WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ticketmaster Corporation v. Spider Web Design, Inc.

Case No. D2000-1551

 

1. The Parties

Complainant is Ticketmaster Corporation ("Complainant" or "Ticketmaster"), an Illinois corporation located at 3701 Wilshire Boulevard, Los Angeles, California 90010 USA.

Respondent is Spider Web Design, Inc. ("Respondent" or "Spider Web"), an Illinois corporation located at 2517 Greenwood Rd., Glenview, Illinois 60025 USA.

 

2. The Domain Name and Registrar

The domain name at issue is "ticketmaster.org" (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.

 

3. Procedural History

On November 10, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On November 13, 2000, the Center received hardcopy of the Complaint. On November 16, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On November 21, 2000, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Nams and that the Domain Name is registered in the Respondent's name.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On November 22, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On November 27, 2000, the Center communicated with Respondent. On December 2, 2000, the Center received communication from the Respondent.

On December 5, 2000, the Complainant filed a Memorandum in Response to Respondentís communication.

On December 14, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On January 16, 2001 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

4. Factual Background

Ticketmaster is the global leader in live event ticket sales. Ticketmaster provides tickets to more than 350,000 events each year, including professional sports, arts, family, concert and other events. Ticketmasterís 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. Ticketmasterís annual sales under the name and mark TICKETMASTER currently exceed $1.6 billion.

Ticketmaster has long and extensively used the trade name and service mark TICKETMASTER, and variations thereof, for its ticketing services throughout the United States and internationally. Ticketmaster owns the following U.S. registrations for its mark:

MARK

U.S. REG. NO.

REG. DATE

GOODS OR SERVICES

TICKETMASTER

1,746,016

January 12, 1993

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.

TICKETMASTER & Design

1,746,017

January 12, 1993

ticket agency services for sporting events, musical concerts and other entertainment events.

TICKETMASTER ONLINE & Design

1,960,551

March 5, 1996

on-line ticket agency services for sporting events, musical concerts and other entertainment events.

Each of these registrations is valid, subsisting, and owned by Ticketmaster. U.S. Registration Nos. 1,746,016 and 1,746,017 are incontestable in accordance with 15 U.S.C. ß 1064, and are conclusive evidence of the validity of the mark, Ticketmasterís ownership of the mark, and its exclusive right to use the mark in commerce in accordance with 15 U.S.C. ß 1115(b).

Ticketmaster has applied to register the mark ticketmaster.com for "online ticket agency services for sporting events, musical concerts and other entertainment events" (App. Ser. No. 75/820,905). This application was published for opposition on July 4, 2000, no oppositions were filed, and a Notice of Allowance has issued. When this application matures to registration, it will constitute prima facie evidence of Ticketmasterís ownership of the mark, and of its exclusive right to use the mark in commerce on or in connection with the services identified above.

Ticketmaster uses the Domain Name <ticketmaster.com> in connection with its online ticketing services. Anyone in the world with a valid credit card and internet capability can access Ticketmasterís website and buy tickets for entertainment events. Ticketmasterís affiliates in Canada, Mexico, Ireland, the United Kingdom and Australia maintain similar websites.

As a result of Ticketmasterís extensive marketing efforts, and the resulting widespread use of its services, the public has come to recognize and favorably associate the TICKETMASTER name and mark with Ticketmasterís services. Consequently, Ticketmaster has come to own valuable goodwill symbolized by the TICKETMASTER mark.

 

5. Partiesí Contentions

A. Complainant contends that it has registered trademarks in TICKETMASTER. Complainant further contends that the Domain Name is identical with and confusingly similar to the TICKETMASTER marks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent does not contest Complainantís assertion that it has registered marks in TICKETMASTER or that the Domain Name is identical with and confusingly similar to the marks.

Respondent failed to contest Complainantís assertion that Respondent has no rights or legitimate interest in the Domain Name.

Respondent failed to contest Complainantís assertion that Respondent registered and used the Domain Name in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."

Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Assignment of Domain Name

Respondent has stated in communication with the Center that it is in the process of transferring this Domain Name to "ticketmaster.org" Incorporated, a recently formed Indiana corporation ("the new company"). The Domain Name "ticketmaster.org" was owned by Spider Web at least as of November 1, 2000, the date the Complaint was filed. Moreover, the records of the Indiana Secretary of State show that the new company was formed on November 17, 2000, over two weeks after the initiation of this proceeding. Jordan Gilman, president of Spider Web, is also the registered agent and sole incorporator of the new company.

Respondent seems to suggest that transfer of "ticketmaster.org" to a corporation of the same name will cure its bad faith and confer legitimacy on the Domain Name. The effects of the alleged or attempted assignment on Respondentís rights and legitimate interest in the Domain Name and upon Respondentís assertions of good faith will be analyzed bellow.

The Complainant requests that the Sole Panelist cancel the transfer of the Domain Name to the new company, since Spider Web allegedly transferred the Domain Name after Ticketmaster filed the Complaint.

Section 8(a) of the Policy states:

You [the registrant] may not transfer your domain name registration to another holder Ö during a pending administrative proceeding Ö unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the Ö arbitrator. We reserve the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph.

The Registrar having confirmed the registrant of the Domain Name "ticketmaster.org" to be Spider Web Design, Inc. and no transfers of domain name registrations being allowed during a pending administrative proceeding, the Panel finds that the domain name holder for the purposed of this proceeding to be and remain Spider Web Design, Inc. Therefore the Complainantís request to "cancel the transfer"is moot.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Even though Respondent has failed to file a Response or to contest Complainantís assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Identity or Confusing Similarity

Complainant contends that it has registered trademarks in TICKETMASTER. Complainant further contends that the Domain Name is identical with and confusingly similar to the TICKETMASTER marks pursuant to the Policy paragraph 4(a)(i).

Complainant demonstrates that each of its registrations is valid, subsisting, and owned by Ticketmaster. U.S. Registration Nos. 1,746,016 and 1,746,017 are incontestable in accordance with 15 U.S.C. ß 1064, and are conclusive evidence of the validity of the mark, Ticketmasterís ownership of the mark, and its exclusive right to use the mark in commerce in accordance with 15 U.S.C. ß 1115(b).

Ticketmaster has applied to register the mark ticketmaster.com for "online ticket agency services for sporting events, musical concerts and other entertainment events" (App. Ser. No. 75/820,905). This application was published for opposition on July 4, 2000, no oppositions were filed, and a Notice of Allowance has issued. When this application matures to registration, it will constitute prima facie evidence of Ticketmasterís ownership of the mark, and of its exclusive right to use the mark in commerce on or in connection with the services identified above.

Respondent has not contested the assertions by Ticketmaster that it has valid registrations of the TICKETMASTER mark. Therefore, the Sole Panelist finds that Ticketmaster has registered trademark in TICKETMASTER.

Complainant further contends that the Domain Name is identical with and confusingly similar to the TICKETMASTER marks pursuant to the Policy paragraph 4(a)(i). Respondent has not contested the assertions by Tickemaster that the Domain Name is confusingly similar to the TICKETMASTER mark.

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998). Here, Respondentís "ticketmaster.org" Domain Name is confusingly similar to the TICKETMASTER mark because it incorporates the "ticketmaster" name in its entirety. Respondent's addition of the gTLD ".org" is non-distinctive because it is required for registration of the Domain Name. Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the TICKETMASTER mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the use of the TICKETMASTER mark. Complainant alleges that the new company to which Respondent would transfer the Domain Name also has no relationship or permission from Complainant for the use of the TICKETMASTER mark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that it has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

Respondent suggests that transfer of "ticketmaster.org" to a corporation of the same name will confer legitimacy on the domain name. However, the registration of a corporate name creates no intellectual property rights. Foxtrap, Inc., v. Foxtrap, Inc., 671 F.2d 636, 640 n.7 (D.C. Cir. 1982); Magic Pan Inc. v. The Magic Pan, Inc., 192 U.S.P.Q. 321, 322 (S.D. Ind. 1976). Such transfer or intent to transfer is not sufficient to find that Respondent has been commonly known by the Domain Name.

