DECISION

Toyota Motor Corporation c/o Charlie Ryan, Executive Vice President v. Bill Brummett

Claim Number: FA0409000326185

PARTIES

Complainant is Toyota Motor Corporation c/o Charlie Ryan, Executive Vice President (“Complainant”), represented by Christopher L. Ashby of Ashby & Whitmire, LLP, 1415 Louisiana, Suite 3200, Houston, TX 77002.  Respondent is Bill Brummett (“Respondent”), represented by William A. Gage of Buck, Keenan, Gage, Little & Lindley, LLP, 700 Louisiana, Suite 5100, Houston, TX 77002.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <toyotacentertickets.com> and <toyotacenterhouston.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Richard Hill as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 10, 2004; the Forum received a hard copy of the Complaint on September 13, 2004.

On September 23, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <toyotacentertickets.com> and <toyotacenterhouston.com> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the names.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 13, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@toyotacentertickets.com and postmaster@toyotacenterhouston.com by e-mail.

A timely Response was received and determined to be complete on October 13, 2004, but the hardcopy of the Response was received after the response deadline.  Therefore, this Response was not in compliance with ICANN Rule 5.

On October 19, 2004, an Additional Submission was received from Complainant.  The required fee for this submission was received late and is, therefore, not considered to be in compliance with the Forum’s Supplemental Rule #7.

On October 26, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant states that it has trademark rights for the names TOYOTA and TOYTA CENTER.  It alleges that Respondent’s domain names would lead customers or potential customers of the Toyota Center to believe that Respondent’s websites are an official website of the Toyota Center, or that it is related in some way to the Toyota Center or to Complainant or that it is the official website for ticket purchases for the Toyota Center events.  Respondent has no relationship with the Toyota Center or with Complainant.

Respondent should be considered as having no rights or legitimate interests in respect of either of the domain names that are the subject of the complaint.  Respondent’s use of the domain names is not in connection with a bona fide offering of goods or services; but rather its purpose is to misdirect Internet traffic intended for Complainant to Respondent’s alternate web site, <ticketstogo.com>.  Further, Respondent has not been commonly known by either domain name nor could he use the name of “Toyota Center” without Complainant’s permission.  Also, Respondent is not making a legitimate noncommercial or fair use of either domain name, but rather intends to misleadingly divert consumers for commercial gain and in the process tarnish the trademark or service mark at issue

Respondent has registered the domain names primarily for the purpose of disrupting the business of Complainant.  Further, Respondent intentionally attracts, for commercial gain, Internet users to Respondent’s alternate web site or other on-line location, thereby creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

B. Respondent

Respondent has agreed to voluntarily transfer the domain name <toyotacenterhouston.com> to Complainant and therefore the sole domain name at issue in this matter is <toyotacentertickets.com>.

Respondent alleges that because the individuals accessing <toyotacentertickets.com> are directed to Respondent’s other websites, there can be no confusion regarding the trade name or that it is the official web site of Toyota Center.  Respondent also alleges that because it has a disclaimer on its alternate website, it cannot be confused with the official website of the Toyota Center.  The disclaimer states, in pertinent part:

Tickets To Go is an independent ticket distributor that has been in business for over 10 years.  We obtain Tickets on the secondary market.  We are not connected with or sponsored by any of the venues, teams, performers, or organizations whose Tickets we provide unless we expressly indicate that we are an official partner.  If you want to buy Tickets from the venue or organization box offices or their official distribution outlets, please inquire directly with the venues or organizations themselves.

According to Respondent, customers are required to affirmatively check a box stating that they have read and understood the Terms and Conditions of their purchase.  The Terms and Conditions conspicuously contain the disclaimer above.  So it is impossible for customers to believe that the Tickets To Go website is the official website of the Toyota Center.

Respondent contends it has the right to use the domain name in connection with its business of re-selling tickets to sporting events and other performances at venues to persons throughout the United States.  Respondent is specifically licensed to conduct this business.  Thus, in order to conduct its legitimate business, Respondent makes known to the public, through the use of the domain name <toyotacentertickets.com> that tickets to events at this venue are available via the Respondent.

Respondent also alleges that the term “Toyota Center” within the domain name is descriptive and nothing more. 

