DECISION

Ticket Solutions, Inc. v. Jack Holder

Claim Number: FA0401000226441

PARTIES

Complainant is Ticket Solutions, Inc. (“Complainant”), represented by Gretchen G. Rowan, of Bobroff, Hesse, Lindmark & Martone, P.C. 7730 Forsythe, Ste. 200, St. Louis, MO 63105.  Respondent is Jack Holder  (“Respondent”), represented by Paul Raynor Keating, of Carroll, Burdick & McDonough, LLP, 44 Montgomery Street, Suite 400, San Francisco, CA 94104.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ticketsolution.com>, registered with Innerwise, Inc. d/b/a ItsYourDomain.com.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Hon William Andrews, James A. Carmody, Esq., and Hon. Edmund P. Karem (Chair), as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 13, 2004; the Forum received a hard copy of the Complaint on January 16, 2004.

On Jan 16, 2004, Innerwise, Inc. d/b/a ItsYourDomain.com confirmed by e-mail to the Forum that the domain name <ticketsolution.com> is registered with Innerwise, Inc. d/b/a ItsYourDomain.com and that the Respondent is the current registrant of the name.  Innerwise, Inc. d/b/a ItsYourDomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a ItsYourDomain.com 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 January 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 10, 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@ticketsolution.com by e-mail.

A timely Response was received and determined to be complete on February 26, 2004.

A timely Additional Submission from Complainant was received on March 2, 2004.

A timely Additional Submission from Respondent was received on March 4, 2004.

On March 22, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed the Hon. William Andrews, James A. Carmody, Esq., and the Hon. Edmund P. Karem (Chair) as Panelists.

On April 1, 2004, due to exceptional circumstances, the Panel Chair ordered that the time period within which the Panel is required to render its decision be extended to April 12, 2004.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant alleges that Jack Holder (“Holder”), the named and registered Respondent, has registered <ticketsolution.com>, the domain name at issue, and that such domain is identical or confusingly similar to TICKET SOLUTIONS, Complainant’s mark registered with the USPTO on September 26, 2000 with a date of first use in commerce claimed to be March 10, 1993. Further, Complainant says that Holder has no rights or legitimate interests in respect of the domain name at issue and has registered and is using it in bad faith.

B. Respondent appearing to contest the Complaint is not Holder but Viper Holdings, Inc. (“Viper”), which claims to be the bona fide purchaser of the domain name at issue for $600 USD from Dotcomdealer, an entity which Viper suggests is owned by Holder. Viper claims to be a proper party to this proceeding, even though it has only been able to change the administrative, billing and technical contact information to stand in the name of Viper.  The name of the Registrant with ItsYourDomain.com, the registrar of the domain name at issue, remains Jack Holder.  In any event, Viper claims that it has rights and legitimate interests in respect of the domain name at issue and that it has not registered or used it in bad faith.  Viper argues that it should be joined by the Complainant.  The apparent use by Viper of the domain name at issue is to serve (along with 43 other variously named domain names) to redirect traffic to Viper’s <airlinetickets.com> flagship webpage.

C. Additional Submissions

Each of the parties timely filed Additional Submissions that were considered by the Panel.

Complainant further argues that Viper has no standing to act as Respondent in this proceeding and raises for the first time the fact of Complainant’s prior successful litigation against Dan Banks, d/b/a Ticketsolution.com involving the domain name at issue. Ticket Solutions, Inc. v. Dan Banks, d/b/a Ticketsolution.com, CA No. 01-2522-CM, in the U.S. District Court for the District of Kansas.  In that case, the court ordered (May 6, 2002) that Banks and all those holding with, through, or under him transfer the domain name at issue to the Complainant.  Presumably, the court retains continuing jurisdiction to enforce the injunctive relief awarded.

Viper disputes the standing argument on the grounds that it is essentially the beneficial holder of the domain name at issue and further argues that Complainant has failed to show that Viper registered or has used  <ticketsolution.com> in bad faith.

FINDINGS

The Panel finds that Complainant has rights in the TICKET SOLUTIONS mark because of its registration and use in commerce.  Its registration on September 26, 2000, (Reg. No. 2,390,009) of the TICKET SOLUTIONS mark conveys the ability to exclude others from using that mark.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

The Panel further finds that the <ticketsolution.com> domain name is confusingly similar to the TICKET SOLUTIONS mark because the omission of the letter “s” and the space from the domain name does not significantly distinguish it from the mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

Notwithstanding Complainant’s satisfaction of the first element of the Policy, this Panel finds that the U.S. District Court for the District of Kansas has probable jurisdiction over the Complainant and those from whom Viper claims and over issues raised by the Complainant. Even if not, this Panel declines such jurisdiction.  The actions of those “…holding with, through, or under Defendant [Banks]....” seem to contravene the Kansas court order and this controversy is, therefore, outside of the scope of the UDRP.  See NAT Int’l v. Suez FA 105930 (Nat. Arb. Forum May 15, 2002) (finding that because prior to the commencement of the administrative proceeding, a legal proceeding had already resulted in a judgment determining the very issue raised for decision by the Panel, the Panel should exercise its discretion and terminate the proceedings). Additionally, the Panel declines to hear this matter because any potential decision that disagrees with the prior Federal Court ruling would have no effect.   See AmeriPlan Corp. v. Gilbert, FA 105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative Panel’s decision regarding a UDRP dispute until the court proceeding is resolved.  Therefore, this Panel chooses not to act to change the status quo when there is a court retaining continuing jurisdiction to enforce its order concerning the same subject matter as presented to the Panel. Accordingly, the Complainant may choose to pursue its options by way of enforcement of the order of the Kansas court.

Further, the Panel also notes that there is no showing by the Complainant which satisfies element three of the Policy, that the domain name at issue was registered and is being used in bad faith.  Notwithstanding the fact that Holder cannot transfer good title to <ticketsolution.com> to Viper, the record before the Panel is silent on this point, and the UDRP requires a showing by the Complainant of bad faith.

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.”

The UDRP is not the appropriate vehicle for every dispute between trademark holders and those claiming rights in a domain name.  For the reasons set forth above, this Panel finds that it is presented here with one such inappropriate dispute and that jurisdiction should be declined.

DECISION

Having considered all the evidence presented by the parties, the Panel concludes that jurisdiction should be declined.

Accordingly, the Panel declines jurisdiction of this dispute and Complainant’s Complaint is dismissed. 

Hon. Edmund P. Karem, Chair

Hon. William Andrews, Panelist

James A. Carmody, Esq., Panelist

Dated: April 10, 2004

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