WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compare Ninja Ltd. v. Paul Nilas
Case No. D2018-0981
1. The Parties
The Complainant is Compare Ninja Ltd. of Tel Aviv, Israel, represented by Assaf Cohen Sidon, Israel.
The Respondent is Paul Nilas of Huntington Beach, California, United States of America ("United States"), self-represented.
2. The Domain Name and Registrar
The disputed domain name <ticketcompare.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 3, 2018. On May 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2018. On May 31, 2018, the Respondent requested a 14-day extension of the Response due date. On the same day, the Center sent an email to the Parties asking the Complainant to comment on the Respondent's request for extension by June 4, 2018, and granting a four-day extension to the Respondent. On June 5, 2018, the Center, having received no comment from the Complainant on the Respondent's request for extension, granted the Respondent a further seven-day extension of time, and confirmed the new Response due date was June 14, 2018. The Response was filed with the Center on June 14, 2018. On June 24, 2018, the Complainant filed an unsolicited Supplemental Filing. On July 4, 2018, the Respondent filed an unsolicited Supplemental Filing.
The Center appointed Dr. Clive N.A. Trotman, Jonathan Agmon and Richard G. Lyon as panelists in this matter on July 3, 2018. The Panel finds that it was properly constituted. Each member of 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 background is compiled from factual information taken from both the Complaint and the Response.
The Complainant is a company incorporated in Israel on May 1, 2017. Its business is to facilitate price comparisons and the purchase of sport, concert and other tickets for its clients, for which purpose it operates the website "www.ticket-compare.com". The Complainant does not have a registered trademark.
The disputed domain name, having been pre-owned by another since February 10, 2000 until it lapsed in 2003, was registered by the Respondent on April 29, 2004. The Respondent has used it variously in connection with travel, hotel and associated ticketing, and for the provision of links to advertisers. At times, and recently, the disputed domain name has been parked.
5. Parties' Contentions
The Complainant's contentions include the following.
The Complainant says the disputed domain name is identical or confusingly similar to a trademark or service mark (hereafter, "trademark") in which the Complainant has rights. The Complainant's business in the area of ticket comparison is well-known by the name "Ticket-Compare". It has been referenced in for example "Yahoo Sports" and the newspapers "Daily Mail" and "Mirror". In March 2018 the Complainant's website received more than 172,000 visits. The Complainant was forced to use the domain name <ticket-compare.com> because <ticketcompare.com> had been registered by the Respondent.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which is not currently in active use and never has been. The Complainant says it has rights in the name "ticketcompare". The Complainant has never granted any right to use its name to the Respondent. An attempt by the Complainant to buy the disputed domain name from the Respondent on July 15, 2016 was met with an asking price (with other domain names) of USD 550,000.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent's actions amount to cybersquatting since the sole use of the disputed domain name is to offer it for sale to the Complainant for USD 550,000. The Respondent failed to reply to cease, desist and transfer letters of April 4, 2018 and April 24, 2018. It is highly probable that Internet users will be misled by confusion into associating the disputed domain name with the Complainant and its services.
The Complainant has cited previous decisions under the Policy that it considers relevant.
The Complainant requests the transfer of the disputed domain name.
The Respondent's contentions are lengthy and repetitive. Those of most relevance are summarised briefly below.
The Respondent denies the Complaint and asks for a finding of reverse domain name hijacking ("RDNH").
The Respondent outlines his relevant qualifications in Electrical and Computer Engineering, and early experience in research on behalf of government or military institutions in the United States and Thailand. He registered the disputed domain name as being "generic" and used it (and others) in 2006-2010 through an affiliate partnership in connection with travel, accommodation and related activities, earning commission through these and through Google Adsense. The disputed domain name ranked highly in Google results during the operation of a website under the disputed domain name. Thus the disputed domain name was used by the Respondent for a legitimate business. At times, for instance in 2008-2009 as a result of the global financial crisis, the disputed domain name was parked.
The Respondent says the business model changed in 2010 to a "backend processing platform for non-public fare and membership reward program for local company such as hotels, car rentals, and restaurants".
The Respondent says that when the disputed domain name was temporally parked in 2016, one L[…] approached the Respondent requesting a price in order to purchase it. The Respondent intended to use it, however, in connection with a new "Royalty Membership Rewords (RMR)" in which businesses offered individually tailored prices to frequent customers, in connection with which the subdomain <rmr.ticketcompare.com> was created. The public homepage was not used and does not need to be under the Policy.
The Respondent denies registration or use of the disputed domain name in bad faith. The words it incorporates are generic, could refer to many businesses, and yield over 100,000,000 results in Google searches. The Complainant has provided no evidence of having acquired distinctiveness in its business name or of it being a trademark.
The Respondent says he has never attempted to offer to sell the disputed domain name to the Complainant, which he had never heard of prior to the Complaint. It was L[…] who, without disclosing any association with the Complainant, made the first approach in 2016, requesting a price for the disputed domain name. Selling domain names is legitimate and values are determined by the market. The Respondent cannot have registered the disputed domain name in 2004 with intent to target the Complainant, which was not incorporated until 13 years later.
