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Generic Top Level Domain Name (gTLD) Decisions |
Tickets.com, Inc. v. Woofer Smith and No
Org Name
Claim Number: FA0404000257001
PARTIES
Complainant
is Tickets.com, Inc. (“Complainant”),
represented by Philip I. Frankel, of Bond, Schoeneck & King, PLLC, One Lincoln Center, Syracuse, NY 13202-1355. Respondent is Woofer Smith and No Org Name (“Respondent”), represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon & Assoc of Washington, DC,
11116 Hurdle Hill Drive, Potomac, MD 20854.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwtickets.com>,
registered with Network Solutions, Inc.
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.
The
Honorable Robert T. Pfeuffer (Ret.), the Honorable Charles K. McCotter, Jr.
(Ret.) and G. Gervaise Davis III, as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 16, 2004; the Forum received
a hard copy of the
Complaint on April 19, 2004.
On
April 21, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <wwwtickets.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
April 22, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 12,
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@wwwtickets.com by e-mail. Pursuant to Respondent’s request, the Forum extended the deadline
date to May 24, 2004 due to extenuating circumstances.
A
timely Response was received and determined to be complete on May 24, 2004.
On
June 1, 2004, Complainant timely submitted an Additional Submission.
On June 3, 2004, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed the
Honorable Robert T. Pfeuffer (Ret.), the Honorable Charles K. McCotter, Jr.
(Ret.) and G. Gervaise Davis III, as Panelists.
On
June 15, 2004, the Panel extended the time for Respondent to file a Response to
Complainant’s Additional Submission.
On
June 21, 2004, Respondent filed a Response to Complainant’s Additional
Submission.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant, Tickets.com, Inc., asserts that it has
rights in the TICKETS.COM mark through Complainant’s registrations of the mark
with the U.S. Patent and Trademark Office (“USPTO”) including Reg. Nos.
2,584,197 and 2,649,091 (registered on June 25, 2002 and
November 12, 2002,
respectively). Complainant also contends that it has
common law rights in the mark because it has used the TICKETS.COM mark in
commerce since 1997. Complainant further asserts that it holds
several registrations throughout the world for the TICKETS.COM mark. Complainant argues that Respondent’s <wwwtickets.com> domain
name is confusingly similar to Complainant’s TICKETS.COM mark because the
domain name fully incorporates the mark and merely
omits the period between the
mark and the second-level domain “www.”
Complainant
asserts that Respondent lacks rights and legitimate interests in the <wwwtickets.com> domain
name. Complainant argues that
Respondent has engaged in typosquatting because Respondent commercially
benefits by taking advantage of Internet
users who mistakenly omit the period
after the “www” when they attempt to access Complainant’s <tickets.com>
website and Respondent
redirects those Internet users to the
<ticketvault.com> website, which competes with Complainant. Furthermore, Complainant argues that
Respondent’s <wwwtickets.com> domain
name takes advantage of the goodwill associated with Complainant’s mark. Moreover,
Complainant argues that Respondent is not commonly known by the <wwwtickets.com> domain name.
Complainant
contends that Respondent has engaged in typosquatting, which constitutes bad
faith pursuant to Policy ¶ 4(a)(iii). Also, Complainant argues that Respondent
registered and used the <wwwtickets.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name incorporates Complainant’s mark and resolves to a commercial
website. Complainant contends that Respondent
registered and used the <wwwtickets.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because
Respondent’s domain name competes with Complainant’s business. In addition, Complainant asserts that
Respondent had actual or constructive knowledge of Complainant’s rights in the
TICKETS.COM mark,
and therefore registered the <wwwtickets.com> domain name in bad faith because the domain
name fully incorporates the mark, the mark is registered with the USPTO, and
the domain
name redirects Internet users to a website that competes with
Complainant. Furthermore, Complainant
asserts that Respondent has engaged in cybersquatting in the past which is also
evidence that Respondent
registered the <wwwtickets.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
B.
Respondent
Respondent,
Woofer Smith, contends that this dispute has already been decided in
Respondent’s favor in an earlier ICANN proceeding,
Tickets.com, Inc. v. H.A.
Woofer Smith, FA 196048 (Nat. Arb. Forum Nov. 14, 2003).
Respondent
concedes that the registration of the logo TICKETS.COM is valid and protects
Complainant’s mark with regard to the distinctive
design of the logo but argues
that Complainant does not possess a federal registration for the TICKETS.COM
mark. Respondent highlights that the
USPTO registration documents provided in the Complaint state that, “NO CLAIM IS
MADE TO THE EXCLUSIVE
RIGHT TO USE ‘TICKETS.COM’, APART FROM THE MARK AS
SHOWN.” Respondent also contends that
Complainant cannot have exclusive rights in the TICKETS.COM mark because the
term is generic and does
not “identify or distinguish those goods coming from a
particular merchant from other goods of the same kind.” Respondent asserts that the “.COM” portion
of the alleged mark has no trademark significance because it is incorporated
with a generic
term.
Respondent contends
that its use of the <wwwtickets.com> domain name to
sell tickets is evidence that it is using the domain name to make a bona fide
offering of goods or services pursuant
to Policy ¶ 4(c)(i). Respondent also argues that it has rights or
legitimate interests in the <wwwtickets.com> domain name
because Complainant’s mark is generic and because
Respondent registered the <wwwtickets.com>
domain name before Complainant established rights in the TICKETS.COM mark.
