The Complainant is The National Exhibition Centre Ltd. of Birmingham, the United Kingdom of Great Britain and Northern Ireland (the “UK”), internally represented.
The Respondent is Kolos Kaszaly of Budapest, Hungary, together with Ukticketfactory.Com of Vancouver, the United States of America.
The disputed domain name, <ukticketfactory.com> (the “Domain Name”), is registered with Dotster, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2010. On January 14, 2010, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On January 14, 2010, Dotster, Inc. transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 22, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2010. On January 21, 2010, the Center received an informal email communication from the Respondent. However, the Respondent did not submit any formal Response.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 23, 2010. 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.
The Complainant is the owner of two trademarks, THE TICKET FACTORY and THETICKETFACTORY.COM. Both marks were registered with the UK Trade Marks Registry on September 19, 2007. The Complainant also claims unregistered rights in the mark TICKET FACTORY by virtue of the Complainant's use of the mark in relation to ticket selling services since at least 2007.
The Complainant is the registrant of the domain name <theticketfactory.com>, through which it operates an online ticket agency website under the trading name “The Ticket Factory”. The Complainant's website offers tickets for sale to UK customers, and states that it is the UK's fastest growing ticket agent. The website also provides details of the relationship between the website and the Complainant's longstanding business as the UK's most successful venue box office for various regional venues. The Complainant's trademarks are used extensively throughout the website, and on associated websites for regional venues for which it acts as a ticket agent.
The Respondent registered the Domain Name on February 20, 2009. At the time of the Complaint, the Domain Name resolved to a website that offered online ticket purchasing services identical to those offered on the Complainant's website.
The Complainant's particular contentions can be summarized as follows:
(a) the Respondent's Domain Name is identical to the Complainant's unregistered rights in TICKET FACTORY and confusingly similar to the Complainant's trademarks, as the addition of “uk” suggests a geographical location and is not a distinguishing feature, particularly in light of the geographical location of the Complainant and its business;
(b) at the time of the Complaint, the services offered through the website to which the Domain Name resolved were identical to the services offered by the Complainant, in relation to which the Complainant's trademarks are used and unregistered rights are claimed;
(c) the likelihood of confusion between the Complainant's marks and Respondent's Domain Name is illustrated by the numerous instances of actual confusion reported to the Complainant;
(d) the confusion caused by the Respondent's use of the Domain Name has led to the Complainant receiving and dealing with complaints by customers who believed they had dealt with the Complainant, rather than the Respondent;
(e) the goods and services offered through the Respondent's website may not be legitimate, indicating that the Respondent has no rights or legitimate interests in the Domain Name;
(f) to the best of the Complainant's knowledge, the Respondent has not accrued any goodwill in the Domain Name, and any goodwill that has been accrued rightfully belongs to the Complainant as the owner of the trademarks and unregistered rights; and
(g) the Respondent has used the Domain Name for commercial gain, by misleadingly diverting customers away from the Complainant's website, and has tarnished the Complainant's trademarks and unregistered rights.
Although on January 21, 2010 the Respondent sent an email to the Center and the Complainant, indicating that the Domain Name had been “dehosted”, the Respondent did not file a formal Response to the Complainant's contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true: Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Stanworth Development Limited v. Xander Jeduyu Algebravile, WIPO Case No. D2009-1259.
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the 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 and is being used by the Respondent in bad faith.
The Complainant must first establish that there is a mark in which it has rights. The Complainant in this case relies both on its trademarks for THE TICKET FACTORY and THETICKETFACTORY.COM, registered in September, 2007 and on its rights in the unregistered mark TICKET FACTORY.
It is well established that the Policy protects rights in unregistered marks: SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131; Imperial College v. Christopher Dessimoz, WIPO Case No. D2004-0322. Having considered the evidence submitted by the Complainant, the Panel accepts that the Complainant can claim rights in both the trademarks THE TICKET FACTORY and THETICKETFACTORY.COM, and the unregistered mark TICKET FACTORY, which the Complainant has used in commerce since at least 2007 and which has become a term that is associated with the Complainant and its services.
