WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Suisse Group v. TicketCity
Case No. D2003-0877
1. The Parties
The Complainant is Credit Suisse Group, Zürich, Switzerland, represented by E. Blum & Co., Switzerland.
The Respondent is TicketCity, Austin, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <csfbtickets.com> is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2003. On November 5, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On November 6, 2003, Network Solutions, Inc. Registrar 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").
On November 6, 2003, the Respondent addressed to the Center a communication that was forwarded to the Complainant on November 10, 2003, by the Center.
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 November 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 15, 2003.
In December the Respondent addressed another email to the Center declaring its lack of interest in the Domain Name. The Center promptly forwarded such communication to the Complainant, suggesting that the Complainant request a suspension of the present proceedings to allow transfer of the domain name.
The Center appointed Luca Barbero as the Sole Panelist in this matter on December 30, 2003. 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.
On January 14, 2004, a procedural order was issued indicating that "whereas on January 9, 2004, the Complainantís Authorized Representative addressed via e mail to the Center a request for a suspension and then termination of the above referenced administrative proceeding, in light of a pending agreement between the parties in relation to the Disputed Domain Name; whereas the Respondent has indicated the availability of to settle the matter in an email dated January 9, 2004, addressed to the Complainant and copied to the Center together with the above mentioned request; the Panel hereby decides that the present administrative proceeding is suspended until February 13, 2004. At midnight on this date the proceedings will be automatically terminated unless the Panel receives a request (copied to the Respondent) in writing from the Complainant (via e-mail and hardcopy) to resume the proceedings or a request to terminate the proceedings before such a date." The suspension was subsequently extended until March 13, 2004, pursuant to a request of the Complainant.
On March 12, 2004, the Complainantís Authorized Representative requested the re-institution of the administrative proceedings. On the same date the Center addressed to the parties a communication indicating that the proceedings were reinstated, setting the date for the decision.
4. Factual Background
The Complaint is based on a number of trademark registrations and applications consisting of or comprising the word "CSFB," including the United States Registration No. 2350586 "CSFB" of May 16, 2000, in class 36, CTM No. 1735679 "CSFBi" of September 27, 2001, in class 36, the International Registration No. 754357 "CSFBdirect" of March 1, 2001, in class 36, CTM No. 2112522 "CSFBdirect" of May 13, 2002, in class 36, International Registration No. 762000 "CSFBdirect" logo of June 18, 2001, in class 36.
The Respondent registered the domain name <csfbtickets.com> on July 11, 2002.
5. Partiesí Contentions
The Complainant informs the Panel that it is the owner of the well-known service mark CSFB, as well as of service mark registrations or applications in numerous jurisdictions world-wide for marks consisting of, or including as their main distinctive element, the mark CSFB, providing the Panel with a list of such registrations. The mark CSFB is an acronym derived from the initial letters of the business unit Credit Suisse First Boston.
The Complainant indicates that these service mark applications and registrations specify services typically offered by an internationally active banking and financial institution and essentially represent insurance and financial services and services in the area of banking affairs. The Complainantís CSFB marks are in use for the above-specified services in numerous jurisdictions, and the Complainant states that mark CSFB is well-known in connection with such services.
According to the Complainant the domain name <csfbtickets.com> is manifestly confusingly similar to the registered service marks as the domain name is characterized by its initial letters "csfb." In the subject domain name, these letters are followed by the immediately recognisable English word "tickets," which represents a descriptive reference to the services internet users expect to find at the website identified by the domain name. Interested parties encountering the domain name <csfbtickets.com> will therefore immediately interpret the word "tickets" as contained in said domain name to refer to some kind of ticket sales or issuing service available at the website identified by this domain name. In this sense, the word "tickets" in the subject domain name is of descriptive and generic nature, providing the Panel with a list of websites where tickets or ticket-related services are offered.
The Complainant describes the Respondentís website at "www.csfbtickets.com" corresponding to this typical usage, as it in fact represents a site where tickets for numerous kinds of events are offered for sale concluding that the distinctive part of the domain name <csfbtickets.com> thus clearly consists of the initial acronym "csfb" which is identical to Complainantís service mark CSFB. According to the Complainant the domain name <csfbtickets.com> must under these circumstances be considered confusingly similar to Complainantís numerous service mark registrations.
With reference to the rights or legitimate interests in respect of the domain name, the Complainant indicates that it has not granted any rights to use the designation CSFB or any other designation of Complainant, to Respondent.
The Complainant underlines that according to the practice of the Panels in UDRP proceedings, and in accordance with the principle negativa non sunt probanda established in many legal systems of the world, it is sufficient for the Complainant to simply assert that the Respondent has no rights or legitimate interests in respect of the domain name at issue.
According to the Complainant the use the website identified by the domain name <csfbtickets.com> shows that the Respondent has no rights to the designation CSFB as is obviously used to attract the attention of, employees and clients of Complainant with regard to the Respondentís ticket sales business. In fact, the Respondent at the website "www.csfbtickets.com" offers ticket sales services for various events under the conspicuous heading "A TICKET SERVICE PROVIDED FOR THE EMPLOYEES AND CLIENTS OF CREDIT SUISSE FIRST BOSTON."
The Complainant indicates that the Respondent does not even pretend to have rights to the designation CSFB, but openly uses this designation to attract the attention of the clients and customers of Complainant to Respondentís own business. The Complainant emphasizes that while Respondent is free to offer and sell tickets, including to clients and employees of Complainant, this does not entitle Respondent to identify itself under Complainantís service mark CSFB, thereby creating the false impression that Respondent is connected to Complainant, or indeed that the subject domain name and related website is owned and operated by Complainant or a business unit or company owned by Complainant.
