WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ticketmaster Corporation v. netAfrik
Case No. D2001-0906
1. The Parties
The Complainant is Ticketmaster Corporation, an Illinois corporation located at 3701 Wilshire Boulevard, Los Angeles, California 90010, USA. The Complainant is represented by Robert W. Sacoff, John M. Murphy, and Nerissa Coyle McGinn, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, 311 South Wacker Drive, Suite 5000, Chicago, Illinois 60606, U.S.A.
The Respondent is netAfrik, a division of Global Data Technology Corporation, 905 West 7th Street, Frederick, Maryland 21701, U.S.A.
2. The Domain Name and Registrar
The domain names in dispute are: <netafrikticketmaster.com> and <netafriqueticketmaster.com>.
The registrar for the disputed domain names is: Melbourne IT, LTD., d/b/a Internet Names Worldwide, Level 2, 120 King Street, Melbourne, Victoria 3000, Australia.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on July 14, 2001. On July 18, 2001, the Center requested that the registrar Melbourne IT, LTD check and report back on the registrant for the domain names <netafrikticketmaster.com> and <netafriqueticketmaster.com>. On July 20, 2001, Melbourne IT, Ltd. reported to the Center that the registrant was the Respondent.
Also on July 20, 2001, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began. Respondentís Response was received by the Center on August 6, 2001.
The Administrative Panel submitted a Declaration of Impartiality and Independence on August 16, 2001, and the Center then appointed the Panel on August 20, 2001.
The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.
This Decision is due by September 2, 2001.
4. Factual Background
The Complainant's primary business is live event ticket sales online. The Respondent is in this same line of business, along with other on-line businesses. On February 2, 2001, the Respondent registered the two disputed domain names, <netafrikticketmaster.com> and <netafriqueticketmaster.com>. It does not appear the Complainant and the Respondent communicated with each other prior to the initiation of this proceeding. The Complainant is seeking transfer of the disputed domain names in this proceeding.
5. The Partiesí Contentions
- Complainant is the global leader in live event ticket sales. It has a network of approximately 2,700 ticketing outlets and its charge by phone centers are located in 210 cities in the United States, Canada, the United Kingdom, Ireland, Mexico and Australia.
- Complainant 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.
- Complainant has registered variations on its Ticketmaster mark in over 50 countries throughout the world (Exhibit E).
- As a result of Complainant's extensive marketing efforts, and the resulting widespread use of its services, Complainant has come to own valuable goodwill in the Ticketmaster mark.
- Respondent's domain names incorporate Complainant's trade name and registered mark Ticketmaster in its entirety, and are therefore confusingly similar. The prefixes "netafrik" and "netafrique" do nothing to reduce the confusing similarity with the Ticketmaster mark since "net" merely refers to the fact that NetAfrik's business is internet-based, while "afrik" and "afrique" merely refer to the market targeted by the web site.
- The Respondent's web site does not constitute legitimate use within the meaning of UDRP para 4c(iii).
- By using the disputed domain names, the Respondent is diverting the Complainant's web traffic to the Respondent's website.
- Based on the fame of Complainant's Ticketmaster marks, it can be assumed that Respondent had actual knowledge of Complainant's rights.
- The disputed domain names should be turned over to the Complainant.
- To the best of Respondent's knowledge, netAfrik, by registering the domain names in question, does not infringe upon or otherwise violate the rights of any third party.
- It is clear that the trademark that the Complainant has secured is Ticketmaster and not netAfrik, which is a legal trademark of Respondent.
- There are endless possibilities of word combinations that could include ticket and master.
- The disputed domain names, or any of the infinite possibilities of word combinations, do not sound like or cannot be confused with the Complainant.
- The words ticket master, which for decades has been the common terminology used by many in America and many in other countries to refer to the individuals at box offices who sell tickets cannot be claimed to have been coined by the Complainant.
- The Complainant has registered many names in many countries, but those names do not include Netafrik or Netafrique.
- Respondent has various trade names that include Netafrik duly registered in the State of Maryland, USA.
- The Complaint should be dismissed.