Particularly with relevance to RDNH, the Respondent alleges the Complainant has misled the Panel because:
- the Complainant's claim to have been "well-known for many years" is contradicted by the fact that it was incorporated on May 1, 2017;
- some of the Complainant's claimed appearances in websites, tabloids and newspapers are the result of Article Submission and Search Engine Optimisation (SEO) techniques;
- the Respondent's analysis through SpyFu ("www.spyfu.com") shows the Complainant's claimed 172,000 visits to its site (in March 2018) included a high percentage of paid-for traffic, and research through "www.soccerstats.com" suggests the Complainant's visitor numbers are a very low percentage of overall searches in the same period;
- the high placement of the Complainant in Google searches for "ticket compare" does not demonstrate the website's popularity, but is attributable to the Complainant having paid to get the top rank; the Complainant knew this because "the Complainant (or L[…] if it is the same person)", has been, according to social media, "the SEM Manager, PPC Manager, SEO Specialist for many companies..."
The Respondent has cited previous decisions under the Policy that he considers relevant.
C. Supplemental Filings
The Complainant, and the Respondent in reply, each submitted unsolicited Supplemental Filings. For reasons set out below, they are not traversed here.
6. Discussion and Findings
A. Preliminary Matters
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 15(a) of the Rules provides that "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". The Panel has taken into consideration all of the evidence, annexed material and submissions provided in the Complainant and the Response.
Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from the Parties. The initial Complaint and Response contained enough independently verifiable evidence upon which to make an unequivocal finding. The Panel did not request supplementary information or documents from either the Complainant or the Respondent. As stated by the respected panelist in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703, "A Complainant should 'get it right' the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone. There is no right of reply under the Rules". See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.6: "Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel."
The Complainant's unsolicited Supplemental Filing in reply to the Response had alleged, among other things, "fabrication of evidence" and large scale warehousing of domain names by the Respondent, whose reply, among other things, denied "all the allegations and statements raised by the Complainant in the unsolicited supplemental filing". As will unfold below, the Decision in this case was sufficiently straightforward that none of the matters raised in the unsolicited Supplemental Filings were of any relevance. The Supplemental Filings need not be and will not be taken into account.
B. Identical or Confusingly Similar
The Complainant must first establish within the meaning of paragraph 4(a)(i) of the Policy that there is a "trademark or service mark in which the complainant has rights". This may include an unregistered trademark.
The Complainant makes no claim to have a registered trademark but refers in the Complaint to its "names and marks". The Policy specifically does not provide for a claim of rights in a name, only in a trademark, and in any case the Complainant's incorporated name is not "ticketcompare" but "Compare Ninja Ltd". The inference is that the Complainant claims common law or de facto rights in the unregistered trademark "ticket-compare" (or "ticketcompare"), by virtue of the name and use of its website.
The WIPO Overview 3.0 reviews, with citations, guidelines that panels have applied in the assessment of rights claimed in an unregistered trademark. Section 1.3, under the heading "What does a complainant need to show to successfully assert unregistered or common law trademark rights?" commences: "To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys".
Whilst it is apparent that the Complainant's website facilitates ticket price comparisons from various sources, less clear is whether the relevant public would associate the generic or descriptive words "ticket compare" primarily with the Complainant rather than with ticket comparison businesses in general.
In the exercise of its power to undertake limited consultation of publicly available sources (WIPO Overview 3.0, section 4.8) the Panel did a Google search, using the Incognito option, for "ticket compare". The early results were predominantly for flights. After the top four results, which were advertisements, the Complainant ranked highest of the next 10 results. The Complainant also ranked highest in searches for "ticketcompare" and "ticket-compare", and the button "More results from ticket-compare.com" led to various of the Complainant's sub-pages. The return of around 150,000,000 general search results for "ticket-compare" or "ticket compare" underscored the generic nature of the search terms.
The Complainant is vague about the duration of use of its claimed trademark, for example "well-known for many years", and mentions its attempt to buy the disputed domain name on July 15, 2016, but there is nothing to suggest the Complainant used its claimed trademark earlier than the registration of its own domain name <ticket-compare.com> on January 19, 2015. In fact, the Complainant registered and was using the domain name <ticket-compare.co.il> on April 24, 2018. This domain name resolves to the Complainant's web page in the Hebrew language.
The "amount of sales under the mark" and "nature and extent of advertising using the mark" are discussed in similarly vague and unsubstantiated terms such as "massive efforts and costs borne by the Complainant". On the other hand 172,000 visits in a month, however achieved, is significant. The Complainant refers to its mention in media references. These appear merely to acknowledge information provided by the Complainant, for instance in The Irish Times, "World Champions Germany's sole representation on the list compiled by Ticket Compare is Lukas Podolski, who was born in Poland"; in any case, according to a footnote, "The data used by Ticket Compare was pulled from official sources such as Fifa, Opta...". Mail Online refers to "Data provided by the Ticket Compare website for Pitch, the leading sports marketing company..."; the Mirror referred to "Research conducted by sports company www.ticket-compare.com".
