WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vivid Seats LLC v. Domains by Proxy, LLC / Mark Henderson, New Pro

Case No. D2019-0903

1. The Parties

The Complainant is Vivid Seats LLC, United States of America (“United States”), represented by Norvell IP LLC, United States.

The Respondent is Domains by Proxy, LLC / Mark Henderson, New Pro, United States.

2. The Domain Name and Registrar

The disputed domain name <vivid-seats.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 April 19, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2019, 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 amended Complaint on May 1, 2019.

The Center verified that the Complaint together with the amended 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 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2019. The Respondent did not submit any response. On May 3, the Center received an email communication from a third party.

The Center appointed William R. Towns as the sole panelist in this matter on June 12, 2019. 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 Complainant is an online marketplace providing tickets to theatre events, concerts, sports and other live entertainment in the United States and Canada. Founded in 2001, the Complainant is the owner of a number of trademark registrations of the VIVID SEATS mark for entertainment ticket agency services in the United States and Canada. The earliest registration of the VIVID SEATS mark was issued by the United States Patent and Trademark Office (USPTO) on April 28, 2009 (U.S. Reg. No. 3,614,140). The Complainant operates a website at “www.vividseats.com”, and has become one of the world’s largest online ticket marketplaces, with annual gross order volume in excess of USD 1.5 million.

The Respondent registered the disputed domain name on December 26, 2018. The disputed domain name resolves to a website at “www.vivid-seats.com”, the earliest iteration of which appears to be a clone of the Complainant’s official website. The Respondent’s website prominently displays a colorable imitation (“Vivid‑Seats”) of the Complainant’s VIVID SEATS mark, and purports to offer sports, theatre and other live entertainment tickets for sale online. In order to receive ticket purchasing information, Internet visitors to the Respondent’s website were directed to provide personal identifying information using an online form, which includes the individual’s full name, email address, and telephone number.

Upon becoming aware of the Respondent’s registration and use of the disputed domain name, the Complainant’s legal counsel on February 21, 2019, sent a cease-and-desist letter to the Respondent through the Registrar’s abuse reporting system. The Complainant also provided notice to a person the Complainant believed was a prior registrant of the disputed domain name. That person replied, disclaiming ownership of the disputed domain name and denying knowledge of the Respondent.

On February 22, 2019, the Registrar took down the Respondent’s website; however, the Respondent subsequently relaunched its website. The Respondent altered the layout of the website and removed the image of a football player previously copied from the Complainant’s website, but has continued to display a colorable imitation of the Complainant’s VIVID SEATS mark in connection with the online sale of tickets. The Respondent’s website was taken down again in early April 2019, but subsequently was relaunched, although the disputed domain name presently does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <vivid-seats.com> is identical and confusingly similar to the Complainant’s VIVID SEATS mark. The Complainant explains that the insertion of a dash (“-“) between the words “vivid” and “seats” does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark, nor preclude a finding that the disputed domain name is identical to the Complainant’s mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent is not affiliated with or connected to the Complainant in any way, and that the Complainant has not licensed or otherwise endorsed, sponsored, or authorized the Respondent to use the Complainant’s VIVID SEATS mark. The Complainant represents that the Respondent has not been commonly known by the disputed domain name, given that the Complainant’s first use of the VIVD SEATS mark dates back to 2001, almost two decades prior to the Respondent’s recent registration of the disputed domain name.

The Complainant maintains that the Respondent cannot demonstrate rights or legitimate rights in the disputed domain name merely from use of the disputed domain name to offer goods or services prior to any notice of the dispute. The Complainant argues that rights or legitimate interests cannot be created where the Respondent chooses the disputed domain name seeking to create an impression of association or affiliation with the Complainant’s well-known VIVID SEATS mark. According to the Complainant, the Respondent’s copying and use of the Complainant’s copyrighted materials and color scheme on the Respondent’s website clearly demonstrates that the Respondent was aware of the Complainant’s well-known VIVID SEATS mark and knowingly adopted the Complainant’s mark in the disputed domain name to create a false impression that the Respondent is associated with the Complainant. The Complainant further notes that the Respondent is not making any legitimate noncommercial or other fair use of the disputed domain name without intent for commercial gain, and contends that the Respondent also registered and has used the disputed domain name in furtherance of a fraudulent phishing scheme.

