WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SFX Motor Sports, Inc. v. Spiral Matrix
Case No. D2006-0815
1. The Parties
The Complainant is SFX Motor Sports, Inc., Aurora, Illinois, United States of America, represented by Gardere Wynne Sewell LLP of the United States of America.
The Respondent is Spiral Matrix, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name <monsterjamtickets.com> is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2006. On June 29, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On June 29, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the current registrant and providing the contact details for administrative 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”).
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 July 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2006.
The Center appointed Mary Padbury as the sole Panelist in this matter on August 9, 2006. 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
The domain name <monsterjamtickets.com> was registered on December 10, 2005. Its expiration date is December 10, 2006.
The Complainant recites the following facts. As there is no Response, these are not contested.
The Complainant, SFX Motor Sports, Inc., is described as a Live Nation company (“Live Nation”). The relationship is not further explained although it appears the Complainant is a subsidiary of Live Nation, Inc which is listed on the New York Stock Exchange and that “Live Nation” is used by the Complainant to refer to the rights of parent and subsidiary.
Monster Jam is a television show and live event created by Live Nation, consisting of races and freestyle competitions by monster trucks. Since 1992, Live Nation, through its predecessor, has made exclusive use of the mark MONSTER JAM in connection with motor sports events, television shows and an extensive line of merchandise. Live Nation is the leading promoter, producer and presenter of specialized motor sports events in the United States and produces hundreds of events annually, attended by millions of spectators. Tickets for a Monster Jam event can be purchased on the website owned by Live Nation “www.monsterjamonline.com”. These events are also available to a large television audience. The Monster Jam television show originated in the United States as “Inside Monster Jam”, a half-hour clip based show which reviewed several different events in one episode. Today the show is just known as “Monster Jam” and can be seen in the United States on the Speed Channel and in the United Kingdom on Kerrang! TV. Live Nation’s use of the MONSTER JAM mark has been widespread and supported by extensive advertising and promotional efforts.
The Complaint includes material from Live Nation’s website “www.monsterjamonline.com” promoting Monster Jam events and the MONSTER JAM mark (Annex C). Further, the Complaint illustrates use of the MONSTER JAM mark on clothing which can be purchased online (Annex C). The Complaint states that the US Patent and Trade Mark Office has registered trade mark registration nos 2,116,431 and 2,264,886 for MONSTER JAM and INSIDE MONSTER JAM, respectively, in the name of Live Nation. The Complaint further states (at page 10) that Live Nation’s US Federal registration no. 2,116,431 for the MONSTER JAM was filed and registered in 1997 and that the mark was first used in 1992. Copies of the trade mark registrations are not provided. A search of the US Patent and Trademark Office site lists the Complainant as the owner of these marks and confirms a filing date for 2,116,431 of September 2, 1997.
The Respondent’s domain name <monsterjamtickets.com> is a search portal for third party websites offering a variety of goods and services. When a consumer enters this domain name into a web-browser they are brought to the Respondent’s site. This in turn provides links to third parties offering a variety of goods and services ranging from fruit jam, travel agencies, on-line gambling and casino sites. Each time a consumer clicks on a topic, the web site generates a new list of popular searches based on the terms found within that page. As a result, related terms appear under the heading “Popular Searches” that will lead the Internet user to further links to third party goods and services. The main heading on the Respondent’s website includes “Monster Jam” which leads consumers to a page full of third party advertisers and vendors of Monster Jam tickets and merchandise.
5. Parties’ Contentions
The Complainant asserts that the domain name is identical or confusingly similar to the trade mark MONSTER JAM in which Live Nation has rights. The Complainant asserts, as a result of Live Nation’s extensive use and promotion of the MONSTER JAM mark, MONSTER JAM has become widely known and recognized among consumers and members of the motor sports and television industries as identifying Live Nation as the source of Monster Jam events, television shows and merchandise. Consequently, it is asserted that Live Nation has acquired valuable rights and substantial goodwill in the MONSTER JAM mark, examples of which are described and set out on Live Nation’s website pages which are shown in Annex C to the Complaint.
