WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Preferred Seating, Inc. v. Frank Still Audio & Web Design

Case No. D2001-1352

 

1.The Parties

 

The Complainant is Preferred Seating, Inc., a corporation organized in the State of California, United States of America (USA) with place of business in Sacramento, California, USA.

The Respondent is Frank Still Audio & Web Design, with address in Sausalito, California, USA.

 

2.The Domain Name and Registrar

The disputed domain name is <preferredseating.com>.

The registrar of the disputed domain name is Network Solutions, Inc., with business address in Mountain View, California, USA.

 

3.Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a)The Complainant initiated the proceeding by the filing of a Complaint via courier mail received by the WIPO Arbitration and Mediation Center ("WIPO") on November 13, 2001, and via e-mail received by WIPO on December 7, 2001. Complainant elected a single-member Panel and paid the requisite filing fees in connection with that election. On November 23, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc., with the Registrarís Response received by WIPO on November 26, 2001.

(b)On December 10, 2001, WIPO transmitted notification of the Complaint and commencement of the proceeding to Respondent via e-mail and courier mail. WIPO indicated that the due date for a Response was December 30, 2001.

(c)At Respondentís request, WIPO granted an extension until January 7, 2002, for the filing of a Response.

(d)On January 8, 2002, Respondentís Response was received via e-mail by WIPO, with hardcopy subsequently received by WIPO. Respondent transmitted its response to Complainant. Respondent elected to have this dispute decided by a three-member Panel, and paid the fees associated with that election.

(e)On March 7, 2002, following receipt of executed Statements of Acceptance and Declarations of Impartiality and Independence, WIPO appointed Frederick M. Abbott (presiding), G. Gervaise Davis III and Richard W. Page to serve as the Administrative Panel (the "Panel") in this matter. WIPO so notified Complainant and Respondent. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by March 21, 2002. The Panel received electronic and hard copy files from WIPO.

(f)Following notification from the Panel of circumstances requiring an extension of the date for decision in this matter, WIPO notified the parties that the projected date for a decision would be extended until March 29, 2002.

(g)The Panel notes that Complainant sent an additional submission to WIPO by e-mail of February 7, 2002, and requested instruction from WIPO regarding bringing the information in this submission to the attention of the Panel. WIPO advised Complainant that the Panel would be advised of receipt of the submission, and that it would be in the Panel's discretion whether to admit or consider it. The Panel requested to review the submission for the purpose of determining whether to admit or consider it. The information set forth in the proposed submission was consistent with the Panel's initial conclusion regarding certain evidence that had previously been submitted by Respondent. The Panel found it unnecessary to further consider or refer to Complainant's supplemental submission. The proceedings have been conducted in English.

 

4.Factual Background

Complainant has registered the service mark "PREFERRED SEATING" at the office of the Secretary of State of the State of California (Service Mark No. 054537). The date of registration is February 22, 2001, the services are described as "arranging for ticket reservations for shows and other entertainment events", and a date of first use in California and elsewhere of March 13, 1987, is claimed. The term "seating" is disclaimed. (Complaint, Exhibit 3).

Complainantís asserted service mark is not federally registered by it. The term "PREFERRED SEATING" is registered at the United States Patent and Trademark Office by a third party, Preferred Seating, Inc., of New York (Reg. No. 1344460, dated June 25, 1985, in International Class 20, covering furniture and furnishings, as further specified).

Complainant has submitted evidence of doing business in California under the name "Preferred Seating" as early as April 1987 (advertising receipt from Sacramento newspaper). Complainantís evidence shows advertising in the field of ticket brokering in Sacramento and the San Francisco Bay Area up until the commencement of this proceeding. There is no apparent dispute among the parties that Complainant has done and continues to do business in California under the name "Preferred Seating". (Complaint, para. 11, and Exhibits 4-13).

Complainant registered the domain name <preferredseat.com> on May 15, 1998, and maintains an active commercial Internet website promoting its services at "www.preferredseat.com". On that website, Complainant uses the name "Preferred Seating", indicating "Family Owned Ticket Service Since 1987".

According to the registrarís (Network Solutions, Inc.ís) verification response to WIPO, dated November 29, 2001, "Frank Still Audio & Web Design" is the listed registrant of the domain name <preferredseating.com>. According to that verification, "Spell, Heather", with address at "All Events, Inc." in Roseville, California, is the Administrative Contact for the name. According to a Network Solutionsí WHOIS database printout submitted by Complainant, the record of registration for the disputed domain name was created on March 2, 1998, and was last updated on February 23, 2001 (Complaint, Exhibit 1).

Respondent acknowledges that it presently conducts a ticket brokerage business similar to that of Complainant under the name "All Events, Inc." The listed registrant of the disputed domain name is an Internet consulting firm that assisted All Events in creating its website. Respondent asserts that it has conducted business in Roseville, California as All Events for seven years, and that it sells tickets to buyers throughout the United States, and outside the United States. (Response, paras. 7-10).

