling or offering for sale tickets or tour packages including tickets to the event named "Daytona 500," which tickets were purchased in bulk from Complainant, to be sufficient to support the use by the Respondent of such Internet domain names, and to at least support the proposition that Respondent is not a cybersquatter within the Policy. I find persuasive here the apparently admitted fact that for several years, notwithstanding its current objection to Respondent�s ownership of the Internet domain name , Complainant has been selling, and apparently continues to sell, bulk quantities of tickets each year to Respondent, without any conditions or limitations on Respondent�s use of the Internet domain name including the name of the event in conjunction with this resale of such "tickets."
I thus find it disingenuous for Complainant to argue before this Panel the Florida scalping law involving the resale of tickets, and to suggest that Respondent is in violation of such law, and to even brand Respondent as a "criminal" under such laws governing scalping, when in fact it is not disputed that Complainant has been selling, and apparently continues to sell, each year, bulk quantities of tickets to Respondent for the Daytona 500 event, knowing that Respondent is not filling the bleachers with its friends and families, but is reselling tickets to the Daytona 500 race to members of the public via the Internet. Having participated in placing the tickets to the Daytona 500 event in the hands of Respondent, in this case for payments, Complainant is hardly in a position to, in my opinion, attack the morals of an illegality of Respondent in reselling those tickets. This is particularly true where, as here, there may be no scalping violation in Respondent�s sale of such tickets as part of a tour package. But, in any event, having sold such tickets to Respondent, Complainant is hardly in a position to come before this Panel and argue that the tickets, known by Complainant to be used by Respondent for resale, is, as a result of such resale, a cybersquatter, or a criminal.
Having apparently been aware of Respondent�s resale of such tickets, and continuing to sell such event tickets in bulk to Respondent, Complainant can condition the purchase of such tickets on the non-use, if not the transfer, of the Internet domain names at issue here. However, I find it troubling that Complainant wants to apparently make such unconditional sales to Respondent, and yet come before this Panel and allege that Respondent is a cybersquatter for reselling the tickets to the public, which Respondent was expected to do, which were sold by Complainant to Respondent with the knowledge that they would be resold by Respondent.
Regarding the issue at hand, cybersquatting, I do not believe that under the circumstances, having sold the tickets to Respondent, Complainant can succeed in proving to this Panel that Respondent is a cybersquatter in using the name of the event, together with the generic word "tickets", for the resale of the tickets purchased from Complainant by Respondent on Respondent�s Internet website. I additionally note for the record that while "DAYTONA 500" is a registered trademark, it remains "the name of the game" if you will, in that it is the name of the event. While a trademark allows the trademark owner to use the trademark, and prevent others from using the trademark for a defendant�s goods and services, the law does not go so far as to prevent another from using the name of the event in words which happen to be the same as the trademark solely to describe the event of the trademark owner, here the Daytona 500 race. To paraphrase the words of the Ninth Circuit Court of Appeals in Cairns v. Franklin Mint, 292 F.3d 1139 (9th Cir. 2002), in one of several cases dealing (see also Playboy Enterprises, Inc. v. Terry Welles, 279 F.3d 796 (9th Cir. 2002); and WCVB-TV v. Boston Athletic Association, 926 F.2d 42 (1st Cir. 1991)) with the nominative fair use defense, the trademark law does not go so far.
As, for example, the United States Court of Appeals for the Ninth Circuit stated, in referencing another sporting event, which begins with a U.S. city name, the "Boston Marathon," in the WCVB-TV v. Boston Athletic Association case, the law goes so far as to require Respondent to use such words as "that five hundred mile car race held each year in Daytona." While I do not believe that we have to go so far as to find the use of the name of the sporting event in a domain name to be nominative fair use, I do not find that the use of the name of this event in combination with the word "tickets" to be cybersquatting, where the Respondent is selling tickets to the event bearing the name of the event which were purchased from the Complainant for resale to the general public.
For the above reasons, I respectfully dissent.
Neil A. Smith
Panelist
Dated: February 11, 2003
1. The USPTO would almost certainly require any applicant for a mark including the term "tickets" to disclaim exclusive rights in that word during the application process.
2. The Court said: "We conclude that the metatags satisfy the second and third elements of the test as well. The metatags use only so much of the marks as reasonably necessary and nothing is done in conjunction with them to suggest sponsorship or endorsement by the trademark holder. We note that our decision might differ if the metatags listed the trademarked term so repeatedly that Welles' site would regularly appear above PEI's in searches for one of the trademarked terms." [footnotes omitted] (279 F.3d 796, at 804)
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