Further, the Complainant asserts that the domain at issue is identical or confusingly similar to the MONSTER JAM mark. The domain name incorporates the Complainant’s mark. Further, it is asserted, that the addition of the word “tickets” if anything furthers the confusion by creating a presumption that tickets available for purchase on the Respondent’s website are sponsored or approved by Live Nation.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name. There is no evidence that the Respondent has used or made any demonstrable preparations to use the domain name or any corresponding domain name in connection with the bona fide offering of goods or services. Further, it is asserted the Respondent is not making and has never made a legitimate, non-commercial or fair use of the domain name. It is observed that the Respondent’s website resembles a search page but instead of providing a true “search” of the Internet, the Respondent’s website lists direct links to the websites of third parties. It is asserted that the Respondent directly or indirectly derives revenue based upon the number of “clicks” made to the advertised third party websites accessed through the domain name. It is further asserted that such distraction is harmful because it misleads and confuses Live Nation’s current and potential Monster Jam customers. In addition, it is asserted that this distraction and resulting confusion is damaging to the MONSTER JAM mark and corresponding goodwill and thus damaging to Live Nation’s reputation. In addition, the Respondent is said to commercially benefit from the diversion of Internet users to its website by receiving pay-per-click fees from advertisers when Internet users follow the links on its website.
The Complainant asserts that nothing on the Respondent’s website or in the WHOIS domain name registration information suggests that the Respondent is commonly known by “Monster Jam” or “Monsterjamtickets”. As such, it is asserted the Respondent has no rights or legitimate interests in the domain name.
Lastly, it is asserted that the domain name was registered in bad faith and is being used in bad faith.
The Complainant relies on use of another’s trade mark as evidence of bad faith registration and use of the domain name. Further, the Complainant alleges that intentionally trying to divert Internet users to alternative sites can be evidence of bad faith. The Complainant asserts that the Respondent is capitalizing on the goodwill of the MONSTER JAM mark by diverting Internet users to a website that essentially is a generic directory of unrelated websites offering a variety of third party goods and services. Moreover, the Complainant asserts that the Respondent is presumably benefiting by the diversion of prospective and current Live Nation Monster Jam consumers to the website by receiving pay-per-click fees when these consumers follow the links on the website.
The Complainant asserts that the Respondent was on constructive notice of the existence of Live Nation and its MONSTER JAM mark when it registered the domain name on December 10, 2005. It asserts that an investigation at this time would have alerted the Respondent to Live Nation and the existence of its MONSTER JAM marks. In particular, it is asserted that Live Nation’s US Federal registration no. 2,116, 431 MONSTER JAM was filed and registered in 1997, eight years prior to the Respondent’s registration of the domain name at issue. In addition, the Complainant asserts that at the time the Respondent registered the domain name at issue, search of the Internet would have revealed information concerning Live Nation and Monster Jam as the Monster Jam mark was first used in 1992, 13 years prior to the Respondent’s registration of its domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel must decide a complaint on the basis of the statements in documents submitted and in accordance with the Policy, the Rules and the Supplementary Rules. The Complainant has the onus of proving three elements:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the domain name <monsterjamtickets.com> is confusingly similar to the trade mark MONSTER JAM in which the Complainant has rights notwithstanding the addition of the descriptive word “tickets”. The domain name incorporates the Complainant’s trade mark.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has rights or legitimate interests in the domain name in issue. There is no evidence, before any notice to the Respondent of the dispute, of 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. Further, there is no evidence that the Respondent has been commonly known by the domain name even if it had acquired no trade mark or service mark rights. Lastly, this is not an instance of making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
C. Registered and Used in Bad Faith
The Panel is satisfied that the domain name was registered and used in bad faith. It would appear that the domain name is being used to attract Internet users to a website that is essentially a generic directory of unrelated websites or for a variety of third party goods and services. It is likely that the Respondent is receiving pay-per-click fees when consumers follow the links on the website.
There is no evidence that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant who is the owner of the trade mark or to a competitor of the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. There is no evidence the domain name has been registered in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name or that the Respondent has engaged in a pattern of such conduct. There is no evidence the domain name has been registered primarily for the purpose of disrupting the business of a competitor. There is evidence, that by using the domain name, the Complainant has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the website or location of a product or service on the website or location.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <monsterjamtickets.com> be transferred to the Complainant.
Dated: September 4, 2006