Respondent uses the disputed domain name in the Internet address "www.preferredseating.com" to direct Internet users to a website identified as that of All Events. This website includes a link to the principal website of All Events at "www.alleventstickets.com." (Complaint, para. 16).

Respondent has also registered, among others, the domain names <preferredseatingticket.com>, <preferredtickets.com> and <preferedtickets.com> (Response, para. 36).

Respondent submitted evidence of a number of domain names that incorporate the term "preferred seating", including <visa.preferredseating.com.au>, <preferredseating.co.nz>, and <mobilenet.preferredseating.com.au> (Response, Exhibit E, Google search engine results).

Counsel for Complainant has contacted Respondent and its counsel, and the two sides have disagreed as to the relative merits of their legal positions regarding the disputed domain name. Counsel for Complainant has submitted a declaration stating that, in response to his cease and desist and transfer demands, counsel for Respondent suggested a price at which Respondent would be willing to sell the disputed domain name. (Complaint, Exhibit 15)

Respondent has submitted a Settlement Agreement and Mutual Release involving Complainant, Respondent and their principals dated May 1999. Respondent asserts that this agreement "Released All Events of any liability in connection with the registration of <preferredseating.com>." The aforesaid release refers to all disputes among the parties "arising out of, or which may have arisen out of any matter which was the subject of said suit or could have been the subject of said suit, whether or not pleaded in said action". The aforesaid release does not itself describe the subject matter of the litigation or refer to the disputed domain name.

The Service Agreement in effect between Respondent and Network Solutions, Inc. subjects Respondent to Network Solutions, Inc.ís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution 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.Partiesí Contentions

A.Complainant

Complainant asserts that it has rights in the service mark "PREFERRED SEATING" based on it use of the mark in California since 1987, and its registration of the mark in the State of California (see Factual Background supra). Complainant asserts that the public in California has come to associate the mark with its business.

Complainant states that the disputed domain name is identical or confusingly similar to its mark.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark.

Complainant alleges that Respondent registered and has used the disputed domain name in bad faith by using it to attract Internet users to its own commercial website by creating the appearance that Complainant is associated with that website. Complainant states that it corresponded with Respondent concerning its service mark infringement as early as March 2001.

Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.

Complainant asserts that no legal proceedings have been commenced or terminated in connection with or relating to the disputed domain name.

B.Respondent

Respondent acknowledges that All Events, Inc. is the beneficial owner of the disputed domain name. Respondent acknowledges that All Events, Inc. is a business in competition with Complainant in California, but states also that its business is conducted throughout the United States and with customers in foreign countries.

Respondent concedes that the disputed domain name is identical to "Preferred Seating".

Respondent asserts that Complainant does not have service mark rights in the term "Preferred Seating". Respondent states that a federal registration for that term is held by a third party, which has not objected to Respondentís use of the name.

Respondent states that its registration of the disputed domain name pre-dated any rights that Complainant may have acquired by virtue of its subsequent service mark registration in California.

Respondent asserts that Complainant claims use of the term only in the State of California, while Respondent uses the term more widely.

Respondent argues that the term "preferred seating" is merely descriptive and common to the business of ticket brokers.

Respondent refers to a number of enterprises that use the term "preferred seating" in connection with the sale of good seats to events. A number of these enterprises use the term "preferred seating" as part of their Internet address.

Respondent states that it has a legitimate interest in the disputed domain name since it is used as a generic or commonly descriptive term for a kind of business service. In Respondentís view, granting Complainant exclusive rights to "preferred seating" would be analogous to granting a lawyer exclusive rights to "legal services".

Respondent concedes that its principals were and are aware of Complainant, but had no intention to capitalize on its goodwill when registering and using the disputed domain name.

Respondent asserts that it has not registered and used the disputed domain name in bad faith. The name is common or descriptive and was adopted to identify its business services. There are many other enterprises using the same terms in domain names in connection with Internet businesses. Respondent observes that Complainant has used the domain name <preferredseat.com> for a number of years. Respondent asserts that a claim of trademark infringement does not establish bad faith under the Policy. Respondent asserts that Complainantís use of the term "preferred seating" is too geographically narrow to justify a worldwide Internet monopoly over it.

Respondent requests the Panel to reject Complainantís claim of abusive domain name registration and use.

Respondent requests the Panel to make a finding of reverse domain name hijacking against Complainant because (a) of the common or descriptive nature of the term it is claiming as its mark and (b) Complainant was barred from initiating this action by the terms of its agreement of settlement with Respondent.

 

6.Discussion and Findings

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 the Rules for Uniform Domain Name Dispute Resolution Policy (the "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 case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. Respondent has filed a detailed response to the Complaint indicating that it received notice and was afforded an adequate opportunity to respond.

