Generic Top Level Domain Name (gTLD) Decisions

TicketMaster Online-CitySearch, Inc.
COMPLAINANT,

vs.

Alex Vlasov
RESPONDENT.

DECISION
Forum File No.: FA0005000094739

The above-entitled matter came on for an administrative hearing on June 8, 2000 before Robert T. Pfeuffer as arbitrator on the Complaint of TICKETMASTER ONLINE-CITYSEARCH, INC.., hereafter referred to as “Complainant” and against ALEX VLASOV, hereinafter referred to as “Respondent”.  Monika P. Lee of Heller, Ehrman, White and McAuliffe, L.L.P., of San Francisco, California represents the Complainant.  No representative appears of record for the Respondent.  Upon the written submitted record, the following decision is made:

                                                      PROCEDURAL FINDINGS

Domain Name: SEATTLESIDEWALK.COM

Domain Name Registrar: Alabanza.com

Domain Name Registrant: Alex Vlasov

Date of Domain Name Registration: December 21, 1999

Date Revised Complaint Filed: May 8, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)[1] and Rule 4(c): May 10, 2000

Due date for a Response: May 30, 2000

Respondent did not file a response as required by Rule 5(a).

A decision favorable to Complainant was granted June 12, 2000.

After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent on May 10, 2000 in compliance with the Rules and the administrative proceedings were commenced.  The Forum immediately notified the Registrar ALABANZA.COM and the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceedings had commenced.  The Respondent did not file a response within the time provided by Rule 5(a).

On December 21, 1999, the Respondent registered the domain name “seattlesidewalk.com” with ALBANZA.COM, the entity that is the Registrar of the domain name.  The domain name registrar has also verified that Respondent is the Registrant for the domain name “seattlesidewalk.com” and that by registering its domain name with the Registrar, the Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules of Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy. 

                                                           FINDINGS OF FACT

The Respondent having failed to answer herein, the undisputed evidence establishes the following:

1. Complainant registered the service mark “sidewalk” January 27, 1998 under registration number 2,133,442 with first date of use June 16, 1997 and date of first use in commerce June 16, 1997.

2. That Complainant further registered the trademark “sidewalk” September 15, 1998 under registration number 2,189,762 with first date of use April 3, 1997 and first date of use in commerce April 3, 1997.

3. The above referenced trademarks were approved by the United States Patent & Trademark Offices on the registered dates indicated.

4. That the registration was effective from and remains in force from ten years from the date of registration as provided by law and is still in full force and effect on the date of this decision.

5. Complainant has owned the website “www.seattle.sidewalk.com” and “www.seattle.sidewalk.citysearch.com” which bring up Complainant’s website containing links and information concerning Seattle. 

6. That Complainant owns other websites which include the term “sidewalk” which opens Complainant’s websites for other metropolitan areas in most major metropolitan areas of the United States. 

7. That the “sidewalk” marks are inherently distinctive for the purposes Complainant has used said marks. That due to the success and efforts of Complainant, the sidewalk marks have acquired extraordinary further distinctiveness and are known throughout the United States as a source for high quality internet services providing information for events, restaurants, shopping and other activities in many U.S.A. destinations.

8. Respondent registered the domain name “seattlesidewalk.com” on December 21, 1999 and in so doing agreed to the provisions of the registration agreement and warranted that the registration was not made in bad faith and that the name does not conflict with another domain name.

9. Any person who accesses “seattlesidwalk.com” makes a direct link to Respondent’s home page which immediately redirects consumers to Respondent’s gambling website.  Persons leaving out the dot between “seattle” and “sidewalk” will be directed to Respondent’s website by mistake.  Thereafter the internet user is shown an offer to accept a “Free Casino Game” and ultimately will be transferred to Respondent’s “Casino On-Net” website.

10. The two domain names are confusingly similar and differing only in a single dot between the words Seattle and sidewalk and that similarity is grossly confusing to the public.

11. That Complainant has had a long standing interest in the name “sidewalk” and the registered service mark “sidewalk” and filed the domain name “seattle.sidewalk.com” long before Respondent filed “seattlesidewalk.com (without a dot between the words seattle and sidewalk.)”  Respondent’s failure to respond and offer evidence in respect to the Complaint raises the inference, which is unrebutted, that the similarity of names is misleading and that the Respondent acted in bad faith and with the intent to extract financial benefits from mislead consumers and/or the Complainant when registering the name “seattlesidewalk.com”.

12. Respondent has made no legitimate use of any version of the name “seattlesidewalk.com” nor shown any legitimate interest in any version of the same. 

13. Complainant has used the term “sidewalk” in its many websites across the United States and has used the “sidewalk” mark continuously since at least April 3, 1997 and in March 2000 alone the Complainant’s network had over 275 million page views, thereby demonstrating its broad use by the general public.

                                                                CONCLUSIONS

That the undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding.  Having been duly selected, and being wholly impartial, the undersigned makes the following conclusions upon the findings set out above:

1. That the domain name “seattlesidewalk.com” registered by the Respondent is so close as to be identical or confusingly similar to the Complainant’s “seattle.sidewalk.com” and its service mark “sidewalk”, to which the Complainant has established its legal right and to which the Respondent has failed to show any legitimate right or interest.

2. Because of the nationwide use of the term “sidewalk” as indicated by the evidence of broad use by the consuming public, the inference arises that Respondent had actual or at least constructive notice of Complainant’s prior use of the mark and name.

3. Because there is no affiliation between Respondent and Complainant, the Complainant has no control over the nature and quality of the Respondent’s website or services; therefore, the valuable reputation of the “sidewalk” service mark is likely to be diminished, diluted and tarnished by association with Respondent’s gambling website and its uncontrolled use.

4. That the Complainant seeks the remedy provided by paragraph 4(b)(i) of the policy for the reasons set out in the Complaint and has requested that the arbitrator issue a decision that “seattlesidewalk.com” be transferred to Complainant.

5. The following is evidence of the Respondent’s bad faith in registering the domain name “seattlesidewalk.com”:

That contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, paragraph 4 (b)(iii), Respondent wrongfully registered the domain name “seattlesidewalk.com” for the primary purpose of attempting to attract for commercial gain, internet users to the Respondent’s website or other on-line location.  Respondent thus  created a likelihood of confusion with the Complainant’s mark as the source sponsorship, affiliation or endorsement.

6. That the Respondent acted in bad faith by registering the domain name “seattlesidewalk.com” primarily with the intent to extract financial benefit from Complainant’s mislead customers and/or from Complainant when he registered the name “seattlesidewalk.com”.

7. That Respondent acted in bad faith by wrongfully using the domain name which included “sidewalk” for commercial gain by creating a likelihood of confusion between the Respondent’s registered domain name and that of Complainant.

                                                                    DECISION

Based upon the above findings and conclusions, and pursuant to the rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy, it is determined as follows:

HE DULY ASSIGNED ARBITRATOR DIRECTS THAT THE DOMAIN NAME “seattlesidewalk.com”, registered by Respondent, ALEX VLASOV, be transferred to Complainant TicketMaster Online-CitySearch, Inc.

SIGNED this 12 day of June, 2000.                  Honorable Robert T. Pfeuffer