According to the Complainant it is obvious that Respondent is seeking to make commercial gain from use of Complainantís designation CSFB to attract additional business to Respondentís ticket sales website at "www.csfbtickets.com," and to profit from the special safety and reliability which consumers will associate with the Complainant and its well-known mark CSFB, so that they will be as a result more willing to purchase tickets from the Respondentís website rather than from the site of a competitor.
Furthermore, the Complainant indicated as additional evidence of absence of Respondentís rights or legitimate interests the fact that the Respondent never replied to a warning letter addressed by the Complainantís US affiliate company Credit Suisse First Boston LLC on August 19, 2003.
According to the Complainant, the domain name at issue shall be considered to have been registered and used in bad faith by the Respondent since the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on the Respondentís website or location.
With reference to bad faith, the Complainant reiterates that the Respondent at the website "www.csfbtickets.com" offers ticket sales services for various events under the conspicuous heading "A TICKET SERVICE PROVIDED FOR THE EMPLOYEES AND CLIENTS OF CREDIT SUISSE FIRST BOSTON" therefore manifestly and obviously using the designation CSFB in its domain name to attract the attention of the clients and customers of Complainant to Respondentís own business for Respondentís own commercial gain.
In particular, the Complainant highlights that the specifically addressed clients and customers will be more willing to trust, and to spend money on, the ticket sales services of Respondent under "www.csfbtickets.com" as a result of being misled to believe that this ticket service is provided by, or approved by, the Complainant, with whom they are familiar as their employer or business partner. Respondentís use of the domain name <csfbtickets.com> in bad faith is furthermore proved, more than amply, by the conspicuous and unauthorized use of Complainantís service mark, company name and business unit name CREDIT SUISSE FIRST BOSTON, in the identical blue-white colour scheme and graphic representation as used by Complainant.
Respondent has not formally contested the allegations of the Complainant in a Response filed according to paragraph 5 of the Rules for Uniform Domain Name Dispute Resolution Policy and is in default.
The Panel shall therefore proceed to a decision without the benefit of a complete Response of the Respondent and relying only upon two emails addressed to the Center with reference to the present proceeding by the Respondent.
The Panel acknowledges that in the mail of November 6, 2003, it was stated inter alia that "the site is down. The site was created at the request of CSFB but was never actually put to use" Ö "it was created as a part of a formal presentation for CSFB employees that occurred in 2002" but the Panel was not provided with any evidence of the statements. The Respondent furthermore stated in the same mail that " when the domain name expires, it will not be renewed."
In the documents provided by the Center to the Panel, there was also a copy of an additional email from the Respondent dated November 15, 2003, where the above statements were reiterated but again without providing the Panel with any evidence whatsoever. In the email there was also the express indication that "we do not want the domain!" and of the Respondent intention not to "fight back" the arguments submitted by the CFSBís attorneys.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." 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 a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided the Panel with a long list of trademark registrations which includes the United States Registration No. 2350586 "CSFB" of May 16, 2000, in class 36, CTM No. 1735679 "CSFBi" of September 27, 2001, in class 36, the International Registration No. 754357 "CSFBdirect" of March 1, 2001, in class 36, CTM No. 2112522 "CSFBdirect" of May 13, 2002, in class 36, International Registration No. 762000 "CSFBdirect" logo of June 18, 2001, in class 36.
The Panel finds that the domain name is confusingly similar to the Complainantís trademark since the addition of generic and descriptive word "tickets" is not sufficient to exclude the risk of confusion with the well known acronym CSFB.
In view of the above, the Panel finds that the Complainant has proved that the domain name is confusingly similar to the trademark of the Complainant according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy that:
(a) He has made 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 prior to the dispute; or
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
There is no relationship, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainantís trademark and name under any circumstance.
The Respondent is not currently using <csfbtickets.com> in connection with a bona fide offering of any goods or services.
By not submitting a complete Response or providing the Panel with proof of the statements rendered in the email, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the domain name, according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or 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 holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.
The Respondent has declared in the correspondence addressed to the Center that "the site was created at the request of CSFB" and therefore the Panel infers that he was aware of the Complainantís rights in the trademark CSFB at the time of registration of <csfbtickets.com>. See inter alia Samsonite Corp. v. Colony Holding, NAF Case No. FA0094313, finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration.
Panel finds paragraph 4(a)(iv) of the Policy applicable to the present proceeding since, as also evidenced by the printout annexed to the complaint, the domain name was pointing to a page where tickets for various events including auto racing, baseball, golf, concerts, tennis and others were offered for sale under the heading "A TICKET SERVICE PROVIDED FOR THE EMPLOYEES AND CLIENTS OF CREDIT SUISSE FIRST BOSTON." Therefore, the Panel finds that the Respondent, in absence of any convincing explanation, was intentionally attempting to attract, for commercial gain, Internet users to such a website.
The Panel finds an additional circumstance evidencing bad faith, the reproduction in the Respondentís website of the logo of the Complainant and even of the "look and feel" of the Complainantís web page, which is very likely to augment the chances of creating confusion amongst the Internet users as to the source, sponsorship, affiliation or endorsement by the Complainant corroborating the use of the domain name in bad faith.
In view of the above, the Panel finds that Respondent registered and used the domain name in bad faith, according to paragraph 4(a)(iii) of the Policy.
The Panel finds that the domain name registered by the Respondent is confusingly similar to the Complainantís trademark, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.
For all the foregoing reasons, the Panel orders that the domain name <csfbtickets.com> be transferred to the Complainant.
Dated: March 29, 2004