As a preliminary matter the Panel notes that the registration data for the disputed domain name lists an Internet consulting firm as the domain name holder. All Events, Inc. acknowledges that it is the beneficial holder of the disputed domain name, and exercises control over it. The Panel treats All Events, Inc. as the Registrant-in-fact of the disputed domain name, and refers to it as the Respondent herein.

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)Respondentís 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)Respondentís 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.

Establishing abusive domain name registration and use presupposes the existence of a valid trademark or service mark.

Complainant has not registered "PREFERRED SEATING" as service mark on the Principal Register at the USPTO. Complainantís asserted mark does not enjoy a presumption of secondary meaning under federal law based on registration.

Rights in a trademark or service mark may arise under the federal Lanham Act or state law, and a substantial number of decisions by administrative Panels under the Policy have been based on such trademark or service mark rights. A principal issue in this proceeding is whether Complainant has established such rights.

Complainant registered the service mark "PREFERRED SEATING" in the State of California in 2001. Registration in the State of California establishes a presumption of ownership of rights in the mark in the state as from the date of registration. In its state registration, Complainant claimed a date of first use in 1987. Under California law as under federal trademark law, the claimed date of first use does not establish a presumption of rights as of the later registration date.

Respondent registered the disputed domain name in 1998. A finding of abusive domain name registration presupposes the existence of rights in a mark as of the date of registration of the disputed domain name. The Panel will consider what rights Complainant had in the term "Preferred Seating" at the time the disputed domain name was registered.

The term "Preferred Seating" might be generic or descriptive. No person may hold exclusive service mark rights in a generic term. A descriptive term may serve as a service mark if the party claiming rights in the term can establish that it has acquired secondary meaning among the relevant public.

A generic term refers to a thing. A "seat" is a place or object upon which one sits, and "seat" is a generic term. Complainant disclaimed the term "seating" in its California service mark registration. "Preferred" is generally used in an adjectival sense, meaning "desired above others". A "preferred seat" or "preferred seating" might be understood to refer to a thing, that is, a desirable place to sit, and be considered generic. Alternatively, the term "preferred" might be understood to characterize a type of seat in the adjectival sense, and the combined term "preferred seating" might be considered descriptive. The Panel need not decide whether "preferred seating" is generic or descriptive because, in either case, Complainant has not established rights in the term as a mark in this proceeding.

Complainant has attempted to demonstrate rights in the term "preferred seating" by submitting evidence that it has advertised it in newspapers and on the radio. Complainant has submitted several samples of moderate-sized newspaper advertisements, and several receipts for radio announcements. It has not submitted evidence of public association of Complainant as a business with the term "preferred seating".

Respondent has rebutted Complainantís showing with submission of substantial evidence that the term "preferred seating" is commonly used by sellers of tickets to events to describe a kind of seating. Although the subject domain names that use the term may (or may not) post-date 1998, they are associated with websites that also use this term to refer to the services provided by their operators, and support the position that the term is used in the ticket industry in a generic or descriptive sense.

In a court proceeding on the merits of its position, Complainant might be able to more fully develop proof of secondary meaning in the term it claims as a service mark. However, in this proceeding Complainant has not persuaded the Panel that it established exclusive rights in the term "Preferred Seating" as of the date that Respondent registered the disputed domain name.

Even if the Panel were to assume that Complainantís California registration established a presumption of ownership in its favor relating back to its claimed date of first use, the Panel would still consider that on the record before it Complainant had not carried its burden of proof to establish secondary meaning in the light of Respondentís evidence of use of the subject term in a non-service mark sense, bearing in mind that "preferred seating" is either highly descriptive or generic (recalling that in the latter case secondary meaning could not in any event be established).

Because Complainant has failed to establish rights in a service mark, the Panel rejects its request to find that Respondent has engaged in abusive domain name registration and use.

The Panel does not intend by this decision to make any suggestion regarding whether Complainant may have a valid cause of action against Respondent in another forum.

Respondent has requested the Panel to find that Complainant has engaged in reverse domain name hijacking. Its request is principally based on a settlement agreement that Respondent claims barred Complainant from initiating this action. The Panel has examined the settlement agreement furnished by Respondent and is unable to determine the subject matter that may have been affected by it. The Panel rejects Respondentís request for a finding of reverse domain name hijacking.

 

7.Decision

The Panel determines that Complainant, Preferred Seating, Inc. has failed to establish rights in a service mark within the meaning of paragraph 4(a)(i) of the Policy. The Panel therefore rejects Complainantís request to order the registrar to transfer the disputed domain name from the Respondent, Frank Still Audio & Web Design, to Complainant.

The Panel rejects Respondentís request for a finding of reverse domain name hijacking against Complainant.

 


 

Frederick M. Abbott
Presiding Panelist

G. Gervaise Davis III
Panelist

Richard W. Page
Panelist

Dated: March 28, 2002