The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant explains that its VIVID SEATS mark has been registered and in use for almost two decades and is well known in the ticket resale industry. The Complainant thus concludes that the Respondent would have been well aware of the Complainant’s VIVID SEATS mark when registering a domain name identical to the Complainant’s mark. The Complainant also maintains that even a cursory trademark search by the Respondent would have revealed the Complainant’s VIVID SEATS mark, and contends that a finding of constructive knowledge by the Respondent also would be appropriate.

The Complainant reiterates that the Respondent’s copying of the overall layout of the Complainant’s website and use of the Complainant’s copyrighted materials and color scheme on the Respondent’s website clearly reflects the Respondent’s awareness of the Complainant’s VIVID SEATS mark when registering the disputed domain name. The Complainant concludes that the Respondent registered and by using the disputed domain name intentionally has attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website or goods and services offered on the Respondent’s website. The Complainant further submits that the Respondent’s use of a privacy protection service and the submission of false, inaccurate or incomplete contact information in the circumstances of this case is dispositive of the Respondent’s bad faith, and that the Respondent’s apparent passive holding of the disputed domain name does not preclude a finding of bad faith in the circumstances of this case.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”, see Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <vivid-seats.com> is confusingly similar if not identical to the Complainant’s VIVID SEATS mark, in which the Complainant has established rights through registration and use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

In this case, the Complainant’s VIVID SEATS mark is clearly recognizable in the disputed domain name.² The Respondent’s inclusion in the disputed domain name of a hyphen between the descriptive terms “vivid” and “seats” does not dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.³

Generic Top-Level Domains (“gTLDs”) generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.⁴ In this instance, were both the hyphen and the gTLD “.com” to be disregarded, the disputed domain name could be considered identical to the Complainant’s mark. In either event, the Panel considers that the Respondent’s appropriation of the Complainant’s VIVID SEATS mark in the disputed domain name is indicative of the targeting of the Complainant’s mark.⁵

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s VIVID SEATS mark. The Respondent notwithstanding registered the disputed domain name, which is confusingly similar if not identical to the Complainant’s mark, and has used the disputed domain name with a website purporting to offer sports, theatre and other live entertainment tickets for sale online.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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 Respondent has not come forward with any evidence of rights or legitimate interests in the disputed domain name. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

In the absence of any explanation from the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. The Respondent beyond cavil was aware of the Complainant’s VIVD SEATS mark when registering the disputed domain name. The Respondent appropriated the Complainant’s mark and has used the disputed domain name to divert Internet users to the Respondent’s website through the creation of Internet user confusion. Internet visitors arriving at the Respondent’s website would be likely to believe they have arrived at the Complainant’s website, or else a website that is affiliated with, sponsored or endorsed by the Complainant. The Respondent cannot credibly claim to be making a bona fide offering of goods or services when the disputed domain name has been registered and used to falsely suggest affiliation with the Complainant.

The Panel further concludes that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. An assessment of a claim of fair use under paragraph 4(c)(iii) of the Policy entails consideration of the nature of the disputed domain name, as well as circumstances beyond the disputed domain name itself, and in some cases issues of commercial activity. The correlation between a disputed domain name and the complainant’s mark often is a central inquiry; the respondent’s use of a domain name is not “fair” in circumstances where the domain name falsely suggests affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla, WIPO Case No. D2016-1698. See WIPO Overview 3.0, section 2.5 and cases cited therein.

Accordingly, the Panel finds that the Respondent’s use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. As previously noted, the Respondent has not been authorized to use the Complainant’s mark, and the Panel concludes that the Respondent has not been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy.

Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of and had the Complainant’s VIVID SEATS mark in mind when registering the disputed domain name. The Respondent in all likelihood sought to exploit and profit from the Complainant’s mark, using the disputed domain name to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the disputed domain name in the circumstances of this case constitutes bad faith.

The Respondent’s more recent passive holding of the disputed domain name does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531.

The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Complainant’s VIVID SEATS mark is distinctive and well known in the Complainant’s trade, and the Panel has found that the Respondent was aware of the Complainant and the Complainant’s mark when registering the disputed domain name. In the attendant circumstances of this case, and absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <vivid-seats.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: June 24, 2019

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0 "), section 1.7.