As to consumer surveys, the positive comments on the Facebook page annexed as a "screenshot of positive feedbacks of random users of the Complainant" are primarily the Complainant's own replies assuring correspondents of its legitimacy and the genuineness of its tickets. The Complainant has less than 2,500 Facebook users following its page, with posts going back to August 2017.
Having weighed the evidence produced, including the Complainant's search ranking and hit rate, the Panel nevertheless is not persuaded, on balance, that the public would associate terms comprising the combined words "ticket" and "compare" primarily with the Complainant rather than with the underlying service of ticket price comparisons. The Panel is not persuaded on balance that, given the evidence submitted by the Complainant, the generic, or at best descriptive term "ticketcompare" is recognised as the distinctive identifier of the Complainant, or has acquired secondary meaning such that it would qualify for trademark protection.
The Complainant is found not to have a trademark with which the disputed domain name can be found to be identical or confusingly similar and accordingly the Complaint fails under paragraph 4(a)(i) of the Policy.
For completeness the Panel will briefly consider paragraphs 4(a)(ii) and (iii) of the Policy.
C. Rights or Legitimate Interests
Conventionally, paragraph 4(a)(ii) of the Policy is handled by the Complainant making an assertion prima facie that it has had no relationship with the Respondent, and has reason to believe that the Respondent does not have rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy advises that the Respondent may show rights or legitimate interests in the domain name in any way, for example by demonstrating:
(i) before any notice to you [the Respondent] 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The Complainant is nevertheless expected to have made reasonable enquiries in order to formulate its prima facie case.
On January 19, 2015, the Complainant (presumably, through a privacy service) registered its own domain name, <ticket-compare.com>, the name and business of which forms the basis of its Complaint. The disputed domain name was registered more than 10 years earlier. In the Complainant's own words, "On April 29, 2004 the registrar "GoDaddy" registered the disputed domain name www.ticketcompare.com under the Respondent's name, at his request". The registration of ".com" domain names is on the basis of first come, first served, and the Respondent would thereby at that time have acquired the rights and legitimate interests required under the Policy unless the registration was made in bad faith, which will be explored below.
D. Registered and Used in Bad Faith
It is for the Complainant to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name was registered and is being used in bad faith.
For the Complainant to succeed, it must prove bad faith directed specifically towards itself or its trademark. The Policy deals with conflict between a domain name and a trademark, not between domain names per se. At the time of registration of the disputed domain name in the name of the Respondent on April 29, 2004, and for a decade thereafter, the Complainant evidently did not exist, therefore the Respondent cannot reasonably have acted in bad faith towards the Complainant. There can be exceptions, however, if the Respondent can be proven to have had some privileged knowledge or anticipation of the Complainant's trademark plans, for example, as summarised in section 3.8.2 the WIPO Overview 3.0: "(i) shortly before or after announcement of a corporate merger, (ii) further to the respondent's insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant's filing of a trademark application".
No evidence has been produced to suggest any such pre-emptive move by the Respondent, and in any case the Complainant does not have a trademark.
Accordingly the disputed domain name is found not to have been registered in bad faith and the Complaint cannot satisfy the requirements of paragraph 4(a)(iii) of the Policy. Returning to rights and legitimate interests, the Panel also finds for the Respondent in the terms of paragraph 4(a)(ii) of the Policy.
E. Reverse Domain Name Hijacking (RDNH)
The Respondent requests a finding of RDNH. Paragraph 1 of the Rules reads:
"Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."
The Complainant's evidence includes an email dated July 15, 2016 from L[…] to the Respondent asking whether the disputed domain name was for sale and if so, the price. Since this email is annexed to the Complaint, it may reasonably be assumed to have been sent on behalf of the Complainant. L[…] is also listed as the Administrative Contact for the Complainant's <ticket-compare.co.il> domain name and as having the same physical address and email as the Complainant. The Respondent's reply, with an asking price of USD 550,000 for the disputed domain name together with the ".net", ".org" and ".info" extensions, evidently was not to the Complainant's liking.
A year and nine months later on April 4, 2018 and April 24, 2018 the Complainant sent lawyer's letters to the Respondent headed "Trademark Infringement and Domain Cybersquatting – Ticket-Compare.com", expressing the Complainant's astonishment at the asking price for the disputed domain name and demanding not only its transfer but other things including social media accounts. The Respondent did not reply to these letters. The Complainant was filed shortly thereafter, dated May 3, 2018.
The Complainant's conduct follows the well-travelled route of a successive three-pronged attempt to gain control of a domain name, usually a ".com" domain name, upon which the relevant complainant simply has no possible claim. Whether or not the Respondent is in the business of warehousing domain names for sale, is irrelevant. In general terms, unless a domain name targets a complainant specifically or was otherwise registered in bad faith, trade in domain names is legitimate and common. Prices are determined in the market place.
In this instance, the Complainant ought to have recognised, under any fair interpretation of facts reasonably available prior to filing the Complaint, that under Policy precedent its Complaint was doomed to fail under at least one of paragraphs 4(a)(ii) and (iii) of the Policy. The Panel finds attempted Reverse Domain Name Hijacking on the part of the Complainant.
For the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Richard G. Lyon
Date: July 10, 2018