The file contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c).

Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of a domain name:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.

Complainant does not identify a specific criterion under paragraph 4(b) of the Policy upon which it bases its assertions of Respondentís bad faith. The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, D2000-0003 (WIPO February 18, 2000). In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

Inaction

One such factor is that Respondent has made no use of the Domain Name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000).

In Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.

To quote a prior Panel decision, "[B]ecause Respondent is contributing no value-added to the Internet -- it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044.

See also, Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Prods. Corp. v. Yosef, D2000-0468 (WIPO July 27, 2000), (citing cases where panel found inaction constitutes bad faith).

In World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case No. D2000-0290 (June 20, 2000), the Panel made a finding of bad faith based on the fact that the domain name website had not been developed, stating "the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts." Id. at 10.15. See also, Mondich v. Brown, WIPO Case No. D2000-0004 (February 16, 2000), (bad faith evidenced by "failure for a substantial period of time to make good faith use of the domain name for [respondent's] business");

In the present case, the Domain Name was registered on September 26, 1998. During the succeeding two years, Respondent has failed to make good faith use of the domain name. Although the "ticketmaster.org" website claims its sponsor is a "non-for profit organization raising money to wire the last mile featuring the digital designs of the worldís youngest talents", this is only a pretense, since the website is inactive. Moreover, Spider Web is registered with the Illinois Secretary of State as a for-profit corporation. Although the website claims to feature childrenís digital designs, there are no designs on the site and no way for children to post their designs on the site.

As stated above, Spider Webís website is for all practical purposes "under construction." As noted in Hamlet Group v. Lansford, WIPO Case No. D2000-0073, "the posting of an ĎUnder Constructioní web site is effectively no more than a part of the registration process." Thus, it is not evidence of use in good faith. Mediasite S.A.R.L. v. Intellisolve Ltd., WIPO Case No. D2000-0179.

Actual or Constructive Knowledge

A second factor found to support a finding of bad faith is Respondentís knowledge of the Complainantís mark Respondent registered the "ticketmaster.org" Domain Name on September 26, 1998, long after Ticketmaster registered it, TICKETMASTER mark. Respondent had substantial constructive notice of the TICKETMASTER mark, as a trademark search on the date of the registration of the Domain Name would have revealed Ticketmasterís registration of the TICKETMASTER mark in the United States. Actual or constructive knowledge of the Complainantís rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000); Document Technologies v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000), (Respondentís knowledge of complainantís mark at the time of registration of the domain name suggests bad faith).

See also, Royal Crown Co. v. New York Broadcast Services, Inc., WIPO Case No. D2000-0315 ("The Panel finds it virtually inconceivable that Spider Web did not know of DIET RITE soft drinks . . . This points to an abusive domain name registration").

Offer to Sell to Public

A third such factor is that Respondent has offered the disputed domain name for sale to the public. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.

Although Respondentís offer of the disputed domain name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy. This is based on the nonexhaustive character of the express list of bad faith factors in paragraph 4(b) of the Policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others.

On October 18, 2000, Jordan Gilman, president of Spider Web, sent an e-mail message to the hostmaster of the "ticketmaster.com" website sponsored by Complainant. The message stated "I noticed that ticketmaster.org is on auction at afternic.com, click below to view and bid on the auction." The minimum bid was $75,000. Spider Webís attempted sale of the domain name for $75,000 is strong evidence of bad faith. Mediasite S.A.R.L. v. Intellisolve Ltd., WIPO Case No. D2000-0179; Quixtar Investments, Inc. v. Smithberger, WIPO Case No. D2000Ė0138.