Respondent claims it was using the domain name <toyotacentertickets.com> for a bona fide offering of its services for several months before Complainant sought trademark protection. 

Respondent claims that the use of  <toyotacentertickets.com> constitutes fair use as allowed by the Lanham Act under 15 U.S.C. § 1115(b)(4), and it further claims that its use is nominative fair use as articulated in New Kids on the Block v. News Am. Publ’g, Inc., [1992] USCA9 2148; 971 F.2d 302 (9th Cir. 1992).  The court stated:

Where the defendant uses a trademark to describe the Plaintiff’s product, rather than it’s own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements.  First, the product or service in question must be one not readily identifiable without use of a trademark.  Second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the use must be nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

For example, states Respondent, courts have held that the mark BOSTON MARATHON could be used by a television station for descriptive purposes; and that an automobile repair shop could use the VOLKWAGEN mark to communicate the kind of cars it repairs, provided the defendant did not suggest authorization or sponsorship (Volkswagenwerk Aktiengesellschaft v. Church, [1969] USCA9 340; 411 F.2d 350 (9th Cir. 1969)).

The Respondent alleges that it meets the tests.  First, the Toyota Center venue is not readily identifiable without use of its name.  Second, nothing more than the name of the venue is used to identify the product or service provided by the Respondent.  Third, when coupled with the Tickets To Go website and the conspicuous disclaimer, there is nothing about the use of the mark TOYOTA CENTER which would suggest sponsorship or endorsement by the trademark holder.

Regarding the issue of bad faith, Respondent states that it has at all times used the domain name <toyotacentertickets.com> in connection with its duly licensed business.  The primary reason for registering this domain name was for Respondent to notify potential customers that tickets to events at this venue are available through his licensed business.

According to Respondent, Complainant does not itself sell tickets to any events occurring in the Toyota Center.

C. Additional Submissions

In its additional submission, Complainant states:

In footnote 1 of the Response, Respondent has agreed to voluntarily transfer the additional domain name <toyotacenterhouston.com> to complainant.  Accordingly, the decision should reflect this agreement to transfer such domain name.

In addition, Complaint states that the disclaimer itself as set forth in the Response states “If you wish to buy tickets from the venue or organization box office or their official distribution outlet, please inquire directly with the venues or organizations themselves.”  (Emphasis added by Complainant).  According to the Complainant, it would be hard to understand how an individual that inputs <toyotacentertickets.com> is not actually seeking the Toyota Center venue.

In regards to Trademarks, says the Complainant, a descriptive term “describes some features or characteristics of a product (i.e. “All Brand” or “Holiday Inn”) [and] is not inherently distinctive.  Sport Supply Group, Inc. v. Columbia Cas. Co., [2003] USCA5 259; 335 F.3d 453, 461, note 7 (5th Cir. 2003).  There is nothing descriptive about “Toyota Center”: it is the trademark itself.

According to Complainant, the registration of the domain name in July 2003 can be seen only as cybersquatting by Respondent.  There could be no possible use of the domain name in July 2003 when the Toyota Center had not even opened yet.

According to the Complainant, “fair use” of a descriptive trademark, under U.S. law, is permitted only when the term is used in its descriptive sense rather than its trademark sense.  The use of the trademark “Toyota Center” is not a descriptive term as alleged by Respondent.  While it does identify the venue where events are scheduled, this alone does not make it a descriptive term.  The term “Toyota Center” does not describe the type of event to be hosted, nor does it identify any service to be performed.  No other venue uses the term “Toyota Center” to identify itself.  Respondent itself has never been known by the Trademark “Toyota Center.”  Respondent does not need to use the Trademark to sell tickets to events featured at the Toyota Center.  In other words, Respondent is not re-selling tickets to the Toyota Center, it is re-selling tickets to the events featured at the Toyota Center. 