- The Complainant should be found to have attempted reverse domain hijacking.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain names transferred to it, Complainant must prove the following (the Policy, para 4a(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has exhibited exemplary copies of its Ticketmaster service mark registered on the principal register of the Patent and Trademark Office of the United States of America: for example registration no. 1,746,016 dated January 12, 1993, in int. classes 101, 102 and 107 for accounting services for ticket sales via computer etc. Exhibits E, F and G show the Complainantís Ticketmaster mark is registered in many countries around the world and that it is used on the Internet.
The Respondent attempts to convince the Panel that the Complainantís mark is generic and that ticketmaster simply means a person who takes tickets. Not only does the Panel not believe this ó Respondent offers no proof beyond the assertion, and a dictionary check does not support the Respondentóbut, if this were true, it is unlikely the Complainant would have convinced the United States Patent and Trademark Office to register the Ticketmaster mark.
The Respondent, in registering the disputed domain names <netafrikticketmaster.com> and <netafriqueticketmaster.com>, incorporated the Complainantís mark in its entirety. The pertinent question, then, is whether the Complainantís mark still is prominent in the disputed domain names or whether the Respondent, by adding "netafrik" and "netafrique", has created a new mark that would not be confused with the Complainantís mark.
The Panel finds that the two prefixes connote only net used in its generic Internet sense and Africa used in its geographical sense. The only distinctive part of the Respondentís domain names is the Complainantís service mark.. Therefore, the Panel finds the disputed domain names are confusingly similar to the Complainantís service mark. (See Tcketmaster Corporation v. Dmitri Prem, ICANN/WIPO Case No. D2000-1550, January 16, 2001 where Ticketmaster was found to be a valid service mark; and Cellular One Group v. Paul Brien, ICANN/WIPO Case No. D2000-0028, March 10, 2000 where the domain name <cellularonechina.com> was found confusingly similar to the mark Cellular One; and General Electric Company v. Pars International Computer, Inc., ICANN/WIPO Case No. D2000-0368, July 25, 2000 finding the domain name <1-800-ge.com> confusingly similar to the GE mark).
Legitimate Rights or Interests
The Respondent states it has a State of Maryland, USA trademark for Netafrik but produces no evidence beyond the bare assertion and, in any case, it is the Complainantís service mark Ticketmaster that concerns us here. The Respondent has produced no evidence it has been commonly known by, or had any connection with, the disputed domain names prior to their contested registration on February 2, 2001.
The Complainant is contesting that the Respondent has any rights or interests in the disputed domain names. The Respondent has made an argument based on the Policy 4c(i) that it does have rights and interests in the disputed domain name. The Policy at 4c(i) provides:
"[b]efore 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;"
The Respondent is offering the same goods and services as the Complainant but, as we discuss further in the bad faith section below, the Panel does not find the Respondentís goods and services are being offered in good faith. Instead, the Panel finds the Respondent is offering its Internet ticket services in bad faith, well aware that the domain names it has chosen were meant to siphon off the Complainantís good will.
Registered and Used in Bad Faith
The Respondent is using the disputed domain names to offer ticket sales services similar to the Complainant's. The Respondent asserts it is using the disputed domain names in good faith but the Panel finds the Respondentís conduct is neatly summed up by the bad faith provisions of the Policy at 4b(iv):
"[b]y 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 complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site location."
In the Panelís view, there is no doubt the Respondent deliberately chose the disputed domain names so as to divert the Complainantís clientele to Respondent and to mislead that clientele to believe the Respondent was the arm of the Complainant that deals with Africa, African people or thinks African.
In view of the Panel's findings in favor of the Complainant supra, it follows that the Panel views as unfounded the Respondent's contention that the Complainant brought the Complaint in an attempt at reverse domain name hijacking per Rule 15e.
The Panel finds the Respondent registered two domain names confusingly similar to a service mark in which the Complainant has rights. The Respondent failed to show it has legitimate rights and interest in the disputed domain names. The Complainant demonstrated the Respondent registered and was using the domain names in bad faith per the Policy at 4b(iv).
In consequence, per the Policy at para 4(i) and Rule 15, the Panel orders that the disputed domain names, <netafrikticketmaster.com> and <netafriqueticketmaster.com> be transferred from the Respondent, Netafrik, to the Complainant Ticketmaster Corporation.
Dennis A. Foster
Date: August 30, 2001