Course of Conduct

A fourth such factor is a course of conduct by Respondent suggesting bad faith. Complainant alleges that it engaged in a series of communications with Respondent prior to filing this proceeding:

(a) Ticketmaster became aware of Spider Webís registration of "ticketmaster.org" in December, 1998. On January 19, 1999, counsel for Ticketmaster sent a warning letter to Spider Web.

(b) On February 15, 1999, Spider Web wrote to Ticketmasterís counsel. Spider Web agreed to cease use of and cancel the offending domain name.

(c) Spider Web did not cancel "ticketmaster.org" as promised, and ignored a follow-up letter from Ticketmasterís counsel dated April 9, 1999. At Ticketmasterís request, Network Solutions placed the domain name on "Hold" status on May 28, 1999.

(d) As of October 2000, Spider Web still refused to honor his agreement to transfer the domain name. Rather, as noted above, Spider Web sought to auction it off for a minimum of $75,000. Counsel for Ticketmaster sent a renewed cease and desist letter on November 1, 2000.

(e) In his response dated November 2, 2000, Spider Web denied Ticketmasterís ownership of the mark TICKETMASTER and suggested that he was somehow entitled to use that mark as his domain name.

Assignment of Domain Name

A fifth such factor involves the actions of the Respondent after Complainantís commencement of this proceeding. During the course of this proceeding, Respondent also purported to assign the Domain Name in an attempt to avoid the consequences of Complainantís action. Prior panels have not condoned such efforts. In Madonna Ciccone p/k/a Madonna v. Parisi, WIPO Case No. D2000-0847, the respondent claimed it made legitimate, noncommercial use of the domain name <madonna.com> by offering to transfer the name to Madonna Hospital in Lincoln, Nebraska. The Panel declined to find fair use, noting that negotiations with the hospital began only after the respondent received the complainantís demand letter. Similarly, in Corinthians Licenciamentos Ltda. v. Sallen, WIPO Case No. D2000-0461, the Panel held that posting of biblical citations on its website did not constitute fair use, since these postings occurred only after the respondent became aware of a dispute with plaintiff. In the present case, Spider Web has known of Ticketmasterís objection to its registration of "ticketmaster.org" since January 1999. The attempt to transfer the disputed Domain Name to frustrate this proceeding is an indication of Respondentís bad faith.

Use of Entire Mark Without Plausible Good Faith Use

A sixth such factor is the use of Complainantís entire mark in the Domain Name, thus making it difficult to infer a legitimate use of the Domain Name by Respondent. In Cellular One Group v. Paul Brien, D2000-0028 (WIPO March 10, 2000), Complainant filed a WIPO complaint against the Registrant of domain name <cellularonechina.com>. The WIPO panel agreed with Complainant that the Registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of <cellularonechina.com>, because the domain name included Complainantís entire trademark. In light of Cellular Oneís trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Respondentís Domain Name uses the entirety of Complainantís trademark, namely the phrase "ticketmaster." No plausible explanation exists as to why Respondent selected the name "ticketmaster" as part of the Domain Name other than to trade on the goodwill of Complainant. Respondent has never provided any information to contradict the conclusion that Respondent registered the Domain Name "ticketmaster.org" in order to benefit from the well-known TICKETMASTER mark.

The evidence establishes: (i) inaction by Respondent in the use the Domain Name to post any content on the Internet or for any other legitimate purpose; (ii) constructive knowledge by Respondent of Complainantís rights in the TICKETMASTER mark upon the registration of the Domain Name; (iii) Respondentís offers to sell the Domain Name to the public; (iv) Respondentís course of conduct in reneging on its offers to cancel its registration of the Domain Name; (v) Respondentís attempts to transfer the Domain Name to frustrate this proceeding; and (vi) the use of Complainantís entire mark creating an absence of any plausible use of the Domain Name that would constitute good faith. Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

Therefore, based upon each of the foregoing grounds, the Sole Panelist finds that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Name "ticketmaster.org" is identical with and confusingly similar to Complainantís registered trademark TICKETMASTER, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Ticketmaster Corporation.

 


 

Richard W. Page
Sole Panelist

Dated: February 4, 2001