Respondent
argues that it did not register the <wwwtickets.com>
domain name in bad faith because Complainant’s mark is generic. Respondent further asserts that it could not
have had actual or constructive knowledge of Complainant’s alleged
registrations of the
mark in foreign countries, and therefore could not have
registered the domain name in bad faith.
Furthermore, Respondent argues that even if it knew of Complainant’s
mark, Respondent could not have registered the <wwwtickets.com> domain
name in bad faith because the USPTO registration document waives exclusive use
of TICKETS.COM. Respondent contends
that it did not register or use the domain name in bad faith, because it
registered the <wwwtickets.com> domain
name before Complainant established rights in the TICKETS.COM mark.
C.
Additional Submissions
In
its Additional Submission, Complainant contends that its mark is not generic
and is protected under foreign and U.S. trademark
registrations as well as the
common law. Focusing on allegations of
typosquatting, Complainant contends that Respondent fails to show any
legitimate interests in the domain
name and fails to explain how its
typosquatting represents anything other than bad faith.
In
its Additional Submission, Respondent reiterates that Complainant’s U.S.
registered trademarks carry a specific disclaimer that
no claim is made to the
exclusive right to use TICKETS.COM apart from the mark as shown. Respondent also challenges the credibility
of Complainant’s evidence of foreign trademark registrations. Further, Respondent contends that the
determination of whether Complainant has common law trademark rights is beyond
the scope of
an ICANN proceeding.
Respondent asserts rights and legitimate interests in the domain name
because the TICKETS.COM mark is generic and Respondent is in
the business of
selling tickets. Respondent contends
that bad faith in registration or use of the domain name has not been shown.
Complainant is engaged in the business of
selling tickets online for, among other things, music and sporting events. Complainant
owns the U.S. registered mark TICKETS.COM and Design. Furthermore, Complainant owns the registration of TICKETS.COM as
a word mark and as a Design mark in many countries throughout the
world. Complainant has been using the mark
as a word mark and logo as early as August 1997. The logo consists of two elliptical designs with the dominant
word “TICKETS.COM.”
The USPTO registration documents provided
in the Complaint state that, “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE
‘TICKETS.COM’,
APART FROM THE MARK AS SHOWN.”
One of
Complainant’s competitors is Ticket Vault, Inc. a Texas corporation, which acts
as an entertainment ticket broker to the public
through its website
<ticketvault.com>. The WHOIS
registry of <wwwtickets.com> shows that it
was registered by Respondent, Woofer Smith, who is a principal of Ticket Vault,
Inc. A comparison of the registry
information for both the domain sites <www.ticketvault.com> and <wwwtickets.com> shows that the
two entities share the same addresses and phone numbers. Woofer Smith is listed as the administrative
contact on both registrations.
The domain name
<wwwtickets.com> was created on
May 4, 2002. When one types in the
disputed domain name, it links the browser directly to the
<ticketvault.com> website.
Complainant submitted an earlier
Complaint to the Forum on September 15, 2003, raising these same issues as to
the same domain name
against the same Respondent. See Tickets.com,
Inc. v. H.A. Woofer Smith, FA 196048 (Nat. Arb. Forum Nov. 14, 2003)
(hereinafter referred to as “Tickets.com I”). In Tickets.com I, the Panel, finding that “Complainant and
Respondent and thousands of others sell TICKETS,” concluded that the mark
TICKETS.COM is
generic as to which no one has exclusive rights and dismissed
Complainant’s Complaint.
In
Tickets.com I, Complainant raised these same issues as to the same
domain name against the same Respondent.
The same ICANN proceeding can be re-opened only upon limited
circumstances. See Kur- und
Verkehrsverein St. Moritz v. Domain Finance Ltd., D2004-0158 (WIPO June 14,
2004). In Grove Broadcasting Co. Ltd v. Telesystems
Communications Limited, D2000-0703 (WIPO Nov. 10, 2000) the Panel
established the test for re-litigation of an ICANN proceeding:
[O]nce a party has been given
a defended hearing in a Court and a decision rendered, then a case cannot be
re-litigated unless either
(a) the decision is overturned on appeal and (b)
limited grounds for rehearing or reconsideration by the first-instance court
have
been established. Such limited
grounds are usually specified in Rules of Court and can include, for
example: (a) serious misconduct on the
part of a Judge, juror, witness or lawyer;
(b) perjured evidence having been offered to the Court; (c) the discovery of credible and material
evidence which could not have been reasonably foreseen or known at trial and
(d) a breach
of natural justice.
Usually, before ordering a new trial, a Court would have to be satisfied
that a miscarriage of justice had occurred.
The only factor that could be
applicable here is the discovery of new evidence. However, Complainant
has not shown any credible and material new evidence that was not reasonably
available at the time of the first hearing.
This second case is nothing more than a collateral attack on the
decision in Tickets.com I.
Complainant is not entitled to “another bite of the apple” in this ICANN
proceeding. However, this Decision does
not preclude Complainant from seeking a remedy in federal court or any other
court of competent jurisdiction.
DECISION
Having
concluded that Complainant has failed to show any reason for reconsideration of
the decision in Tickets.com I, the Panel concludes that Complainant’s
Complaint shall be DISMISSED.
The Honorable Robert T. Pfeuffer (Ret.),
Panel Chair
Dated: June 28, 2004
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