Complainant is StubHub, Inc. of San Francisco, California, United States of America, represented by Hogan Lovells (Paris) LLP, Paris, France.
Respondent is Steve Johnson of Sugar Land, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2015. On March 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 1, 2015.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on May 15, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant states that it “operates StubHub!, the world’s largest online ticket marketplace, which enables fans to buy and sell tickets for any sport, concert, theatre and other live entertainment events, via its website ‘www.m’”; that it “was founded in the year 2000 and it was acquired by eBay Inc. on February 13, 2007”; that it “has more than 35 million registered users”; that it “has been consistently ranked as the top secondary ticket seller and second overall”; and that “[i]n 2011 alone, nearly 7 million tickets were sold on the StubHub’s official website, for a total dollar volume of more than USD 1.5 billion.”
Complainant states, and provides evidence to support, that it is the owner of “numerous trademarks consisting of or containing the term STUBHUB in many jurisdictions throughout the world,” including the following (the “STUBHUB Trademark”):
- U.S. Registration No. 2,558,703 for STUBHUB (registered on April 9, 2002) for use in connection with “On line marketplace for sellers and buyers of tickets for sporting events, musical concerts and other entertainment events”;
- U.S. Registration No. 2,870,113 for STUBHUB (registered on August 3, 2004)1 for use in connection with “Online ticket marketplace for sellers and buyers of tickets for sporting events, musical concerts and other entertainment events”; and
- Community Trademark Registration No. 004,998,324 (registered on July 25, 2007) for use in connection with, among other things, “Sporting and cultural activities”.
The Disputed Domain Name was created on September 9, 2010 and is being used in connection with a website offering it for sale.
Complainant states that it contacted Respondent about the Disputed Domain Name on March 18, 2015, and that Respondent offered to sell the Disputed Domain Name to Complainant for USD 5,340. According to an email provided by Complainant, Respondent stated that this figure represented what “.CO has charged us USD 5,340 (USD 240 for registration and USD 5100 in auction for the name).” Ultimately, Complainant agreed to pay Respondent USD 500 for the Disputed Domain Name – an offer that Respondent apparently never accepted.
Complainant states that Respondent has lost at least two previous proceedings under the Policy, Wal-Mart Stores, Inc. v. Steve Johnson,WIPO Case No. DCO2014-0010; and Alibaba Group Holding Limited v. Steve Johnson,WIPO Case No. DCO2013-0018. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because “[t]he Disputed Domain Name incorporates the term STUBHUB in its entirety, without adornment”; and “[i]t is generally accepted that the suffix, such as .CO, is immaterial when assessing whether a domain name is identical or confusingly similar to a complainant's trademark.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has not licensed or otherwise authorised the Respondent to make any use of its STUBHUB trademark, in a domain name or otherwise”; “[t]he Respondent cannot assert that he is using the Disputed Domain Name in connection with a bona fide offering of goods or services in accordance with Paragraph 4(c)(i) of the Policy, as the Disputed Domain Name is simply pointing to a website offering the Disputed Domain Name for sale as well as redirecting internet users to a page with a list of over 800 domain names up for sale”; “[t]he Respondent cannot conceivably assert that he is commonly known by the term STUBHUB, in accordance with Paragraph 4(c)(ii) of the Policy, given the notoriety surrounding the Complainant’s trademark”; “there is no doubt that the Respondent’s intention is not to use the Disputed Domain Name in a fair manner but to take unfair advantage of the Complainant’s goodwill for his own financial gain”; and “given the worldwide renown of the STUBHUB trademark and the fact that it is highly distinctive, it is not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Name by the Respondent that would not be illegitimate.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “the Respondent’s offer to sell the Disputed Domain Name on the website is clearly in bad faith given that… the Respondent was clearly aware of the Complainant’s rights at the time of registration and thus deliberately chose to register the Disputed Domain Name… seeking to trade on the Complainant’s goodwill”; “[g]iven the Complainant’s goodwill and renown, the Disputed Domain Name could simply not have been chosen for any reason other than to unduly take advantage of the Complainant’s rights”; “Respondent’s registration of the Disputed Domain Name prevents the Complainant from reflecting its trademark in the corresponding domain name under the .CO ccTLD, and that the Respondent has engaged in a pattern of registering numerous domain names infringing third party brands” as shown by the decisions cited above, that is, Wal-Mart Stores, Inc. v. Steve Johnson,WIPO Case No. DCO2014-0010; and Alibaba Group Holding Limited v. Steve Johnson,WIPO Case No. DCO2013-0018; “given the fact that the Complainant’s STUBHUB trademark is highly distinctive and enjoys considerable renown worldwide, there simply cannot be any actual or contemplated good faith use of the Disputed Domain Name by the Respondent or a third party other than the Complainant as it would inevitably cause confusion amongst internet users searching for the Complainant”; and “Respondent’s failure to respond positively to the Complainant’s efforts to settle this dispute amicably is an additional strong indication in support for a finding of bad faith.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the STUBHUB Trademark. This is consistent with a previous decision under the Policy cited by Complainant, StubHub Inc., eBay Inc. v. Chen Sizhu c/o Dynadot Privacy, liwei li,WIPO Case No. D2013-0356.
As to whether the Disputed Domain Name is identical or confusingly similar to the STUBHUB Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “stubhub”), as it is well-established that the Top-Level Domain (i.e., “.co”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Given that the second-level portion of the Disputed Domain Name is identical to the STUBHUB Trademark, it is self-evident that the Disputed Domain Name is identical or confusingly similar to the STUBHUB Trademark for purposes of the Policy.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has not licensed or otherwise authorised the Respondent to make any use of its STUBHUB trademark, in a domain name or otherwise”; “[t]he Respondent cannot assert that he is using the Disputed Domain Name in connection with a bona fide offering of goods or services in accordance with Paragraph 4(c)(i) of the Policy, as the Disputed Domain Name is simply pointing to a website offering the Disputed Domain Name for sale as well as redirecting internet users to a page with a list of over 800 domain names up for sale”; “[t]he Respondent cannot conceivably assert that he is commonly known by the term STUBHUB, in accordance with Paragraph 4(c)(ii) of the Policy, given the notoriety surrounding the Complainant’s trademark”; “there is no doubt that the Respondent’s intention is not to use the Disputed Domain Name in a fair manner but to take unfair advantage of the Complainant’s goodwill for his own financial gain”; and “given the worldwide renown of the STUBHUB trademark and the fact that it is highly distinctive, it is not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Name by the Respondent that would not be illegitimate.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, Complainant argues that bad faith exists pursuant to paragraphs 4(b)(i), 4(b)(ii) and 4(b)(iv) of the Policy.
The Panel agrees that numerous facts in this proceeding are all evidence of bad faith. In particular, and without minimizing the importance of any other factual or legal issues, the Panel is particularly persuaded by paragraph 4(b)(ii) of the Policy, not only because of the previous domain name disputes that Respondent has lost but also given that the second-level portion of the Disputed Domain Name is identical to Complainant’s STUBHUB Trademark and further given that the Top-Level Domain (“.co”) is merely one character short of the popular “.com” Top-Level Domain used by Complainant. This is a common ploy used by cybersquatters that is especially damaging not only to trademark owners such as Complainant but also to consumers who may be readily confused.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: May 31, 2015
1 The Complaint lists a registration date of August 3, 2002; but the Panel’s review of the registration record at the website of the U.S. Patent and Trademark Office (USPTO) indicates that this mark was registered on August 3, 2004. The Panel assumes that the USPTO record is correct, but, in any event, the discrepancy is irrelevant to this proceeding.
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