The test of confusing similarity under paragraph 4(a)(i) of the Policy is confined to a comparison of the disputed domain name and the trade mark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trade mark infringement: Dixons Group Plc v Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327.
The Domain Name incorporates the words “ticket factory”. The differences between the Domain Name and the Complainant's marks are: a) in terms of the Complainant's registered trademarks, the omission of the word “the”; and b) the addition of the letters “uk” to the Domain Name.
In relation to a), the Panel finds that the mere omission of “the” does not take away the confusing similarity between the Complainant's trademarks and the Domain Name. The word “the” is generic and legally insignificant in a determination of confusing similarity under the Policy: The Tire Rack, Inc. v. Phayze 1, Phayze 2, and Phayze Inc., WIPO Case No. D2003-0315.
In relation to b), the Panel considers that the addition of “uk” does not distinguish the Domain Name from the Complainant's marks. The Complainant is incorporated in the UK. Its marks are registered in the UK, and its business operations are located in the UK. In light of these facts, the addition of the letters “uk” to the Domain Name suggests a geographical location, and in the Panel's view increases the likelihood of confusion between the Domain Name and the Complainant's marks.
Finally, the Panel notes that it is generally accepted that the addition of a domain name suffix such as “.com” does not take away identicality or confusing similarity. See for example VAT Holdings v. Vat.com, WIPO Case No. D2000-0607 and The Tire Rack, Inc. v. Phayze 1, Phayze 2, and Phayze Inc.,supra.
The Panel therefore finds that the Domain Name is confusingly similar to both the Complainant's trademarks and the Complainant's unregistered rights for the purposes of paragraph 4(a)(i) of the Policy.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Domain Name. Therefore, the Panel will assess the Respondent's rights (or lack thereof) in the Domain Name based on the Respondent's use of the Domain Name, in accordance with the available information.
At the time of the Complaint, the Domain Name resolved to a website that directly competed with the Complainant's website, offering event tickets for sale. The Panel considers that it is highly unlikely that the Respondent was unaware of the Complainant and its marks when adopting the Domain Name. Conversely, it is clear that the Respondent adopted the Domain Name either to misleadingly divert customers away from the Complainant, or with the intention to create an impression of association or affiliation with the Complainant, its marks and the goodwill attached to them. Using a domain name to intentionally trade on the fame or reputation of another constitutes unfair use, and cannot amount to a bona fide offering of goods or services: Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847. The fact that the Complainant has produced evidence that the Respondent's offerings of goods and service may not be bona fide also supports the view that the Respondent has no rights or legitimate interests in the Domain Name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The registration of a domain name obviously connected with trademarks by someone without any connection to those trademarks in the appropriate circumstances suggests opportunistic bad faith: Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2009-0009.
The Panel accepts that the Complainant's marks are well-known in the UK, the jurisdiction in which both the Complainant and the Respondent operate. Accordingly, as stated, the Panel considers that it is implausible that the Respondent did not have knowledge of the Complainant's marks at the time of registering the Domain Name.
It is difficult to foresee many circumstances where the registration and use of a domain name could be said to be in good faith when its registration and use has occurred in the full knowledge of a complainant's prior rights in the mark and with the intent to trade off the goodwill thereof. In any case, no evidence of such circumstances has been brought before the Panel, and the Panel accepts that such circumstances do not exist in this case.
The Panel finds that the confusing similarity between the Complainant's marks and the Domain Name is being been exploited by the Respondent who, in using the Domain Name, is clearly seeking to capitalise on the Complainant's goodwill in the mark for the purpose of attracting third parties to the Respondent's website for commercial gain and creating a likelihood of confusion as to source or affiliation. These factors, together with the fact that the Respondent appears to have no connection to the TICKET FACTORY marks (apart from the Domain Name), indicate that the Respondent has used the Domain Name in bad faith
The Panel is satisfied in terms of paragraph 4(a)(ii) of the Policy that the Respondent has acted in bad faith in registering and using the Domain Name.
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 <ukticketfactory.com> be transferred to the Complainant.
Dated: March 8, 2010