According to Complainant, the cases cited by Respondent in support of its fair use have one thing in common; they describe an event that has no other description but the Trademark itself.  That is, the Boston Marathon cannot be described other than using the Trademark.  The “Final Four” trademark is equally describing an event, which cannot be described in any other way.  In the Final Four case, it was determined that Respondent could not sell tickets to the Final Four without using the Trademark.  Respondent in this case, however, can continue to re-sell tickets to events at the Toyota Center without using the Trademark.  The tickets are to the events, not to the “Toyota Center.”  Furthermore, the Panelist found that the NCAA was not in competition with Respondents in the sale of tickets, but rather Respondents resell Complainant’s tickets for seats at Complainant’s events.  In the present case, the Toyota Center has a web presence and sells tickets through such online location.  The “Final Four” case does not stand for the proposition that Respondent could have used the domain name <ncaatickets.com>, which is what Respondent is doing in this case.  Although through an amended complaint the NCAA attempted to get such domain name into the dispute, the Panelist declined the filing of the amended complaint.  As stated above, when the term is descriptive, the fair use defense may be used.  In the instant case, the Trademark is not descriptive.

Further, as regards the alleged “nominative fair use” and the cases cited therein, Respondent fails to adequately address the three requirements it must meet to qualify for the defense.  First, the product or service in question must be one not readily identifiable without use of the trademark.  Respondent claims that the Toyota Center can not be identified without using the name.  The Toyota Center is not a product or service, however.  In the instant case, the product or service is ticket sales to events held at the Toyota Center.  Accordingly, Respondent fails to meet the first requirement.  Second, only so much of the marks may be used as is reasonably necessary to identify the product or service.  Once again, the product or service, the events held at the Toyota Center, can be identified without use of the Trademark.  In other words, you can still buy tickets to the Rockets games without using the Trademark name of Toyota Center.  Third, the use must be nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.  In the present case, Respondent alleges that because it directs the internet user to its alternate web site and he has posted a disclaimer at such site, there can be no confusion.  This does not address the initial confusion of the consumer who wishes to purchase tickets at the Toyota Center for Toyota Center events and is instead diverted to an alternate website.  The right to resell products does not create the right to use the mark more extensively than required to advertise and sell the product.  In this case, Respondent could use any domain name to re-sell Toyota Center tickets at its website, including <tickets-to-go.com>.  Respondent’s use of the Trademark is not reasonably necessary to allow resale of Toyota Center tickets.  Accordingly, Respondent’s use is not “nominative fair use.”

Further, the admitted use of the Trademark by Respondent is to divert possible ticket purchasers of the Toyota Center, a business activity that Toyota Center engages in itself. 

Finally, says Complainant, under the Policy ¶ 4(c)(iii), the fair use of the domain name must be non-commercial, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.  By Respondent’s own admissions, the use of the Trademark is for commercial purposes and with intent to divert customers seeking to buy Toyota Center tickets from the Toyota Center to its own website.

By its own admission, says Complainant, Respondent has registered the domain name primarily for the purpose of attracting, for commercial gain, potential customers to Respondent’s alternate web site or other on-line location for seeking to purchase tickets to events held at the Toyota Center, the same business which Toyota Center is involved.  While Respondent claims that Toyota Center does not itself sell tickets to any events occurring at the Toyota Center, a simple input of  <toyotacentertickets.net> will show that it is directed to tickets sales at the Toyota Center web site.  Further, as to the allegation that because Toyota has knowingly placed its name in association with a public entertainment venue it has lost the protection of its Trademark is totally without support.  While others may not seek to protect their Trademarks at their peril, this has no bearing on Toyota Motor Corporation’s rights.  Further, Respondent filed for the domain name prior to the opening of the Toyota Center and prior to any possible use with regards to re-sale of tickets to events at the Toyota Center.  This is a form of cybersquatting.  Accordingly, pursuant to the argument herein and above in section (ii), registration of the domain name is being used in bad faith pursuant to the Policy ¶ 4(a)(iii).

FINDINGS

Complainant has rights in the trademarks TOYOTA CENTER and TOYOTA.  The mark TOYOTA CENTER was first used in commerce in October 2003 and was registered in April 2004.  The mark TOYOTA has been very well known around the world for many years.

The disputed domain name <toyotacentertickets.com> was registered in July 2003.

The Toyota Center is a venue at which events take place.  It was opened in October 2003.  No events took place at the Toyota Center prior to October 2003.

Complainant offers tickets for sale for events that take place at the Toyota Center via its web site at <toyotacentertickets.net>.

Respondent operates a web site at <toyotacentertickets.com>, which redirects users to another web site that offers tickets for sale for many events, including events that take place at the Toyota Center.  The tickets are for the events themselves, not for the Toyota Center per se.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

As a preliminary procedural matter, the Panel admits both the Response and the Complainant’s Additional Submission, despite the non-compliance of the Response with ICANN Rule 5, and the non-compliance of the Complainant’s Additional Submission with the Forum’s Supplemental Rule 7.  This is in accordance with Rules 10(b) and 10(c).  A precedent can be found in Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000); see also American Airlines Inc. v. WebWide Internet Communication GmbH, FA 112518 (Nat. Arb. Forum June 13, 2002) (deciding to accept both Complainant and Respondent’s second additional submissions, despite the fact that they did not comply with Forum Supplemental Rule 7).

As a preliminary substantive matter, the Panel notes that both Respondent and Complainant agree that the disputed domain name <toyotacenterhouston.com> should be transferred to Respondent.  This decision will reflect that agreement.

The remainder of this decision concerns the other disputed domain name, that is <toyotacentertickets.com>.

Identical and/or Confusingly Similar

Complainant has rights in the marks TOYOTA CENTER and TOYOTA.  Respondent argues that there is no actual consumer confusion, because of the disclaimer that is visible on the site to which users of <toyotacentertickets.com> are redirected.

But the confusion test under the Policy is not limited to actual confusion.  Objective similarity of the disputed domain name to the Complainant’s mark suffices to establish confusing similarity under the Policy.  Indeed panels have consistently held that strict application of the confusion criteria arising out of national trademark laws is not appropriate, and that a broader notion of confusion should be used in these proceedings.

This principle is well stated in EAuto, L.L.C. v. Triple S. Auto Parts, D2000-0047 (WIPO Mar. 24, 2000):

When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar. Accordingly, the Panel holds that Complainant has satisfied the first prong of the ICANN test.

Therefore, this Panel finds that the disputed domain name <toyotacentertickets.com> is confusingly similar to the Complainant’s marks.

Rights or Legitimate Interests

Respondent operates a legitimate business, which consists of re-selling tickets to events held at various venues, including events held at the Toyota Center.

However, Respondent does not sell tickets to the Toyota Center itself, because no such tickets exist.  The tickets are tickets for events held at the Toyota Center, not tickets for the center itself.  Therefore, the Respondent cannot claim that it has a legitimate interest in a domain name which suggests that it is selling tickets to the Toyota Center itself.

As Complainant correctly states:

The use of the trademark “Toyota Center” is not a descriptive term as alleged by Respondent.  While it does identify the venue where events are scheduled, this alone does not make it a descriptive term.  The term “Toyota Center” does not describe the type of event to be hosted, nor does it identify any service to be performed.  No other venue uses the term “Toyota Center” to identify itself.  Respondent itself has never been known by the Trademark “Toyota Center.”  Respondent does not need to use the Trademark to sell tickets to events featured at the Toyota Center.  In other words, Respondent is not re-selling tickets to the Toyota Center, it is re-selling tickets to the events featured at the Toyota Center. 

…

The right to resell products does not create the right to use the mark more extensively than required to advertise and sell the product.  In this case, Respondent could use any domain name to re-sell Toyota Center tickets at its website, including Tickets-to-go.com.  Respondent use of the Trademark is not reasonably necessary to allow resale of Toyota Center tickets.  Accordingly, Respondent’s use is not “nominative fair use.”

Complainant’s Additional Submission § 2.

For relevant caselaw, see Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).

This Panel finds that Respondent has no rights or legitimate interests in the disputed domain name <toyotacentertickets.com>.

Registration and Use in Bad Faith

As the Complainant correctly notes, Respondent has admitted that he registered and is using the contested domain names to divert possible ticket purchasers of the Toyota Center to Respondents’ web site Tickets To Go.  But the Complainant itself engages in this very same activity, namely the sale of tickets for events held at the Toyota Center. 

That is, Respondent intentionally attracts, for commercial gain, Internet users to Respondent’s own web site, thereby creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.  This constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.

For relevant caselaw, see G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Accordingly, this Panel finds that Respondent has registered and is using the disputed domain name <toyotacentertickets.com> in bad faith.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <toyotacentertickets.com> and <toyotacenterhouston.com> domain names be TRANSFERRED from Respondent to Complainant.

Richard Hill, Panelist
Dated: November 9, 2004

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